Amici Ask Federal Circuit to Curb Misapplication of Alice to Specific, Novel, and Concrete Inventions

cafc-federal-circuit-335z copyOn December 18, 2015, several amici filed a brief in support of appellants in Netflix, Inc. v. Rovi Corp. et al., No. 15-1917 at the Federal Circuit.  The amici Broadband iTV, Inc., Double Rock Corporation, Island Intellectual Property, LLC, Access Control Advantage, Inc., and Fairway Financial U.S., Inc. are all former practicing entities and patent holders that built, developed, and commercialized computer-implemented technology and maintain an interest in the patented results of their research and development that solved real world problems faced by their respective businesses.  Charles R. Macedo and Sandra A. Hudak of Amster, Rothstein & Ebenstein LLP were authors on the brief.

The district court found the five patents-at-issue in this case, generally relating to video-on-demand technology, patent-ineligible as allegedly directed to the abstract ideas of, e.g., “using a user’s viewing history to visually distinguish watched programs from unwatched programs and to make recommendations”; “categorizing shows using combination categories”; and “bookmarking across devices.”

In the brief, the Amici ask the Court to reverse the district court’s decision in Netflix, and help clarify how computer-implemented claims can be found patent-eligible.

The following is an excerpt taken from the Amici’s brief.


Amici submit this brief to address a growing and alarming trend in the misapplication of the law on patent-eligibility since Alice Corp. v. CLS Bank, Int’l, 134 S. Ct. 2347 (2014). The present appeal concerns one of many district court decisions overextending the Supreme Court’s precedent to find clearly tangible and non-abstract inventions invalid under 35 U.S.C. § 101. Even when just looking at decisions issued in the field of video-on-demand, district courts have been invalidating countless patents directed to specific, novel, and concrete improvements in the delivery of video-on-demand content, which use specific types of equipment and include inventive concepts not otherwise present in the prior art.

The decision below (“Netflix”) has misapplied Alice in several key ways.

In the context of step one of an Alice framework, Netflix erred in determining the alleged “abstract ideas.” Contrary to the Supreme Court’s warning in Alice that the judicial exclusion for “abstract ideas” should be carefully applied “lest it swallow all of patent law,” Netflix failed to adequately heed this warning in its identifications of the alleged “abstract ideas.” Like many lower court decisions, Netflix misidentified alleged “abstract ideas” that were neither the equivalent of traditional “preexisting, fundamental truths,” such as Einstein’s E=mc2 or Newton’s law of gravity, nor “fundamental economic practice[s] long prevalent in our system of commerce,” such as Bilski’s hedging risk or Alice’s intermediated settlement. Thus, Netflix erred in defining the alleged abstract ideas by: (1) improperly including “novel” business practices or methods of organizing human activities; and (2) including detail well beyond the level of detail used in Alice or Bilski.

Netflix also erred in its application of step two of the Alice framework. Netflix erred by: (1) ignoring computer-implemented steps merely because a computer was involved; (2) ignoring other concrete technological implementations in the claim; and (3) finding the claim could be performed in the human mind or by hand by improperly ignoring significant aspects of the claim.

Collectively, these errors were not only made in Netflix, but are being made in other decisions relying upon this flawed analysis, including Broadband iTV, Inc. v. Hawaiian Telcom, Inc., No. 1:14-cv-00169, 2015 U.S. Dist. LEXIS 131729 (D. Haw. Sept. 29, 2015), appeal docketed, No. 16-1082 (Fed. Cir. Oct. 16, 2015) (“BBiTV-HT”); Broadband iTV, Inc. v. Oceanic Time Warner Cable, LLC, No. 1:15-cv-00131, 2015 U.S. Dist. LEXIS 131726 (D. Haw. Sept. 29, 2015), appeal docketed, No. 16-1082 (Fed. Cir. Oct. 16, 2015) (“BBiTV-TWC,” collectively with BBiTV-HT, “BBiTV”); Versata Software, Inc. v. NetBrain Techs., Inc., Nos. 1:13-cv-00676, -00678, 2015 U.S. Dist. LEXIS 132000 (D. Del. Sept. 30, 2015) (report and recommendation), stipulation of dismissal with prejudice (Oct. 28, 2015).

