Software Patent Amici in Support of Petitioner Alice Corporation

When the U.S. Supreme Court finishes hearing arguments in the upcoming case Alice Corporation v. CLS Bank International, it will be asked to judge whether or not software and computer-implemented inventions are eligible to receive patent protections through the U.S. Patent and Trademark Office. Should the Supreme Court uphold the original decision and declares that the Alice’s patents on computer-implemented systems for managing risk in financial transactions are patent ineligible, thousands upon thousands of software patents could become invalidated.

We discussed some of the issues in play with this major case in our previous look at amicus briefs filed with the U.S. Supreme Court for this case. We have also profiled the IBM amicus brief that argued that the abstract idea doctrine was unworkable. These parties, though largely neutral, had a number of disdain for how the judiciary has handled the issue of software’s patent eligibility under Section 101 of Title 35 of the United States Code. Today, we’re taking a look at briefs filed for either side of this historic case to get a broader sense of the viewpoints involved in this issue. A number of major corporations, non-profit organizations in technological fields and renowned scholars have lent their ideas to these briefs, and readers may find their views on the patent eligibility of software programs to be enlightening.

A quick perusal of the amicus briefs published online by the American Bar Association shows that only a few of the briefs filed are supporting the petitioner, Alice Corporation, in this case. In fact, only three briefs in support of the petitioner are shown on the ABA’s official site listing amicus briefs for this case; there are a total of 40 amicus curiae briefs shown on that site, as of this writing.

That only three briefs are filed in support of Alice Corporation is a little misleading in this case, however, since many of the briefs that were filed in support of neither party come out and directly support the patent eligibility of software. For example, the IBM amicus brief, which was filed in support of neither party, concludes that a Section 101 patent eligibility analysis is the wrong analysis to use in this and similar cases since the abstract idea doctrine is unworkable and yet to be defined by the Supreme Court. IBM suggests the Court use Section 103, the obvious analysis and the well developed case law under KSR, to determine patentability in this and similar cases. Thus, while IBM did not take a position on the specific merits of the case, as with many of the briefs filed, if the Supreme Court were to follow the IBM counsel it would lead to an Alice victory. Even Microsoft/Adobe/HP, which does not support Alice on these claims urged the Supreme Court to find software patent eligible. Thus, characterizing the position of the amici based on whether the support Alice, support CLS Bank or support neither party has proved quite difficult in this matter.

In any event, three parties specifically filed briefs in support of Alice Corporation’s patent claims. For the most part, these groups seem to favor the adoption a test specifically designed to determine the patent eligibility of software inventions, and all are interested in seeing the patent claims in question deemed eligible by the court. Only two of the briefs are discussed below.The third brief was filed by Dale R. Cook, pro se. While Mr. Cook is an attorney, his brief  is rather difficult, with section headings being extremely lengthy and not at all reader friendly. The Cook brief is full of indirect, dense logic and it seems unlikely that the Supreme Court clerks or the Court itself will consider this brief for more than a moment, if that. As a result we do not consider the Cook brief here.



Brief for Amicus Curiae Advanced Biological Laboratories, SA in Support of Petitioner

Advanced Biological Laboratories, SA is representative of the many small, medium and large-sized companies that will be impacted by the court’s decision in Alice Corp. v CLS Bank. It cites two patents that it owns which have been invalidated by the recent Federal Circuit decision in this case: U.S. Patent No. 6081786 and U.S. Patent No. 6188988, both entitled Systems, Methods and Computer Program Products for Guiding the Selection of Therapeutic Treatment Regimens. The computer-implemented systems of providing personalized treatment options for HIV/AIDS, cancer and more were considered unpatentable under Section 101 as “claiming merely the mental steps performed by a doctor.”

At one point in the brief an interesting and very true statement is made about how those unfamiliar with software mistakenly think of it as merely representing an idea. The brief explains:

Claims for software inventions are more at risk for being mistaken as “abstract ideas” by those who are not familiar with the underlying nature of software (as a set of mechanisms for controlling a machine) and the way it is created. Courts should take into account the actual software technology involved in an invention as disclosed and claimed, rather than merely a lay person’s interpretation of the claims.

