This brief was submitted by the American Intellectual Property Law Association (AIPLA) in support of Alice Corporation Pty. Ltd. in the case of CLS Bank International v. Alice Corporation Pty. Ltd. The brief argues that determining whether a computer-implemented invention is directed to an abstract idea or a patent-eligible application requires analyzing all the claimed features as a whole on a case-by-case basis, as outlined in Supreme Court precedent like Diamond v. Diehr. The brief also contends that while the mere presence of a computer does not necessarily lend eligibility, computer limitations can contribute to eligibility if they meaningfully limit the scope of the claim.

1. 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. SELINGER
President GERO MCCLELLAN
AMERICAN INTELLECTUAL PATTERSON & SHERIDAN, LLP
PROPERTY LAW ASSOCIATION 1700 Pacific Ave., Suite 2650
241 18TH Street, South Dallas, TX 75201
Suite 700 (214) 272-0957
Arlington, VA 22202
(703) 415-0780
Attorneys for Amicus Curiae American Intellectual Property Law Association
JANUARY 17, 2013
COUNSEL PRESS, LLC (202) 783-7288 * (888) 277-3259 245620

2. 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 Law
Association, 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 10
percent 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 that
appeared for the party or amicus now represented by us in the trial court or agency
or 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

3. TABLE OF CONTENTS
Page
CERTIFICATE 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

4. TABLE OF AUTHORITIES
Page(s)
Cases
Bancorp Servs., LLC v. Sun Life Assurance Co.,
687 F.3d 1266 (Fed. Cir. 2012)............................................................................11
Bilski v. Kappos,
130 S. Ct. 3218 (2010) ................................................................................. passim
CLS Bank Int’l v. Alice Corporation Pty. Ltd,
685 F.3d 1341 (Fed. Cir. 2012) (vacated)......................................................14, 15
CyberSource Corp. v. Retail Decisions, Inc.,
654 F.3d 1366 (Fed. Cir. 2011)............................................................................10
Dealertrack, Inc. v. Huber,
674 F.3d 1315 (Fed. Cir. 2012)............................................................................10
Diamond v. Diehr,
450 U.S. 175 (1981) ..................................................................................... passim
Fort Props. Inc. v. Am. Master Lease LLC,
671 F.3d 1317 (Fed. Cir. 2012)............................................................................10
Gottschalk v. Benson,
409 U.S. 63 (1972) .............................................................................................6, 7
In re Alappat,
33 F.3d 1526 (Fed. Cir. 1994) (en banc) .............................................................17
Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
132 S.Ct. 1289 (2012) .................................................................................. passim
Parker v. Flook,
437 U.S. 584 (1978) ..................................................................................... passim
Research Corp. Techs., Inc. v. Microsoft Corp.,
627 F.3d 859 (Fed. Cir. 2010)..............................................................................11
SiRF Tech., Inc. v. ITC,
601 F.3d 1319 (Fed. Cir. 2010)......................................................................11, 13
iii

5. Typhoon Touch Technologies, Inc. v. Dell, Inc.,
650 F.3d 1376 (Fed. Cir. 2011)............................................................................17
Statutes
35 U.S.C. §101 ................................................................................................. passim
35 U.S.C. §102 .....................................................................................................5, 15
35 U.S.C. §103 .....................................................................................................5, 15
35 U.S.C. §112 .....................................................................................................5, 15
Other Authorities
Interim Guidance for Determining Subject Matter Eligibility
for Process Claims in View of Bilski v. Kappos,
75 Fed. Reg. 43922 (July 27, 2010) .........................................................................11
iv

6. STATEMENT OF INTEREST OF AMICUS CURIAE
The American Intellectual Property Law Association (“AIPLA”) is a
national bar association of approximately 14,000 members engaged in all areas of
intellectual property law. AIPLA members include attorneys and patent agents
employed in private practice and by corporations, universities, and government.
AIPLA members represent owners and users of intellectual property across the
entire business spectrum, from very large corporations to individual inventors, and
in essentially all areas of technology. The en banc Court’s questions relate to
issues that are of significant interest to AIPLA and its members.
AIPLA has no interest in any of the parties to this litigation or in the
outcome of this case. Its only interest here is in seeking correct and consistent
interpretation of the law. 1
1
Amicus AIPLA files this brief pursuant to the authority granted in
paragraph (5) of this Court’s Order of October 9, 2012. After reasonable
investigation, AIPLA believes that (i) no member of its Board or Amicus
Committee who voted to file this brief, or any attorney in the law firm or
corporation 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 this
brief, and (iii) no one other than AIPLA, or its members who authored this brief
and their law firms or employers, made a monetary contribution to the preparation
or submission of this brief.
1

