NOTE: This disposition is nonprecedential.

United States Court of Appeals 

for the Federal Circuit ______________________

WHITSERVE LLC,

Plaintiff-Appellant

v.

DONUTS INC., NAME.COM, INC.,

Defendants-Appellees

______________________

2019-2240

______________________

Appeal from the United States District Court for the 

District of Delaware in No. 1:18-cv-00193-CFC, United 

States District Judge Colm F. Connolly.

- - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - -

WHITSERVE LLC,

Plaintiff-Appellant

v.

ENOM, LLC,

Defendant-Appellee

______________________

2019-2241

______________________

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2 WHITSERVE LLC v. DONUTS INC.

Appeal from the United States District Court for the 

District of Delaware in No. 1:18-cv-00194-CFC, United 

States District Judge Colm F. Connolly.

______________________

Decided: April 10, 2020

______________________

MICHAEL JOSEPH KOSMA, Whitmyer IP Group LLC, 

Stamford, CT, for plaintiff-appellant. Also represented by 

STEPHEN BALL. 

 SHARON DAVIS, Rothwell, Figg, Ernst & Manbeck, PC, 

Washington, DC, for defendants-appellees. Also represented by NICOLE DEABRANTES. 

 ______________________

Before PROST, Chief Judge, O’MALLEY and TARANTO,

Circuit Judges.

TARANTO, Circuit Judge.

WhitServe LLC owns U.S. Patent Nos. 5,895,468 and 

6,182,078, both of which describe and claim systems and 

methods by which providers of professional services, using

the Internet, send reminders to clients and obtain responses from them. We addressed these patents in 

WhitServe LLC v. Computer Packages, Inc., 694 F.3d 10 

(Fed. Cir. 2012) (WhitServe I), where we resolved questions 

of infringement and anticipation, among other issues. This 

case involves an issue not previously presented: the eligibility of the ’468 and ’078 patent claims under 35 U.S.C. 

§ 101. The district court held all claims ineligible. 

WhitServe LLC v. Donuts Inc., 390 F. Supp. 3d 571, 574–

75 (D. Del. 2019). We affirm. 

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WHITSERVE LLC v. DONUTS INC. 3

I

WhitServe’s ’468 and ’078 patents, in relevant part, 

share a specification. The patents describe software that 

runs on a professional service provider’s computer to help 

professionals, e.g., attorneys, perform functions for clients 

that “involve a series of deadlines” but cannot be performed 

without client authorization or input. ’468 patent, col. 1, 

lines 11–16; id., col. 2, lines 39–45. The computer, running 

the software, automatically queries a database of client 

deadlines and both sends due-date reminders to clients and 

obtains client responses over the Internet. Id., col. 1, lines 

6–9; id., col. 2, lines 39–45. As a client deadline approaches, the system sends a notice to the client—via the 

Internet—that includes a client response form; the client 

provides a response via the form; the system returns the 

form to the professional service provider; and either the 

system or the professional takes an action based on the client’s response. Id., col. 3, lines 17–67; see also id., col. 5, 

lines 8–56 (describing an alternative embodiment using a 

webpage to collect and route client responses). 

In February 2018, WhitServe filed two complaints—

one against Donuts Inc. and Name.com, Inc., and another 

against Enom, LLC (together, Donuts)—in the United 

States District Court for the District of Delaware, alleging 

infringement of selected claims of the two patents. Donuts 

moved to dismiss the complaints under Federal Rule of 

Civil Procedure 12(b)(6), arguing that all the claims of the 

patents are invalid because their subject matter is ineligible for patenting under § 101. In ruling on the motion to 

dismiss, the district court treated claim 1 of the ’468 patent 

as representative of the claims at issue in the cases. J.A. 

6–7. WhitServe does not now challenge that determination.

Claim 1 of the ’468 patent recites:

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4 WHITSERVE LLC v. DONUTS INC.

1. A device for automatically delivering professional services to a client comprising:

a computer;

a database containing a plurality of client 

reminders, each of the client reminders 

comprising a date field having a value 

attributed thereto;

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;

software executing on said computer for 

automatically generating a client response form based on the retrieved client reminder;

a communication link between said computer and the Internet;

software executing on said computer for 

automatically transmitting the client 

response form to the client through said 

communication link; and,

software executing on said computer for 

automatically receiving a reply to the 

response form from the client through 

said communication link.

