DCT
3:22-cv-05962
Esignature Software LLC v. Adobe Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Esignature Software, LLC (Nevada)
- Defendant: Adobe, Inc. (Delaware)
- Plaintiff’s Counsel: Ramey & Schwaller, LLP
- Case Identification: 6:21-cv-01327, W.D. Tex., 12/20/2021
- Venue Allegations: Venue is alleged based on Defendant having a "regular and established place of business" in the district, specifically an office in Austin, Texas, and conducting substantial business within the forum.
- Core Dispute: Plaintiff alleges that Defendant’s Adobe Echosign software infringes a patent related to the system and method for embedding a handwritten signature into a secure electronic document.
- Technical Context: The technology addresses the process of creating, securing, and electronically signing documents in a manner designed to replicate the legal and procedural significance of physically signing paper.
- Key Procedural History: The complaint does not mention any prior litigation, Inter Partes Review (IPR) proceedings, or licensing history related to the patent-in-suit.
Case Timeline
| Date | Event |
|---|---|
| 2007-03-16 | ’527 Patent Priority Date |
| 2011-11-22 | ’527 Patent Issue Date |
| 2021-12-20 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
- Patent Identification: U.S. Patent No. 8,065,527, "SYSTEM AND METHOD FOR EMBEDDING A WRITTEN SIGNATURE INTO A SECURE ELECTRONIC DOCUMENT," issued November 22, 2011.
The Invention Explained
- Problem Addressed: The patent’s background section identifies the difficulty in creating a digital equivalent for a handwritten signature that adequately connects a person's intent and identity to the document, a challenge that had slowed the adoption of electronic processes for legal and business work (U.S. Patent No. 8,065,527, col. 1:22-41).
- The Patented Solution: The invention describes a process where a user first creates or imports content into a "placeholder electronic document." The user then selects signing individuals from a list and places "signature tags" at specific locations within the document. This placeholder is then converted into a "secure electronic document" with "content configured to be uneditable." Finally, a signature capture device is used to capture a user's handwritten signature, which is then embedded into the secure document at the location of the signature tag to "mimic a real world experience of signing paper documents" (’527 Patent, Abstract; col. 2:42-59; Fig. 6).
- Technical Importance: The described approach sought to improve the legal and commercial acceptance of electronic signatures by replicating the familiar visual and procedural aspects of the traditional pen-and-paper signing ceremony (’527 Patent, col. 1:10-16).
Key Claims at a Glance
- The complaint asserts infringement of independent method claim 1 and independent system claim 12.
- Claim 1 (Method): The essential elements include:
- forming a placeholder electronic document containing content
- selecting a signing individual from a signer list
- placing a signature tag associated with the individual into the document
- securing the placeholder document to make its content uneditable
- sizing an unsigned signature bounding box on a capture device, independently of the secure document's display
- capturing a written signature within the bounding box
- Claim 12 (System): The essential elements comprise a system with functionally distinct modules:
- an editing module to edit content in a placeholder document
- a signer list module for a list of individuals
- a tagging module for adding signature tags
- a secure document creation module to make content uneditable
- a secure document signer module to view the document and accept signatures
- a signature capture device to write a signature
- a signature capture module to embed the signature
- The complaint reserves the right to assert infringement of claims 2-26 (Compl. ¶8).
III. The Accused Instrumentality
Product Identification
- Adobe Echosign (Compl. ¶9).
Functionality and Market Context
- The complaint describes Adobe Echosign as a software product and service that provides a method for embedding written signatures into secure electronic documents (Compl. ¶9). The alleged functionality involves a user uploading or selecting a document, which becomes a "placeholder" (Compl. ¶9, p. 3). The user can then place signature tags for designated signers into the document (Compl. ¶9, p. 4). A signer subsequently uses a device like a mouse or stylus to draw their signature in a capture box, which is then embedded in the document (Compl. ¶9, pp. 5-6). A screenshot from the complaint shows a user interface for uploading a document to be signed. (Compl. ¶9, p. 3).
IV. Analysis of Infringement Allegations
U.S. Patent No. 8,065,527 (Claim 1) Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| forming a placeholder electronic document containing content to be attested to by a signature; | Adobe Echosign allegedly forms a placeholder document by requesting the user to select or upload a document. | ¶9 | col. 2:43-46 |
| selecting a signing individual from a signer list; | The accused product allegedly allows selecting a signing individual from a signer list via a drop-down menu. A screenshot shows a user interface for selecting a signer's role. (Compl. ¶9, p. 4). | ¶9 | col. 2:47-48 |
| placing a signature tag into the placeholder electronic document at a selected signature location... | Adobe Echosign allegedly allows placing signature tags into the placeholder document at selected locations. | ¶9 | col. 2:49-54 |
| securing the placeholder electronic document to form the secure electronic document having content configured to be uneditable; | The accused product allegedly secures the placeholder document by default to make the content uneditable. | ¶9 | col. 2:55-58 |
| sizing an unsigned signature bounding box on a signature capture device based on a type of the signature tag at the signature location, wherein the signature bounding box is displayed independently of a display of the secure electronic document; | The system allegedly sizes an unsigned bounding box, displayed independently of the secure document, for signature capture. | ¶9 | col. 10:56-62 |
| and capturing a signature with the signature capture device within the signature bounding box as the signature is written by the signing individual... | The accused product allegedly captures a signature using a mouse or stylus within the bounding box. A provided screenshot shows a signature being drawn in a capture window. (Compl. ¶9, p. 6). | ¶9 | col. 10:63-68 |
U.S. Patent No. 8,065,527 (Claim 12) Infringement Allegations
The complaint maps the alleged functionality of Adobe Echosign to the system modules of claim 12.
