DCT
3:25-cv-01643
Collaborative Agreements LLC v. DocuSign Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Collaborative Agreements, LLC d/b/a Oui Agree (Texas)
- Defendant: DocuSign, Inc. (Delaware)
- Plaintiff’s Counsel: Dickinson Wright PLLC
- Case Identification: 3:25-cv-01643, N.D. Cal., 05/15/2025
- Venue Allegations: Venue is alleged to be proper in the Northern District of California because Defendant DocuSign, Inc. maintains its principal place of business in the district.
- Core Dispute: Plaintiff alleges that Defendant’s electronic signature and contract management platform infringes two patents related to methods for securely facilitating and managing electronic transactions between multiple parties.
- Technical Context: The patents relate to the field of electronic contract negotiation and execution, a foundational technology for modern digital commerce and business operations.
- Key Procedural History: The complaint details extensive pre-suit history between the parties, beginning in June 2010 with communications from Defendant's founder to one of the named inventors regarding a potential acquisition of a parent patent. This was followed by a formal acquisition offer from Defendant in late 2010, which was declined. The complaint further alleges that Plaintiff provided Defendant with actual notice of infringement of the ’544 Patent during an in-person meeting on April 2, 2013. This history is presented to support the allegation of willful infringement.
Case Timeline
| Date | Event |
|---|---|
| 2002-04-02 | ’544 Patent Priority Date |
| 2002-04-02 | ’356 Patent Priority Date |
| 2010-06-14 | DocuSign founder communicates with inventor regarding parent patent |
| 2010-09-XX | DocuSign makes acquisition offer for patent and pending application |
| 2011-12-13 | U.S. Patent No. 8,078,544 Issues |
| 2013-04-02 | Plaintiff provides DocuSign with notice of infringement of the ’544 Patent |
| 2020-01-28 | U.S. Patent No. 10,546,356 Issues |
| 2025-05-15 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,078,544 - "System And Method For Facilitating Transactions Between Two Or More Parties," issued December 13, 2011
The Invention Explained
- Problem Addressed: The patent’s background section describes the technical problems that arose as contract negotiations moved from physical exchanges to electronic ones, including the difficulty of tracking changes, verifying party identities, preventing undisclosed edits, and managing document versions securely (Compl. ¶12-17; ’544 Patent, col. 1:29-45).
- The Patented Solution: The invention claims a method and system that creates a centralized and secure online environment for multi-party transactions. The system receives registration information from parties to establish identity, assigns a unique "secured account" for the transaction, posts electronic documents to that account for parties to retrieve and modify, tracks all changes made, and upon final acceptance by all parties, automatically locks the document, attaches the electronic signatures, and distributes the final signed version (Compl. ¶18-20; ’544 Patent, col. 2:26-53, Fig. 2).
- Technical Importance: The claimed invention provided a structured, server-controlled framework for electronic negotiations, aiming to add security, traceability, and finality that was lacking in simple email-based document exchanges (Compl. ¶11; ’544 Patent, col. 1:29-45).
Key Claims at a Glance
- The complaint asserts independent claim 1 (Compl. ¶43).
- The essential elements of claim 1 include:
- Receiving registration information (user name, password, electronic signature) at a server from each party.
- Assigning a secured account for the transaction on the server.
- Providing each party with login information for the account.
- Receiving and posting electronic documents to the secured account for retrieval and modification.
- Tracking changes made to the posted documents.
- Upon receiving acceptance from all parties, automatically locking the document against future changes, attaching the electronic signatures, and providing the final signed document to each party.
U.S. Patent No. 10,546,356 - "System And Method For Facilitating Transactions Between Two Or More Parties," issued January 28, 2020
The Invention Explained
- Problem Addressed: The ’356 Patent addresses similar issues of security and control in electronic transactions, focusing specifically on preventing unwanted or undisclosed changes to an agreement by the receiving party (Compl. ¶23-24; ’356 Patent, col. 1:59-col. 2:2).
