Brief of Amicus Curiae The American Intelllectual Property Law Association in support of Alice Corporation PTY. LTD.
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Brief of Amicus Curiae The American Intelllectual Property Law Association in support of Alice Corporation PTY. LTD.

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Brief of Amicus Curiae The American Intelllectual Property Law Association in support of Alice Corporation PTY. LTD. Brief of Amicus Curiae The American Intelllectual Property Law Association in support of Alice Corporation PTY. LTD. Document Transcript

  • 2011-1301 United States Court of Appeals for the Federal Circuit CLS BANK INTERNATIONAL, Plaintiff-Appellee, and CLS SERVICES LTD., Counterclaim-Defendant Appellee, v. ALICE CORPORATION PTY. LTD., Defendant-Appellant. Appeal from the United States District Court for the District of Columbia in case no. 07-CV-0974, Judge Rosemary M. Collyer BRIEF OF AMICUS CURIAE THE AMERICAN INTELLECTUAL PROPERTY LAW ASSOCIATION IN SUPPORT OF ALICE CORPORATION PTY. LTD. __________________JEFFREY I.D. LEWIS JERRY R. SELINGERPresident GERO MCCLELLANAMERICAN INTELLECTUAL PATTERSON & SHERIDAN, LLPPROPERTY LAW ASSOCIATION 1700 Pacific Ave., Suite 2650241 18TH Street, South Dallas, TX 75201Suite 700 (214) 272-0957Arlington, VA 22202(703) 415-0780Attorneys for Amicus Curiae American Intellectual Property Law Association JANUARY 17, 2013COUNSEL PRESS, LLC (202) 783-7288 * (888) 277-3259 245620
  • UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT CLS BANK v. ALICE CORPORATION, 2011-1301 CERTIFICATE OF INTEREST Counsel for amicus curiae, the American Intellectual Property LawAssociation, certifies the following: 1. The full name of every party or amicus represented by us is: The American Intellectual Property Law Association 2. The full name of the real party in interest (if the party named in the·caption is not the real party in interest) represented by us is: Not applicable. 3. All parent corporations and any publicly held companies that own 10percent or more of the stock of the party or amicus curiae represented by us are: Not applicable. 4. The names of all law firms and the partners or associates thatappeared for the party or amicus now represented by us in the trial court or agencyor who are expected to appear in this court are: Jerry R. Selinger Gero McClellan PATTERSON & SHERIDAN, LLP Jeffrey I.D. Lewis AMERICAN INTELLECTUAL PROPERTY LAW ASSOCIATION January 17, 2013 _____________________ Jerry R. Selinger i
  • TABLE OF CONTENTS PageCERTIFICATE OF INTEREST .................................................................................i TABLE OF AUTHORITIES ................................................................................... iii STATEMENT OF INTEREST OF AMICUS CURIAE........................................... iii SUMMARY OF ARGUMENT ................................................................................. 2 ARGUMENT ............................................................................................................. 4 I.  DISTINGUISHING AN “ABSTRACT IDEA” FROM AN APPLICATION OF AN ABSTRACT IDEA REQUIRES ANALYSIS AND CONSIDERATION OF ALL CLAIMED FEATURES. ........................................................................................................ 4  A.  Overarching Principles for a § 101 Analysis.................................................5  B.  The Supreme Court’s § 101 Decisions. .........................................................6  C.  Application of the § 101 Jurisprudence to Computer- Implemented Inventions. ...............................................................................9  D.  The Presence of a Computer May Lend Patent Eligiblity to an Otherwise Patent-Ineligible Idea. ................................................................12 II.  THE FORM OF THE CLAIM DOES NOT CHANGE THE §101 ANALYSIS. ....................................................................................................... 13 III.  BASED ON THE DEGREE OF DETAIL OF THE CLAIMS AS A WHOLE, THE CLAIMED INVENTION IS A PATENT- ELIGIBLE APPLICATION OF AN ABSTRACT IDEA................................. 14 IV.  CONCLUSION .................................................................................................. 18  ii
