DCT

2:17-cv-05455

Sigbop LLC v. E Sig Marketing LLC

Log In

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:17-cv-05455, C.D. Cal., 07/24/2017
  • Venue Allegations: Venue is alleged to be proper in the Central District of California because Defendant purportedly solicits and has paying customers in the district, and because a substantial part of the events giving rise to the claims allegedly occurred there.
  • Core Dispute: Plaintiff alleges that Defendant’s interactive email signature services infringe three patents related to graphic-based electronic signature management systems.
  • Technical Context: The technology concerns systems for creating dynamic, interactive email signatures where clickable graphic icons can initiate communications or link to web-based content, a feature now common in corporate and marketing communications.
  • Key Procedural History: The complaint states that Plaintiff provided Defendant with actual notice of the patents-in-suit via a letter dated November 30, 2016, approximately eight months prior to filing the lawsuit.

Case Timeline

Date Event
2011-12-29 Earliest Priority Date for ’256, ’943, and ’168 Patents
2014-03-18 U.S. Patent No. 8,677,256 Issues
2016-03-15 U.S. Patent No. 9,285,943 Issues
2016-03-22 U.S. Patent No. 9,292,168 Issues
2016-11-30 Plaintiff sends notice letter to Defendant
2017-07-24 Complaint Filed

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 9,285,943 - Graphic-Based Electronic Signature Management System and Method

Issued March 15, 2016

The Invention Explained

  • Problem Addressed: The patent’s background section notes that as individuals accumulate numerous points of contact (e.g., multiple phone numbers, email addresses, social media profiles), a need exists for a better approach to manage, organize, and present this information in electronic communications (’943 Patent, col. 1:24-33).
  • The Patented Solution: The invention is a system that builds an interactive electronic signature comprising a set of selectable graphic icons, where each icon is associated with a specific piece of contact information (’943 Patent, Abstract). The entire signature is represented by a single "link" that points to the signature data stored remotely on a network, allowing it to be updated dynamically even after an email has been sent (’943 Patent, col. 9:10-14, claim 1). The system is designed to track when a recipient clicks on an icon and update a record of these "click responses" (’943 Patent, claim 1).
  • Technical Importance: This technology centralizes the management of a user's contact information and enables the tracking of recipient engagement with the signature, providing valuable data for the sender (’943 Patent, col. 10:5-14).

Key Claims at a Glance

  • The complaint asserts infringement of independent claim 1 and reserves the right to assert other claims (Compl. ¶21).
  • Essential elements of claim 1 include:
    • A data collector that receives information items.
    • A signature builder that builds a graphic-based electronic signature, which is stored remotely and accessed by a link.
    • The signature includes a set of icons associated with the information items.
    • The icons are configured to initiate a communication application and trigger a "selection indication."
    • The system includes a click response manager to handle requests generated by icon selections.
    • A data store receives and stores the selection history, updating a record indicating the number of times an icon has been selected.

U.S. Patent No. 9,292,168 - Graphic-Based Electronic Signature Management System and Method

Issued March 22, 2016

The Invention Explained

  • Problem Addressed: Like its relatives, this patent addresses the complexity of managing and presenting numerous forms of contact information in a cohesive manner (’168 Patent, col. 1:25-36).
  • The Patented Solution: The invention is a system for building a graphic-based signature accessed via a single link. The key innovation described is making the signature's behavior dependent on a "predetermined event," such as the time of day or a click-count threshold (’168 Patent, col. 7:6-21). For example, claim 1 recites the system changing from a "first communication application" to a "second communication application" after a predetermined event associated with configuring a web address occurs, allowing for context-aware, dynamic content delivery (’168 Patent, claim 1).
  • Technical Importance: This transforms a static signature block into a dynamic, event-driven marketing or information tool, allowing content to change based on pre-set conditions without altering the original email (’168 Patent, col. 11:10-25).

Key Claims at a Glance

  • The complaint asserts infringement of independent claim 1 and reserves the right to assert other claims (Compl. ¶23).
  • Essential elements of claim 1 include:
    • A data collector that receives information items.
    • A signature builder that builds a signature including icons for at least a webpage and a social networking item.
    • The builder creates a "single link" associated with the signature.
    • The icons initiate a "first communication application" until a "predetermined event" occurs.
    • After the event, the icons initiate a "second communication application."
    • The predetermined event is "associated with configuring a web address."

U.S. Patent No. 8,677,256 - Graphic-Based Electronic Signature Management System and Method

Issued March 18, 2014

  • Technology Synopsis: This patent discloses the foundational system for creating graphic-based electronic signatures. It describes a data collector for receiving contact information and a signature builder that constructs a signature containing a set of selectable icons, each linked to a specific piece of contact data (e.g., email, phone) for initiating communication (’256 Patent, Abstract). The patent describes both a server-based architecture where the signature is built remotely and a local application architecture where it can be built on a user's client device (’256 Patent, FIG. 1, FIG. 2).
  • Asserted Claims: Independent Claim 1 (Compl. ¶25).
  • Accused Features: The complaint accuses Defendant's email signature services, particularly the features of "interactive buttons" and "custom designs," of infringing the ’256 Patent (Compl. ¶¶18, 25).

III. The Accused Instrumentality

Product Identification

Defendant's "email services that provide customizable email signatures" (Compl. ¶18).