7. SUMMARY OF ARGUMENT
In this case, the Court once again returns to the challenge of analyzing patent
eligible subject matter under 35 U.S.C. §101 and, in particular, the judicial
exclusion of abstract ideas as patent-ineligible. AIPLA answers the questions on
which 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, talismanic
test 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 and
unwise. In an effort to strike a careful balance when analyzing process claims
under §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 with
a careful reading of the claim, including all of the detailed features set forth
therein. Thus, the patent-eligibility determination is made based on the claim as a
whole and depending on the degree of detail found in the claimed application of an
abstract idea.
The mere presence of a computer in a claim, generally implementing an
abstract idea, does not necessarily lend patent eligibility to an otherwise patent-
ineligible claim. However, a computer limitation may contribute to the patent
2

8. eligibility of a claim if the claim spells out specific uses of the computer in a way
that impose meaningful limits on the scope of the claim, demonstrating more than
a superficial role of the computer in permitting a claimed method to be performed
or in providing it useful structure.
In its amicus curiae brief filed in support of neither party, the Government
sets forth a non-exhaustive list of factors to consider in analyzing computer-
implemented inventions under §101, which factors can be gleaned from the
decisions of the Supreme Court and this Court. Gov’t. Br. at 13-14. AIPLA
endorses 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 of
computer-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 storage
medium claims, while not equivalent, should be evaluated under the same flexible
test. The presence and use of a computer or other hardware in a claim, whether
part of the structure or a key element of the process, is but one of the factors that
should be considered in determining patent eligibility.
3

9. ARGUMENT
I. 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 promoting
technological innovation that drives the country’s economic growth. Section 101
of 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 these
categories of exemptions represent the basic tools of scientific and technological
work that must remain available to all. However, it has also recognized that the
patent eligibility determination requires a delicate balance, and that “too broad an
interpretation of this exclusionary principle could eviscerate patent law.” Mayo
Collaborative 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 no
single bright-line test for determining patent-eligibility under §101. The Supreme
Court’s decision in Diehr, and its recent decisions in Bilski and Mayo underscore
the need for a flexible framework for a case-by-case patent-eligibility analysis
under §101. The Court recognized that this need for flexibility is important in this
context because “new technologies may call for new inquiries.” Bilski, 130 S. Ct.
at 3228. This Court’s recent jurisprudence on computer-implemented methods,
4

10. including the panel decision in this case, implements the flexible, case-specific
approach 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 an
analysis under § 101 which together strike an appropriate balance of protecting
patent-eligible inventions without preempting the use of abstract ideas, laws of
nature 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 in
order to analyze them for purposes of §101. Id.
Second, “[t]he ‘novelty’ of any element of steps in a process, or even of the
process itself, is of no relevance in determining whether the subject matter of a
claim falls within the § 101 categories of possibly patentable subject matter.” Id. at
188-89. Whether subject matter is a patent-ineligible abstract idea under § 101 is
separate and distinct from an analysis for other relevant conditions and
requirements, 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 is
required to determine whether there are meaningful limits on the scope of the
claim. Diehr, 450 U.S. at 191-92. Just as the claim should not be dissected to
perform the §101 analysis, it should not be distilled to the “inventive concept” or
the “heart of the invention,” thereby ignoring the detailed features of the claimed
invention. As demonstrated by the Supreme Court’s opinions in Diehr and Mayo,
5

11. patent eligibility must be evaluated based on what the claims recite, not merely on
the ideas upon which they are premised, and a court must consider the asserted
claims as a whole. To do otherwise would lead to a preordained conclusion of
patent-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 has
considered what constitutes patent-eligible subject matter, as distinguished from
abstract ideas, laws of nature and natural phenomena for which no patent rights
should be conferred.
B. The Supreme Court’s § 101 Decisions.
The relevant computer-related Supreme Court decisions were not decided by
applying some bright line test. Instead, as discussed below, the Court considered
the specific details in the record for the patents under considerations.
The case of Gottschalk v. Benson, 409 U.S. 63 (1972) involved an invention
related to the programmed conversion of numerical information in general-purpose
digital computers and, in particular, to a method for converting binary-coded
decimal numerals into pure binary numerals. Although the Supreme Court recited
the general proposition that abstract ideas are not patentable “as they are the basic
tools of scientific and technological work,” id. at 67, it looked to the particulars of
6