  • TABLE OF AUTHORITIES Page(s)CasesBancorp Servs., LLC v. Sun Life Assurance Co., 687 F.3d 1266 (Fed. Cir. 2012)............................................................................11Bilski v. Kappos, 130 S. Ct. 3218 (2010) ................................................................................. passimCLS Bank Int’l v. Alice Corporation Pty. Ltd, 685 F.3d 1341 (Fed. Cir. 2012) (vacated)......................................................14, 15CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366 (Fed. Cir. 2011)............................................................................10Dealertrack, Inc. v. Huber, 674 F.3d 1315 (Fed. Cir. 2012)............................................................................10Diamond v. Diehr, 450 U.S. 175 (1981) ..................................................................................... passimFort Props. Inc. v. Am. Master Lease LLC, 671 F.3d 1317 (Fed. Cir. 2012)............................................................................10Gottschalk v. Benson, 409 U.S. 63 (1972) .............................................................................................6, 7In re Alappat, 33 F.3d 1526 (Fed. Cir. 1994) (en banc) .............................................................17Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S.Ct. 1289 (2012) .................................................................................. passimParker v. Flook, 437 U.S. 584 (1978) ..................................................................................... passimResearch Corp. Techs., Inc. v. Microsoft Corp., 627 F.3d 859 (Fed. Cir. 2010)..............................................................................11SiRF Tech., Inc. v. ITC, 601 F.3d 1319 (Fed. Cir. 2010)......................................................................11, 13 iii
  • Typhoon Touch Technologies, Inc. v. Dell, Inc., 650 F.3d 1376 (Fed. Cir. 2011)............................................................................17Statutes35 U.S.C. §101 ................................................................................................. passim35 U.S.C. §102 .....................................................................................................5, 1535 U.S.C. §103 .....................................................................................................5, 1535 U.S.C. §112 .....................................................................................................5, 15Other AuthoritiesInterim Guidance for Determining Subject Matter Eligibilityfor Process Claims in View of Bilski v. Kappos,75 Fed. Reg. 43922 (July 27, 2010) .........................................................................11 iv
  • STATEMENT OF INTEREST OF AMICUS CURIAE The American Intellectual Property Law Association (“AIPLA”) is anational bar association of approximately 14,000 members engaged in all areas ofintellectual property law. AIPLA members include attorneys and patent agentsemployed in private practice and by corporations, universities, and government.AIPLA members represent owners and users of intellectual property across theentire business spectrum, from very large corporations to individual inventors, andin essentially all areas of technology. The en banc Court’s questions relate toissues that are of significant interest to AIPLA and its members. AIPLA has no interest in any of the parties to this litigation or in theoutcome of this case. Its only interest here is in seeking correct and consistentinterpretation of the law. 1 1 Amicus AIPLA files this brief pursuant to the authority granted inparagraph (5) of this Court’s Order of October 9, 2012. After reasonableinvestigation, AIPLA believes that (i) no member of its Board or AmicusCommittee who voted to file this brief, or any attorney in the law firm orcorporation of such a member, represents a party to this litigation in this matter, (ii)no representative of any party to this litigation participated in the authorship of thisbrief, and (iii) no one other than AIPLA, or its members who authored this briefand their law firms or employers, made a monetary contribution to the preparationor submission of this brief. 1
