PTAB

CBM2015-00066

GoDaddycom LLC v. WhitServe LLC

Log In
Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: System Automating Delivery of Professional Services
  • Brief Description: The ’468 patent discloses a system for automating the delivery of deadline-oriented professional services. The system uses a computer, database, and software to automatically query for upcoming deadlines, generate and transmit reminder forms to clients over the Internet, and process client replies.

3. Grounds for Unpatentability

Ground 1: Patent Ineligibility under §101 - Claims 1-4, 9, 13-16, and 24-27 are directed to a patent-ineligible abstract idea.

  • Core Argument for this Ground: Petitioner argued that the challenged claims are directed to the abstract idea of the long-standing business practice of recordkeeping, calendaring deadlines, and sending client reminders. The implementation of this abstract idea using generic computers, databases, software, and the Internet fails to provide an "inventive concept" sufficient to transform it into patent-eligible subject matter under the two-step framework from Alice Corp. v. CLS Bank Int'l.
    • Prior Art Mapping: Petitioner asserted that under step one of the Alice framework, the claims, when stripped of their generic computer elements, simply recite the fundamental and routine activity of monitoring deadlines and managing client communications. Under step two, Petitioner argued the claims lack an inventive concept because they merely recite generic and conventional components—a computer, a database, software, and a communications link (the Internet)—performing their most basic and well-known functions of storing, processing, and transmitting information.
    • Key Aspects: The petition emphasized that concepts like "tickler" systems for deadlines and template forms were well-documented business practices for decades. The dependent claims were argued to add only token, well-known technological components, such as a "web server" or a "URL," which do not add a patent-eligible inventive concept.

Ground 2: Anticipation over MTS - Claims 1-4 and 24-27 are anticipated under 35 U.S.C. §102 by the Network Solutions Message Ticketing System.

  • Prior Art Relied Upon: Network Solutions Message Ticketing System (“MTS”), a publicly known and used system for domain name registration and renewal prior to the patent’s October 7, 1996 filing date.
  • Core Argument for this Ground: Petitioner contended that the MTS system, used to manage the .com, .net, and .org domain registries, performed every element of the challenged claims.
    • Prior Art Mapping: The MTS system allegedly used a computer and a central Ingres database containing domain registration records with "activation dates." Software automatically and periodically queried this database to identify domains nearing their expiration date. Based on this query, MTS automatically generated and transmitted template-based renewal reminder emails to customers over the Internet. The system also automatically received, parsed, and processed customer replies to update the database or forward information to a billing department. Dependent claims adding limitations for generating a response to a third party or updating the database were also allegedly taught by MTS’s functionality of forwarding billing information and updating registration records.

Ground 3: Obviousness over PerfectLaw and MTS - Claims 1-4, 9, 13-16, and 24-27 are obvious under 35 U.S.C. §103 over PerfectLaw in view of MTS.

  • Prior Art Relied Upon: PerfectLaw (a suite of legal docketing and document assembly software) and the MTS system.

  • Core Argument for this Ground: Petitioner argued that PerfectLaw disclosed most of the claimed features in the context of an internal law office network, and it would have been obvious to a person of ordinary skill in the art (POSITA) to combine PerfectLaw’s functionality with the Internet-based communication features demonstrated by MTS.

    • Prior Art Mapping: PerfectLaw was a commercial software suite that included a "Docket" module to monitor a centralized database of client matters, track deadlines using "due dates," and automatically generate reminders. Its "Document Assembly" module automatically merged client data into template forms. These features were implemented on a local area network (LAN) within a law firm.
    • Motivation to Combine: A POSITA would combine PerfectLaw with the Internet-based communication methods of MTS to solve the common problem of improving the speed and efficiency of client services. Extending the automated services of PerfectLaw beyond the internal office network to communicate with external clients via the Internet was a natural and predictable next step to further the goal of automation. The dependent claims adding a web server and URL were obvious modifications, as replacing MTS’s FTP server with a conventional web server to transmit forms over the Internet was a trivial design choice for a POSITA in 1996.
    • Expectation of Success: The combination would have yielded predictable results, as it involved applying conventional, well-understood Internet and web technology to an existing automated docketing system to expand its reach.

  • Additional Grounds: Petitioner asserted additional challenges, including that claims were invalid for functional claiming (§112, ¶6), indefiniteness (§112, ¶2), lack of written description (§112, ¶1), and obviousness over MTS in view of ordinary skill.

4. Key Claim Construction Positions

  • Professional services: Petitioner argued this term, recited in the preamble, should not be a limitation on the claims. Alternatively, its broadest reasonable interpretation is not limited to any particular profession.
  • Client reminder: Proposed construction was a "record containing information pertinent to an upcoming service for a client." This construction is based on the specification's description of a database record holding client and deadline information.
  • Client response form: Proposed construction was a "template form populated with client reminder information." This was argued to be consistent with the patent's description of automatically generating forms based on the retrieved client reminder data.

5. Relief Requested

  • Petitioner requests institution of a Covered Business Method patent review and cancellation of claims 1-4, 9, 13-16, and 24-27 of the ’468 patent as unpatentable.