buySAFE, Inc. v. Google, Inc.


Docket No. 2013-1575

TARANTO, HUGHES
September 3, 2014

Brief Summary: The panel found that “[t]he claims in this case do not push or even test the boundaries of the Supreme Court precedents under section 101” because “the claims are squarely about creating a contractual relationship…that is beyond question of ancient lineage” and the “invocation of computers adds no inventive concept”.

Summary: buySAFE appealed DC finding that US 7,644,019 directed to “method and machine-readable media encoded to perform steps for guaranteeing a party’s performance of its online transaction” was ineligible subject matter under 35 U.S.C. § 101 (Alice, US 2014). The DC concluded that the patent “describes a well-known, and widely-understood concept-a third party guarantee of a sales transaction-and then applied that concept using conventional computing technology and the Internet”, “[i]t makes no difference…that the guarantee of the underlying transaction attaches only when that transacton closes”, “the claimed computer ‘is only used for processing-a basic function of any general purpose computer”, and “the claims ‘do not require any specific programming’ and ‘are not tied to any particular machine’”. The FC panel opinion explained that “[l]aws of nature, natural phenomena, and abstract ideas are not patentable” (Alice, US 2014) “no matter how ‘groundbreaking, innovative, or even brilliant” (Myriad, US 2013). It also explained that under Alice and Mayo (US 2012), “a claim falls outside section 101 if (a) it is ‘directed to’ matter in one of the three excluded categories and (b) ‘the additional elements’ do not supply an ‘inventive concept’…that ensures that the patent is on something ‘significantly more than’ the ineligible subject matter itself.” Regarding the first question (what type of subject matter falls within the “abstract idea” category ), “[t]he relevant Supreme Court cases are those [related to] contractual relations, which are intangible entities” (Bilski, US 2010 and Alice, each relating to “a fundamental economic practice long prevalent in our system of commerce”). Regarding the second question (inventive concept), the opinion explained that the Alice decision clearly holds “that a claim directed to an abstract idea does not move into section 101 eligibility territory by ‘merely requiring computer implementation’”. Here, the panel found that “[t]he claims in this case do not push or even test the boundaries of the Supreme Court precedents under section 101” because “the claims are squarely about creating a contractual relationship…that is beyond question of ancient lineage” (“narrowing…long-familiar commercial transactions does not make the idea non-abstract for section 101 purposes” and the “invocation of computers adds no inventive concept”). Thus, the claims were concluded to be invalid.

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