  • SUMMARY OF ARGUMENT In this case, the Court once again returns to the challenge of analyzing patenteligible subject matter under 35 U.S.C. §101 and, in particular, the judicialexclusion of abstract ideas as patent-ineligible. AIPLA answers the questions onwhich briefing is invited as follows: 1. What test should the Court adopt to determine whether a computer- implemented invention is a patent ineligible “abstract idea”; and when, if ever, does the presence of a computer in a claim lend patent eligibility to an otherwise patent-ineligible idea? The Supreme Court has cautioned that there is no comprehensive, talismanictest for identifying patent claims directed only an abstract idea. Bilski v. Kappos,130 S. Ct. 3218, 3231 (2010). Any attempt to contrive one would be futile andunwise. In an effort to strike a careful balance when analyzing process claimsunder §101 the Supreme Court’s decision of Diamond v. Diehr, 450 U.S. 175, 184-85 (1981) articulated the foundational principle that the §101 analysis begins witha careful reading of the claim, including all of the detailed features set forththerein. Thus, the patent-eligibility determination is made based on the claim as awhole and depending on the degree of detail found in the claimed application of anabstract idea. The mere presence of a computer in a claim, generally implementing anabstract idea, does not necessarily lend patent eligibility to an otherwise patent-ineligible claim. However, a computer limitation may contribute to the patent 2
  • eligibility of a claim if the claim spells out specific uses of the computer in a waythat impose meaningful limits on the scope of the claim, demonstrating more thana superficial role of the computer in permitting a claimed method to be performedor in providing it useful structure. In its amicus curiae brief filed in support of neither party, the Governmentsets forth a non-exhaustive list of factors to consider in analyzing computer-implemented inventions under §101, which factors can be gleaned from thedecisions of the Supreme Court and this Court. Gov’t. Br. at 13-14. AIPLAendorses the use of these factors, and others as appropriate, applied on a case-by-case basis to each claim as a whole, as a framework to guide the analysis ofcomputer-implemented inventions under §101. 2. In assessing patent eligibility under 35 U.S.C. §101 of a computer- implemented invention, should it matter whether the invention is claimed as a method, system, or storage medium; and should such claims at times be considered equivalent for §101 purposes? In the determination of patent eligibility, method, system and storagemedium claims, while not equivalent, should be evaluated under the same flexibletest. The presence and use of a computer or other hardware in a claim, whetherpart of the structure or a key element of the process, is but one of the factors thatshould be considered in determining patent eligibility. 3
  • ARGUMENTI. DISTINGUISHING AN “ABSTRACT IDEA” FROM AN APPLICATION OF AN ABSTRACT IDEA REQUIRES ANALYSIS AND CONSIDERATION OF ALL CLAIMED FEATURES. The United States patent system plays a critical role in promotingtechnological innovation that drives the country’s economic growth. Section 101of the Patent Act broadly identifies the categories of patent eligible subject matter,but the Supreme Court has long recognized implicit exceptions for laws of nature,natural phenomena and abstract ideas. The Court has explained that thesecategories of exemptions represent the basic tools of scientific and technologicalwork that must remain available to all. However, it has also recognized that thepatent eligibility determination requires a delicate balance, and that “too broad aninterpretation of this exclusionary principle could eviscerate patent law.” MayoCollaborative Servs. v. Prometheus Labs., Inc., 132 S.Ct. 1289, 1293 (2012). This balance must be struck on a case-by-case basis because there is nosingle bright-line test for determining patent-eligibility under §101. The SupremeCourt’s decision in Diehr, and its recent decisions in Bilski and Mayo underscorethe need for a flexible framework for a case-by-case patent-eligibility analysisunder §101. The Court recognized that this need for flexibility is important in thiscontext because “new technologies may call for new inquiries.” Bilski, 130 S. Ct.at 3228. This Court’s recent jurisprudence on computer-implemented methods, 4
