Case 1:23-cv-00278-MN Document 46 Filed 12/21/23 Page 1 of 2 PageID #: 977
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`December 21, 2023
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`VIA CM/ECF & HAND DELIVERY
`The Honorable Maryellen Noreika
`United States District Court
`844 North King Street
`Unit 19, Room 4324
`Wilmington, DE 19801
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`Re:
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`PayRange, Inc. v. CSC Serviceworks, Inc.
`C.A. No. 23-278 (MN)
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`Dear Judge Noreika,
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`We write regarding Plaintiff PayRange, Inc.’s (“PayRange”) recently-filed Notice of
`Statutory Disclaimer. D.I. 42. On November 29, counsel for PayRange emailed counsel for
`Defendant CSC ServiceWorks, Inc. (“CSC”) to notify CSC that PayRange had filed a statutory
`disclaimer with the USPTO cancelling all asserted claims of U.S. Patent No. 11,481,772 (the
`“’772 Patent”). See Ex. A. PayRange informed CSC that in view of this disclaimer, it intended
`to amend its infringement contentions to drop all asserted claims and add claim 11, which
`PayRange had not previously asserted.1 See id. PayRange’s counsel also stated that “we think it
`makes sense to file a joint notice alerting the Court of this development, especially given the
`pending MTD.” See id.
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`In response, CSC requested a call to discuss, among other topics, PayRange’s statutory
`disclaimer. See id. The parties conferred on December 12. See id. During that call, PayRange’s
`counsel again suggested the parties file a joint notice regarding the disclaimer, and represented to
`CSC’s counsel that it would provide CSC draft language for CSC’s consideration. PayRange’s
`counsel never mentioned that it believed its disclaimer rendered CSC’s pending Renewed
`Motion to Dismiss (D.I. 14) moot with respect to the argument on patent ineligibility.
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`Rather than sending CSC the draft language as promised, and without warning, PayRange
`unilaterally filed a Notice of Statutory Disclaimer with the Court. D.I. 42. In the Notice,
`PayRange argues that as a result of its disclaimer, CSC’s Renewed Motion to Dismiss “is moot
`with respect to the patent eligibility under 35 U.S.C. § 101.” Id. PayRange further argues that
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`1 PayRange subsequently served Amended Infringement Contentions dropping all previously-
`asserted claims of the ’772 patent and asserting only claim 11. Ex. B.
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`Case 1:23-cv-00278-MN Document 46 Filed 12/21/23 Page 2 of 2 PageID #: 978
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`the representativeness arguments as to the previously-asserted dependent claims are also moot.2
`Id.
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`PayRange’s arguments are unavailing. CSC’s Renewed Motion to Dismiss sought to
`dismiss PayRange’s infringement claims as to the ’772 patent in their entirety for failing the
`patent eligibility requirements of Section 101. See D.I. 15. CSC argued that claim 1 is
`representative of all claims of the ’772 patent. See id. at 7-16 (referring to “the claims of the
`’772 Patent”), 3-4 (describing claim 1 as exemplary). In response, PayRange argued that claim 1
`is not representative of claims 4, 7 and 9 because those dependent claims add materially to the
`eligibility analysis. See D.I. 16 at 4-5. Importantly, however, PayRange never argued that claim
`1 was not representative of claim 11 or that claim 11 added materially to the eligibility analysis.
`See id. Nor are there allegations in PayRange’s Amended Complaint that claim 11 is materially
`distinct from claim 1 for patent eligibility purposes. See D.I. 12, ¶¶ 81-94.
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`As such, PayRange’s disclaimer of all previously-asserted claims of the ‘772 patent, and
`its addition of claim 11, does not render moot CSC’s Renewed Motion to Dismiss merely
`because CSC focused on claim 1 as exemplary. Rather, the Court should grant CSC’s Motion
`and find claim 11 of the ’772 patent ineligible under Section 101 for the same reasons set forth in
`CSC’s prior briefing. Alternatively, CSC requests short supplemental briefing on this issue.
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`Respectfully submitted,
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` /s/ John C. Phillips, Jr.
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`John C. Phillips, Jr. (#110)
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`All Counsel of Record (via CM/ECF & Email)
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`cc:
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`2 PayRange does not argue that its disclaimer impacts the other issues raised in CSC’s Renewed
`Motion to Dismiss, including CSC’s request to dismiss PayRange’s claims of willful and indirect
`infringement as to three of the Asserted Patents. See D.I. 15 at 16-20.
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