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This case was last updated from PACER on 06/11/2021 at 14:12:06 (UTC).

CLARK v. DOCUSIGN, INC.

Case Summary

On April 12, 2021, Dr. Paul C. Clark, (“Dr. Clark” or “Plaintiff”), represented by Frederick N. Samuels of Cahn & Samuels LLP, filed an intellectual property lawsuit against DocuSign Corporation (“DocuSign” or “Defendant”), seeking compensatory  and treble damages among other reliefs for alleged infringement of various patents owned by Plaintiff relating to email security. This case was filed in the U.S. District Court for the District of Columbia with Judge Dabney L. Friedrich presiding. 

 

Dr. Clark alleged that “Dr. Clark is the sole inventor of the subject matter of the ‘066 & “957 Patent and the owner of the entire right, title and interest possesses all rights of recovery under the Patents including the right to recover damages for past infringement. And that “United States Patent No. 8,695,066 (the “’066 Patent”) is titled “System and Method for Secure Communication Between Domains” and United States Patent No. 9,391,957 (the “’957 Patent”) and United States Patent No. 10,129,214 (the “’214 Patent”) is titled System and Method for Secure Communication Between Domains.”

 

In the complaint, Dr. Clark has alleged that “DocuSign has been and is now making, using, selling, and/or offering for sale within the United States systems or methods for electronic signature and e-contracting that infringe claim of the Patents, literally and/or under the doctrine of equivalents.” The Claims of the respective patents recite “a method for secure communication between first and second domains comprising: in a first logical unit: periodically calculating timestamps and hashes[.]” (Ex. C, 14:10-13.) Upon information and belief, DocuSign’s electronic signature product and service offers digital signatures with PKI.”

 

Dr. Clark has alleged that the claims further recite “translating the received data from a first network application-level protocol to a target network application-level protocol while preserving said data security enhancements...” (Ex. C 14:20-23) Upon information and belief, DocuSign’s electronic signature product submits documents to be signed using a web protocol interface and delivers such documents using an email protocol interface. Despite being informed by Dr. Clark of its need to take a license, DocuSign continues to use systems or methods for electronic signature and e-contracting that infringe the Patent.”

 

Dr. Clark also alleged that “Despite being informed by Dr. Clark of its need to take a license, DocuSign continues to use systems or methods for electronic signature and e-contracting that

infringe the ‘066 Patent,” and “DocuSign knew or should have known that its systems or methods for electronic signature and e-contracting infringe the ‘066 Patent.”

 

There are three counts for relief laid down by Dr. Clark. The first count is for the alleged infringement of U.S. Patent No. 8,695,066. The second count is for the alleged infringement of U.S. Patent No. 9,391,957. The third count is for the alleged infringement of U.S. Patent No. 10,129,214. 

 

In the prayer for relief, Dr. Clark has requested the Court to adjudge that DocuSign has directly infringed the claim of the ‘066 Patent; ‘957 Patent; and ‘214 Patent. Further, Dr. Clark has requested Court enter an award to Dr. Clark of such damages against DocuSign that are adequate to compensate Dr. Clark for said willful infringement as permitted under the Patent Act; award to Dr. Clark of up to three times the amount of compensatory damages The Court may additionally award; prejudgment and post-judgment interest; and costs of litigation.

 

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Case Details Parties Documents Dockets

 

Case Details

  • Case Number:

    1:21-CV-01007

  • Filing Date:

    04/12/2021

  • Case Status:

    Pending - Other Pending

  • Case Type:

    Intellectual Property - Patent

  • Court:

    U.S. District Courts

  • Courthouse:

    District Of Columbia District

Judge Details

Presiding Judge

Dabney L. Friedrich

 

Party Details

Plaintiff

PAUL C. CLARK

Defendant

DOCUSIGN, INC.

