The U.S. Court of Appeals for the Federal Circuit (CAFC) recently upheld a district court’s decision that a patent for e-signature technology was not eligible under Section 101. The patent in question, U.S. Patent No. 8,065,527, owned by Esignature Software, LLC, is titled “System and Method for Embedding a Written Signature into a Secure Electronic Document.” Adobe, Inc. had challenged the patent, arguing that the claims were directed to a longstanding business practice and lacked an inventive step.
The district court agreed with Adobe, finding that applying signatures in designated places on documents was a longstanding business practice and that the patent claims simply recited this practice with the use of generic computing technology. The court determined that the claims were abstract under Alice step one and lacked an inventive step under Alice step two.
On appeal, the CAFC affirmed the district court’s decision, dismissing Esignature’s arguments that the claims were not abstract because digitally signing secure electronic documents was not a longstanding business practice. The CAFC clarified that the key issue was applying signatures in designated places on documents, not the digital aspect of the signatures.
Regarding Esignature’s argument that certain dependent claims had inventive aspects, such as facilitating remote signatures and saving embedded signatures in secure electronic documents, the CAFC ruled that these arguments were forfeited since they were not raised before the district court. The court also rejected Esignature’s argument that claim terms should have been construed before determining eligibility under Section 101.
In conclusion, the CAFC’s decision highlights the importance of considering longstanding business practices when evaluating patent eligibility. The ruling serves as a reminder that simply applying existing practices with generic computing technology may not be enough to establish patent eligibility. It also underscores the need for patent applicants to carefully consider the inventive aspects of their claims and to raise all relevant arguments before the district court to avoid forfeiture on appeal.