Functionality and Market Context

The complaint alleges that Defendant, via its website www.myesig.com, offers services that allow customers to create email signatures with features including "interactive buttons, button statistics, mini webpages, custom designs, and custom animations" (Compl. ¶¶18, 21). This functionality allegedly allows a recipient of an email to interact with the signature to, for example, access further information or initiate contact, with such interactions being tracked.

No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint does not provide a detailed claim chart or an element-by-element breakdown of its infringement allegations. Instead, it makes general allegations that the accused services infringe one or more claims of each patent-in-suit, including at least claim 1 of each (Compl. ¶¶21, 23, 25).

The narrative infringement theory appears to be that Defendant's system for creating customizable email signatures embodies the patented technology. The allegation rests on the accused services' advertised features, such as "interactive buttons" (mapping to the claimed "selectable icons"), "button statistics" (mapping to the claimed "click response" tracking and data storage), and "mini webpages" or "custom animations" (potentially mapping to the claimed "predetermined event" functionality) (Compl. ¶18).

  • For the ’943 and ’256 Patents, the core of the infringement allegation appears to be that Defendant provides a system for building a graphic-based signature with interactive icons that are linked to contact information and that the system tracks user interaction with those icons, as suggested by the "button statistics" feature (Compl. ¶18).
  • For the ’168 Patent, the infringement allegation seems to focus on more dynamic capabilities. The allegation may depend on whether the accused "custom animations" or other dynamic features meet the specific "predetermined event" limitation of claim 1, which requires a change in the communication application's behavior based on a pre-configured trigger (Compl. ¶18, 23).

Identified Points of Contention

  • Evidentiary Question: A central issue will be whether Plaintiff can produce evidence from discovery to demonstrate that the accused system's underlying architecture performs the specific functions recited in the claims. For example, the complaint does not explain how Defendant's "button statistics" feature meets the detailed requirements of the "data store" in claim 1 of the ’943 Patent, which requires storing a selection history and updating a record of selection counts.
  • Technical Question: It raises the question of whether the accused system’s functionality matches the specific technical requirements of the claims. For the ’168 Patent, does the provision of "custom animations" or "mini webpages" cause the system to switch from a "first communication application" to a "second communication application" as required by claim 1, or does it merely alter the destination content of a single type of application (e.g., a web browser)?

V. Key Claim Terms for Construction

  • The Term: "single link" (’943 Patent, cl. 1; ’168 Patent, cl. 1)

    • Context and Importance: This term is central to how the signature is constructed and delivered. Its scope will determine whether a block of code with multiple elements can be considered a "single link," or if it requires a more specific structure. Practitioners may focus on this term because it defines the object that is "accessed" to render the signature.
    • Intrinsic Evidence for a Broader Interpretation: The specification describes exporting the signature as a block of HTML markup data, which a court could find supports a broader definition where the entire code block functions as a unitary link to the signature (’256 Patent, col. 10:52-57, FIG. 7).
    • Intrinsic Evidence for a Narrower Interpretation: The claims distinguish between the "link" and the "set of icons." A party could argue that this distinction implies the "link" is a singular reference (e.g., a single URL) and not the entire collection of code that renders the icons.

  • The Term: "predetermined event" (’168 Patent, cl. 1)

    • Context and Importance: This term defines the core dynamic functionality claimed in the ’168 Patent. The infringement analysis for this patent will likely hinge on whether the accused system's features meet the definition of this term.
    • Intrinsic Evidence for a Broader Interpretation: The specification provides several examples of events, including time of day, date, location, or reaching a click-count threshold, suggesting the term is meant to encompass a variety of pre-configured triggers (’168 Patent, col. 7:6-21, col. 11:10-25).
    • Intrinsic Evidence for a Narrower Interpretation: The claim requires that the event cause a switch from a "first communication application" to a "second communication application." This specific language may support a narrow reading where the event must trigger a change in the underlying application protocol (e.g., from an http request to a mailto request), not merely a change in the destination URL within the same application.

VI. Other Allegations

  • Indirect Infringement: The complaint does not include separate counts for indirect or contributory infringement. The infringement counts are pleaded generally for "infringement," but the factual allegations that Defendant makes, uses, sells, and offers to sell the infringing services could potentially support such theories as the case develops (Compl. ¶¶28, 33, 38).
  • Willful Infringement: Willfulness is alleged for all three patents (Compl. ¶¶29, 34, 39). The allegation is based on Plaintiff having sent a letter with "actual notice" of the patents-in-suit to Defendant on November 30, 2016, and Defendant’s alleged continuation of infringing activities thereafter (Compl. ¶¶19-20).

VII. Analyst’s Conclusion: Key Questions for the Case

  • A primary issue will be one of evidentiary sufficiency. Given the conclusory nature of the complaint, the case will depend on whether discovery uncovers technical evidence that the accused system’s "button statistics" and dynamic content features operate in the specific manner recited by the detailed claim limitations, such as the "click response manager" and "data store" of the ’943 Patent.
  • A second core issue will be one of claim scope and functional equivalence. The viability of the claim against the ’168 Patent will likely turn on the construction of "predetermined event." The key question for the court will be whether the accused system's features, such as "custom animations," perform the specific claimed function of changing the "communication application," or if there is a fundamental mismatch in technical operation where the accused system merely changes the destination content.