DCT
1:18-cv-00194
WhitServe LLC v. Enom LLC
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: WhitServe LLC (Connecticut)
- Defendant: eNom, LLC (Delaware)
- Plaintiff’s Counsel: Stamoulis & Weinblatt LLC
- Case Identification: 1:18-cv-00194, D. Del., 02/01/2018
- Venue Allegations: Venue is alleged to be proper in the District of Delaware because Defendant eNom, LLC is a Delaware corporation and therefore resides in the district.
- Core Dispute: Plaintiff alleges that Defendant’s system for managing domain name registrations infringes patents related to the automated, computer-based tracking of deadlines and generation of client communications.
- Technical Context: The technology concerns automated docketing systems that use the Internet to manage and communicate time-sensitive events, a process with broad applicability in professional services and online account management.
- Key Procedural History: The complaint notes that the patents-in-suit have been subject to extensive prior litigation. In a case against Computer Packages, Inc., a jury found the patents valid and willfully infringed, a finding affirmed on liability by the Federal Circuit. In a separate case against GoDaddy.com, the court issued orders favorable to the Plaintiff on claim construction and summary judgment before the case settled. The complaint also notes that the patents have been licensed to over twenty companies.
Case Timeline
| Date | Event |
|---|---|
| 1996-10-07 | Patent Priority Date (for both patents) |
| 1999-04-20 | U.S. Patent 5,895,468 Issue Date |
| 2001-01-30 | U.S. Patent 6,182,078 Issue Date |
| 2006-01-01 | Plaintiff began licensing patents-in-suit |
| 2011-01-01 | Litigation initiated against GoDaddy.com |
| 2012-01-01 | Defendant eNom allegedly became aware of patents |
| 2015-01-01 | Plaintiff allegedly gave infringement notice to eNom |
| 2015-07-01 | Litigation against GoDaddy.com settled |
| 2018-02-01 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent 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, such as attorneys, to manage client deadlines as time-intensive, costly, and prone to error. Conventional docketing systems could only notify the professional of a deadline, leaving the burdensome tasks of client communication, response solicitation, and follow-up action to be performed manually (’468 Patent, col. 1:11-45).
- The Patented Solution: The invention proposes an automated system that uses a computer to query a database of "client reminders" based on their due dates. Upon retrieving a reminder, the system automatically generates a "client response form" and transmits it to the client over a communication link like the Internet. The system is also configured to receive a reply from the client and can be programmed to take further action based on that reply, such as updating the database or notifying a third party (’468 Patent, Abstract; col. 2:35-56).
- Technical Importance: The technology sought to leverage emerging Internet communication protocols to automate workflows that were traditionally handled by mail, telephone, or telefax, thereby increasing efficiency and reducing costs associated with managing professional services (’468 Patent, col. 1:55-65).
Key Claims at a Glance
- The complaint asserts independent claims 1 (a device) and 24 (a method) (Compl. ¶17).
- Independent Claim 1 (device) requires:
- 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; and
- software to automatically receive a reply from the client via the link.
- Independent Claim 24 (method) requires the steps of:
- providing a computer and a database with client reminders;
- querying the database by date to retrieve a reminder;
- generating a client response form;
- establishing an Internet communication link;
- transmitting the response form to the client; and
- receiving a reply from the client.
U.S. Patent 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 application leading to the ’468 patent, this patent addresses the same problem of inefficient and costly manual management of professional service deadlines (’078 Patent, col. 1:13-58; Compl. ¶8).
- The Patented Solution: The invention again describes an automated system for deadline management over a network. The claims and description place a particular emphasis on web-based implementations, such as generating and transmitting forms that are explicitly identified as web pages, and providing client access to data through a website (’078 Patent, Abstract; col. 2:58-61).
- Technical Importance: This patent further developed the concept of the parent patent by more explicitly integrating it with the architecture of the World Wide Web, providing a model for clients to have direct, automated access to their own deadline-related data (’078 Patent, col. 2:11-23).
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. ¶26).
- Independent Claim 1 (device) requires:
- a computer;
- a database with client reminders, each 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 between the computer and the Internet; and
- software to automatically transmit the form to the client via the link.
- Independent Claim 9 (method) requires the steps of:
- providing a computer and a database with client reminders;
- querying the database by date to retrieve a reminder;
- generating a form from the retrieved reminder;
- establishing an Internet communication link; and
- transmitting the form to the client via the link.
III. The Accused Instrumentality
Product Identification
The computer system that operates the website enom.com (Compl. ¶16).