Amici urge this Court to reverse Netflix, and provide some much needed clarity regarding what is, in fact, patent-eligible after Alice.


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Join the Discussion

43 comments so far.

  • [Avatar for Anon]
    December 31, 2015 07:12 pm

    step back,

    Ouch, your point is indeed sharp.

    Can anyone point to ANY claim that is not “drawn to the idea of” the topic of the claim?

    (hint: no, because that is WHAT CLAIMS ARE)

  • [Avatar for step back]
    step back
    December 31, 2015 06:10 pm


    Everyone knows you can’t claim ice because the claim is drawn to the idea of ice.

    Have a Happy New Year 😉

  • [Avatar for A Rational Person]
    A Rational Person
    December 31, 2015 03:16 pm

    Step@40 I am, of course, familiar with In re Nuitjen. Note that the claim to a storage medium containing a signal in In re Nuitjen was allowable and was not on appeal. I’m suggesting another way of trying to claim a signal, i.e., claim the medium containing the signal while the signal passes through the medium.

    Sure, such a “composition of matter” might be “temporary” but then so is solid water, i.e., ice, at room temperature. And I think even even a person of very limited scientific knowledge, such as a Supreme Court Justice or Federal Circuit judge, would probably consider “ice” to be a composition of matter.

    Of course these days trivial things like “science, factual evidence, what 35 USC 101 actually says, why 35 USC 101 exists, etc.” are pretty much irrelevant for determining patent eligibility for a Supreme Court Justice or Federal Circuit judge.

  • [Avatar for step back]
    step back
    December 31, 2015 02:26 pm

    Rational @38

    Alas the wise and unquestionable priests at the Church of the Fed. Cir. have proclaimed that “signals” are ephemeral and transient phenomenon and thus not in the realm of compositions of matter. In re Nuitjen. 😉

  • [Avatar for A Rational Person]
    A Rational Person
    December 31, 2015 01:06 pm


    Similar, while this discussion of the wave-like and particle like properties of electrons and waves may seem esoteric, I would suggest that in proper and scientifically accurate interpretation of 35 USC 101, a claim claiming a “a non-vacuum medium through which a signal is transmitted . . . .” should be considered a patent eligible “composition of matter” claim under 35 USC 101.

    A signal is a form of electromagnetic radiation and therefore has no mass. However, the medium through which the signal is transmitted, unless it is a vacuum, is “a composition of matter” and the combination of the medium and the signal passing through the medium should also be considered a “composition of matter”.

    And, for anyone who would assert that the presence of electromagnetic radiation has no effect on the medium through which the electromagnetic radiation passes, please note that microwave “signals” passing through food in a microwave is what causes the food to heat up. In fact, the amount of “eletromagnetic signal” in the form of “heat” contained in medium can determine whether the medium is a solid, liquid or gas.

  • [Avatar for A Rational Person]
    A Rational Person
    December 31, 2015 12:40 pm


    The part of the Wikipedia definition I was objecting to was the idea that electrons “orbit” the nucleus. They don’t.

    However, the fact that the electrons behave as waves does not necessarily mean they do not behave as particles as well, similar to the way photons have wave-like and particle-like properties.

    For example, cathode ray tubes rely on the particle-like properties of electrons:

  • [Avatar for step back]
    step back
    December 31, 2015 12:29 pm

    While all this talk about probabilistic “location” of electron wave functions seems esoteric, most of you out there are using it at this very moment … in your flash memory devices.

    There is a phenomenon known as Fowle-Nordheim tunneling which, when applied to thin dielectric films allows electrons to magically appear on or in an opposed side of a quantum mechanical barrier. The latter may be more generally known as the tunnel oxide in you flash memory device. During programming of floating gate field effect transistors, electrons “tunnel” to the other side of the tunnel oxide and get trapped in the floating gate.