  • including the panel decision in this case, implements the flexible, case-specificapproach that the Supreme Court has also applied in this area. A. Overarching Principles for a § 101 Analysis. In Diehr, the Supreme Court crystallized three important aspects of ananalysis under § 101 which together strike an appropriate balance of protectingpatent-eligible inventions without preempting the use of abstract ideas, laws ofnature and natural phenomena. First, each claim must be considered as a whole.450 U.S. at 188. The Diehr Court held that it is inappropriate to dissect claims inorder to analyze them for purposes of §101. Id. Second, “[t]he ‘novelty’ of any element of steps in a process, or even of theprocess itself, is of no relevance in determining whether the subject matter of aclaim falls within the § 101 categories of possibly patentable subject matter.” Id. at188-89. Whether subject matter is a patent-ineligible abstract idea under § 101 isseparate and distinct from an analysis for other relevant conditions andrequirements, namely §§102, 103 and 112. See, e.g., Bilski, 130 S.Ct. at 3225. Third, case-specific analysis of the details of each patent claim at issue isrequired to determine whether there are meaningful limits on the scope of theclaim. Diehr, 450 U.S. at 191-92. Just as the claim should not be dissected toperform the §101 analysis, it should not be distilled to the “inventive concept” orthe “heart of the invention,” thereby ignoring the detailed features of the claimedinvention. As demonstrated by the Supreme Court’s opinions in Diehr and Mayo, 5
  • patent eligibility must be evaluated based on what the claims recite, not merely onthe ideas upon which they are premised, and a court must consider the assertedclaims as a whole. To do otherwise would lead to a preordained conclusion ofpatent-ineligibility inasmuch as “all inventions at some level embody, use, reflect,rest upon or apply laws of nature, natural phenomena or abstract ideas.” Mayo,132 S. Ct. at 1293. With these overarching principles as a guide, the Supreme Court hasconsidered what constitutes patent-eligible subject matter, as distinguished fromabstract ideas, laws of nature and natural phenomena for which no patent rightsshould be conferred. B. The Supreme Court’s § 101 Decisions. The relevant computer-related Supreme Court decisions were not decided byapplying some bright line test. Instead, as discussed below, the Court consideredthe specific details in the record for the patents under considerations. The case of Gottschalk v. Benson, 409 U.S. 63 (1972) involved an inventionrelated to the programmed conversion of numerical information in general-purposedigital computers and, in particular, to a method for converting binary-codeddecimal numerals into pure binary numerals. Although the Supreme Court recitedthe general proposition that abstract ideas are not patentable “as they are the basictools of scientific and technological work,” id. at 67, it looked to the particulars of 6
  • the claim in question to explain its specific holding that the claim at issue wasineligible for patent protection under § 101: The mathematical formula involved here has no substantial practical application except in connection with a digital computer, which means that if the judgment below is affirmed, the patent would wholly pre- empt the mathematical formula and in practical effect would be a patent on the algorithm itself.Id. at 71-72. The case of Parker v. Flook, 437 U.S. 584 (1978) involved patent claimscovering “any use of a formula for updating the value of an alarm limit on anyprocess variable involved in a process comprising the catalytic chemicalconversion of hydrocarbons.” Id. at 586. In reaching its conclusion that theclaimed invention was ineligible for patent protection, the Supreme Court wascareful to note that the patent application did not specifically explain how thevariables used in the formula were to be selected, and contained no disclosurerelating to the chemical processes at work or the means of setting off an alarm. Id.at 586. Diehr was the next Supreme Court case to consider a patent claim involvinga programmed digital computer. The Court majority held that the recited “physicaland chemical process for molding precision synthetic rubber products falls withinthe § 101 categories of possibly patentable subject matter.” Diehr, 450 U.S. at 7