’468 patent, col. 6, line 56, through col. 7, line 8.

The district court concluded that the claims are directed to “the abstract idea of preparing, sending, and receiving responses to due-date reminders for clients of 

professional-service [providers].” WhitServe, 390 F. Supp. 

3d at 577. The district court then determined that the 

claim elements, either individually or as an ordered 

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combination, recite “nothing more than generic computer 

components employed in a customary manner,” and therefore do not transform the abstract idea into patent-eligible 

subject matter. Id. at 579–80 (quotation marks omitted).

On that basis, the district court granted Donuts’ motion to 

dismiss the complaints with prejudice and entered final 

judgments in Donuts’ favor.

WhitServe timely appealed to this court. We have jurisdiction under 28 U.S.C. § 1295(a)(1).

II

Subject-matter eligibility under § 101 is a question of 

law, resolved based on underlying facts. Aatrix Software, 

Inc. v. Green Shades Software, Inc., 882 F.3d 1121, 1125 

(Fed. Cir. 2018) (Aatrix I). “Like other legal questions 

based on underlying facts, this question may be, and frequently has been, resolved on a Rule 12(b)(6) . . . motion 

where the undisputed facts, considered under the standards required by that Rule, require a holding of ineligibility 

under the substantive standards of law.” SAP America, 

Inc. v. InvestPic, LLC, 898 F.3d 1161, 1166 (Fed. Cir. 2018);

see ChargePoint, Inc. v. SemaConnect, Inc., 920 F.3d 759, 

765 (Fed. Cir. 2019); Aatrix Software, Inc. v. Green Shades 

Software, Inc., 890 F.3d 1354, 1356, 1358–59 (Fed. Cir. 

2018) (Aatrix II). We review the Rule 12(b)(6) dismissal de

novo. Ancora Techs., Inc. v. HTC America, Inc., 908 F.3d 

1343, 1347 (Fed. Cir. 2018); Newark Cab Ass’n v. City of 

Newark, 901 F.3d 146, 151 (3d Cir. 2018).

Section 101 defines patent-eligible subject matter as 

“any new and useful process, machine, manufacture, or 

composition of matter, or any new and useful improvement 

thereof.” 35 U.S.C. § 101. But there are several “implicit 

exception[s]” to this statutory grant—laws of nature, natural phenomena, and abstract ideas are not patent-eligible 

subject matter. Mayo Collaborative Services v. Prometheus 

Labs., Inc., 566 U.S. 66, 70 (2012). The Supreme Court in

Alice Corp. v. CLS Bank International set forth a two-step 

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analysis to determine whether patent claims fall outside

§ 101. 573 U.S. 208, 217–18 (2014). Under that framework, we ask (1) whether the claim, as a whole, is “directed 

to” patent-ineligible subject matter and (2) if so, whether 

the elements of the claim, considered individually or as an 

ordered combination, “‘transform the nature of the claim’

into a patent-eligible application.” Id. (quoting Mayo, 566 

U.S. at 78).

A

Proceeding within the two-step framework of Alice, we 

examine the patent’s “‘claimed advance’ to determine 

whether the claims are directed to an abstract idea.” Finjan, Inc. v. Blue Coat Systems, Inc., 879 F.3d 1299, 1303 

(Fed. Cir. 2018). When the claims involve “software innovations, this inquiry often turns on whether the claims focus on ‘the specific asserted improvement in computer 

capabilities . . . or, instead, on a process that qualifies as 

an “abstract idea” for which computers are invoked merely 

as a tool.’” Id. (quoting Enfish LLC v. Microsoft Corp., 822 

F.3d 1327, 1335–36 (Fed. Cir. 2016)); see also Customedia 

Techs., LLC v. Dish Network Corp., 951 F.3d 1359, 1364 

(Fed. Cir. 2020) (“[I]t is not enough, however, to merely improve a fundamental practice or abstract process by invoking a computer merely as a tool.”); BSG Tech LLC v. 

