PTAB

CBM2015-00072

GoDaddycom LLC v. WhitServe LLC

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Petition
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1. Case Identification

2. Patent Overview

  • Title: System for Delivering Professional Services Over the Internet
  • Brief Description: The ’078 patent discloses a computer-implemented system for automating the delivery of professional services. The system uses software to query a database for upcoming deadlines, automatically populate template forms with client-specific information retrieved from the database, and transmit the forms over the Internet.

3. Grounds for Unpatentability

Ground 1: Patent Ineligibility under 35 U.S.C. §101 - Claims 1, 7-10 are directed to an abstract idea.

  • Prior Art Relied Upon: Not applicable for a §101 challenge.
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that the challenged claims are directed to the abstract idea of recordkeeping and sending client reminders about deadlines. This concept, Petitioner contended, is a fundamental and long-standing business practice, analogous to using a calendar or tickler system. Under the first step of the Alice framework, the claims merely automate this conventional human activity.
    • Motivation to Combine (for §103 grounds): Not applicable.
    • Expectation of Success (for §103 grounds): Not applicable.
    • Key Aspects: Petitioner asserted the claims fail the second step of the Alice analysis because they add no inventive concept. The recitation of generic components—a computer, software, a database, and the Internet—to perform their well-understood, routine, and conventional functions does not transform the abstract idea into a patent-eligible application.

Ground 2: Anticipation over MTS - Claims 1 and 9-10 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 prior to October 7, 1996).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that the MTS, a system used for Internet domain name registration and renewals, practiced every element of the challenged claims. MTS operated on a computer system connected to the Internet and utilized an Ingres database to store domain registration records, which included "activation dates" analogous to the claimed "client reminders." Software automatically and periodically queried this database to identify expiring domains, generated template email renewal notices populated with customer-specific data, and transmitted these forms via email. Claim 9 was argued to be the method equivalent of device claim 1 and thus also anticipated.
    • Key Aspects: The argument was supported by declarations and extensive technical evidence, including source code, showing MTS performed the claimed functions. This evidence demonstrated that MTS automatically queried its database based on date fields and transmitted populated template forms to users over the Internet.

Ground 3: Obviousness over PerfectLaw and MTS - Claims 1, 7-10 are obvious over PerfectLaw alone or in combination with MTS.

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

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner argued that PerfectLaw, a commercially available software suite for law firms prior to the patent's priority date, disclosed the core non-Internet elements of the claims. PerfectLaw featured a centralized "tickler" database for tracking client deadlines (“client reminders”), software to query the database for upcoming events, and a "Document Assembly" function to automatically merge client data into template legal forms. This system operated on a networked computer within a law office (LAN) but did not inherently connect to the external Internet for transmitting forms.
    • Motivation to Combine (for §103 grounds): A person of ordinary skill in the art (POSITA) would combine PerfectLaw's internal automation with conventional Internet technology (as taught by MTS or as common knowledge) to extend its functionality. The motivation was to improve the speed and efficiency of client communications, a problem explicitly addressed by both PerfectLaw and the ’078 patent.
    • Expectation of Success (for §103 grounds): A POSITA would have a high expectation of success, as connecting a LAN-based system to the Internet was a routine and predictable modification using standard hardware and protocols well known at the time.

  • Additional Grounds: Petitioner asserted additional invalidity challenges based on functional claiming (§112, ¶6), indefiniteness (§112, ¶2), and lack of written description (§112, ¶1).

4. Key Claim Construction Positions

  • Professional services: Petitioner argued this preamble term should not be treated as a limitation on the claims and is not limited to any particular profession or service.
  • Client reminder: Proposed construction was a "record containing information pertinent to an upcoming service for a client," based on descriptions in the specification.
  • Form: Proposed construction was a "template form populated with client reminder information," arguing the patent describes automatically generating a form based on retrieved client reminder data.

5. Relief Requested

  • Petitioner requests institution of a Covered Business Method review and cancellation of claims 1 and 7-10 of the ’078 patent as unpatentable.