DCT

1:23-cv-01307

airSlate Inc v. Inkit Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:23-cv-01307, D. Del., 11/16/2023
  • Venue Allegations: Venue is alleged to be proper in the District of Delaware because the Defendant is a Delaware corporation and therefore resides in the judicial district.
  • Core Dispute: Plaintiff alleges that Defendant’s Secure Document Generation platform infringes a patent related to computer-implemented systems for creating and managing automated electronic document workflows.
  • Technical Context: The technology relates to the field of software-as-a-service (SaaS) platforms for document management, which allow users to create, distribute, and automate document-centric business processes.
  • Key Procedural History: The complaint alleges that Plaintiff provided Defendant with constructive notice of the patent-in-suit via a public patent marking website since January 2023, and with actual notice via written correspondence on August 16, 2023.

Case Timeline

Date Event
2018-11-08 ’815 Patent Priority Date
2022-09-20 ’815 Patent Issue Date
2023-01-23 Alleged Constructive Notice of ’815 Patent via Website
2023-08-16 Alleged Actual Notice of ’815 Patent via Letter
2023-11-16 Complaint Filing Date

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

U.S. Patent No. 11,449,815 - "Automated Electronic Document Workflows"

  • Patent Identification: U.S. Patent No. 11,449,815, "Automated Electronic Document Workflows," issued September 20, 2022.

The Invention Explained

  • Problem Addressed: The patent addresses inefficiencies in traditional business document workflows, which are described as ad-hoc processes that often require manual steps like scanning paper documents, emailing them back and forth, and manually copying data into separate systems like CRMs (’815 Patent, col. 1:19-34; Compl. ¶22).
  • The Patented Solution: The invention is a computer-implemented system that allows users to create, manage, and automate end-to-end electronic document workflows. It enables the integration of "bots" or "add-ons" that can automate tasks such as data import/export, document archival, and notifications, allowing for the creation of complex workflows without the need for coding (’815 Patent, Abstract; col. 5:6-22; Compl. ¶23). Figure 72 of the patent illustrates a "Bot Library" where users can select various automated functions to integrate into a workflow (’815 Patent, Fig. 72).
  • Technical Importance: The technology provides a unified, automated system for document workflows, intended to replace fragmented, inefficient, and error-prone manual processes (’815 Patent, col. 1:40-44).

Key Claims at a Glance

  • The complaint asserts independent claims 1 and 18 (Compl. ¶40).
  • Independent Claim 1 is a method claim for creating workflows, the essential elements of which include:
    • Receiving a request to create a workflow, documents for the workflow, and permission information for the workflow.
    • Analyzing the documents to determine fillable fields.
    • Creating and storing the workflow.
    • Creating a "workspace" for an organization, inviting users to it, and assigning them roles.
    • A multi-step process of generating and sending URL links for review and signature to a second user and then a third user based on a pre-set order.
    • Generating notifications upon signature by the second and third users.
    • Archiving the signed documents.
  • Independent Claim 18 is also a method claim with similar steps for creating, managing, and automating a workflow, but focuses on the use of a "bot library" to install bots indicative of "add-on applications."
  • The complaint reserves the right to assert additional claims (Compl., Prayer for Relief ¶A).

III. The Accused Instrumentality

Product Identification

  • Defendant Inkit, Inc.’s "Secure Document Generation platform" (Compl. ¶40).

Functionality and Market Context

  • The complaint alleges that the accused platform provides services "related to creating, editing, storing, and managing electronic document workflows and generating online documents" (Compl. ¶16). The complaint includes a reproduction of Figure 72 from the ’815 Patent, which depicts a "Bot Library," and alleges that the patented technology, including the integration of "bots," is used by Defendant (Compl. ¶17, ¶23). The figure shows a graphical user interface for selecting automated functions like "Pre-fill from Document Bot" or "Email Notification Bot" (Compl. p. 5, Fig. 72).
  • Defendant Inkit is identified as a direct competitor to Plaintiff airSlate in the document and workflow management market (Compl. ¶16). The complaint does not contain screenshots of the accused product itself, instead relying on descriptions and patent figures to articulate its infringement theory.

IV. Analysis of Infringement Allegations

The complaint references a claim chart in Exhibit 2 that was not attached to the filed document; therefore, a prose summary of the infringement theory is provided below.

