Case No.

2011-1301
UNITED

STATES

COURTS

OF APPEALS

CLS BANK

FOR THE FEDE]RAL

CIRCUIT

INTERNATIONAL,
Plaintiff-Appellee,
and

CLS SERVICES

LTD.,

Counterclaim-Defendant

Appellee,

V.

ALICE

CORPORATION

PTY.

LTD.,

Defendant-Appellant.
Appeal

BRIEF

from the United States District Court for the District of

Case no. 07-cv-0974,
judge Rosemary
M. Coiiyer

OF AMICUS

CURIAE

IN SUPPORT

Michael
(Principal

R. Dzwonczyk
Attorney

of Record)

Columbia

in

Sigram Schindler
Beteiligungsgesellschaft
mbH,
OF NEITHER
PARTY

Sughrue Mion, PLLC

2100 Pennsylvania
Ave, NW
Suite 800
Washington,
DC 20037
Tel: (202) 293-7060
Fax: (202) 293-7860
mdzwonczyk@sughrue.com
Attorney for
Sigram Schindler

December

6, 2012

Beteiligungsg_aellschafl

mbH

CERTIFICATE
Pursuant

to Federal

certifies

Circuit Rules 29(a)

OF INTEREST
and 47.4,

counsel

for Amicus

Curiae

that:
1.

The full name

Sigram
2.
caption

Schindler

of the amicus

is :

Beteiligungsgesellschaft

The name of the real party in interest

is not the real party in interest)

mbH
(if the party named in the

is:

N/A
3.
percent

All parent

corporations

and any publicly

or more of the stock of the amicus

held companies

that own

10

curiae are:

None.
4.

The name

of all law firms and the partners

or amicus

expected

Schindler

BeteiligungsgesellschaR

December

to appear in this Court is: Michael

mbH, Berlin,

or associates
R. Dzwonczyk,

for the party

Sigram

Germany.

6, 2012
Attorney for
Sigram SchindlerBeteiligungsgesellschaR
mbH

TABLE
STATEMENT
SUMMARY

OF IDENTITY

g=olwaae

**

miee

OF CONTENTS

AND

INTEREST

uol

coo

meg**oeem

.....................................
................
**

ARGUMENT
I.

MAYO

PROVIDES

THE NOTION

GUIDANCE

OF THE TERM

KSR / BILSKI

CONCLUSION

,e

FOR DEVELOPING

/ MAYO

"ABSTRACT

****0

**oe

6
PATENT
6

IDEA"

IS

.................

Je*eg.

MAY

CLS DECISION

&112 TESTS
IV,

CLEAR

THE TEST SUGGESTED

PREVIOUS

IV.

.........................

SUFFICIENTLY
IiI.

..................

PRECEDENTS
II.

IB

BE CONSISTENT

eee

& CLARIFY

........................................................................

.............................................................................

WITH THE

....................................................

SIMPLIFY

ALSO

10
102/103
12
14

TABLE

OF AUTHORITIES

Cases
Bilski v. Kappos,
CLSBankXnt'!
2012) ...............

130 S. Ct. 3218 (2010)

v. Alice Corp.,

.................................

No. 2011-1301

1, ,5, 7, 10

(Fed. Cir. July 9,

7, 8, 10

Mayo Collaborative
Servs. v. Prometheus
Labs., Inc., 132 S. Ct.
1289 (2012) .........................................................................................

1, 5, 7, 8, 10

KSRlnt'l
Co. v. TeleflexInc.,
127 S. Ct. 1727, 82 USPQ2d 1385
(2007)..........................................................................
I,5,7, I0
Bancorp Servs., L.L.C. v. Sun Life Assurance
Co. of Can.,
1266, 1278 (Fed. Cir. 2012) ...................................................
Retractable

Techs.

v. Becton,

Dickinson

687 F. 3d
,............

10

And Co., 659 F. 3d 1369

(Fed. Cir. 2011) ...............................................................

10

Ultramercial

10

NoahSys.,

v. Hulu,
v. Inmitlnc.,

AMP v. Myriad
Philips

657 F. 3d 1323 (Fed.

675 F.3d

Genetics.,

v. AgrHCorp.,

Cir. 2011) .................

1302 (Fed. Cir. 2012) ...............

