June 10, 2020

Prior Judicial Rulings Unrelated to Patent Eligibility Inconsequential to Federal Circuit Section 101 Analysis

Holland & Knight Section 101 Blog
Anthony J. Fuga
Section 101 Blog

WhitServe LLC asserted two patents against Donuts Inc., both of which claimed systems and methods by which providers of professional services, using the internet, could send reminders to clients and obtain responses from them. Both patents describe software that runs a professional service provider's computer to help professionals (e.g., attorneys) perform functions for clients that involve a series of deadlines but where the functions cannot be performed without client authorization or input.

The patents describe a computer running software that queries a database of client deadlines and sends reminders to the clients. As deadlines approach, the system sends notices to the client with a response form, where the client provides a response or approval via the form.

Donuts moved to dismiss the complaint and argued that the patents' claims were invalid because their subject matter was ineligible for patenting under Section 101. The U.S. District Court for the District of Delaware agreed and dismissed the complaint.

The Federal Circuit's Section 101 Analysis

Looking at the representative claim, the U.S. Court of Appeals for the Federal Circuit found the focus of the claim to be on the idea of keeping track of deadlines for clients and carrying out two-way communications with clients relevant to meeting those deadlines. The patents' specifications confirmed this, stating that the objects of the invention are to "improve the speed, efficiency, and reliability of performing services for clients" and to "automatically prepare reminders and solicit replies for client due dates."

The focus here is the simple information exchange between clients and professionals, and the use of standard computers and networks to carry out this exchange "more speedily, more efficiently, more reliably, does not make the claims any less of an abstract idea."

WhitServe argued that the patent claims' inventive concept is "improving docketing systems through the use of databases, specific types of reminders, and software to generate client reminders and receive client responses." But the patent specifications themselves state that sending a reminder, obtaining authorization, and so on were all functions already in practice by professionals; the patent claims merely add the use of off-the-shelf computers and existing communication networks.

WhitServe argued that the district court failed to consider the perspective of the relevant artisan in making its Section 101 determination. The Federal Circuit disagreed and noted that the district court did not even have to look beyond the patents' specifications to make its patent-eligibility determination. And though WhitServe had allegedly had success licensing its patents, commercial 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."

Finally, WhitServe argued that the court's Section 101 analysis should account for earlier agency and judicial rulings that upheld its patents against various previous challenges. But patent eligibility was not at issue in those earlier rulings so it had no influence on the Federal Circuit's Section 101 decision.

The Federal Circuit affirmed the district court's judgment that the asserted patents were invalid as directed to unpatentable subject matter.

* * *

A representative claim recites:

  1. 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 based on 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.

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