- The Patented Solution: The invention claims a method where a first party's electronic document is converted into an "executable transaction-specific application or embeddable frame." Within this application, the first party designates portions of the document as read-only, read-only with editable fields, or selectable from pre-set options. A second party interacts with this controlled application to complete the agreement, rather than editing the source document directly. Executing the application creates the final, legally binding agreement (Compl. ¶28-29; ’356 Patent, Abstract, Fig. 13).
- Technical Importance: This approach gives the document originator granular control over the agreement, ensuring that a counterparty can only provide input in designated areas or choose from pre-approved options, thereby protecting the integrity of the original terms (Compl. ¶28; ’356 Patent, col. 2:15-29).
Key Claims at a Glance
- The complaint asserts independent claim 1 (Compl. ¶56).
- The essential elements of claim 1 include:
- Receiving an electronic document at a processing device.
- Identifying and designating each portion of the document as read-only, read-only with editable fields, or a selectable portion.
- Creating a computer program (an "executable transaction-specific application or embeddable frame") by converting the document based on the designated portions.
- Making this executable application available to a second party.
- Executing the application by the second party, which in turn creates the completed, legally binding electronic agreement.
III. The Accused Instrumentality
Product Identification
The accused products are "DocuSign eSignature and the DocuSign IAM applications," which include capabilities for electronic signatures and contract lifecycle management (CLM) (Compl. ¶31).
Functionality and Market Context
The complaint alleges that the Accused Products provide a platform where users can upload documents, prepare them for signature by adding fields for data entry and signatures, and send them to recipients. Recipients then access the documents through a secure online interface to complete and sign them. The platform then generates a final, executed version of the document (Compl. ¶45-51, 58-62). The complaint further alleges that the CLM capability includes functionality for tracking changes and marking up documents (Compl. ¶50).
No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
’544 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| receiving registration information at a server computer... wherein... the registration information comprises a user name for the party, a password for the party and an electronic signature for the party | When parties sign up for DocuSign, information such as login credentials, passwords, and electronic signatures are received and stored on a server. | ¶45 | col. 5:1-7 |
| assigning a secured account for the transaction on the server computer that is accessible via the network | Transaction records and associated documents are stored in a user-specific account within DocuSign's secure cloud system. | ¶46 | col. 5:8-14 |
| providing each party with login information for the secured account | To access a document, a recipient receives login information, such as an access code or a one-time passcode. | ¶47 | col. 5:11-14 |
| posting the received electronic documents to the secured account on the server computer such that the client communications device of each party can retrieve and modify the posted electronic documents | The cloud system makes an uploaded document available for parties to make changes to or sign electronically. | ¶49 | col. 5:24-30 |
| tracking one or more changes to the posted electronic documents made by the client communications devices of the parties | The DocuSign CLM capability allegedly provides a "track changes functionality," and the eSignature product includes a "Field Markup Feature." | ¶50 | col. 5:35-39 |
| whenever an acceptance of all portions of one of the posted electronic documents is received... locking the posted electronic document... attaching the electronic signature... and providing the signed electronic documents | Once all parties have signed, DocuSign allegedly locks the document against future changes (e.g., as a PDF), attaches the signatures, and makes the final document available to the parties. | ¶51 | col. 5:40-49 |
- Identified Points of Contention:
- Scope Questions: Does a recipient's use of a "one-time passcode" (Compl. ¶47) to access a single document meet the limitation of being provided "login information for the secured account," which could be construed to imply a more persistent, user-managed account?
- Technical Questions: Does the accused "Field Markup Feature" (Compl. ¶50) perform the function of "tracking one or more changes to the posted electronic documents" as contemplated by the patent, which describes a multi-party negotiation context? The analysis may turn on whether this feature tracks substantive textual edits or merely annotations and field completions.
