Court Denies, for Now, DocuSign's Motion for Judgment on the Pleadings and Grants Mistwood Leave to Amend.

The motion and the order

Mistwood Partnership v. DocuSign, Inc., No. 1:26-cv-00187-WCB (D. Del.), is a patent infringement action. On November 9, 2026, William C. Bryson, United States Circuit Judge, signed a 26-page memorandum opinion and order, D.I. 60. The docket text for that entry states that the order was signed by Judge William C. Bryson on November 9, 2026. DocuSign moved for judgment on the pleadings under Federal Rule of Civil Procedure 12(c), D.I. 31 and 32, arguing that the claims Mistwood asserts are invalid under 35 U.S.C. 101. Mistwood responded at D.I. 34, and DocuSign replied at D.I. 38. DocuSign also moved to stay all deadlines pending that motion, D.I. 43 and 44. The court held a hearing on the Rule 12(c) motion on October 19, 2026, D.I. 54.

The order's conclusion states: "The court denies, for now, the defendant's motion for judgment on the pleadings on the ground that the asserted claims are all patent-ineligible under 35 U.S.C. § 101. The plaintiff will be granted leave to file an amended complaint responding to the section 101 defense. The motion for a stay is denied." The opening of the opinion states that the motion for judgment on the pleadings is denied and that the motion to stay is denied as moot.

The three patents

The opinion states that Mistwood's complaint asserts claims from three patents it owns: U.S. Patent Nos. 8,924,495 (the '495 patent), 8,799,385 (the '385 patent), and 8,799,386 (the '386 patent). It states that the three patents have materially the same specification and are generally directed to controlling access to email and sending confirmation to the email originator of the receipt of the email by the recipient.

U.S. Patent 8,924,495 B2 is titled "Delivery Control for HTTP Communications Among Multiple End User Communication Devices" and issued December 30, 2014. U.S. Patent 8,799,385 B2 and U.S. Patent 8,799,386 B2 are each titled "Delivery Control for Email Communicated Among Multiple End User Communication Devices" and each issued August 5, 2014. Each patent lists Loment, Inc., of Naperville, Illinois, as assignee. The '495 patent states that it is a continuation-in-part of application No. 13/526,688, filed June 19, 2012, now the '386 patent.

The opinion states that the parties clarified at the hearing that the asserted claims are claims 1, 6, and 11 of the '495 patent, claims 1, 7, and 13 of the '385 patent, and claims 1, 6, 9, and 11 of the '386 patent.

Claim 1 of the '386 patent

The opinion quotes claim 1 of the '386 patent. It is a method implemented by a first end-user communication device for processing the receipt of an email. The method comprises receiving the email, which comprises a digital packet having a header and a user data segment. The user data segment contains a user message and an acknowledgement command that conveys a request from an originating device to acknowledge receipt of the email. The method prevents display, on a screen of the device, of the content of the received user message until input is entered authorizing a reply to the acknowledgement request. Upon that input, the device automatically generates and transmits a reply email with an acknowledgement to the originating device. The method enables display of the content of the corresponding received user message and stores a read message indicator having a value that represents that the reply email was authorized and the content of the received email enabled to be displayed. The claim states that the email is transmitted from the originating device by using either simple mail transfer protocol or hypertext transfer protocol.

The opinion summarizes the steps of claim 1 as receiving an email with an acknowledgement request, restricting access to the email's content, sending an acknowledgement, enabling display of the content, and creating a record of the acknowledgement.

A representative claim, with claim 9 set aside

The opinion concludes that, for purposes of the present analysis, claim 1 of the '386 patent is representative of the other asserted claims of the '495, '385, and '386 patents, except claim 9 of the '386 patent. It states that Mistwood did not present an argument as to claim 9, and that the court will withhold consideration of the representativeness argument as to claim 9 unless and until Mistwood properly presents it. The opinion ties that withholding to the leave to amend.

Step one

The opinion quotes 35 U.S.C. 101 and describes the Alice framework it applies. It describes step one as determining whether the claim is directed to an abstract idea, and step two as determining whether the claim contains an inventive concept. On step one, the opinion states: "It is clear that the principal concept of claim 1 is directed to the abstract idea of providing restricted access to an email message. What is not clear on this record is whether there is enough specificity offered by the 'user data segment' to save the claim from abstraction." The opinion states that it does not decide that question, because it finds that a "material issue of fact remains to be resolved" at step two.

Step two and leave to amend

On step two, the opinion states that Mistwood's complaint does not contain any allegations expressly addressed to the "inventive concept" requirement of step two. After the hearing, the court asked the parties for submissions on whether the complaint adequately alleged an inventive concept, including whether placing the acknowledgement command in the user data segment of the transmitted packet, instead of in the header, was sufficient to avoid judgment at the pleading stage. The opinion states that there is no basis for requiring the plaintiff to anticipate an affirmative defense in the complaint, and that dismissing the complaint because it does not rebut the section 101 defense would be contrary to that rule and contrary to Federal Circuit practice of allowing an amended complaint in response to a section 101 defense as long as the amendment would not be futile.

The opinion states: "It may be that it will ultimately be determined, as Docusign contends, that the asserted claims do not survive analysis under Alice, but that determination cannot be made at this juncture based on Mistwood's failure to plead compliance with section 101 in its complaint, even in light of the limited briefing ordered by the court after the oral argument on Docusign's motion for judgment on the pleadings." The opinion grants Mistwood leave to file an amended complaint addressing the section 101 defense, and states that the amended complaint will be due within 10 days of the filing of the order.

The motion to stay

The opinion states that the motion to stay is moot in light of the section 101 analysis. It also states, more generally, that issuing a stay of proceedings pending disposition of a motion under Rule 12(b)(6) or Rule 12(c) "will rarely be justified," because the risk of inviting a stay with every pending dispositive motion outweighs early litigation costs.

What comes next

Mistwood's amended complaint is due within 10 days of the filing of the November 9, 2026 order. The case can end at any time, including by settlement or voluntary dismissal.