Case: 19-2240 Document: 37 Page: 1 Filed: 04/10/2020
NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
WHITSERVE LLC,
Plaintiff-Appellant
v.
DONUTS INC., NAME.COM, INC.,
Defendants-Appellees
______________________
2019-2240
______________________
Appeal from the United States District Court for the
District of Delaware in No. 1:18-cv-00193-CFC, United
States District Judge Colm F. Connolly.
--------------------------------------------
WHITSERVE LLC,
Plaintiff-Appellant
v.
ENOM, LLC,
Defendant-Appellee
______________________
2019-2241
______________________
Case: 19-2240 Document: 37 Page: 2 Filed: 04/10/2020
2 WHITSERVE LLC v. DONUTS INC.
Appeal from the United States District Court for the
District of Delaware in No. 1:18-cv-00194-CFC, United
States District Judge Colm F. Connolly.
______________________
Decided: April 10, 2020
______________________
MICHAEL JOSEPH KOSMA, Whitmyer IP Group LLC,
Stamford, CT, for plaintiff-appellant. Also represented by
STEPHEN BALL.
SHARON DAVIS, Rothwell, Figg, Ernst & Manbeck, PC,
Washington, DC, for defendants-appellees. Also repre-
sented by NICOLE DEABRANTES.
______________________
Before PROST, Chief Judge, O’MALLEY and TARANTO,
Circuit Judges.
TARANTO, Circuit Judge.
WhitServe LLC owns U.S. Patent Nos. 5,895,468 and
6,182,078, both of which describe and claim systems and
methods by which providers of professional services, using
the Internet, send reminders to clients and obtain re-
sponses from them. We addressed these patents in
WhitServe LLC v. Computer Packages, Inc., 694 F.3d 10
(Fed. Cir. 2012) (WhitServe I), where we resolved questions
of infringement and anticipation, among other issues. This
case involves an issue not previously presented: the eligi-
bility of the ’468 and ’078 patent claims under 35 U.S.C.
§ 101. The district court held all claims ineligible.
WhitServe LLC v. Donuts Inc., 390 F. Supp. 3d 571, 574–
75 (D. Del. 2019). We affirm.
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WHITSERVE LLC v. DONUTS INC. 3
I
WhitServe’s ’468 and ’078 patents, in relevant part,
share a specification. The patents describe software that
runs on a professional service provider’s computer to help
professionals, e.g., attorneys, perform functions for clients
that “involve a series of deadlines” but cannot be performed
without client authorization or input. ’468 patent, col. 1,
lines 11–16; id., col. 2, lines 39–45. The computer, running
the software, automatically queries a database of client
deadlines and both sends due-date reminders to clients and
obtains client responses over the Internet. Id., col. 1, lines
6–9; id., col. 2, lines 39–45. As a client deadline ap-
proaches, the system sends a notice to the client—via the
Internet—that includes a client response form; the client
provides a response via the form; the system returns the
form to the professional service provider; and either the
system or the professional takes an action based on the cli-
ent’s response. Id., col. 3, lines 17–67; see also id., col. 5,
lines 8–56 (describing an alternative embodiment using a
webpage to collect and route client responses).
In February 2018, WhitServe filed two complaints—
one against Donuts Inc. and Name.com, Inc., and another
against Enom, LLC (together, Donuts)—in the United
States District Court for the District of Delaware, alleging
infringement of selected claims of the two patents. Donuts
moved to dismiss the complaints under Federal Rule of
Civil Procedure 12(b)(6), arguing that all the claims of the
patents are invalid because their subject matter is ineligi-
ble for patenting under § 101. In ruling on the motion to
dismiss, the district court treated claim 1 of the ’468 patent
as representative of the claims at issue in the cases. J.A.
6–7. WhitServe does not now challenge that determina-
tion.
Claim 1 of the ’468 patent recites:
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4 WHITSERVE LLC v. DONUTS INC.
1. A device for automatically delivering profes-
sional 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 re-
sponse form based on the retrieved cli-
ent reminder;
a communication link between said com-
puter 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.
’468 patent, col. 6, line 56, through col. 7, line 8.
The district court concluded that the claims are di-
rected to “the abstract idea of preparing, sending, and re-
ceiving responses to due-date reminders for clients of
professional-service [providers].” WhitServe, 390 F. Supp.