’356 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| identifying and designating each portion of the received electronic document as at least one of a read-only portion, a read-only portion containing one or more editable fields, a selectable portion or any combination thereof | Users of the DocuSign platform can edit uploaded documents to designate different portions as read-only or editable, and can add interactive fields for data input or checkboxes. | ¶59 | col. 17:19-24 |
| creating a computer program comprising an executable transaction-specific application or embeddable frame for the transaction by converting the received electronic document | The DocuSign platform allegedly "transforms the uploaded document into an interactive, transaction-specific format that can be accessed and completed online." | ¶60 | col. 17:25-29 |
| making the executable transaction-specific application or embeddable frame available to a second party via download, execution on a website, execution within a browser, or an electronic device | The prepared document is sent to recipients via email or a link, and recipients access and interact with it through their web browsers or a mobile application. | ¶61 | col. 17:39-42 |
| executing the executable transaction-specific application or embeddable frame by the second party, wherein the executable frame creates the completed electronic agreement that is legally binding | The recipient completes the required fields, signs the document, and submits it back through the platform, which creates a legally binding record. | ¶62 | col. 17:43-49 |
- Identified Points of Contention:
- Scope Questions: A central dispute may be whether rendering a document with interactive fields in a web browser constitutes "creating a computer program comprising an executable transaction-specific application or embeddable frame." The definition of this term will be critical.
- Technical Questions: What is the technical nature of the alleged "transforms" (Compl. ¶60) or "converting" process required by the claim? A key question will be whether the accused system fundamentally converts the file structure of the document into an application, or whether it merely overlays an interactive user interface on top of a static document image, and whether that distinction matters for infringement.
V. Key Claim Terms for Construction
The Term: "executable transaction-specific application or embeddable frame" (’356 Patent, Claim 1)
- Context and Importance: This term is the central inventive concept of the ’356 Patent. The complaint alleges that DocuSign’s interactive online document format infringes. The outcome of the case may depend heavily on whether DocuSign's technology falls within the court's construction of this term.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification states the application can be made available via "execution on a website, execution within a browser, or an electronic device" (’356 Patent, col. 2:39-42), which may support a broad construction covering modern interactive web technologies.
- Evidence for a Narrower Interpretation: The claim requires "creating" this application by "converting the received electronic document into" it. This language could support a narrower construction requiring a specific technical transformation of the document's underlying data structure, rather than simply presenting a document image with an interactive layer.
The Term: "tracking one or more changes" (’544 Patent, Claim 1)
- Context and Importance: The complaint alleges this is met by DocuSign's CLM "track changes" and eSignature "Field Markup" features (Compl. ¶50). The viability of this infringement theory depends on whether those features perform the claimed "tracking" function.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language is broad and not explicitly limited to any particular type of change. The specification describes tracking in general terms during a "negotiation process" (’544 Patent, col. 5:35-39).
- Evidence for a Narrower Interpretation: The patent’s background focuses on the problem of parties making undisclosed edits to the substance of an agreement during back-and-forth negotiations (’544 Patent, col. 1:29-45). This context may support a narrower construction limited to tracking substantive textual revisions, as opposed to merely logging the completion of pre-set data fields.
VI. Other Allegations
Indirect Infringement
The complaint's counts focus on direct infringement by Defendant and its users (Compl. ¶42, 57). While not framed as separate counts for indirect infringement, the facts alleged to support willfulness, such as Defendant's knowledge of the patents and operation of its platform for use by customers, could potentially be used to support claims for induced infringement.
Willful Infringement
The complaint alleges a detailed factual basis for willfulness based on pre-suit knowledge. It alleges that Defendant was aware of the inventors' patent portfolio as early as June 2010, made an unsuccessful offer to acquire it, and received explicit notice of infringement of the ’544 Patent from Plaintiff on April 2, 2013, years before the suit was filed (Compl. ¶32-37). The complaint also alleges Defendant has cited the patents as prior art in its own patent applications (Compl. ¶39).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can the term "executable transaction-specific application," as used in the ’356 Patent, be construed to cover the presentation of a document with interactive form fields within a standard web browser, or does it require a more fundamental "conversion" of the document file itself?
- A second key question will be one of functional operation: for the ’544 Patent, do the accused "track changes" and "markup" features in Defendant's platform perform the same function of tracking substantive edits during a negotiation as contemplated by the patent, or do they perform a different function of merely annotating a document or logging the completion of signature fields?
- A third central issue relates to willfulness: given the extensive allegations of Defendant’s pre-suit knowledge of the patents, including an acquisition offer and explicit notice of infringement, the court will have to examine whether Defendant's continued conduct, if found to be infringing, was objectively reckless.