  • [Avatar for step back]
    step back
    December 31, 2015 12:08 pm

    Rational Person @35

    That very same web page you hyperlink to has a picture showing the electrons in their spatially distinct “shells” including the outer valence shells.

    I am not a physicist. However, if I understand correctly, the electrons themselves are no longer thought of as little balls or planetoids orbiting a centralized sun (nucleus) but rather as wavefunctions satisfying Schrödinger’s equation

    For example, note the double slit experiment results pictured at the right in this Wikipedia page:

    p.s. Happy New Year to one and all

  • [Avatar for A Rational Person]
    A Rational Person
    December 31, 2015 10:54 am

    Both Anon and Step:

    Am I wrong to be appalled by the following definition from Wikipedia of the the term “electron shell”:

    “In chemistry and atomic physics, an electron shell, or a principal energy level, may be thought of as an orbit followed by electrons around an atom’s nucleus.”

    This is a much better “general definition” in my opinion:

    An electron shell is a set of atomic electrons grouped together by their quantum energy levels.

  • [Avatar for A Rational Person]
    A Rational Person
    December 31, 2015 10:49 am


    I believe Anon@33 is correct.

    The Pauli exclusion principle allows two electrons to be in the same orbital but only as long as they have different spin. Furthermore, two electrons in the same orbital have the same potential pattern of electron density, i.e., are equally likely to be at a particular location in space at a particular point in time.

  • [Avatar for Anon]
    December 31, 2015 08:27 am


    You seem to be confusing quantum state with dimensional location…

  • [Avatar for step back]
    step back
    December 30, 2015 09:46 pm

    Pauli exclusion principle

    “The Pauli exclusion principle helps explain a wide variety of physical phenomena. One particularly important consequence of the principle is the elaborate electron shell structure of atoms and the way atoms share electrons, explaining the variety of chemical elements and their chemical combinations. An electrically neutral atom contains bound electrons equal in number to the protons in the nucleus. Electrons, being fermions, cannot occupy the same quantum state as other electrons,”

  • [Avatar for Anon]
    December 30, 2015 08:17 pm

    Step, at 28, when you say Pauli principle, do you mean instead the Planck length?

  • [Avatar for Anon]
    December 30, 2015 07:53 pm

    A quick view: watch?v=HGG4HmlotJE

  • [Avatar for Anon]
    December 30, 2015 07:50 pm


    But that (Euclid, or non-Euclid) is still “just math” (albeit a different math)


    There is a reason why math transcends all human languages – it transcends humanity itself (at least, that’s how Tegmark would put it).

    Note that what WE postulate is only something that approaches the “true” math that “is.” Our map is not the land, and our map is – in essence – can be thought of as EITHER math or physics, as what is generally called math (our imperfect version) and what we call math are BOTH merely tools we (as humans) use. That much may be true, but that does NOT mean that either Tegmark or Feynman or even Penrose are entirely correct) or entirely not correct.

    Nature is as simple as it needs to be – but no less.

    And really does not “care” whether its “simplicity” is simple enough for the temporal entity known as man to know, understand, and express “the land” to ANY level.

  • [Avatar for step back]
    step back
    December 30, 2015 07:12 pm

    Correction for step@27

    I take back my support for Dr. Tegmark.
    Check out Roger Penrose’s “Road to Reality”
    Human made math and Physical Universe are not one and the same. Euclid was wrong. A plane cannot be filled with an infinite number of infinitesimally small points. See Pauli exclusion principle.

  • [Avatar for step back]
    step back
    December 30, 2015 07:08 pm

    Anon thanks
    I was too lazy to do that but thought of it

    For those not understanding what Anon is saying, he means add (concatenate) that end part of a URL to a front part that specifies U tube in general.