| Claim Element (from Independent Claim 12) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| an editing module configured to edit content in a placeholder electronic document... | Adobe Echosign allegedly provides an editing module by allowing editing of content in the placeholder document. | ¶9 | col. 11:47-50 |
| a signer list module comprising a list of selectable signing individuals; | The accused product allegedly provides a signer list module that lists selectable signing individuals. | ¶9 | col. 11:51-52 |
| a tagging module for adding at least one signature tag... | Adobe Echosign is alleged to provide a tagging module for adding signature tags associated with a selected signer to define a signature location. | ¶9 | col. 11:53-59 |
| a secure document creation module for securing the content in the placeholder electronic document to form a secure electronic document... | A secure document creation module is allegedly provided, which secures the placeholder document's content to be uneditable by default. | ¶9 | col. 11:60-64 |
| a signature capture device configured to enable the signing individual to write a signature at a transaction time... | Adobe Echosign allegedly provides a signature capture device enabling an individual to write a signature. | ¶9 | col. 12:1-5 |
Identified Points of Contention
- Scope Questions: A potential point of dispute may be whether Adobe's system, which the complaint illustrates as primarily importing pre-existing documents (Compl. ¶9, p. 3), meets the limitation of an "editing module configured to edit content" (’527 Patent, col. 11:47-48). The court may need to determine if importing and annotating a document is equivalent to the "editing" contemplated by the patent.
- Technical Questions: Claim 1 requires "sizing an unsigned signature bounding box ... independently of a display of the secure electronic document" (’527 Patent, col. 10:59-62). The interpretation of "independently" will be critical. The complaint shows the signature capture box in a separate pop-up window (Compl. ¶9, p. 6), which may support the plaintiff's position. However, a defendant could argue that a pop-up window on the same screen is not truly "independent" in the manner required by the claim, which may be construed to imply a physically separate device like a signature pad.
V. Key Claim Terms for Construction
The Term: "secure electronic document having content configured to be uneditable" (Claim 1)
Context and Importance: This term is central to the invention's purpose of creating a final, tamper-resistant document. The degree of security and "uneditable" nature required by the claim will be a key issue for infringement. Practitioners may focus on this term to determine if a standard secured PDF, which can often be modified with specialized software, meets the claimed standard.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes converting the placeholder to a "secure format to form a secure electronic document," where content "cannot be changed or removed" in the context of the system's normal operation, which may not require absolute cryptographic immutability (’527 Patent, col. 4:56-64).
- Evidence for a Narrower Interpretation: The patent’s background emphasizes thwarting forgery and ensuring authenticity, which could suggest that "uneditable" implies a higher technical barrier to modification than simply locking a file within a standard software application (’527 Patent, col. 1:17-21).
The Term: "modules" (e.g., "editing module," "tagging module") (Claim 12)
Context and Importance: System claim 12 recites a series of distinct "modules." Whether these limitations require structurally distinct software components or can be met by different functionalities within a single, integrated software application is a common question in software patent litigation.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent’s system diagram (Fig. 5) depicts the modules as separate boxes (502, 504, 506, etc.), but this is a high-level functional diagram. The specification does not require them to be implemented as separate code libraries or processes, which could support mapping these claimed modules to functionalities within a larger program.
- Evidence for a Narrower Interpretation: A defendant may argue that the use of distinct module language implies a requirement for identifiably separate and distinct structures within the software's architecture, and that merely labeling features of an integrated program does not meet this structural limitation.
VI. Other Allegations
- Indirect Infringement: The complaint alleges that Adobe induces infringement by actively encouraging and instructing its customers on how to use its products and services in an infringing manner (Compl. ¶10). It also makes a parallel allegation for contributory infringement (Compl. ¶11).
- Willful Infringement: Willfulness is alleged based on Adobe's knowledge of the ’527 Patent "from at least the date of the filing of the lawsuit" (Compl. ¶10). The plaintiff reserves the right to amend this allegation if pre-suit knowledge is discovered.
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of claim scope and equivalence: Can the patent’s claim limitations, which describe distinct functional "modules" for editing, tagging, and securing a document, be read to cover the integrated features of the Adobe Echosign web-based platform?
- The case will likely involve a critical claim construction dispute: The outcome may depend on the definition of "independently," specifically whether a signature capture box in a pop-up window on the same screen as the document is "displayed independently of a display of the secure electronic document" as required by the patent.
- A central evidentiary question will be one of structural correspondence: Does the architecture of the Adobe Echosign software contain structures that correspond to the "editing module," "secure document creation module," and other modules recited in system claim 12, or is the plaintiff mapping these claimed elements to integrated functions in a way that raises questions of structural differentiation?