DCT
1:18-cv-00193
WhitServe LLC v. Donuts Inc
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: WhitServe LLC (Connecticut)
- Defendant: Donuts Inc. (Delaware) and Name.com, Inc. (Nevada)
- Plaintiff’s Counsel: Stamoulis & Weinblatt LLC
- Case Identification: 1:18-cv-00193, D. Del., 02/01/2018
- Venue Allegations: Venue is alleged to be proper in Delaware because Defendant Donuts Inc. is a Delaware corporation and Defendant Name.com, Inc. allegedly transacts business and committed acts of infringement in the state.
- Core Dispute: Plaintiff alleges that Defendants' systems for managing domain name registrations and sending automated expiration notices infringe patents related to the automated delivery of professional services over the Internet.
- Technical Context: The technology involves using computer systems to automatically monitor date-based deadlines, generate and transmit reminder notices to clients, and process client responses, primarily in the context of professional services like intellectual property or domain name management.
- Key Procedural History: The complaint notes that the patents-in-suit have been licensed to over twenty companies and have survived validity and infringement challenges in prior litigation against other parties, including a jury verdict of validity and willful infringement that was affirmed on liability by the Federal Circuit. The complaint also cites specific claim construction rulings and other favorable orders from a separate case against a competitor, GoDaddy.com.
Case Timeline
| Date | Event |
|---|---|
| 1996-10-07 | Earliest Priority Date for '468 and '078 Patents |
| 1999-04-20 | U.S. Patent 5,895,468 Issues |
| 2001-01-30 | U.S. Patent 6,182,078 Issues |
| 2006-01-01 | Plaintiff begins licensing patents-in-suit |
| 2006-01-01 | Plaintiff initiates litigation against Computer Packages, Inc. |
| 2011-01-01 | Plaintiff initiates litigation against GoDaddy.com, Inc. |
| 2012-01-01 | Plaintiff allegedly first provides notice of infringement to Defendant Name.com |
| 2014-01-01 | Litigation against Computer Packages, Inc. concludes |
| 2015-01-01 | Plaintiff allegedly provides second notice of infringement to Defendant Name.com |
| 2015-07-01 | Litigation against GoDaddy.com, Inc. concludes |
| 2018-02-01 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 5,895,468 - "System Automating Delivery of Professional Services," issued April 20, 1999
The Invention Explained
- Problem Addressed: The patent describes the process for professionals like attorneys to manage client deadlines as "time-intensive, costly, and tedious" ('468 Patent, col. 1:20-22). Traditional docketing systems required professionals to manually track dates, contact clients, await responses, take action, and update records, creating inefficiencies and risk. ('468 Patent, col. 1:36-54).
- The Patented Solution: The invention proposes a computerized system to automate this workflow. As illustrated in FIG. 1, the system uses a professional's computer to query a database of deadlines, automatically generate a "response form" for the client, transmit that form over the Internet, and receive and process the client's electronic reply. ('468 Patent, Abstract; col. 2:35-50).
- Technical Importance: The invention applied then-emerging Internet communication technologies to automate and streamline established business processes for professional services, aiming to reduce costs and improve timeliness. ('468 Patent, col. 1:56-62).
Key Claims at a Glance
- The complaint asserts independent claims 1 (a device) and 24 (a method). (Compl. ¶22).
- Independent Claim 1 recites a device comprising:
- a computer
- a database with client reminders, each having a date field
- software to automatically query the database by the date field to retrieve a reminder
- software to automatically generate a client response form based on the reminder
- a communication link between the computer and the Internet
- software to automatically transmit the response form to the client via the link
- software to automatically receive a reply to the response form from the client via the link
- Independent Claim 24 recites a method with steps that largely mirror the functions of the device elements in Claim 1.
U.S. Patent No. 6,182,078 - "System for Delivering Professional Services Over the Internet," issued January 30, 2001
The Invention Explained
- Problem Addressed: As a continuation of the '468 Patent application, the '078 Patent addresses the same inefficiencies in manual, deadline-driven professional service workflows. ('078 Patent, col. 1:13-35).
- The Patented Solution: The '078 patent describes a similar automated system but focuses more specifically on the generation and transmission of a "form" to the client over the Internet, which can be an email or a web page. ('078 Patent, Abstract; col. 8:14-20). Unlike the asserted independent claim of the '468 Patent, the asserted independent claims of the '078 Patent do not explicitly require the system to receive a reply from the client.
- Technical Importance: The invention further specified how web-based technologies could be integrated into the automated service delivery system, contemplating client interaction through both email and dedicated web pages. ('078 Patent, col. 5:21-26).
Key Claims at a Glance
- The complaint asserts independent claims 1 (a device) and 9 (a method), as well as dependent claims 3 and 11. (Compl. ¶31).
- Independent Claim 1 recites a device for delivering professional services comprising:
- a computer
- a database with client reminders having a date field
- software to automatically query the database by date to retrieve a reminder
- software to automatically generate a form based on the reminder
- a communication link to the Internet
- software to automatically transmit the form via the link
- Independent Claim 9 recites a method with steps that parallel the functions of the device elements in Claim 1.
III. The Accused Instrumentality
- Product Identification: The accused instrumentality is the computer system and associated processes that operate the "name.com" website for domain name registration services. (Compl. ¶21).
- Functionality and Market Context: The complaint alleges the accused system uses a network of computers, including database servers and web servers, to manage customer accounts and domain name registrations. (Compl. ¶24). The system is alleged to store records for each client's services, including the expiration dates for domain names. (Compl. ¶25). It is further alleged to automatically query its databases based on these expiration dates to identify upcoming renewal deadlines, generate and send reminder notices to clients (both as emails and by making web pages available), and receive and process renewal instructions from clients through its website. (Compl. ¶¶26-27, 30).
