United States District Court, D. Delaware
WhitServe LLC (WhitServe) alleges that Defendant Dropbox,
Inc. (Dropbox) infringes U.S. Patent No. 8, 812, 437
("the #437 patent") titled "Onsite Backup for
Third Party Internet-Based Systems." The Court has
jurisdiction pursuant to 28 U.S.C. §§ 1331 and
1338(a). Dropbox has moved to dismiss the complaint pursuant
to Federal Rule of Civil Procedure 12(b)(6) on the grounds
that the #437 patent recites patent ineligible subject matter
under 35 U.S.C. § 101. D.I. 9. For the reasons discussed
below, I will grant Dropbox's motion.
#437 patent states that "[i]n an effort to improve
customer service, companies are increasingly moving their
data processing systems onto the Internet and providing web
interfaces for their customers to see and manipulate their
own data." D.I. 1-1 at 1:13-16. At the same time,
companies are outsourcing the processing of customers'
data to third parties, which "cuts costs and relieves
companies of having to hire software expertise [and] ...
having to maintain hardware." Id. at 1:21-28.
problem with outsourcing data processing to third parties
that use Internet-based systems is "the safeguarding of
their and their clients' data." Id. at
1:32-34. "Another difficulty companies face in deciding
[whether] to outsource is continuity of service if, for
example, the third party were to go out of business."
Id. at 1:38-40. The #437 patent purports to solve
these problems by disclosing, among other things, "[a]
system for onsite backup for internet-based data processing
systems." Id. at 3:20, 4:13-14. The system is
comprised of a "central computer," "a client
computer," a "communications link" between
each computer and the internet, and a database containing a
plurality of data records. Id. at Abstract.
"Software executing on the central computer receives a
data backup request, and ... transmits the data backup to the
client computer." Id. There are no other
details in the patent regarding how the system works.
are three independent claims in the #437 patent: claims 1,
10, and 19. WhitServe contends that Dropbox has infringed
claims 10 and 19. Claim 10, which has been reformatted for
A system for onsite backup for internet-based data processing
a central computer accessible by at least one client
computer at a client site via the Internet for outsourced
at least one database containing a plurality of data
records accessible by said central computer, the plurality of
data records including internet-based data that is modifiable
over the Internet from the client computer;
data processing software executing on said central
computer for outsourcing data processing to the Internet from
the at least one client computer, said data processing
software modifying the internet-based data in the plurality
of data records according to instructions received from the
at least one client computer, the modifying including
updating and deleting the internet-based data in the
plurality of data records;
a client data request, sent from at least one client
computer via the Internet to said central computer, the
client data request comprising a request for a backup copy of
at least one of the plurality of data records;
software executing on said central computer to
receive, via the Internet from the at least one client
computer, the request for a backup copy of at least
one of the plurality of data records including the
internet-based data in the at least one of the plurality of
data records that has been modified by said data processing
software executing on said central computer to
transmit the backup copy of the at least one of the
plurality of data record including the internet-based data in
the at least one of the plurality of data records that has
been modified by said data processing software to the client
site for storage of the internet-based data from the at least
one of the plurality of data record in a location accessible
via the at least one client computer;
wherein the location is accessible by the at least one client
computer without using the Internet.
Id. at 4:14-50.
is essentially the same as claim 10 except that the
internet-based data processing system is "managed by a
third-party." Id. at 3:20, 3:33. Claim 19
rewrites claim 10 as a pure software claim. The preamble to
claim 19 recites: "[a] non-transient computer readable
medium containing software executed by at least one processor
for causing a central computer to perform the following
steps." Id. at 5:7-9. The software (which is
written to operate on the "central computer")
performs the same steps as the system recited in claim 10.
The dependent claims narrow the independent claims by, for
example, specifying the location of the central computer (a
third-party site or not the client site), or adding a
requirement that the data be reformatted, encrypted, or
susceptible to manipulation using a web interface. See,
e.g., Id. at 3:53-4:13.
STANDARD OF REVIEW
Rule 12(b)(6), a party may move to dismiss a complaint for
"failure to state a claim upon which relief can be
granted." Fed.R.Civ.P. 12(b)(6). To survive the motion
to dismiss, the complaint need not contain "detailed
factual allegations," but it must contain sufficient
factual matter to "state a claim to relief that is
plausible on its face." Ashcroft v. Iqbal, 556
U.S. 662, 678 (2009) (quoting Bell Atl Corp v.
Twombly,550 U.S. 544, 555, 570 (2007)). In assessing
the plausibility of a claim, the court must accept all
well-pleaded factual allegations in the complaint as true and
draw all reasonable inferences in favor of the plaintiff.
In re Rockefeller Ctr. Prop., Inc. Sec. Litig., 311
F.3d 198, 215 (3d Cir. 2002). The Court's review is