3d at 577. The district court then determined that the
claim elements, either individually or as an ordered
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WHITSERVE LLC v. DONUTS INC. 5
combination, recite “nothing more than generic computer
components employed in a customary manner,” and there-
fore do not transform the abstract idea into patent-eligible
subject matter. Id. at 579–80 (quotation marks omitted).
On that basis, the district court granted Donuts’ motion to
dismiss the complaints with prejudice and entered final
judgments in Donuts’ favor.
WhitServe timely appealed to this court. We have ju-
risdiction under 28 U.S.C. § 1295(a)(1).
II
Subject-matter eligibility under § 101 is a question of
law, resolved based on underlying facts. Aatrix Software,
Inc. v. Green Shades Software, Inc., 882 F.3d 1121, 1125
(Fed. Cir. 2018) (Aatrix I). “Like other legal questions
based on underlying facts, this question may be, and fre-
quently has been, resolved on a Rule 12(b)(6) . . . motion
where the undisputed facts, considered under the stand-
ards required by that Rule, require a holding of ineligibility
under the substantive standards of law.” SAP America,
Inc. v. InvestPic, LLC, 898 F.3d 1161, 1166 (Fed. Cir. 2018);
see ChargePoint, Inc. v. SemaConnect, Inc., 920 F.3d 759,
765 (Fed. Cir. 2019); Aatrix Software, Inc. v. Green Shades
Software, Inc., 890 F.3d 1354, 1356, 1358–59 (Fed. Cir.
2018) (Aatrix II). We review the Rule 12(b)(6) dismissal de
novo. Ancora Techs., Inc. v. HTC America, Inc., 908 F.3d
1343, 1347 (Fed. Cir. 2018); Newark Cab Ass’n v. City of
Newark, 901 F.3d 146, 151 (3d Cir. 2018).
Section 101 defines patent-eligible subject matter as
“any new and useful process, machine, manufacture, or
composition of matter, or any new and useful improvement
thereof.” 35 U.S.C. § 101. But there are several “implicit
exception[s]” to this statutory grant—laws of nature, natu-
ral phenomena, and abstract ideas are not patent-eligible
subject matter. Mayo Collaborative Services v. Prometheus
Labs., Inc., 566 U.S. 66, 70 (2012). The Supreme Court in
Alice Corp. v. CLS Bank International set forth a two-step
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6 WHITSERVE LLC v. DONUTS INC.
analysis to determine whether patent claims fall outside
§ 101. 573 U.S. 208, 217–18 (2014). Under that frame-
work, we ask (1) whether the claim, as a whole, is “directed
to” patent-ineligible subject matter and (2) if so, whether
the elements of the claim, considered individually or as an
ordered combination, “‘transform the nature of the claim’
into a patent-eligible application.” Id. (quoting Mayo, 566
U.S. at 78).
A
Proceeding within the two-step framework of Alice, we
examine the patent’s “‘claimed advance’ to determine
whether the claims are directed to an abstract idea.” Fin-
jan, Inc. v. Blue Coat Systems, Inc., 879 F.3d 1299, 1303
(Fed. Cir. 2018). When the claims involve “software inno-
vations, this inquiry often turns on whether the claims fo-
cus on ‘the specific asserted improvement in computer
capabilities . . . or, instead, on a process that qualifies as
an “abstract idea” for which computers are invoked merely
as a tool.’” Id. (quoting Enfish LLC v. Microsoft Corp., 822
F.3d 1327, 1335–36 (Fed. Cir. 2016)); see also Customedia
Techs., LLC v. Dish Network Corp., 951 F.3d 1359, 1364
(Fed. Cir. 2020) (“[I]t is not enough, however, to merely im-
prove a fundamental practice or abstract process by invok-
ing a computer merely as a tool.”); BSG Tech LLC v.
Buyseasons, Inc., 899 F.3d 1281, 1285–86 (Fed. Cir. 2018);
CoreWireless Licensing S.A.R.L. v. LG Electronics, Inc., 880
F.3d 1356, 1361–62 (Fed. Cir. 2018). Under this frame-
work, we conclude, WhitServe’s claims are directed to an
abstract idea.
