Secure Ink LLC v. Notarize Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Secure Ink LLC (Delaware)
  • Defendant: Notarize, Inc. (Delaware)
  • Plaintiff’s Counsel: Dickinson Wright PLLC
• Case Identification: 1:25-cv-10534, D. Mass., 03/05/2025
• Venue Allegations: Venue is alleged to be proper in the District of Massachusetts because Defendant maintains an established place of business in the district and has allegedly committed acts of patent infringement there.
• Core Dispute: Plaintiff alleges that Defendant’s products and services for electronic document processing infringe a patent related to paperless mortgage closings.
• Technical Context: The technology at issue addresses methods for securely and efficiently managing complex, multi-party electronic document signing workflows, a key function in the digital transformation of financial and real estate transactions.
• Key Procedural History: The patent-in-suit is a continuation of a chain of applications, with the earliest priority date stemming from a 2004 provisional application, indicating a long development and prosecution history for the underlying technology.

Case Timeline

Date	Event
2004-02-10	'920 Patent Priority Date
2013-05-14	'920 Patent Issue Date
2025-03-05	Complaint Filing Date

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

U.S. Patent No. 8,442,920 - “Paperless Mortgage Closings” (issued May 14, 2013)

The Invention Explained

• Problem Addressed: The patent describes the traditional mortgage closing process as "paper intensive and tedious," noting that the need for multiple parties to affix "wet signatures" to numerous documents creates opportunities for errors, signature inconsistencies, document tampering, and counterfeiting ('920 Patent, col. 1:30-34, col. 2:4-17). This system makes it difficult to ensure document authenticity and track ownership when mortgages are bought and sold ('920 Patent, col. 2:19-28).
• The Patented Solution: The invention proposes a comprehensive electronic system to manage and secure the closing process. The system creates a "signing space" where electronic documents are presented to multiple participants (e.g., borrowers, agents) in a specific, predetermined sequence ('920 Patent, col. 11:1-12). It captures electronic signatures, applies them to structured "SMART Docs," maintains a secure audit trail of all actions, and packages the finalized documents into a single, authenticated electronic file ('920 Patent, Abstract; Fig. 1A). This process is designed to ensure document integrity and provide a clear, verifiable record of the transaction.
• Technical Importance: The technology aimed to provide a secure and auditable framework for fully digital transactions at a time when the financial industry was establishing standards for electronic notes and signatures ('920 Patent, col. 1:36-56).

Key Claims at a Glance

• The complaint states it asserts "exemplary claims" but does not identify them in the body of the complaint, instead referring to an unattached exhibit (Compl. ¶11, ¶16). U.S. Patent No. 8,442,920 contains two independent claims, 1 (method) and 20 (system). The elements of independent claim 1 include:
  • receiving, at a document processing system, electronic mortgage closing documents;
  • identifying entities participating in the electronic mortgage closing;
  • connecting the entities to a document signing session;
  • providing the documents to the entities in a predetermined order for signing;
  • detecting the execution of the signing action for each entity;
  • finalizing the documents based on the signing; and
  • recording the location, time, and date associated with the signing session.
• The complaint reserves the right to assert infringement of "one or more claims," which may include dependent claims (Compl. ¶11).

III. The Accused Instrumentality

Product Identification

The complaint does not name a specific accused product, referring generally to "Exemplary Defendant Products" that are purportedly identified in an unattached exhibit (Compl. ¶11).

Functionality and Market Context

The complaint does not provide sufficient detail for analysis of the accused products' functionality. It makes general allegations that Defendant "has been and continues to directly infringe" by "making, using, offering to sell, selling and/or importing" the accused products (Compl. ¶11). It further alleges that Defendant distributes "product literature and website materials" that instruct users, which suggests the accused instrumentality is a publicly available platform or service for electronic document execution (Compl. ¶14).

IV. Analysis of Infringement Allegations

The complaint does not contain claim charts or detailed infringement allegations in its text. Instead, it states that it "incorporates by reference in its allegations herein the claim charts of Exhibit 2," which was not filed with the complaint (Compl. ¶17). The complaint’s narrative theory is that the "Exemplary Defendant Products practice the technology claimed by the '920 Patent" and "satisfy all elements of the Exemplary '920 Patent Claims" (Compl. ¶16). Without the referenced exhibit, it is not possible to analyze the specific mapping of accused product features to claim elements.