While perfectly true, one has to wonder whether the Supreme Court Justices, none of whom are patent experts let alone software experts, and who according to Justice Kagan don’t even use e-mail, will realize that they are among those “lay person’s” who are unknowledgeable from a substantive standpoint. Unfortunately, in many patent cases it seems the Court has believed that it possesses some mystical powers bestowed upon them that allows them expertise in all things they consider. This at times has allowed them to make some stunningly incorrect scientific statements. My all-time favorite is probably when they proclaimed that a pH of 5 is equivalent to a pH of 6 (see Warner Jenkinson v. Hilton Davis Chemical), although some I know prefer the time that they said that magnesium is equivalent to manganese (see Graver Tank v. Linde Air Products). I also find it curious that the Supreme Court has said that in order to be entitled to prove a claim is infringed under the doctrine of equivalents the patent owner must conclusively demonstrate that they were not in possession of the invention and that the written description does not support the equivalent (see Festo v. Shoketsu Kinzoku Kogyo Kabushiki). [NOTE: If you have a favorite Supreme Court patent absurdity please share it below in the comments.]

In any event, substantively an objective preemption test is brought as being an effective means for declaring a piece of software patent-eligible under Section 101 of U.S. patent law. This test would create an effective framework for general patent eligibility evaluation for software by determining whether claims preempt an abstract intellectual idea.

This objective means test would require the court to determine patent eligibility in validity cases in two steps. First, the court would have to identify whether the claim is “directed to a law of nature, scientific fact, or purely abstract intellectual idea divorced from tangible mechanisms, necessarily and inherently mental in nature.” The second step requires a court to determine if that claim directed to generally unpatentable material preempts all practical applications of that idea or law of nature. Analysis from persons of ordinary skill in the art is very important in this test for determining meaningful limitations set by the claims.

Under this test, Advanced Biological Laboratories argues that the claims of the patents held by Alice Corporation are valid under Section 101. The objective preemption test also provides a way to use Section 101 to determine patent eligibility, the major question of this case, without narrowing it and hampering future innovation, which is of course an important concern given that a finding that an invention is patent ineligible means no protection will be granted even if the invention is useful, new, not obvious and appropriately described.


Brief of Amici Curiae Trading Technologies International, Inc. et al

This brief has been filed by a collective of 41 companies, four individuals and one lobbyist organization (U.S. Startups and Inventors for Jobs). This group includes competing companies and even some involved in patent litigation against each other, but they all have an interest in ensuring that patent eligibility rules don’t unnecessarily restrict computer-implemented inventions.

The amici argue that tests for applying the abstract ideas exception to this case, and in fact any argument that finds Alice Corporation’s claims invalid, represents “a fundamentally flawed understanding of computer-implemented inventions today.” Broadly construing and applying the abstract ideas exception “would jeopardize countless patents and patent-fostered innovations that are providing real, tangible benefits to all levels of society, and that are helping to fuel the domestic and global economies.”

The brief’s summary of arguments focuses on the fact that computers are now highly complex, incredible customizable machines that support innovative advances in diverse fields, including automotive, mobile phones, home appliances, administration management and more. Alice’s patent claims are valid in the view of the amici because the Court should take a narrow view of the abstract ideas exception; because the patent claims mention tangible equipment such as a computer, the claims are not and cannot be directed to something that is abstract. This makes perfect sense really, even though the Supreme Court has never defined the term “abstract idea,” it does seems intellectually impossible to call something that is clearly tangible an “abstract idea.”