12. the claim in question to explain its specific holding that the claim at issue was
ineligible 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 claims
covering “any use of a formula for updating the value of an alarm limit on any
process variable involved in a process comprising the catalytic chemical
conversion of hydrocarbons.” Id. at 586. In reaching its conclusion that the
claimed invention was ineligible for patent protection, the Supreme Court was
careful to note that the patent application did not specifically explain how the
variables used in the formula were to be selected, and contained no disclosure
relating 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 involving
a programmed digital computer. The Court majority held that the recited “physical
and chemical process for molding precision synthetic rubber products falls within
the § 101 categories of possibly patentable subject matter.” Diehr, 450 U.S. at
7

13. 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 Court
described the claimed process as drawn to an industrial process for the molding of
rubber products, making it patent-eligible under § 101. Id. at 192-93.
In its 2010 decision of Bilski, the Supreme Court directly addressed the
question of what constitutes an abstract idea in the context of a § 101 inquiry. The
Court found this Court’s “machine or transformation” inquiry to be a useful
consideration, 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 patent
an abstract idea.” Id. at 3230-31.
More recently, the Mayo Court considered claims directed to methods of
adjusting drug dosages to treat patients suffering from autoimmune diseases. Here
again, 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

14. relations [between concentrations of metabolites and the effectiveness of a drug
dosage]” 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 patent
application in Diehr based on “the way the additional steps of the process
integrated the equation into the process as a whole,” and then proceeded to spell
out 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 and
Mayo require that a § 101 analysis include a case-specific inquiry into whether the
claim, considered as a whole, includes “meaningful” limitations beyond an abstract
idea, 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-specific
analysis of the details of each claim of the patent in suit, considering the claim as a
whole. A computer-implemented invention is patent-eligible if the claim, read as a
whole, describes particular uses of the computer to implement the invention, not
just a general idea. The focus on the details in the record of the specific patent
provides a sound foundation for analyzing the degree of detail in a claim
challenged under § 101.
9

15. As the Government’s amicus brief aptly describes, this Court’s application
of the Bilski decision in its § 101 analyses of computer-implemented inventions
has 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

16. 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, no
one factor is conclusive by itself, and the weight accorded each factor will vary
based upon the specific facts under consideration in a specific technological
context at a particular time. Indeed, the identified factors are not intended to be
exclusive or exhaustive. Gov’t. Br. at 14. For example, the USPTO’s Interim
Guidance for Determining Subject Matter Eligibility for Process Claims in View of
Bilski v. Kappos, 75 Fed. Reg. 43922 (July 27, 2010), provides additional, detailed
11

17. guidance to perform a flexible, factor-based § 101 analysis to achieve the delicate
balance 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 to
provide a framework to balance the § 101 analysis consistent with Supreme Court
jurisprudence.
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 otherwise
patent-ineligible idea. Assuming that the question as posed does not reflect
impermissible claim dissection, AIPLA submits that the answer depends on how
the computer is incorporated into the claim. 2
It goes too far to say that the presence of a computer in a patent claim, in
itself, 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 the
computer that impose meaningful limits on the scope of the claim, demonstrating
more 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 the
steps in respondents’ process may not, in isolation, be novel or independently
eligible for patent protection is irrelevant to the question of whether the claims as a
whole recite subject matter eligible for patent protection under §101.” Id. at 193
n.15.
12

18. 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 meaningful
limit on the scope of a claim, it must play a significant part in permitting the
claimed method to be performed, rather than function solely as an obvious
mechanism for permitting a solution to be achieved more quickly, i.e., through the
utilization of a computer for performing calculations.”)
The same case-specific approach urged above would be necessary to
evaluate a claim in which any piece of hardware is recited. As the Mayo Court
explainted, this analytic approach is the reason patent eligibility was found in
Diehr but not in Flook. Mayo, 132 S. Ct. at 1298-1301. In Diehr, the overall
process was patent-eligible because of the way the additional steps of the process
integrated 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 the
variables used in the formula were to be selected, nor did the [claim] contain any
disclosure relating to chemical processes at work or the means of setting off an
alarm 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 flows
logically. In the determination of patent eligibility, method, system and storage
medium claims should be evaluated under the same flexible test. The focus should
13

