November 19, 2020

U.S. Supreme Court Declines to Hear Another Section 101 Case

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

Those waiting for the U.S. Supreme Court to weigh in on Section 101 were, once again, disappointed this week. On Nov. 16, 2020, in the case of WhitServe LLC v. Donuts Inc. et al., case no. 20-325 (U.S. Supreme Court), the Supreme Court declined to review the Federal Circuit's ruling that two of WhitServe LLC's patents were directed to ineligible subject matter under Section 101. The Federal Circuit found that the patents were directed to methods of automatically delivering professional services by querying a database containing client reminders and generating a client response form.

WhitServe argued to the Supreme Court that early decisions on patent eligibility have been granted at "unprecedented levels," often without the courts appropriately weighing a patent owner's factual allegations. WhitServe sought to "end the federal bench's practice of unduly stripping inventors' property rights by ignoring" the inventors' factual allegations.

The respondents argued that WhitServe does not claim that the resolution of Section 101 patent eligibility is improper at the pleading stage but rather that a court errs in a Rule 12 analysis "when it relies on its own mind and factual beliefs [and] makes a determination of patent eligibility over a patentee's factual assertions to the contrary." This argument, according to the respondents, directly contradicts the Supreme Court's decision in Iqbal, which requires a district court to take each of the patentee's factual allegations concerning patent eligibility as true, but it "does not require the court to then rely on those factual allegations, especially where there is evidence rebutting such allegations."

In the end, the Supreme Court denied another writ for certiorari.

* * *

A representative claim recites:

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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