The complaint alleges that Inkit’s Secure Document Generation platform directly infringes at least claims 1 and 18 of the ’815 Patent (Compl. ¶40). The core of the infringement theory is that the Defendant's platform is a computer-implemented system that allows users to create automated electronic document workflows, thereby practicing the methods claimed in the patent. This allegedly includes receiving user requests to create workflows, analyzing uploaded documents, and managing user permissions (Compl. ¶16). The complaint specifically highlights the patented technology's use of "bots" to automate workflows and alleges that Inkit is "using airSlate's patented technology" (Compl. ¶17, ¶23). The infringement allegations cover making, using, selling, and offering for sale the accused platform in the United States (Compl. ¶40).

  • Identified Points of Contention:
    • Evidentiary Questions: The complaint makes broad allegations about the functionality of Inkit's platform without providing specific technical evidence (e.g., screenshots or technical documents) of the accused product's operation, instead referring to an unprovided exhibit. A central question will be whether discovery produces evidence that the Secure Document Generation platform performs each of the specific, sequential steps required by the asserted method claims, such as the multi-user, ordered-approval notification process of Claim 1.
    • Scope Questions: The complaint emphasizes the role of "bots" in the patented technology (Compl. ¶23), a term that does not appear in independent claim 1. A potential point of contention may be whether the functionality of the accused platform meets the specific limitations of the asserted claims, regardless of whether it is marketed or described using the term "bot."

V. Key Claim Terms for Construction

The complaint does not provide sufficient detail for a definitive analysis of likely claim construction disputes. However, based on the technology and the claim language, practitioners may focus on the following terms.

  • The Term: "workspace" (Claim 1)

  • Context and Importance: This term appears foundational to the claimed method, defining the environment where users, roles, and workflows are managed. Its construction will determine whether any multi-user collaborative environment infringes, or if a more specific structure is required.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The term is not explicitly defined in the patent, which may support an argument for applying its plain and ordinary meaning, potentially covering any shared digital environment for an organization.
    • Evidence for a Narrower Interpretation: The specification describes creating a workspace for an "organization" and inviting users to join via a URL, which could support a narrower construction requiring a formally-defined, organization-centric environment rather than an ad-hoc collaboration space (’815 Patent, col. 2:5-10).

  • The Term: "workflow permission information" (Claim 1)

  • Context and Importance: The definition of this term is critical for determining the level of granularity required for the user access control system. The dispute will likely center on whether simple binary permissions are sufficient to infringe or if a more complex, role-based system is required.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: Claim 1 itself recites that the information indicates users permitted to "fill," "edit," "share," or "distribute" the workflow, which could be read to cover any system that controls these basic functions (’815 Patent, col. 27:60-65).
    • Evidence for a Narrower Interpretation: The specification describes specific user "roles" such as "owners, administrators (or 'admins'), and regular or non-privileged users," each with distinct sets of permissions (’815 Patent, col. 6:37-43, col. 8:5-11). A defendant may argue this context limits the term to a system with such defined roles.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges induced infringement, stating that Inkit provides "information and instructions to its customers" through marketing materials, product guides, and instructional materials that actively encourage use of its platform in an infringing manner (Compl. ¶42). It also pleads contributory infringement, alleging the platform is a material part of the invention and not a staple article of commerce suitable for substantial noninfringing use (Compl. ¶43).
  • Willful Infringement: Willfulness is alleged based on both constructive and actual notice. The complaint claims Inkit had constructive notice of the ’815 Patent since January 23, 2023, via an online patent marking list, and actual notice since August 16, 2023, via written correspondence from airSlate's counsel. The complaint alleges that Inkit's infringement continued despite this knowledge (Compl. ¶34-35, ¶45).

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

  • An Evidentiary Question of Operation: As the complaint’s specific infringement contentions are contained in an unprovided exhibit, a primary issue for the court will be whether discovery reveals evidence that Inkit’s Secure Document Generation platform actually performs the complete, multi-step method recited in the asserted claims. The viability of the case will depend on demonstrating a direct correspondence between the accused platform's functions and each element of the asserted claims.
  • A Definitional Question of Scope: The case may turn on claim construction, specifically the scope of foundational terms like "workspace" and "workflow permission information". A key question will be whether these terms are construed broadly to cover general-purpose collaboration platforms with basic access controls, or narrowly to require the specific, highly-structured, role-based systems detailed in the patent’s embodiments.