Buyseasons, Inc., 899 F.3d 1281, 1285–86 (Fed. Cir. 2018); 

CoreWireless Licensing S.A.R.L. v. LG Electronics, Inc., 880 

F.3d 1356, 1361–62 (Fed. Cir. 2018). Under this framework, we conclude, WhitServe’s claims are directed to an 

abstract idea.

Claim 1 of the ’468 patent describes querying a database of client reminders having associated date information; sending, via the Internet, reminders to clients with 

approaching deadlines; including within those reminders a 

form for clients to give approval or further instructions to 

the professional regarding the approaching deadline; and 

receiving back, via the Internet, a client response. ’468

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WHITSERVE LLC v. DONUTS INC. 7

patent, col. 6, line 56, through col. 7, line 8. The focus is on 

the idea of keeping track of deadlines for clients and carrying out two-way communications with clients relevant to 

meeting those deadlines, using computers and networks to 

do so. The ’468 patent specification confirms this focus, 

stating that the objects of the invention are to “improve[] 

the speed, efficiency, and reliability of performing services 

for clients” and to provide a system that “automatically 

prepares reminders and solicits replies for client due 

dates.” Id., col. 2, lines 16–22.

The focus of the claims is simply to use computers and 

a familiar network as a tool to perform a fundamental economic practice involving simple information exchange. 

Carrying out fundamental economic practices involving 

simple information exchange is an abstract idea. See, e.g., 

BSG, 899 F.3d at 1286; SAP America, 898 F.3d at 1167–68; 

Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d

1253, 1261–62 (Fed. Cir. 2016). And use of standard computers and networks to carry out those functions—more 

speedily, more efficiently, more reliably—does not make 

the claims any less directed to that abstract idea. See Alice, 

573 U.S. at 222–25; Customedia, 951 F.3d at 1364; Trading 

Techs. Int’l, Inc. v. IBG LLC, 921 F.3d 1084, 1092–93 (Fed. 

Cir. 2019); SAP America, 898 F.3d at 1167; Intellectual 

Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1314 

(Fed. Cir. 2016); Electric Power Grp., LLC v. Alstom S.A., 

830 F.3d 1350, 1353, 1355 (Fed. Cir. 2016); Intellectual 

Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 

1367, 1370 (Fed. Cir. 2015); buySAFE, Inc. v. Google, Inc., 

765 F.3d 1350, 1355 (Fed. Cir. 2014).

Nothing in WhitServe’s claims transforms the abstract 

idea that is the focus of its claims into a patent-eligible invention. WhitServe describes the inventive concept as improving docketing systems through the use of databases, 

specific types of reminders, and software to generate client 

reminders and receive client responses. Appellant’s Br. 

30–31. But the specification itself states that “send[ing] a 

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8 WHITSERVE LLC v. DONUTS INC.

client a reminder, obtain[ing] authorization or possibly executed documents from the client, and then tak[ing] some 

action based on the client’s response” were “oftentimes”

practiced by professionals. ’468 patent, col. 1, lines 12–16. 

It adds that these steps were “typically” aided by the use of 

a database of client due dates. Id., col. 1, lines 30–35. And

nothing in the claims points to any improvement in off-theshelf computers and existing communication networks.

WhitServe’s claims require only generic components—

“a computer,” “a database,” “software executing on said 

computer,” and “a communication link between said computer and the Internet”—to perform their routine and conventional functions. Id., col. 6, line 56, through col. 7, line 

8. The specification describes the network-connected computer only as a “professional computer” capable of executing software. E.g., id., col. 3, line 18. The specification 

describes communication between the professional and the 

client simply as occurring “through an Internet communication link,” an existing technology whose mechanisms of 

operation WhitServe’s patents do not propose to alter. Id., 

col. 4, line 35. The specification likewise makes clear that 

docketing systems commonly employed a database and 

software that “notifie[d] the professional of each upcoming 

deadline a preset time period before the deadline by . . . 

networked computer.” Id., col. 1, lines 30–35. These generic computer and communications components provide

no eligibility-transformative inventive concept. And the 

specific ordered combination of these generic components

is likewise insufficient, as it does nothing more than “spell 

out what it means to apply [the abstract idea] on a computer.” Capital One, 792 F.3d at 1370 (quotation marks

omitted). 