Claim 1 of the ’468 patent describes querying a data-
base of client reminders having associated date infor-
mation; sending, via the Internet, reminders to clients with
approaching deadlines; including within those reminders a
form for clients to give approval or further instructions to
the professional regarding the approaching deadline; and
receiving back, via the Internet, a client response. ’468
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WHITSERVE LLC v. DONUTS INC. 7
patent, col. 6, line 56, through col. 7, line 8. The focus is on
the idea of keeping track of deadlines for clients and carry-
ing out two-way communications with clients relevant to
meeting those deadlines, using computers and networks to
do so. The ’468 patent specification confirms this focus,
stating that the objects of the invention are to “improve[]
the speed, efficiency, and reliability of performing services
for clients” and to provide a system that “automatically
prepares reminders and solicits replies for client due
dates.” Id., col. 2, lines 16–22.
The focus of the claims is simply to use computers and
a familiar network as a tool to perform a fundamental eco-
nomic practice involving simple information exchange.
Carrying out fundamental economic practices involving
simple information exchange is an abstract idea. See, e.g.,
BSG, 899 F.3d at 1286; SAP America, 898 F.3d at 1167–68;
Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d
1253, 1261–62 (Fed. Cir. 2016). And use of standard com-
puters and networks to carry out those functions—more
speedily, more efficiently, more reliably—does not make
the claims any less directed to that abstract idea. See Alice,
573 U.S. at 222–25; Customedia, 951 F.3d at 1364; Trading
Techs. Int’l, Inc. v. IBG LLC, 921 F.3d 1084, 1092–93 (Fed.
Cir. 2019); SAP America, 898 F.3d at 1167; Intellectual
Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1314
(Fed. Cir. 2016); Electric Power Grp., LLC v. Alstom S.A.,
830 F.3d 1350, 1353, 1355 (Fed. Cir. 2016); Intellectual
Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363,
1367, 1370 (Fed. Cir. 2015); buySAFE, Inc. v. Google, Inc.,
765 F.3d 1350, 1355 (Fed. Cir. 2014).
Nothing in WhitServe’s claims transforms the abstract
idea that is the focus of its claims into a patent-eligible in-
vention. WhitServe describes the inventive concept as im-
proving docketing systems through the use of databases,
specific types of reminders, and software to generate client
reminders and receive client responses. Appellant’s Br.
30–31. But the specification itself states that “send[ing] a
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8 WHITSERVE LLC v. DONUTS INC.
client a reminder, obtain[ing] authorization or possibly ex-
ecuted documents from the client, and then tak[ing] some
action based on the client’s response” were “oftentimes”
practiced by professionals. ’468 patent, col. 1, lines 12–16.
It adds that these steps were “typically” aided by the use of
a database of client due dates. Id., col. 1, lines 30–35. And
nothing in the claims points to any improvement in off-the-
shelf computers and existing communication networks.
WhitServe’s claims require only generic components—
“a computer,” “a database,” “software executing on said
computer,” and “a communication link between said com-
puter and the Internet”—to perform their routine and con-
ventional functions. Id., col. 6, line 56, through col. 7, line
8. The specification describes the network-connected com-
puter only as a “professional computer” capable of execut-
ing software. E.g., id., col. 3, line 18. The specification
describes communication between the professional and the
client simply as occurring “through an Internet communi-
cation link,” an existing technology whose mechanisms of
operation WhitServe’s patents do not propose to alter. Id.,
col. 4, line 35. The specification likewise makes clear that
docketing systems commonly employed a database and
software that “notifie[d] the professional of each upcoming
deadline a preset time period before the deadline by . . .
networked computer.” Id., col. 1, lines 30–35. These ge-
neric computer and communications components provide
no eligibility-transformative inventive concept. And the
specific ordered combination of these generic components
is likewise insufficient, as it does nothing more than “spell
out what it means to apply [the abstract idea] on a com-
puter.” Capital One, 792 F.3d at 1370 (quotation marks
omitted).
WhitServe argues that the district court failed to con-
sider the perspective of the relevant artisan in making its
patent-ineligibility determination. We disagree. The dis-
trict court noted what the patent itself teaches about the
routine use of docketing systems by professionals and the
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WHITSERVE LLC v. DONUTS INC. 9
conventionality of the various claimed components, includ-
ing the Internet and web pages, at the time of invention.