IV. Analysis of Infringement Allegations
No probative visual evidence provided in complaint.
'468 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a computer; | The Name.com system includes one or more networked computers, such as database servers and web servers. | ¶24 | col. 2:37 |
| a database containing a plurality of client reminders, each of the client reminders comprising a date field having a value attributed thereto; | Name.com's system has databases with millions of records that map client identification to domain registrations and their expiration dates, which are stored in date fields. | ¶25 | col. 2:38-39 |
| 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; | The system is programmed to automatically run searches of its databases by expiration date to identify and retrieve records of domain registrations that will be expiring. | ¶26 | col. 3:12-14 |
| software executing on said computer for automatically generating a client response form based on the retrieved client reminder; | Name.com servers automatically generate client response forms, such as web pages that display a client's expiring domain-name registrations. | ¶27 | col. 3:31-32 |
| a communication link between said computer and the Internet; | The system communicates with clients' devices using the Internet. | ¶28 | col. 3:18 |
| software executing on said computer for automatically transmitting the client response form to the client through said communication link; | The system transmits the client response forms (web pages) to clients' devices over the Internet without human intervention. | ¶29 | col. 3:32-34 |
| software executing on said computer for automatically receiving a reply to the response form from the client through said communication link. | Name.com web servers automatically receive and process renewal instructions from the client, which are sent from the client response forms. | ¶30 | col. 4:45-47 |
'078 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a computer; | The Name.com system includes networked computers, such as database servers and web servers. | ¶33 | col. 3:40 |
| a database containing a plurality of client reminders, each of the client reminders comprising a date field having a value attributed thereto; | The system's databases contain records of client services and expiration dates, which function as client reminders with date fields. | ¶34 | col. 3:40-41 |
| 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; | The system's software automatically queries the database by expiration date to retrieve records of expiring services. | ¶35 | col. 4:1-2 |
| software executing on said computer for automatically generating a form based on the retrieved client reminder; | The system's servers automatically generate forms as web pages that display the expiring domain-name registrations. | ¶36 | col. 4:51-53 |
| a communication link between said computer and the Internet; | The system communicates with client devices over the Internet. | ¶37 | col. 4:55-56 |
| software executing on said computer for automatically transmitting the form through said communication link. | The system automatically transmits the generated forms to clients' devices over the Internet without human intervention. | ¶38 | col. 4:53-56 |
- Identified Points of Contention:
- Scope Questions: A central question may be whether the term "client reminder," described in the patent in the general context of "professional services," can be construed to read on a domain name expiration record within a commercial registrar's database. The complaint preemptively addresses this by citing a prior court's interpretation that a "client reminder" is "a record containing information mapping an upcoming service for a client." (Compl. ¶25).
- Technical Questions: For the '468 Patent, a factual dispute could arise over whether the accused system's function for receiving "renewal instructions" (Compl. ¶30) constitutes "automatically receiving a reply to the response form" as required by the claim, or if there is a technical or operational distinction. The precise degree to which the system functions "automatically" without human intervention, as defined in a prior court ruling cited by the plaintiff (Compl. ¶26), may also be a point of factual dispute.
V. Key Claim Terms for Construction
The Term: "client reminder"
- Context and Importance: The definition of this term is critical to determining whether the patents' scope covers the accused system. The dispute will center on whether a database record of a domain name and its expiration date qualifies as a "client reminder." Practitioners may focus on this term because the patents' viability against a domain registrar hinges on this definition.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The complaint cites a prior court interpretation defining the term as "a record containing information mapping an upcoming service for a client," which would likely encompass the accused functionality. (Compl. ¶25). The specification refers generally to "information pertinent to the upcoming professional service to be rendered." ('468 Patent, col. 3:23-24).
- Evidence for a Narrower Interpretation: The patent's background section repeatedly frames the invention in the context of services provided by "attorneys and other professionals" ('468 Patent, col. 1:11), which a party could argue implies a more complex relationship or record than that of a domain registrar and its customer.
The Term: "automatically"
- Context and Importance: This term appears in nearly every functional element of the asserted claims. Its construction will determine the level of human intervention permissible for a system to be infringing.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The complaint cites a prior court interpretation that "automatically" means "a process that, once initiated, functions without further human intervention to accomplish functions or steps designated." (Compl. ¶26). This construction supports a finding of infringement if the accused system's queries and notifications are scheduled and executed by software without manual input for each action.
- Evidence for a Narrower Interpretation: A party might argue that the overall process requires significant human setup, monitoring, or intervention in edge cases, and therefore does not operate "automatically" in the manner required by the claims. The specification describes a system where software "automatically queries," "automatically generates," and "automatically transfers," suggesting a high degree of end-to-end automation. ('468 Patent, col. 3:12-18).
VI. Other Allegations
- Willful Infringement: The complaint alleges that Defendant Name.com had knowledge of the patents-in-suit since at least 2012. It further alleges that the plaintiff provided direct notice of infringement to Name.com in 2012 and again in 2015, but the infringing activity continued. (Compl. ¶¶19-20). These allegations of pre-suit knowledge and notice form the basis for the claim of willful infringement and the request for enhanced damages.
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: Will the claim terms "client reminder" and "professional services", which are rooted in the patent's description of general professional work, be construed broadly enough to cover the high-volume, automated database operations of a modern domain name registrar? The plaintiff’s reliance on favorable interpretations from prior litigation will be central to this question.
- A key evidentiary question will be one of factual mapping: Assuming the claim terms are found to cover the accused services, does the specific technical implementation of the Name.com system meet every limitation of the asserted claims? The analysis may focus on the precise degree of automation in the accused system and whether its process for handling customer renewal instructions meets the '468 Patent's requirement for "automatically receiving a reply."