    The one I intended was:


    but the one by Dr. Tegmark is also a good one also. 🙂

  • [Avatar for Anon]
    December 30, 2015 06:22 pm


    I see your Feynman with one Tegmark

    [start of youtube URL]


  • [Avatar for step back]
    step back
    December 30, 2015 05:38 pm

    Speaking of u tubes, here’s an old lecture by Richard Feynman explaining why physics and math are not one and the same:

    link taken out

    yup, that must be it
    previous posting included the hyperlink
    and it did not post

    this science experiment brought to you by steppy

  • [Avatar for step back]
    step back
    December 30, 2015 05:32 pm

    Gene @22

    “Obviously” the Mount Olympus 9 have sent in their 2nd year engineering student and she hacked into your computer so as to automatically route my messages there because I’m “trash” talking ’bout her bosses. 😉

    (Or it could be because I included hyperlinks to YouTube in the last few posts.)

  • [Avatar for Gene Quinn]
    Gene Quinn
    December 30, 2015 11:01 am


    It wasn’t in spam, that is two comments in recent days from you in TRASH. Not sure why. I had thought maybe the formula, but your subsequent comment got through. Not sure what word or text string is kicking it into TRASH. Sorry for the inconvenience.



  • [Avatar for Night Writer]
    Night Writer
    December 30, 2015 07:51 am

    I think step back what we are dealing with is the cult of the scientific illiterate. And people at the SCOTUS that have a model of the mind that dates to pre-1910. A group of very unimpressive people. I’ve listened to interviews and a number of oral arguments with the Justices. Their egos occupy the room and their minds. They don’t seem to have developed beyond what they learned in law school. Nothing worse than powerful people that are ego driven and ignorant.

  • [Avatar for step back]
    step back
    December 30, 2015 02:09 am

    Gene release from spam jail requested here too.
    (Honestly, not all YouTubes are evil.)

    The blocked YouTube was titled: Dr. AP David: On The Laws Of Nature | EU2014

    Very relevant to the Supreme Court worship of E=mc^2

  • [Avatar for step back]
    step back
    December 30, 2015 02:06 am

    A more esoteric discussion re alleged “Laws of Nature” appears in the below video.

    However I fear it is aimed only at those who understand its insider jokes for modern physics.

    At 9:48 the speaker makes curt mock of the Supreme leaders of the Supreme Court. He also mentions the modern “cult” of Einstein with implied reference to E=mc^2.

    Then at 23:47 he finally goes into his chess-like end game attack on the “c” inside E=mc^2, noting that Maxwell’s equations are termed in continuum calculus where we now know that the universe is quantized and thus does not have continuums. Accordingly, a contradiction, which the prescriptive “Laws” abhor while at the same time hypercritically allowing for a vacuum. Ha ha.

    On The Laws Of Nature | EU2014

  • [Avatar for Night Writer]
    Night Writer
    December 29, 2015 08:14 am

    There is also a video from a physicist at Stanford that says that the conservation of information is the most important law.

  • [Avatar for step back]
    step back
    December 29, 2015 02:35 am

    Gene, another release from spam jail please.
    Falsely imprisoned simply because no else posted in between. 🙁

  • [Avatar for step back]
    step back
    December 29, 2015 01:27 am

    About 5 minutes into this Thaller Lecture YouTube. I have not watched the whole thing. Note the part about humility:
    See also 52:55 in the video.

  • [Avatar for step back]
    step back
    December 29, 2015 12:51 am

    Hooray for Dr. Michelle Thaller, a NASA Quantum physicist who on a recent CSPAN panel of scientists responded to a Q in a Q&A that E=mc^2 is not a fundamental truth, that there are no so-called fundamental truths in science. If you believe otherwise you are no scientists. In fact practitioners in her corner of science have reached a consensus that E=mc^2 fails at the quantum scale.

    I have been able to find a video snippet (or textual one) of her short remarks on that issue. I did find the below which relates to Einstein and Q physics.

    But before you go there, know this: Anyone who argues that E=mc^2 is a fundamental truth is a quack and not a true scientist.

  • [Avatar for step back]
    step back
    December 28, 2015 07:05 pm


    On the flip side, there are a couple of good arguments in that amicus brief.
    Suggest you read it for yourself.
    One of the arguments seems to say that court cannot use novel and thus nonroutine parts of claim as part of deeming it to be abstract and then ignore those same parts when saying there is not “something more”.