653 F. 3d 1329 (Fed.

415 F.3d

Cir. 2011) ...........

1303 (Fed. Cir. 2005) ................

10
10
10

Statutes
35 U.S.C.

101 ......................................................

5, 6, 7, 8, 10, 11, 12

35 U.S.C. 102 ......................................................

6, 10, 11, 12

35 U.S.C. 103 .......

6, 10, 11, 12

.............................................

35 U.S.C. 112 ......................................................

111

6, 10, 11, 12

Other
"The

Authorities
Description
Logic Handbook":
Baader/Calvanese/McGuinness/Nardi/Patel-Schneider,
2010, Cam.
Univ. Press .................................
........................................

"Knowledge
Representation
and Reasoning":
Levesque/Brachrnann.
Elsevier ....................................................................................

iv

2004,
6

STATEMENT
Sigram

Schindler

(collectively
Berlin,

"SSBG")

Germany,

OF

IDENTITY

Beteiligungsgesellschaft
are research-based

developing

the US,

Frankfih-t

Stock

originally

founded

Sc. Dep.

at the Technical

University

has paid significant

dividends

SSBG's

via TELES
Exchange.

abilityto

property

particular

in the United
issued

subject

interest

in supporting

itself to the needs

USSC

provides

invest

at that

States and Europe.

and

and

research

of

in

of the

TELES

AG,

of the Comp.

is dependent

the

Strong

patent

so that

consistent.

mandates

global

the
SSGB,

in its ongoing

of the economy

clear guidance

segment

to its commercial

under

interpreted

the US patent system

of sectors

located

success,

to its shareholders.

accorded

is clear

Standard

shareholder

Due

subsidiaries

all over the world,

time full professor

of Berlin.

in high-tech

protections

matter

on the Prime

its

companies

and services

a majority

Schindler,

are consistently

protected

is

and

technology

products

listed

SSBG

by Sigram

intellectual

patents

AG,

INTEREST
mbH

high

and selling

including

TELES

AND

patent

systems
metes

systems,

require

development

has

the
in

that the

and bound

therefore,

based on emerging

upon

of the
a vested

in adjusting

technologies.

in the KSR/BILSKI/M,4YO

The
line of

decisionsto furtheradvance patentprecedence in thisarea.

This brief,in support of neitherparty,is filedon behalf of Amicua
SSBG.

SSBG

has no financialinterestin either side.No

Curiae

party,no counsel

representing
intended

a party, and no person,

to fund the preparation

other

than SSBG,

and submission

contributed

of this brief.

money

that was

SUMMARY
The below

sections

brief) to the questions

present

a. and b. provide

a. and b. referred

answers

(first explicitly

to in the CAFC's

and then

request for briefs

in

in the

case.

a. First part: This test (described

1) starts with disaggregating
claimed

explicitly)
the compound

computer-implemented

equivalent

independent

invention

concepts,

using these

compound

inventive

concept,

whether

creativity)

a practical

problem's

solution

"abstract

otherwise

problem

requires

if this requirement

person

and

its

of

respective

the

concepts
the

pertinent

solution

performing

step of facts determination

overall

specification

patent

of the

discloses

ordinary

such

claimed

instead

skill

and

that achieving
invention

this

being

- and

does

exist/hold,

idea" of this problem's

solution

patent-eligible
Second

for the

of the

- and next
inventive

allegedly

concepts

by the patent's

allegedly

or implicitly,

3) stating,

their

independent

(explicitly

second

inventive

into

as disclosed

being a first step of facts determination

2) checking,

allegedly

that this invention

- all independent

is not only an
concepts

being

or not.

part: Solely

the presence,

not patent-elig!ble

as such,

invention

should

of a computer

in a claim

not yet lend patent-eligibility

on an
to

the claim - the presence

defined/determined

of a computer

therein

should

in the first part. Otherwise

stand for its necessity

the computer

should

as

be moot

as

to this question.
b. First part: No, it should

not matter;

Second

part: Yes,

but subject

to the above

test.
The above
by a disclosed
mented

practical

invention,

an abstract

suggested

test for a computer-implemented

problem's

solution

i.e. this solution

idea (which

warrants

- which

of this problem
this

invention

this

invention
claimed

represented

computer-imple-

_, must pass for not being

is patent-eligible)

solely

- is repeated

in

brief, next.
a. The test of a "computer-implemented"
comprises

for not to be an "abstract

idea"

two steps:

1) disaggregate
independent
2) check

invention

the

claimed

concepts,

invention's

as disclosed

by the specification,

that, if the "computer-implemented"

properties

described

compound

by one such concept,

invention
performing

concepts

into

their

for use in step 2),

is reduced

by one of its

it does not solve

the

problem.