Functionality and Market Context
The accused system is used to manage domain name registrations for customers. Its allegedly infringing functionality includes tracking domain name expiration dates stored in databases (Compl. ¶20). The complaint alleges the system is programmed to automatically query these databases by expiration date to identify upcoming expirations and retrieve associated customer and domain records (Compl. ¶21). Based on this data, the system automatically generates and transmits reminder notifications and "client response forms," such as web pages, to customers over the Internet (Compl. ¶22, ¶24). It is also alleged to automatically receive and process renewal instructions submitted by customers in reply to these forms (Compl. ¶25). The complaint situates eNom as a company in the field of domain-name registration (Compl. ¶10). No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
’468 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a computer; | eNom's networked computers, including database servers and web servers. | ¶19 | col. 3:19-20 |
| a database containing a plurality of client reminders, each of the client reminders comprising a date field having a value attributed thereto; | eNom's databases containing millions of records that map client identification, domain names, and their expiration dates, which are stored in date fields. | ¶20 | col. 3:20-29 |
| 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; | eNom's system is programmed to automatically run searches of its databases by expiration date to identify and retrieve records of expiring domain-name registrations. | ¶21 | col. 3:19-22 |
| software executing on said computer for automatically generating a client response form based on the retrieved client reminder; | eNom servers automatically generate "client response forms as web pages that display the client’s expiring domain-name registrations." | ¶22 | col. 3:31-33 |
| a communication link between said computer and the Internet; | The eNom system communicates with clients' devices using the Internet. | ¶23 | col. 3:33-35 |
| software executing on said computer for automatically transmitting the client response form to the client through said communication link; | eNom's system transmits the client response forms to clients' devices over the Internet, "without human intervention." | ¶24 | col. 3:33-35 |
| software executing on said computer for automatically receiving a reply to the response form from the client through said communication link. | eNom web servers automatically receive and process renewal instructions sent by clients from the web pages providing the response forms. | ¶25 | col. 3:45-47 |
’078 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a computer; | eNom's networked computers, including database and web servers. | ¶28 | col. 3:40-41 |
| a database containing a plurality of client reminders, each of the client reminders comprising a date field having a value attributed thereto; | eNom's databases containing records of client services and pertinent dates, such as domain registration expiration dates stored in date fields. | ¶29 | col. 3:41-47 |
| 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; | eNom's system is programmed to automatically run searches by expiration date to identify and retrieve records of expiring domain registrations. | ¶30 | col. 3:40-43 |
| software executing on said computer for automatically generating a form based on the retrieved client reminder; | eNom servers automatically generate forms as web pages that display the client's expiring domain-name registrations. | ¶31 | col. 4:1-3 |
| a communication link between said computer and the Internet; | The eNom system communicates with clients' devices using the Internet. | ¶32 | col. 4:4-6 |
| software executing on said computer for automatically transmitting the form through said communication link. | eNom's system transmits the forms to clients' devices over the Internet, "without human intervention." | ¶33 | col. 4:4-6 |
- Identified Points of Contention:
- Scope Questions: The complaint alleges that eNom's database records of domain registrations and expiration dates constitute "client reminders" (Compl. ¶20, ¶29). A potential point of contention is whether these commercial account records fall within the scope of a term developed in the context of "professional services," such as those provided by attorneys (’468 Patent, col. 1:11-13).
- Technical Questions: The infringement allegations for both patents hinge on the term "automatically." The complaint alleges the accused system functions "without human intervention" and cites a prior judicial interpretation of the term (Compl. ¶21, ¶30). A central factual question may be whether the eNom system's operations, from querying dates to processing renewals, meet this standard, or if there are intervening manual steps that differentiate its function from that required by the claims.
V. Key Claim Terms for Construction
The Term: "client reminder"
- Context and Importance: This term defines the core data object of the invention. Its construction determines what types of records are covered by the patents. The complaint's allegation of infringement rests on mapping this term to eNom's domain registration records (Compl. ¶20). Practitioners may focus on this term because its scope was a subject of prior litigation, and its application to the specific data structures in the domain registration industry will be central to the infringement analysis.
- Intrinsic Evidence for a Broader Interpretation: The specification describes the reminder as containing "information pertinent to the upcoming professional service to be rendered, such as the client name, the client e-mail address, the type of service to be rendered, the deadline for the service," and others (’468 Patent, col. 3:23–29). This functional description could support an interpretation covering any data record that links a client, a service, and a date.
- Intrinsic Evidence for a Narrower Interpretation: The "Background of the Invention" section frames the problem entirely within the context of services provided by "attorneys and other professionals" involving a "series of deadlines" (’468 Patent, col. 1:11–13). This could support an argument that the term is limited to the specific types of legal or professional services described, not general commercial account expirations.
The Term: "automatically"
- Context and Importance: This adverb modifies key steps of the claimed invention, such as querying, generating, and transmitting. It is the primary feature distinguishing the invention from prior art manual docketing systems. The complaint notes that the term has been previously interpreted by a court to mean "a process that, once initiated, functions without further human intervention" (Compl. ¶21, ¶30). The factual dispute will likely center on whether the accused system meets this definition.
- Intrinsic Evidence for a Broader Interpretation: The patent's objective is to overcome the "time-intensive, costly, and tedious" nature of manual follow-up (’468 Patent, col. 1:17-20). This purpose could support a construction where any process that removes the need for a human to manually initiate each step (querying, composing a message, sending it) is "automatic," even if a human initiates the overall sequence.
- Intrinsic Evidence for a Narrower Interpretation: The patent describes a system where software not only sends a reminder but also "receives the reply" and "performs some action based on the reply" (’468 Patent, col. 3:45-49). This could be used to argue that "automatically" requires a fully closed-loop process without human review or intervention at any stage, including after the client has replied.
VI. Other Allegations
- Willful Infringement: The complaint alleges that Defendant eNom has had knowledge of the patents-in-suit since "at least 2012" and that Plaintiff provided express notice of infringement to eNom in 2012 and again in 2015 (Compl. ¶14, ¶15). The allegation of continued infringement despite this multi-year, pre-suit knowledge forms the basis for the willfulness claim and the corresponding request for enhanced damages (Compl., Prayer for Relief ¶C).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: In light of the patents' extensive litigation history, can the term "client reminder," which was previously construed in the context of professional services, be read to cover the domain name registration and expiration records in the accused eNom system?
- A key evidentiary question will be one of operational fact: Does the accused eNom system function "automatically" as that term has been judicially interpreted—as a process that, once initiated, proceeds without further human intervention—or does the workflow for managing domain renewals involve a degree of manual processing that places it outside the scope of the claims?
- A central question for damages will be willfulness: Given the complaint’s allegations of pre-suit notice dating back to 2012 and the patents' record of success in prior litigation, the court will need to determine whether Defendant’s continued alleged infringement was objectively reckless.