The amici explain that U.S. Code Title 35 Section 101’s language on the patent eligibility of laws of nature, physical phenomena and mathematical formulas isn’t even implicated in this case, arguing rather persuasively that because the claims are directly and specifically by their terms related to computer implementation with tangible structure recited the cases relied upon by the district court, which related to scientific truths without tangible structure, should be deemed inapplicable. The brief argues:

… Because such a scientific truth reveals a relationship that has always existed it cannot be invented within the meaning of Section 101. This Court, therefore, has at times suggested that a claim that adds an additional tangible step or element to a scientific truth must itself demonstrate some inventive quality for the resulting claim to become patent eligible.

No such problem exists for inventions that are not directed to such scientific truths. The abstract ideas at the heart of such inventions did not, like the law of gravity, always exist in nature; rather, they were brought into being by human ingenuity.

(citations and quotations omitted, emphasis in the original).

The brief concludes:

Because Petitioner’s claims are not directed to scientific truths and recite tangible computer elements, the claims easily satisfy Section 101. Accordingly, this Court should reverse the judgment of the Federal Circuit.



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Join the Discussion

14 comments so far.

  • [Avatar for step back]
    step back
    March 25, 2014 09:39 pm


    I do not hold out much hope for the baseball bat lathing Supremes of the Myriad (v. ACLU) case.

    If they can analogize an isolated composition of matter to a bat turned from the trunk of a tree, they can bend the wax nose of all patent law to whatever shape and direction their scientifically illiterate bat brains guide them towards. Section 101 will never be the same. Chakabarty will be overruled in silencio. Expect nothing less of them. Sadly.

  • [Avatar for patent leather]
    patent leather
    March 25, 2014 02:59 pm

    whether the Pythagorean Theorem is technically a law of nature or not, my point in #2 was that while I don’t think one should get a patent on fundamental things like the Pythagorean Theorem (I don’t see how anyone could disagree with me here), the equation in Parker v Flook was created by the inventor to work for his “alarm limits” system. History has shown that Justice Stevens’ concern about pre-emption was misguided, as Flook’s equation has not (to my knowledge) ever been applied to anything else. Flook should have gotten his patent.

    Alice should also get to keep their patent, although with cases like Parker v Flook being heavily relied upon, I’m not expecting much from the Supreme Court.

  • [Avatar for step back]
    step back
    March 25, 2014 02:49 pm


    Thank you for backing up my comment #4, albeit in more polite manner.

    For those who had not done some deep think on the matter, Euclidean geometry assumes a universe with infinitely small dimensions all filled with points and lines of zero width. However, modern physics tells us the real universe is not built that way. See for example, “The Road to Reality” by Penrose.

  • [Avatar for Joachim Martillo]
    Joachim Martillo
    March 25, 2014 12:14 pm

    The Pythagorian Theorem is a relation of Euclidean geometry, which is not the geometry of the physical universe.

  • [Avatar for MaxDrei]
    March 24, 2014 10:45 am

    Readers, below I answer anon’s #7and 8:

    7. For me, the subject matter of the claim is the whole of the claim. Who (aside from anon) disagrees?

    8. I do not write that Bilski forbids business methods per se, only those that are indistinguishable from Bilski’s. Who (apart from anon) thinks I did?

    So I see no errors in my # 5 above. Does anybody else (aside from anon)?

  • [Avatar for Anon]
    March 24, 2014 09:14 am


    Your points 1 -3 are accepted. Further, claims are to be read from the vantage point of an person having ordinary skill in the art, and such a person would already know that manufactures and machines are what are being claimed in software and software system patents.

    If this is understood as a foundation, it is only through ignoring this foundation that the “subject matter” can be attacked as abstract.

    The problem in US law is that the Supreme Court has woven a conflicting set of views. As Paul Cole has repeatedly observed, the Prometheus case simply cannot be sustained as providing any workable law given all of the other Court jurisprudence.

    Further, just as Billski could not reach to outlawing business methods, the Court here is Alice cannot outlaw software – not without further risking a meltdown in 101 jurisprudence and rewriting what Congress has explicitly written. This is not to say that they may so try. After all, every new day shows us Prometheus strapped to a rock, with an eagle eating out his freshly regrown liver.