  • 184. Once again, the Supreme Court engaged in a case-specific analysis,distinguishing Flook on the ground that the patent application in that case did not purport to explain how these other variables [for an updated alarm] were to be determined, nor did it purport ‘to contain any disclosure relating to the chemical processes at work, the monitoring of process variables, or the means of setting off an alarm or adjusting the alarm limit. All that it provides is a formula for computing an updated alarm limit.’Id. at 186-87 (quoting Flook, 437 U.S. at 586). By contrast, the Diehr Courtdescribed the claimed process as drawn to an industrial process for the molding ofrubber products, making it patent-eligible under § 101. Id. at 192-93. In its 2010 decision of Bilski, the Supreme Court directly addressed thequestion of what constitutes an abstract idea in the context of a § 101 inquiry. TheCourt found this Court’s “machine or transformation” inquiry to be a usefulconsideration, though not the sole test, and expressly warned against adoption of“categorical rules that might have wide-ranging and unforeseen impacts.” Bilski,130 S.Ct. at 3230. After a record-specific analysis, the Court concluded that“[Bilski’s] claims are not patentable processes because they are attempts to patentan abstract idea.” Id. at 3230-31. More recently, the Mayo Court considered claims directed to methods ofadjusting drug dosages to treat patients suffering from autoimmune diseases. Hereagain, the Court focused on the degree of detail in the record to determine“whether the claims do significantly more than simply describe those natural 8
  • relations [between concentrations of metabolites and the effectiveness of a drugdosage]” and recite the step of applying the natural law. Mayo, 132 S. Ct. at 1297.In reaching this conclusion, the Court distinguished the details of the patentapplication in Diehr based on “the way the additional steps of the processintegrated the equation into the process as a whole,” and then proceeded to spellout the details of that patent application which demonstrated the point. Id. at 1298-99. In sum, the Supreme Court’s decisions in Benson, Flook, Diehr, Bilski andMayo require that a § 101 analysis include a case-specific inquiry into whether theclaim, considered as a whole, includes “meaningful” limitations beyond an abstractidea, natural law or natural phenomenon. C. Application of the § 101 Jurisprudence to Computer- Implemented Inventions. Whether or not a computer-implemented invention is a patent eligible,practical application of an “abstract idea” is best determined by a case-specificanalysis of the details of each claim of the patent in suit, considering the claim as awhole. A computer-implemented invention is patent-eligible if the claim, read as awhole, describes particular uses of the computer to implement the invention, notjust a general idea. The focus on the details in the record of the specific patentprovides a sound foundation for analyzing the degree of detail in a claimchallenged under § 101. 9
  • As the Government’s amicus brief aptly describes, this Court’s applicationof the Bilski decision in its § 101 analyses of computer-implemented inventionshas resulted in the identification of various factors that may bear on the patent-eligibility of such inventions. Gov’t. Br. at 13-14. These factors include: • whether the computer is recited in a manner that is only nominally or tangentially related to the performance of the invention (e.g., recording the results of a process on a computer), see, e.g., Fort Props. Inc. v. Am. Master Lease LLC, 671 F.3d 1317, 1323-24 (Fed. Cir. 2012); CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366,1370 (Fed. Cir. 2011); • whether the computer is generically recited in a manner that would encompass any machine capable of performing the claimed steps, or whether specific, unconventional computer equipment, tools, or processing capabilities are required, see, e.g., Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333-34 (Fed. Cir. 2012); • whether the invention involves an improvement in the ability of the computer to function as a computer, or whether the invention relates principally to an unrelated, non-technological field (e.g., “instruct[ing] how business should be conducted,” Bilski, 130 S. Ct. at 3229); • whether the claim recites a computerized device that manipulates particular data in particular, specific, and useful ways, e.g., rendering a digital image 10