No probative visual evidence provided in complaint.

Identified Points of Contention

• Pleading Sufficiency: A primary legal question is whether the complaint, by withholding the factual basis for its infringement allegations in an unattached exhibit, provides the "short and plain statement of the claim showing that the pleader is entitled to relief" required by federal rules. The pleading's sufficiency and its compliance with the standards set by Twombly/Iqbal may become a central issue.
• Technical Questions: As the complaint provides no specific facts linking the accused products to the patent's claims, every claim element presents a potential point of contention. For example: What evidence will Plaintiff offer that the accused products connect entities to a "document signing session" or provide documents in a "predetermined order" as required by claim 1? The complaint itself raises these questions by not answering them.

V. Key Claim Terms for Construction

The Term: "document signing session"

Context and Importance

This term appears central to defining the scope of the claimed process. The dispute may turn on whether a "session" requires the integrated, multi-step, multi-party mortgage closing workflow detailed in the patent, or if it can read on more generalized, discrete electronic signing events. Practitioners may focus on this term because the accused product's functionality (e.g., simple notarization vs. managed closings) will dictate whether it falls within the scope of a "session."

Evidence for a Broader Interpretation

The claim language itself does not heavily restrict the term, requiring only the connection of "entities" to a "session" where signing occurs ('920 Patent, col. 28:13-14).

Evidence for a Narrower Interpretation

The specification consistently frames the invention around a "mortgage closing process" involving a managed sequence of events, multiple roles (borrower, lender, agent), and a "signing space" interface that tracks progress ('920 Patent, col. 4:41-48, col. 11:1-12). The patent's detailed flowcharts (e.g., Fig. 1A) depict a specific, coordinated workflow that could be argued as essential to the meaning of a "session."

The Term: "predetermined order"

Context and Importance

This limitation is key to the method's structure. Infringement will depend on whether the accused system imposes a specific sequence on how documents are presented for signature, or if users have complete control over the signing sequence.

Evidence for a Broader Interpretation

The plain meaning of the term does not specify how the order is determined or how rigid it must be. Any system that presents documents in a non-random, fixed sequence could arguably meet this limitation ('920 Patent, col. 28:16-17).

Evidence for a Narrower Interpretation

The specification describes an administrator actively configuring the signing process, including establishing the "signing order" for documents within a "signing environment" ('920 Patent, col. 4:56-59). This could support a narrower construction requiring an administrative function for setting the document sequence, rather than any arbitrary fixed order.

VI. Other Allegations

• Indirect Infringement: The complaint alleges induced infringement, stating that Defendant "actively, knowingly, and intentionally" encourages infringement by distributing "product literature and website materials" that instruct customers on using the accused products in a manner that infringes the ’920 Patent (Compl. ¶14-15).
• Willful Infringement: The complaint alleges that service of the complaint itself provides "Actual Knowledge of Infringement" (Compl. ¶13). It further alleges that despite this knowledge, Defendant "continues to make, use, test, sell, offer for sale, market, and/or import" the accused products (Compl. ¶14). These allegations form the basis for a claim of post-filing willful infringement. The complaint does not allege pre-suit knowledge.

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

• A threshold procedural question will be one of pleading sufficiency: does the complaint’s strategy of incorporating its core factual allegations by reference to an unattached exhibit meet federal pleading standards, or does it fail to provide the Defendant with adequate notice of the specific infringement theory being advanced?
• Assuming the case proceeds, a central substantive issue will be one of definitional scope: can the term "document signing session," rooted in the patent’s detailed disclosure of a managed mortgage closing, be construed broadly enough to encompass the specific functionalities of the accused Notarize platform?
• The case will also present an evidentiary question of operational correspondence: what evidence will be required to prove that the accused products perform each specific step of the claimed method, such as presenting documents in a "predetermined order" and "recording a location" of the signing entities, functions that are asserted but not factually supported in the complaint.