  • [Avatar for Anon]
    March 24, 2014 09:02 am


    You also have a subtle error at 4. Bilski was specifically NOT held to be ineligible because it was a business method. It was held to be ineligible because it was held to be abstract. Your subtle error is in equating all business methods as being abstract. You appear not to be applying US law, but rather the EP law and the limitation of “technical.”

  • [Avatar for Anon]
    March 24, 2014 09:00 am


    You have an error at 5. You are reaching for the “gist of the invention” and applying the wrong US law of pre-1952. You do not get to try to fathom “the subject matter of the claim” and must take the claim as a whole.

  • [Avatar for EG]
    March 24, 2014 08:34 am


    Thanks for highlighting the Trading Technologies amicus brief. It’s the most important in terms of number of those signed on (and what area they come from), as well as a providing lucid and compelling presentation in support of the petitioner. Now if only Our Judicial Mount Olympus would pay attention to it . . .

  • [Avatar for MaxDrei]
    March 24, 2014 04:44 am

    Eligibility under 35 USC 101. Suppose:

    1. the claim at issue is of the form: Silicon-based computer, programmed to execute X.

    2. I include silicon to distinguish the claimed subject matter from the human brain.

    3. I have difficulty accepting that claimed subject matter as “abstract”, regardless of the nature of “X”. Are we not here deliberately claiming a concrete object with some silicon bits in it.

    4. Suppose X is a business method, indistinguishable from the likes of ineligible Bilski. I can see that X is “abstract” in the eyes of the Supreme Court of the USA, but the subject matter of the claim is a computer lump which you can drop on your toe, not an abstract method which you can’t.

    5. Yet at the same time, under the patent statute, the subject matter of the claim is immaterially different from the Bilski subject matter that SCOTUS told us is the sort of Thing which is not patentable. OK, if that is so, as a practical matter, how should it best be filtered out then, in the everyday examination work of the USPTO? Under 101? Or under 102/3?

    6. Will SCOTUS give the USPTO useful guidance? I’m not holding my breath..

  • [Avatar for step back]
    step back
    March 23, 2014 11:10 pm

    The Pythagorean theorem is NOT a law of nature because Mother Nature did not come down from the mountain carrying a bunch of clay tablets on which there were inscribed her “laws” encoded in the words of the scantily haired monkeys. It is pure delusion to believe that the Pythagorean theorem is other than a man-made model of a universe that is not really out “there” in that form.

    I’ll have to check my calendar to see if I have free time to join in with the other monkeys-in-a-cage for the mud slinging festivities that are usually featured at that other web site.

  • [Avatar for Anon]
    March 23, 2014 09:58 pm


    I invite you to lead with more than just an invitation.

  • [Avatar for patent leather]
    patent leather
    March 23, 2014 09:27 pm

    “[NOTE: If you have a favorite Supreme Court patent absurdity please share it below in the comments.]”

    That would be Parker v. Flook:

    “A competent draftsman could attach some form of post-solution activity to almost any mathematical formula; the Pythagorean theorem would not have been patentable, or partially patentable, because a patent application contained a final step indicating that the formula, when solved, could be usefully applied to existing surveying techniques”

    The Pythagorean theorem is a law of nature. However, the formula in question in this case was NOT a law of nature but a man-made algorithm to update alarm limits applied on a particular system. The claimed system as a whole is not directed to an “abstract idea.” If Flook’s formula is a law of nature, how come I don’t remember learning this in engineering school?

    Unfortunately, this case seems to be continuously cited by the Supreme Court as gospel.

  • [Avatar for MaxDrei]
    March 23, 2014 03:32 pm

    On Patently-O there are already 216 comments purporting to be addressing the TT Brief. The newest is from Paul Cole (of this blog) lamenting that so few of the 216 are on point. So come on, readers, let’s have a focussed thread here on this blog. So, here is Patently-O

    Now, can you do better?

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