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WhitServe LLC v. Donuts Inc.

United States District Court, D. Delaware

July 8, 2019

WHITSERVE LLC, Plaintiff,
v.
DONUTS INC. and NAME.COM, INC., Defendants. WHITSERVE LLC, Plaintiff,
v.
ENOM, LLC, Defendant.

          MEMORANDUM

         In February 2018, plaintiff WhitServe LLC ("WhitServe") brought separate patent infringement actions against Donuts Inc., along with its subsidiary Name.com, Inc., and eNom, LLC (collectively, the "Defendants")- C.A. No. 18-193 at D.I. 1; C.A. No. 18-194 at D.I. 1. WhitServe alleges that Defendants infringe U.S. Patent Nos. 5, 895, 468 ("the #468 patent") and 6, 182, 078 ("the #078 patent") which are titled, respectively, "System Automating Delivery of Professional Services" and "System for Delivering Professional Services Over the Internet." The Court has jurisdiction pursuant to 28 U.S.C. §§ 1331 and 1338(a). Defendants have moved to dismiss the complaints pursuant to Federal Rule of Civil Procedure 12(b)(6) on the grounds that the patents recite patent ineligible subject matter under 35 U.S.C. § 101. C.A. No. 18-193 at D.I. 12; C.A. No. 18-194 at D.I. 10. For the reasons discussed below, I will grant Defendants' motions.

         I. BACKGROUND[1]

         The complaints allege that Defendants infringe claims 1 and 24 of the #468 patent and claims 1, 3, 9, and 11 of the #078 patent. D.I. 1 at ¶¶ 22, 31. Only claims 3 and 11 of the #078 patent are dependent. D.I. 1-2. All the remaining claims are independent. Id.; D.I. 1-1. The #468 and #078 patents share a common written description that was first filed on October 7, 1996. D.I. 1 at ¶ 13.

         As the patents-in-suit explain, attorneys and other professionals have to perform many functions that "involve a series of deadlines" and these functions cannot be completed without client authorization or action. D.I. 1-1 at 1:11-16. Before the invention disclosed in the patents-in-suit, professionals relied on a docketing system, "which typically contains a database of deadlines," that "notifies the professional of each upcoming deadline a preset time period before the deadline by printout, attached terminal, or networked computer." Id. at 1:28-35. A disadvantage of the docketing system, however, was that it provided "aid in only one of the many steps which the professionals must perform." Id. at 1:36-38. Professionals still had to spend "countless hours attempting to contact busy clients by telephone or by writing multiple letters attempting to elicit a response from the client." Id. at 1:21-23, 40-53. The entire process of sending clients a reminder and obtaining a timely response is "often time-intensive, costly, and tedious." Id. at 1:19-20.

         The patents-in-suit purport to solve these problems by disclosing "an automated system for obtaining authorizations from clients prior to deadlines which will improve the speed, efficiency, and reliability of performing professional services for clients." Id. at 2:6-9. The system is comprised of a computer, a database, software, and a communication link with the Internet. Id. at 6:54-7:8. As the patents-in-suit explain, the advantage of a system "in which communications between the professional and the client take place over the Internet" is that "[t]hese technologies greatly decrease the costs and increase the timeliness of communication." Id. at 1:58-2:14.

         Claim 1 of the #468 patent, which may be considered representative of all claims in the #468 patent family, recites:[2]

A device for automatically delivering professional services to a client comprising:
a computer;
a database containing a plurality of client reminders, each of the client reminders comprising a date field having a value attributed thereto;
software executing on said computer for automatically querying said database by the values attributed to each client reminder date field to retrieve a client reminder;
software executing on said computer for automatically generating a client response form from the retrieved client reminder;
a communication link between said computer and the Internet;
software executing on said computer for automatically transmitting the client response form to the client through said communication link; and
software executing on said computer for automatically receiving a reply to the response form from the client through said communication link.

D.I. 1-1 at 6:54-7:8.

         The other independent claims asserted against Defendants are, with a few caveats, essentially identical to claim 1 of the #468. The only meaningful difference between claim 1 of the #468 patent and claim 1 of #078 patent is that claim 1 of the #078 patent does not include the last limitation of claim 1 of the #468 patent regarding "automatically receiving a reply to the response form from the client." D.I. 1-2 at 8:4-22. Claim 24 of the #468 patent and claim 9 of the #078 patent are, in all meaningful respects, the same as claim 1 of the #468 patent, except directed towards a "method" instead of a "device." D.I. 1-1 at 10:8-24; D.I. 1-2 at 9:13-10:9. Finally, dependent claim 3 in the #078 patent narrows the device of claim 1 by limiting the form of the device to a webpage. D.I. 1-2 at 8:24. ...


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