buySafe, Inc. v. Google, Inc.
765 F.3d 1350
| Fed. Cir. | 2014Background
- buySAFE sued Google alleging infringement of U.S. Patent No. 7,644,019, which claims computerized methods and media for guaranteeing performance of online commercial transactions.
- Asserted claims include method claims (claims 1 and 14) and corresponding computer-readable-medium claims (claims 39 and 44); the parties agreed method claims control the analysis.
- Claim 1 requires a safe-transaction-service provider computer to receive a request for a transaction performance guaranty, underwrite the requesting party, and offer a guaranty via a computer network that binds on closing.
- The District of Delaware granted judgment on the pleadings for Google, holding the claims ineligible under 35 U.S.C. § 101 as directed to an abstract idea implemented with conventional computer technology.
- On appeal, the Federal Circuit applied the Supreme Court’s two-step § 101 framework from Alice and affirmed the district court, finding the claims directed to a long-standing commercial practice and lacking an inventive concept in their computer implementation.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether the asserted claims are directed to patent-eligible subject matter under 35 U.S.C. § 101 | buySAFE argued the claims recite a computerized, concrete application (underwriting, binding guaranty via network) and thus are patent-eligible | Google argued the claims are directed to the abstract idea of a third-party transaction guaranty implemented with generic computer functions | Held: Claims directed to the abstract idea of guaranteeing transactions; computer implementation is generic and adds no inventive concept — claims ineligible under § 101 |
Key Cases Cited
- Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S.Ct. 2347 (2014) (announces two-step framework for § 101 and rejects mere generic computer implementation as inventive concept)
- Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S.Ct. 1289 (2012) (explains courts must prevent patents from tying up basic building-blocks; ‘‘inventive concept’’ requirement)
- Bilski v. Kappos, 561 U.S. 593 (2010) (business practices like hedging risk can be abstract ideas; confirms no broad business-method exception)
- Diamond v. Diehr, 450 U.S. 175 (1981) (holding that adding more than a generic computer to a mathematical formula can produce an inventive application)
- Ass'n for Molecular Pathology v. Myriad Genetics, Inc., 133 S.Ct. 2107 (2013) (reiterates statutory exclusions for laws of nature, natural phenomena, and abstract ideas)
- CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366 (Fed. Cir. 2011) (use of the Internet to verify transactions insufficient to transform an abstract idea into patent-eligible subject matter)