  • [Avatar for Night Writer]
    Night Writer
    December 28, 2015 03:49 pm

    Ed@11. Yes thanks for the link. Just shameless nonsense. If, as the “judges” blather, the claims are abstract, then why can’t their *** minds apply 102/103/112 instead of fabricating nonsense under Alice. Just such nonsense.

  • [Avatar for step back]
    step back
    December 28, 2015 02:29 pm

    Ed @11

    Thanks for the link.
    This is yet another example of Fed. Cir judges gone wild.
    While they may have a valid gripe under the enablement provisions of 112, that should not be conflated with 101.

  • [Avatar for Anon]
    December 28, 2015 01:03 pm

    As I read Mr. Heller’s comment, the case just published, and Mr. Morgan’s recent stumbling, all that comes to mind is that the self-induced blindness continues…

    The district court determined, and the parties do not dispute, that the claims at issue fall within the broad categories identified in 35 U.S.C. § 101 (i.e., “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof”)….

    …[continued page 9]:

    This construction does not affect our conclusion regarding patentability because Vehicle Intelligence does not argue, and it is not apparent from the record, that the construction requires anything beyond a purely conventional computer implementation. See Alice, 134 S. Ct. at 2358. Vehicle Intelligence’s argument harkens back to our pre Alice machine-or-transformation test in arguing that the claimed methods are tied to particular machines and that alone is sufficient to confer eligibility. But, post Mayo/Alice, this is no longer sufficient to render a claim patent-eligible. DDR Holdings, LLC v., L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014). Merely stating that the methods at issue are performed on already existing vehicle equipment, without more, does not save the disputed claims from abstraction.

    Because the requirement of a machine in a claim means that said machine may be “abstract.”

    Welcome to the ghost spirit world where realness is not real. Hard goods necessarily in a claim have been made to vanish into the nothingness of being “abstract.”

    Because the Court says so.

    And on top of that we have attorneys intent on NOT SEEING the problem with this….

    We have returned FULLY to the days before Congress acted in 1952 to stop the courts from their runaway “gists of the invention / inventive concept / imaginations”

  • [Avatar for Edward Heller]
    Edward Heller
    December 28, 2015 12:09 pm

    Ugh. Just when I said what I said, along comes VEHICLE INTELLIGENCE v. MERCEDES-BENZ USA, LLC.

    The subject matter here was a clearly eligible improvement to machines. It was just disclosed and claimed at the level of an idea. Abstract.

  • [Avatar for Edward Heller]
    Edward Heller
    December 28, 2015 11:38 am

    Night, it is my personal view, of course. But I think it accords more with what the court is actually doing than what it says it is doing.

  • [Avatar for Night Writer]
    Night Writer
    December 28, 2015 11:04 am

    I agree Anon. Still, I think the worse thing is that this psychotically generated view of the world does not reflect reality, and as such every intellectually honest thinking citizen should be concerned with the continued use of Alice. Just stick to the elements of the claim and stop trying claim some elements are an XXX.

  • [Avatar for Anon]
    December 28, 2015 10:54 am

    It is worse than that Night Writer, as those that would espouse the Bilski minority actually shrunk in number in the subsequent case.

    I find it of dubious value (at best – and of questionable ethics at worst) to assert the exact opposite of a plain reading of a case, in which the proposition being advanced is actually retreating rather than gaining steam.

    Stevens’s actions in the Bilski case would have resulted in an explicit re-writing of the direct words of Congress by the judicial branch. It is this cornerstone upon which that Stevens lost his position of writing for the majority.

    In the America’s Invents Act, this understanding (the opposite of what Mr. Heller is pushing) was cemented in place for the subset of business method patents for which a new procedure was created. Congress left no doubt that their actions did not impugn the previous understanding that business methods – as a category – were NOT in fact outside the realm of patent eligible subjects.