Attorney/Law Firm Details

Plaintiff Attorney

Frederick N. Samuels

Attorney at CAHN & SAMUELS, LLP

1100 17Th St., Nw, 1100 17Th Street, Nw, Suite 401

Washington, DC 20036

Defendant Attorney

Sapna S. Mehta

Attorney at FENWICK & WEST LLP

555 California Street, 12Th Floor

San Francisco, CA 94104

 

Court Documents

#4

(#4) REPORT on the filing or determination of an action regarding a patent and/or trademark. (znmw) (Entered: 04/19/2021)

#3

(#3) STANDARD ORDER for Civil Cases. See text for details. Signed by Judge Dabney L. Friedrich on April 15, 2021. (lcdlf2) (Entered: 04/15/2021)

1 #6

Summons

1 #5

Civil Cover Sheet

1 #4

Exhibit D

1 #3

Exhibit C

1 #2

Exhibit B

1 #1

Exhibit A

#1

(#1) COMPLAINT against DOCUSIGN, INC. with Jury Demand ( Filing fee $ 402 receipt number ADCDC-8366772) filed by PAUL C. CLARK. (Attachments: #1 Exhibit A, #2 Exhibit B, #3 Exhibit C, #4 Exhibit D, #5 Civil Cover Sheet, #6 Summons)(Samuels, Frederick) (Entered: 04/12/2021)

 

Docket Entries

  • 06/08/2021
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  • Docket(#8) MOTION for Venue Based Discovery by PAUL C. CLARK. (Attachments: #1 Text of Proposed Order)(Samuels, Frederick) Modified event on 6/10/2021 (znmw). (Entered: 06/08/2021)

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  • 06/08/2021
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  • Docket(#7) Memorandum in opposition to re #6 MOTION to Dismiss for Improper Venue filed by PAUL C. CLARK. (Attachments: #1 Declaration, #2 Exhibit 1, #3 Exhibit 2, #4 Exhibit 3, #5 Exhibit 4, #6 Exhibit 5, #7 Exhibit 6, #8 Exhibit 7, #9 Text of Proposed Order)(Samuels, Frederick) (Entered: 06/08/2021)

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  • 05/25/2021
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  • Docket(#6) MOTION to Dismiss for Improper Venue by DOCUSIGN, INC.. (Attachments: #1 Memorandum in Support of Defendant DocuSign, Inc.'s Motion to Dismiss for Improper Venue, #2 Declaration of Nancy Lynn Lewis, #3 Declaration of Sapna S. Mehta in Support of Defendant DocuSign, Inc.'s Motion to Dismiss for Improper Venue, #4 Exhibit 1, #5 Exhibit 2, #6 Exhibit 3, #7 Exhibit 4, #8 Exhibit 5, #9 Exhibit 6, #10 Exhibit 7, #11 Text of Proposed Order)(Mehta, Sapna) (Entered: 05/25/2021)

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  • 05/11/2021
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  • Docket(#5) AMENDED COMPLAINT against All Defendants with Jury Demand filed by PAUL C. CLARK. (Attachments: #1 Exhibit A, #2 Exhibit B, #3 Exhibit C, #4 Exhibit D, #5 Appendix redline comparison, #6 Certificate of Service)(Samuels, Frederick) (Entered: 05/11/2021)

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  • 04/19/2021
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  • Docket(#4) REPORT on the filing or determination of an action regarding a patent and/or trademark. (znmw) (Entered: 04/19/2021)

    Read MoreRead Less
  • 04/15/2021
  • View Court Documents
  • Docket(#3) STANDARD ORDER for Civil Cases. See text for details. Signed by Judge Dabney L. Friedrich on April 15, 2021. (lcdlf2) (Entered: 04/15/2021)

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  • 04/13/2021
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  • Docket(#2) SUMMONS (1) Issued Electronically as to DOCUSIGN, INC.. (Attachment: #1 Notice and Consent)(znmg) (Entered: 04/13/2021)

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  • 04/13/2021
  • DocketCase Assigned to Judge Dabney L. Friedrich. (znmg) (Entered: 04/13/2021)

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  • 04/12/2021
  • View Court Documents
  • Docket(#1) COMPLAINT against DOCUSIGN, INC. with Jury Demand ( Filing fee $ 402 receipt number ADCDC-8366772) filed by PAUL C. CLARK. (Attachments: #1 Exhibit A, #2 Exhibit B, #3 Exhibit C, #4 Exhibit D, #5 Civil Cover Sheet, #6 Summons)(Samuels, Frederick) (Entered: 04/12/2021)

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