  • as in Research Corp. Techs., Inc. v. Microsoft Corp., 627 F.3d 859 (Fed. Cir. 2010) or processing GPS satellite signals to identify a discrete physical location on Earth as in SiRF Tech., Inc. v. ITC, 601 F.3d 1319 (Fed. Cir. 2010), or whether the computer is recited solely for its generic functions of automating tasks or communicating over a distance, as in Bancorp Servs., LLC v. Sun Life Assurance Co., 687 F.3d 1266 (Fed. Cir. 2012); • whether (as in Diehr) the abstract idea is bound up in an invention that effects a transformation of matter, or whether (as in Benson and Flook) the abstract idea is merely described in a particular environment; and • whether the computer-related elements of the claim represent conventional steps, described at a high level of generality, that would have to be employed by any person who wished to apply the abstract idea, cf. Mayo, 132 S. Ct. at 1297-98. Of course, not every factor will be relevant to every claim. Moreover, noone factor is conclusive by itself, and the weight accorded each factor will varybased upon the specific facts under consideration in a specific technologicalcontext at a particular time. Indeed, the identified factors are not intended to beexclusive or exhaustive. Gov’t. Br. at 14. For example, the USPTO’s InterimGuidance for Determining Subject Matter Eligibility for Process Claims in View ofBilski v. Kappos, 75 Fed. Reg. 43922 (July 27, 2010), provides additional, detailed 11
  • guidance to perform a flexible, factor-based § 101 analysis to achieve the delicatebalance required by Supreme Court jurisprudence. In sum, AIPLA agrees with the Government’s position that this flexible,broad legal inquiry, undertaken on a case-by-case basis, is the best means toprovide a framework to balance the § 101 analysis consistent with Supreme Courtjurisprudence. D. The Presence of a Computer May Lend Patent Eligiblity to an Otherwise Patent-Ineligible Idea. In the second part of the first briefing question, this Court asks when, if ever,the presence of a computer in a claim lends patent eligibility to an otherwisepatent-ineligible idea. Assuming that the question as posed does not reflectimpermissible claim dissection, AIPLA submits that the answer depends on howthe computer is incorporated into the claim. 2 It goes too far to say that the presence of a computer in a patent claim, initself, demonstrates that the claim recites a practical application of an abstract idea.Rather, the claim as a whole must spell out one or more specific uses of thecomputer that impose meaningful limits on the scope of the claim, demonstratingmore than a superficial role of the computer in permitting the claimed method to be 2 In Diehr, the Court stated the following: “The fact that one or more of thesteps in respondents’ process may not, in isolation, be novel or independentlyeligible for patent protection is irrelevant to the question of whether the claims as awhole recite subject matter eligible for patent protection under §101.” Id. at 193n.15. 12
  • performed or in providing it useful structure. SiRF Tech., Inc., 601 F.3d at 1333(Fed.Cir. 2010) (“In order for the addition of a machine to impose a meaningfullimit on the scope of a claim, it must play a significant part in permitting theclaimed method to be performed, rather than function solely as an obviousmechanism for permitting a solution to be achieved more quickly, i.e., through theutilization of a computer for performing calculations.”) The same case-specific approach urged above would be necessary toevaluate a claim in which any piece of hardware is recited. As the Mayo Courtexplainted, this analytic approach is the reason patent eligibility was found inDiehr but not in Flook. Mayo, 132 S. Ct. at 1298-1301. In Diehr, the overallprocess was patent-eligible because of the way the additional steps of the processintegrated the equation into the process as a whole. Mayo, 132 S. Ct. at 1298.However, Mayo points out that the claim in Flook did not “explain how thevariables used in the formula were to be selected, nor did the [claim] contain anydisclosure relating to chemical processes at work or the means of setting off analarm or adjusting the alarm limit.” Id. at 1299.II. THE FORM OF THE CLAIM DOES NOT CHANGE THE §101 ANALYSIS. From the foregoing, the answer to the second briefing question flowslogically. In the determination of patent eligibility, method, system and storagemedium claims should be evaluated under the same flexible test. The focus should 13