19. be on the details in the record supporting the specific claims. These different types
of claims should not be considered equivalent for § 101 purposes, because different
claim forms may reflect different recitations of the invention with different patent
eligibility results when the claim is considered as a whole. However, the
determination must be based on the specific role of the recited hardware in the
invention 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 inferences
in favor of the non-movant, CLS Bank failed to show by clear and convincing
evidence that the claims are not directed to the application of an abstract idea. On
the contrary, in the context of summary judgment, and under the claim construction
to which CLS Bank agreed, the panel majority reached the correct conclusion. CLS
Bank 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 ongoing
struggle to determine whether the level of abstraction reflected in the claims is
patent-eligible subject matter or an unpatentable abstract idea. A review of the
claims themselves evidences their specificity and demonstrates that they do not
merely claim high-level abstract principles.
14

20. 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 detail
reflected 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 financial
transaction,” 685 F.3d at 1357, the claim defines a specific application of that basic
idea in a particular way that does not preempt the basic idea. Alternative
unclaimed implementations remain available.
15

21. Based on the record before the Court, the computer is an integral aspect of
the claimed process. The application is specific in that it involves manipulation of
the values of the shadow credit record and the shadow debit record. Those
“shadow” objects correspond to specific account balances, without implicating or
interfering with the account balances themselves, which is an application of the
abstract idea that weighs in favor of eligibility. Moreover, the specific form of
manipulation imposes meaningful limits on the execution of the claimed method
steps and thus further weighs in favor of patentability. The application is particular
to those limited fields of endeavor in which parties have credit and debit records at
exchange institutions. No subjective determination is involved. The application
does 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 each
transaction in chronological order rather than in one of the many alternative
possibilities. Finally, the performance of the process is observable and verifiable.
These factors, considered in their totality, indicate that method claim 33 does not
merely recite an abstract idea.
Claim 1 of the ’720 patent is representative of the system claims. In addition
to the specific application described above in the analysis of the method claims, the
data processing system includes “a data storage unit” storing information about “a
shadow credit record and a showed debit record . . . independent from a credit
16

22. record and debit record maintained by an exchange institution.” Segregating those
shadow credit and debit records constitutes, as specifically claimed, one particular
form of implementation.
The claim also recites “a computer . . . configured to (a) receive a
transaction, (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 the
recited 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 a
particular combination of data storage unit and a specially-programmed computer.
In this respect, the claim is not merely to a general purpose computer, but
analogous to the computer in In re Alappat, 33 F.3d 1526 (Fed. Cir. 1994) (en
banc).
Turning last to the representative “computer readable storage medium”
claim, claim 39 of the ‘375 patent, the claim defines a specific article of
manufacture that contains specific computer code which allows the medium to
work cooperatively to perform a unique and limited function. Cf. Alappat, 33 F.3d
at 1545. The claim expressly recites an article of manufacture, in addition to the
17

23. specific details of implementation discussed above. This is an additional factor
that weighs in favor of patent-eligibility.
The claimed subject matter in all three of the representative claims is to a
specific implementation of the idea of eliminating settlement risk. None of the
three representative claims cover all solutions to the problem. Therefore, the three
representative claims define patent-eligible subject matter under § 101.
IV. CONCLUSION
In view of the foregoing, the Final Judgment of the district court should be
reversed.
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
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24. 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 the
age of 18, upon my oath depose and say that:
Counsel Press was retained by Patterson & Sheridan, LLP, Attorneys for
Amicus Curiae The American Intellectual Property Law Association to print this
document. I am an employee of Counsel Press.
On the 17th day of January, 2013, I served the within Brief for Amicus
Curiae 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 properly
addressed wrapper, to be deposited in an official depository of the U.S. Postal
Service.
Additionally, Counsel for Amici Curiae currently appearing, or that counsel
knows 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 on
the same date as above.
January 17, 2013 __________________
John C. Kruesi, Jr.
Counsel Press
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25. 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 of
Appellate 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 of
Appellate Procedure 32(a)(5) and the type style requirements of Federal Rule of
Appellate 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
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