WhitServe, 390 F. Supp. 3d at 574, 577–79; see ’468 patent,
col. 1, lines 12–16, 29–35; id., col. 5, lines 22–26. The de-
scription of “already-available computers that are not
themselves plausibly asserted to be an advance . . .
amounts to a recitation of what is ‘well-understood, rou-
tine, [and] conventional.’” SAP, 898 F.3d at 1170 (quoting
Mayo, 566 U.S. at 73). In this case, therefore, the district
court did not have to look beyond the specification to make
its patent-eligibility determination.
WhitServe also points to alleged licensing of its patents
as evidence of an inventive concept. We have held, how-
ever, that “[c]ommercial success is not necessarily a proxy
for an improvement in a technology nor does it necessarily
indicate that claims were drawn to patent eligible subject
matter.” Versata Dev. Grp., Inc. v. SAP America, Inc., 793
F.3d 1306, 1335 (Fed. Cir. 2015). After all, ineligible ideas
can be valuable. See Bancorp Servs., L.L.C. v. Sun Life As-
surance Co. of Can. (U.S.), 687 F.3d 1266, 1278–79
(Fed. Cir. 2012). That the market found WhitServe’s prod-
ucts or ideas desirable—and took licenses—does not over-
ride the now-straightforward conclusion that the patents
claim no improvement in computer functionality or other
eligible matter. 1
1 WhitServe argues that our analysis should account
for agency and judicial rulings that upheld its patents
against various challenges. But patent eligibility under
§ 101 was not at issue in any of those earlier rulings. Thus,
none either addressed or decided whether the claims at is-
sue are eligible under the Supreme Court’s Alice frame-
work. Indeed, though the question was not presented to
this court in Whitserve I, Judge Mayer suggested in dissent
that the court should address it sua sponte and find the
claims ineligible. 694 F.3d at 40–42 (Mayer, J., dissenting).
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10 WHITSERVE LLC v. DONUTS INC.
B
WhitServe argues that the district court should not
have resolved this case at the pleading stage. But we have
repeatedly made clear that “patent eligibility can be deter-
mined at the Rule 12(b)(6) stage” if there are no plausible
factual allegations to impede such a resolution. Aatrix I,
882 F.3d at 1125; see, e.g., SAP America, 898 F.3d at 1166.
Factual questions relevant to the § 101 analysis, “[l]ike
other legal questions based on underlying facts,” do not
prevent a judgment on the pleadings when the pleadings
and exhibits attached thereto show that there are no plau-
sible factual disputes. SAP America, 898 F.3d at 1166. In
the § 101 context, “the specification alone” may suffice to
resolve the patent-eligibility inquiry. Aatrix II, 890 F.3d at
1356; see SAP America, 898 F.3d at 1166. That is the case
here, for the reasons we have already explained.
WhitServe next argues that its patent claims do not fall
outside the text of § 101 or come within the statement in
Le Roy v. Tatham that “[a] principle, in the abstract, is a
fundamental truth; an original cause; a motive; these can-
not be patented.” 55 U.S. 156, 175 (1852). But as discussed
above, later Supreme Court decisions and our applications
of those decisions have held that ineligible subject matter
also includes fundamental economic practices involving
simple information exchange implemented on off-the-shelf
computers and networks. Those precedents control.
WhitServe finally argues that its due process rights
were violated when the district court denied its request for
an oral argument on the motion to dismiss. We disagree.
The right to be heard in the context of a motion to dismiss
is satisfied where the plaintiff receives an “opportunity to
present legal arguments either orally, in writing, or both
at the District Court’s discretion.” Dougherty v. Harper’s
Magazine Co., 537 F.2d 758, 761 (3d Cir. 1976). Here,
WhitServe had a full opportunity to oppose Donuts’
12(b)(6) motion in writing. WhitServe has not pointed to
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WHITSERVE LLC v. DONUTS INC. 11
any limitation that prevented it from giving full substan-
tive expression to its argument. The district court acted
well within its discretion in not holding an oral argument
on the motion to dismiss.
III
For the forgoing reasons, we affirm the district court’s
judgment.
AFFIRMED