In patent
"problem",
"invention",

language
... stand
"system",

the terms
"invention",
"system",
method",
for notions
that IT denotes
as "type"
alias
method", "solution",
"problem",
...
4

"solution",
"class"
of

The rest of this brief provides

justification

for this test as suggested.

based on the research by Sigram Schindler in his FSTP Project (funded

focused

on developing

unavailable

otherwise,

prosecutions/litigations
foundations
fundamental,

a "Patent

Technology"

in

processes

typically

provides

by SSBG)

useful

occurring

results,

in

patent

in any national patent system. Based on background

in the

of maths, physics,

most

that

It is

and IT, SSBG is inspired by the epistemologically

far reaching, and very fertile insights

related to processes

of inno-

vations recently provided by the Highest Courts (via their patent precedents)

on

both sides of the Atlantic, i.e. by the BGH in Germany, the EPO in the EU, and
most importantly, by the USSC and the CAFC in the US.

ARGUMENT
I.

MAYO

With
decision,

PROVIDES

its KSR

and BILSKI

the US Supreme

precedents

cater

technologies.
invention

i) in scope

needs

discovered

the

of sectors

it indicated

a "natural

cover

decisions,

Court ("USSC")

to the

In MAYO
using

GUIDANCE
FOR
PRECEDENTS
and

in particular

clearly

demanded

of the

area

or not - i.e. preempt

PATENT

with

the

MAYO

that the US patent

economy

how to perform

law" such that the claim,

whole

DEVELOPING

based

on

emerging

the 101 test for a claimed

if granted, would

of application

of this

further innovations

natural

based

not
law

newly

on this natural

law,

by the USSC),

but

and
ii) be supported

solely

would

comprise

making

it

by this natural law (set patent-ineligible

a sufficient

patentable;

creativity/inventiveness
claimed

invention.

embodied

by the claimed

its use

of the

invention,

the

Technology

thereby

the

USSC

one

inventive

That is, the USSC

potentially

claimed

of patent-eligible

as at least

concepts

By

amount

being

more

creativity/inventiveness

demanded
concept

hints at several

presenting
embodied

patent-eligible

indicative

of

the

"concept"

for describing

this
by the

inventive

creativity/inventiveness

invention.
term/notion

USSC

(IT) for describing

refers

to a technique

properties
6

of new

common

systems.

properties

of

in Information

In IT, this

precisely

definable term

was

developed/used

systems,

then

elaborated

since

(NL), and most recently

(KR). Today

in Description

this term/notion

ment, requires observing

in the

1970s

technique.

Namely,

requirement
concepts"

statements

are felt as being

Pamas,

in this

intuitive

wordings

of patent

compound

concerns

is

Brief.
and

claims

- they

and Knowledge

IT measure

of caution,

of the

the

same

While

godfathers

as

are

Representation

which was discovered

of SW-System-Design
of concerns"

"disaggregation
concepts

absolutely

logically

Language

i.e. in a NL environ-

of "separation

compound

are

Natural

data base

IT".

principle

hence

(AI),

jurisdiction,

one

IT

for specifying

in patent

indispensable
in

(DL)

in "advanced

also another

the

described

notion

1970s,

Intelligence

Logic

"concept"

by David

in the

in Artificial

it is a fundamental

Using

first,

are error prone in requirement

of

compound

in natural

languages

ubiquitous

extremely

in

therein

- e.g.

in

(just

as

error prone

statements

in specifications

of

IT systems).
Most of the complicated
testing

a claimed

invention

and

112 to it - are clearly

the

relations

compound
independent

of the
inventive

by applying

in patent precedents
the requirements

due to an attempt

meanings
concepts

inventive

discussions

of these
without

concepts.

of sections

at becoming

four

sections

in

fact,

as to

101, 102/103,

clear and precise

to the

first disaggregating
Yet,

- in particular

meanings

about

of these

them into their (binary)

following

this

approach,

clarity/precision
maintaining

is
such

elaborating

not

compound

phenomena

System-

Design,

careful

facts

concepts,

...

and

may

determination

i.e.

by

in the wordings

known

in patent

claims.

with patents

II.

