PTAB invalidates data security patents in DocuSign dispute
Inventor’s patents ruled invalid after extensive quarrel with electronic signature company | Dispute stems from a case where the inventor was previously an expert witness for DocuSign.
The US Patent Trial and Appeal Board (PTAB) has delivered its verdict on the patentability of three data security patents held by inventor Paul Clark, who sued the electronic signature company DocuSign in 2021.
After a series of legal proceedings—including a petition for inter partes review by DocuSign—along with responses, replies, and an oral hearing, the PTAB issued its final written decision on October 25, 2023.
The PTAB determined that all of the challenged claims in the patents were unpatentable. Additionally, the motion to exclude specific evidence filed by DocuSign was denied.
Novelty and non-obviousness
The central issues in this case revolve around the novelty and non-obviousness of the claims concerning prior art references.
The patents in question are US numbers 8,695,066B1; 9,391,957 B2; and 10,129,214 B2.
These relate to the “high assurance security services to network applications” without the need to modify the original interface or back-end data processing of existing applications.
These patents enhance the security of communication between first and second domains through various logical units, as well as to improve data with security services and facilitate data translation between network application protocols while preserving security enhancements.
They are relevant to secure data communication in network environments, particularly in scenarios involving data transmission, translation, and security services between different domains or networks.
Background
The dispute began with a patent infringement case filed against DocuSign by RPost Holdings in Texas in 2012.
Clark served as an expert witness for DocuSign in this case but eventually severed ties due to payment disputes. The case was stayed for various reasons between 2014 and 2018.
During the stay, Clark obtained the three patents in question from the US Patent and Trademark Office (USPTO). After the case was reactivated, Clark was approached by several law firms to work on related cases.
In March 2019, he entered into an agreement with DocuSign to serve as an expert witness. After the original case was settled in August 2019, Clark contacted DocuSign, seeking payment.
In October 2019, he alerted DocuSign to potential patent issues and expressed his refusal to engage in future matters with them.
In July the following year, Clark sued DocuSign over unpaid expert services, and the parties eventually reached a settlement.
Inventor sues
In April 2021, Clark initiated a lawsuit against DocuSign for patent infringement in the District Court for the District of Columbia.
In June of that year, DocuSign initiated another case in the US District Court for the Northern District of California, alleging fraudulent and negligent misrepresentation and concealment.
In response, Clark filed a motion to dismiss, which was granted by the court due to concerns about jurisdiction and the application of the ‘first-to-file’ rule.
In this recent development, DocuSign contested the validity of the patent claims, and the PTAB’s decision has now confirmed that the challenged claims are unpatentable.
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