  • be on the details in the record supporting the specific claims. These different typesof claims should not be considered equivalent for § 101 purposes, because differentclaim forms may reflect different recitations of the invention with different patenteligibility results when the claim is considered as a whole. However, thedetermination must be based on the specific role of the recited hardware in theinvention when the claim is considered as a whole.III. BASED ON THE DEGREE OF DETAIL OF THE CLAIMS AS A WHOLE, THE CLAIMED INVENTION IS A PATENT-ELIGIBLE APPLICATION OF AN ABSTRACT IDEA. In the context of summary judgment, and drawing all reasonable inferencesin favor of the non-movant, CLS Bank failed to show by clear and convincingevidence that the claims are not directed to the application of an abstract idea. Onthe contrary, in the context of summary judgment, and under the claim constructionto which CLS Bank agreed, the panel majority reached the correct conclusion. CLSBank Int’l v. Alice Corporation Pty. Ltd, 685 F.3d 1341, 1345 (Fed. Cir. 2012)(vacated). The disagreement within the CLS Bank panel exemplifies the ongoingstruggle to determine whether the level of abstraction reflected in the claims ispatent-eligible subject matter or an unpatentable abstract idea. A review of theclaims themselves evidences their specificity and demonstrates that they do notmerely claim high-level abstract principles. 14
  • Claim 33 of the ’479 patent, which is representative of the method claims,recites: (a) creating a shadow credit record and a shadow debit record for each stakeholder party to be held independently by a supervisory institution from the exchange institutions; (b) obtaining from each exchange institution a start-of-day balance for each shadow credit record and shadow debit record; (c) for each transaction resulting in an exchange obligation, the supervisory institution adjusting each respective party’s shadow credit record or shadow debit record, allowing only those [sic] transactions that do not result in the value of the shadow debit record being less than the value of the shadow credit record at any time, each said adjustment taking place in chronological order; and (d) at the end-of-day, the supervisory institution instructing one of the exchange institutions to exchange credits or debits to the credit record and debit record of the respective parties in accordance with the adjustments of the said permitted transactions, the credits and debits being irrevocable, time invariant obligations placed on the exchange institutions. The patent-eligibility of this claim is properly focused on the degree of detailreflected in the claim, considered as a whole, and is independent of, and precedes,analysis under 35 U.S.C. §§ 102, 103 and 112. Assuming, arguendo, that the“basic idea behind the claimed invention is the use of an intermediary in a financialtransaction,” 685 F.3d at 1357, the claim defines a specific application of that basicidea in a particular way that does not preempt the basic idea. Alternativeunclaimed implementations remain available. 15
  • Based on the record before the Court, the computer is an integral aspect ofthe claimed process. The application is specific in that it involves manipulation ofthe values of the shadow credit record and the shadow debit record. Those“shadow” objects correspond to specific account balances, without implicating orinterfering with the account balances themselves, which is an application of theabstract idea that weighs in favor of eligibility. Moreover, the specific form ofmanipulation imposes meaningful limits on the execution of the claimed methodsteps and thus further weighs in favor of patentability. The application is particularto those limited fields of endeavor in which parties have credit and debit records atexchange institutions. No subjective determination is involved. The applicationdoes not involve either insignificant post-solution activity or the type of field-of-use recited but rejected in Flook. The application is limited to evaluating eachtransaction in chronological order rather than in one of the many alternativepossibilities. Finally, the performance of the process is observable and verifiable.These factors, considered in their totality, indicate that method claim 33 does notmerely recite an abstract idea. Claim 1 of the ’720 patent is representative of the system claims. In additionto the specific application described above in the analysis of the method claims, thedata processing system includes “a data storage unit” storing information about “ashadow credit record and a showed debit record . . . independent from a credit 16
