Joseph J. Farnan, Jr., Esq., Brian E. Farnan, Esq., FARNAN LLP, Wilmington, DE, Attorneys for Plaintiff buySAFE, Inc.
Jack B. Blumenfeld, Esq., Paul Saindon, Esq., MORRIS, NICHOLS, ARSHT & TUNNEL LLP, Wilmington, DE, Attorneys for Defendant Google Inc.
LEONARD P. STARK, District Judge.
Pending before the Court is Defendant Google Inc.'s ("Defendant") motion for judgment on the pleadings under Fed.R.Civ.P. 12(c). (D.I. 31) Defendant argues that PlaintiffbuySAFE, Inc.'s ("Plaintiff') U.S. Pat. No. 7, 644, 019 ('"the "019 patent") is invalid under 35 U.S.C. § 101 because it is directed to non-patent-eligible subject matter.
The parties completed briefing for this motion on August 31, 2012. (D.I. 32, 40, 42) The Court heard oral argument on October 26, 2012. (D.I. 49) (hereinafter "Tr.") On May 17, 2013, the Court ordered the parties to submit supplemental briefs "for the purpose of addressing the effect, if any, of the en banc decision of the United States Court of Appeals for the Federal Circuit" in CLS Bank International v. Alice Corp. Pty Ltd., 717 F.3d 1269 (Fed. Cir. 2013), which was issued on May 10, 2013. (D.I. 58) The parties submitted their supplemental briefs on May 28, 2013. (D.I. 59, 60)
For the reasons set forth below, the Court will grant Defendant's Rule 12(c) motion.
Plaintiff filed this patent infringement action against Defendant on December 22, 2011, alleging that Google's "Trusted Stores" program infringes the "019 patent. (D.I. 1) The "019 patent is entitled "Safe Transaction Guaranty" and generally relates to providing a guaranty service for online transactions.
The "019 patent contains two independent claims, claim 1 and claim 39. Claim 1 is a process claim. Claim 39 requires a "machine readable medium" capable of performing the process of claim 1. The parties agree that, for purposes of Defendant's Rule 12(c) motion, there are no material differences between claims 1 and 39. (D.I. 32 at 3, D.I. 40 at 2)
Claim 1 is reproduced below:
A method, comprising:
receiving, by at least one computer application program running on a computer of a safe transaction service provider, a request from a first party for obtaining a transaction performance guaranty service with respect to an online commercial transaction following closing of the online commercial transaction;
processing, by at least one computer application program running on the safe transaction service provider computer, the request by underwriting the first party in order to provide the transaction performance guaranty service to the first party,
wherein the computer of the safe transaction service provider offers, via a computer network, the transaction performance guaranty service that binds a transaction performance guaranty to the online commercial transaction involving the first party to guarantee the performance of ...