WhitServe argues that the district court failed to consider the perspective of the relevant artisan in making its 

patent-ineligibility determination. We disagree. The district court noted what the patent itself teaches about the 

routine use of docketing systems by professionals and the 

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conventionality of the various claimed components, including the Internet and web pages, at the time of invention. 

WhitServe, 390 F. Supp. 3d at 574, 577–79; see ’468 patent, 

col. 1, lines 12–16, 29–35; id., col. 5, lines 22–26. The description of “already-available computers that are not 

themselves plausibly asserted to be an advance . . . 

amounts to a recitation of what is ‘well-understood, routine, [and] conventional.’” SAP, 898 F.3d at 1170 (quoting 

Mayo, 566 U.S. at 73). In this case, therefore, the district 

court did not have to look beyond the specification to make 

its patent-eligibility determination.

WhitServe also points to alleged licensing of its patents

as evidence of an inventive concept. We have held, however, that “[c]ommercial success is not necessarily a proxy 

for an improvement in a technology nor does it necessarily

indicate that claims were drawn to patent eligible subject 

matter.” Versata Dev. Grp., Inc. v. SAP America, Inc., 793 

F.3d 1306, 1335 (Fed. Cir. 2015). After all, ineligible ideas 

can be valuable. See Bancorp Servs., L.L.C. v. Sun Life Assurance Co. of Can. (U.S.), 687 F.3d 1266, 1278–79 

(Fed. Cir. 2012). That the market found WhitServe’s products or ideas desirable—and took licenses—does not override the now-straightforward conclusion that the patents 

claim no improvement in computer functionality or other 

eligible matter.1

1 WhitServe argues that our analysis should account 

for agency and judicial rulings that upheld its patents 

against various challenges. But patent eligibility under 

§ 101 was not at issue in any of those earlier rulings. Thus, 

none either addressed or decided whether the claims at issue are eligible under the Supreme Court’s Alice framework. Indeed, though the question was not presented to

this court in Whitserve I, Judge Mayer suggested in dissent 

that the court should address it sua sponte and find the 

claims ineligible. 694 F.3d at 40–42 (Mayer, J., dissenting).

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B

WhitServe argues that the district court should not 

have resolved this case at the pleading stage. But we have 

repeatedly made clear that “patent eligibility can be determined at the Rule 12(b)(6) stage” if there are no plausible 

factual allegations to impede such a resolution. Aatrix I, 

882 F.3d at 1125; see, e.g., SAP America, 898 F.3d at 1166. 

Factual questions relevant to the § 101 analysis, “[l]ike

other legal questions based on underlying facts,” do not 

prevent a judgment on the pleadings when the pleadings 

and exhibits attached thereto show that there are no plausible factual disputes. SAP America, 898 F.3d at 1166. In 

the § 101 context, “the specification alone” may suffice to 

resolve the patent-eligibility inquiry. Aatrix II, 890 F.3d at 

1356; see SAP America, 898 F.3d at 1166. That is the case 

here, for the reasons we have already explained.

WhitServe next argues that its patent claims do not fall 

outside the text of § 101 or come within the statement in 

Le Roy v. Tatham that “[a] principle, in the abstract, is a 

fundamental truth; an original cause; a motive; these cannot be patented.” 55 U.S. 156, 175 (1852). But as discussed 

above, later Supreme Court decisions and our applications 

of those decisions have held that ineligible subject matter 

also includes fundamental economic practices involving 

simple information exchange implemented on off-the-shelf 

computers and networks. Those precedents control.

WhitServe finally argues that its due process rights 

were violated when the district court denied its request for

an oral argument on the motion to dismiss. We disagree. 

The right to be heard in the context of a motion to dismiss 

is satisfied where the plaintiff receives an “opportunity to 

present legal arguments either orally, in writing, or both 

at the District Court’s discretion.” Dougherty v. Harper’s 

Magazine Co., 537 F.2d 758, 761 (3d Cir. 1976). Here, 

WhitServe had a full opportunity to oppose Donuts’ 

12(b)(6) motion in writing. WhitServe has not pointed to 

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WHITSERVE LLC v. DONUTS INC. 11

any limitation that prevented it from giving full substantive expression to its argument. The district court acted 

well within its discretion in not holding an oral argument 

on the motion to dismiss.

III

For the forgoing reasons, we affirm the district court’s 

judgment.

AFFIRMED

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