District of Delaware Judge Dismisses Patent Infringement Cases With Prejudice Under 35 U.S.C. § 101, Resulting in Complete Victory for Clients Donuts, Inc. and Enom, LLC
District of Delaware Judge Dismisses Patent Infringement Cases With Prejudice Under 35 U.S.C. § 101, Resulting in Complete Victory for Clients Donuts, Inc. and Enom, LLCJuly 8, 2019
On July 8, 2019, District Judge Colm Connolly of the District of Delaware granted Defendants’ motion to dismiss all infringement claims brought by plaintiff Whitserve LLC. Judge Connolly agreed with Defendants that all of the patent claims asserted against Defendants recite patent-ineligible subject matter under 35 U.S.C. § 101. This ruling was a complete victory for RFEM clients Donuts Inc. and Enom, LLC.
Whitserve filed its original complaints in February 2018, asserting infringement of U.S. Patent Nos. 5,895,468 and 6,182,078 (the “Whitserve patents”). Whitserve asserted that Defendants’ use of automatic reminders for clients to renew domain name registrations infringed two of its patents. Applying the Alice analysis to the question of patent eligibility under Section 101, Judge Connolly agreed with Defendants that the asserted claims of the Whitserve patents “are directed to the abstract idea of preparing, sending and receiving responses to due-date reminders for clients of professional-services clients.” Judge Connolly rejected Whitserve’s assertions that its patent claims were directed to an improvement in computer functionality or otherwise were not directed to an abstract idea. Judge Connolly further agreed with Defendants that the asserted claims were not rendered patent eligible under step two of the Alice analysis and rejected Whitserve’s arguments that dismissal of its infringement claims was premature.
The ruling that the Whitserve patents are not patent eligible is particularly significant because Whitserve had successfully asserted these patents in earlier litigations against Computer Packages Inc. (resulting in a multi-million dollar damages award) and GoDaddy.com (resulting in a settlement for an undisclosed amount after GoDaddy’s motion for summary judgment was denied).