  • [Avatar for Night Writer]
    Night Writer
    December 28, 2015 10:35 am

    Edward, all of what you just wrote is sheer nonsense. It is psychotically generated abstractions that have little to do with the real world. It is like an argument about whether a house is one architectural style or another.

    Learn patent law. Look for the elements in the prior art. It is that simple. Learn to advocate for real patent law and not witch law.

  • [Avatar for Edward Heller]
    Edward Heller
    December 28, 2015 10:31 am

    I think the Alice court was actually implementing the Bilski dissent which argued that business methods were not patentable subject matter, that in combination with the Mayo analysis for the situation where a claim includes both the eligible and the ineligible. According to Mayo, if there invention in the eligible, that ends the discussion. If there is not, and the eligible subject matter is otherwise old and conventional, then the issue becomes one of “application” of the ineligible to “transform it.” What does that mean?

    What is lacking in the case law is what has to be done to transform the business method/otherwise unpatentable subject matter into a patentable application? That is where the analysis is lacking.

    The printed matter doctrine, involving the same 101 principle, provides a clue. If the unpatentable subject matter is functional with respect to the underlying conventional subject matter, then it passes 101. Think Diehr. But then we get into 102/103 where the novelty of the “business method” part of the claim may be considerably important.

    However, it remains hard to imagine how the meaning of something to a human being can be applied to in produce a new or improved result in an otherwise patentable process.

  • [Avatar for Night Writer]
    Night Writer
    December 28, 2015 09:55 am

    What I think too is that the elements of a claim should be examined. This whole business of taking some elements and then claiming they are some category is not patent law, but witch law. A claim recites A + B + C. Find A, B, and C in the prior art and reasons to combine and check 112. These are arguments that A+B+C are somehow “abstract” are just ridiculous. If they are “abstract”, then it would be easier to find prior art.

  • [Avatar for Edward Heller]
    Edward Heller
    December 28, 2015 09:34 am

    Post the claim.

  • [Avatar for Night Writer]
    Night Writer
    December 28, 2015 09:22 am

    Great post step back. The entire framework by which the SCOTUS thinks about patentable subject matter is flawed. It is pre-1910 philosophy where their minds exist in the spirit world and machines don’t process information. And, organizing human activity should not be excluded. Again, that was an exclusion that was done prior to information processing machines and applied to different types of inventions.
    It is without question medieval dealing with these judges. It is the cult of scientific ignorance of which each of the SCOTUS and most of the Fed. Cir. are members.

  • [Avatar for step back]
    step back
    December 27, 2015 10:53 pm

    Hi Jeff @1,

    Let’s not get too glad too fast with court “friends” who might be carnivores in sheep’s clothing.

    The amici write about “preexisting, fundamental truths, such as Einstein’s E=mc^2 or Newton’s law of gravity”.

    What exactly makes those “truths”?

    The amici argue that “The framework set forth in Mayo, and adopted for abstract ideas in Alice, is intended to assist in “distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-
    eligible applications of those concepts.”

    What a load of Medieval malarkey.
    Mother Nature doesn’t descend from mountain top with “her” laws carved on crystallized graphene monoliths.

    The amici pay homage to the Myriad appellate court’s unsupported finding of fact that patent protection may very well be “imped[ing] the flow of information that might permit, indeed spur, invention.” (Someone up high –we won’t name names, right Clarence?– doesn’t understand the “fundamentals” of why patents are published.)

    The amici are deluded into stating “Thus, prior to Bilski, the three judicial exceptions —laws of nature, natural phenomena, and abstract ideas (i.e., mathematical formulas) —were preexisting fundamental truths that exist in principle apart from any human action.”

    Apart from human action? WTF? Do they mean these fun mentals existed at the time the dinosaurs roamed the earth not more than 5000 years ago? (end sarcasm)

  • [Avatar for Jeff Lindsay]
    Jeff Lindsay
    December 27, 2015 08:35 pm

    Bravo! The misapplication of Alice is hindering the entire knowledge economy. It’s as if the US favors inventions made related to cogs and steam engines instead of the finer stuff of bytes and electrons.

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