  • record and debit record maintained by an exchange institution.” Segregating thoseshadow credit and debit records constitutes, as specifically claimed, one particularform of implementation. The claim also recites “a computer . . . configured to (a) receive atransaction, (b) electronically adjust said shadow credit and/or shadow debit . . . ;and (c) generate an instruction . . . wherein said instruction being an irrevocable,time invariant obligation placed on said exchange institution.” The phrase“configured to” requires that the computer be actually programmed to perform therecited functionality. See, e.g., Typhoon Touch Technologies, Inc. v. Dell, Inc.,650 F.3d 1376, 1380 (Fed. Cir. 2011). The system claim is implemented using aparticular combination of data storage unit and a specially-programmed computer.In this respect, the claim is not merely to a general purpose computer, butanalogous to the computer in In re Alappat, 33 F.3d 1526 (Fed. Cir. 1994) (enbanc). Turning last to the representative “computer readable storage medium”claim, claim 39 of the ‘375 patent, the claim defines a specific article ofmanufacture that contains specific computer code which allows the medium towork cooperatively to perform a unique and limited function. Cf. Alappat, 33 F.3dat 1545. The claim expressly recites an article of manufacture, in addition to the 17
  • specific details of implementation discussed above. This is an additional factorthat weighs in favor of patent-eligibility. The claimed subject matter in all three of the representative claims is to aspecific implementation of the idea of eliminating settlement risk. None of thethree representative claims cover all solutions to the problem. Therefore, the threerepresentative claims define patent-eligible subject matter under § 101.IV. CONCLUSION In view of the foregoing, the Final Judgment of the district court should bereversed.January 17, 2013 Respectfully submitted, ______________________________ Jerry R. Selinger Gero McClellan PATTERSON & SHERIDAN, LLP 1700 Pacific, Suite 2650 Dallas, Texas 75201 Telephone: 214-272-0957 ATTORNEYS FOR AMICUS CURIAE American Intellectual Property Law Association 18
  • United States Court of Appeals for the Federal Circuit CLS BANK v. ALICE CORPORATION, 2011-1301 CERTIFICATE OF SERVICE I, John C. Kruesi, Jr., being duly sworn according to law and being over theage of 18, upon my oath depose and say that: Counsel Press was retained by Patterson & Sheridan, LLP, Attorneys forAmicus Curiae The American Intellectual Property Law Association to print thisdocument. I am an employee of Counsel Press. On the 17th day of January, 2013, I served the within Brief for AmicusCuriae upon the following counsel for the parties in the appeal: David M. Krinsky Mark A. Perry dkrinsky@wc.com mperry@gibsondunn.com Williams & Connolly LLP Gibson, Dunn & Crutcher LLP 725 12th Street, N.W. 1050 Connecticut Ave., N.W. Washington, DC 20005 Washington, DC 20036-5306 Tel: (202)434-5000 Tel: (202)887-3667 Fax: (202)434-5029 Fax: (202)530-9696 Counsel for Defendant-Appellant Counsel for Plaintiff-Appellee Alice Corporation Pty. Ltd CLS Bank International and Counterclaim Defendant-Appellee CLS Services Ltd.via Express Mail, by causing 2 true copies of each, enclosed in a properlyaddressed wrapper, to be deposited in an official depository of the U.S. PostalService. Additionally, Counsel for Amici Curiae currently appearing, or that counselknows will appear, will been sent a courtesy copy of the brief via email. Unless otherwise noted, 31 copies have been hand-delivered to the Court onthe same date as above.January 17, 2013 __________________ John C. Kruesi, Jr. Counsel Press 19
  • CERTIFICATE OF COMPLIANCE WITH TYPE-VOLUME LIMITATION, TYPEFACE REQUIREMENTS AND TYPE STYLE REQUIREMENTS 1. This brief complies with the type-volume limitation of Federal Rule ofAppellate Procedure 32(a)(7)(B). x The brief contains 4,145 words, excluding the parts of the brief exempted by Federal Rule of Appellate Procedure 32(a)(7)(B)(iii),or The brief uses a monospaced typeface and contains lines of text, excluding the parts of the brief exempted by Federal Rule of Appellate Procedure 32(a)(7)(B)(iii). 2. This brief complies with the typeface requirements of Federal Rule ofAppellate Procedure 32(a)(5) and the type style requirements of Federal Rule ofAppellate Procedure 32(a)(6). x The brief has been prepared in a proportionally spaced typeface using MS Word 2007 in a 14 point Times New Roman font or The brief has been prepared in a monospaced typeface using ________ in a ___ characters per inch_________ font.January 17, 2013 (s)Date Name: Jerry R. Selinger Attorneys for Amicus Curiae The American Intellectual Property Law Association 20