NOTION

The majority
expose

a notional

it dependably
This

pitfall

would

assumption

mathematical

and

term

is
"i"

in emerging

dissenting

defining

(= sqrt(-1))

to some

complex

numbers.

Theory

the

other

Even

worse,

courts'

research,

in patent

(binary)

opinions

inventive

the USSC
claims

the notion

as such
numbers

of electricity

ITby a

disclosed

as

frequently

demands

representation

using
that

is

technologies.

opinions

For

KR,

jurisdiction,

concepts,

In MAYO,

NL,

independent

in the

IDEA"

while

is indefinable
embodying

is unthinkable

commonly

both assume

of the term "abstract

example,

IS

CLS decision

by the 101 test. They

questionable.

relations

avoided,

a state-of-the-art

embodied

notion's

in

OF THE TERM "ABSTRACT

SUFFICIENTLY
CLEAR

the

require

result

solely

compound

for dealing

THE

on

using

also for the US patent jurisdiction

feasible

possible!!7

from semantics

be vastly

based

avoiding

may

or

and inconsistent.

are well

achievable

concepts

on them to be inoperable

These

provided

frequently

the
-

it are
without

only

performing

idea" as such.
notion
some

definable,
complex

of

the

of this
notably
numbers,

i.e. without the notion

life, by just
does

not need

simply

to know

relations

outcome

of i. The same

the meaning

of the relations

a) one or several

an abstract

abstract

idea to or removing

as such

in BILSKI/MAFO:

This

meanings,
simple

representable

suggested

ideas

alone

it from

definition

may be unpredictable

tive concept

from several

aggregated

notional

complexity
and therefore

this possibility

as the compound

definitively

and b) adding

does not affect

law"

of the term "abstract

suffices

may

for enabling

the

of the
it uses

with a compound
concepts.
seem

idea" the test

By contrast,

inven-

Due to its so

to be an "abstract

The suggested

are disaggregated.

it,

as such.

inventive

concept

It may

embodying

with the directives

if it works

indefmable.

concepts

notions

fact in a 101 test.

independent

this compound

idea" as such,

notions

concept(s)

the decisive

idea".

idea" and "natural

of the meaning

by independent
determine

"abstract

invention

from daily

Patent jurisdiction

are not patent-eligible,

"abstract

101 test of an invention

caused

of the term

a claimed

not their (indefinable)

to uniquely

here.

of this term to other patent

Of the terms

relative

as we know

applies

of its test under 101. a) and b) are consistent

their relative

hence

these

use some

notably:

USSC

using

of 'T', and yet it works dependably,

test excludes

III.

THE

TEST

SUGGESTED
PREVIOUS

Reconsidering
USSC

_ supports

allegedly

the CLS case

using

inventive

MAY

BE CONSISTENT

CLS

DECISION

in the light

the suggested

concept

of MAYO

WITH

- as demanded

test for first disaggregating

of a computer-implemented

THE

by the

the compound

invention

at issue.

I.e., for

identifying,

just

as demanded

embodied

in MAYO,

by the claimed

the

needed

invention

amount

for making

of creativity/inventiveness

it indicated

patentable

(see I.),

and then

the reason

why

the ALICE's

previously

decided

by the

patents
CAFC

need

not be only

(in a way

an abstract

not meeting

idea

the USSC

- as
stated

MAYO-requirements).
It should
careful

way

evaluate

be noted that,

of performing

the indicative

outcome
majority

here

actually

opinion

having

a claimed

outcome
may

there

are at least

suggests

invention's

the

already

(most

opinion

for considering

10

a new

and

101 test - it does

original

by this Brief-

is that the majority

7 reasons

Brief

of the so achieved

uphold

applied

the step 1) of the test suggested

The reason

this Amicus

facts
CAFC

determination.
decision

of) this care,

as shown

more

not legally
That this

is due

to the

i.e. at least (most

of)

next.

states (13. 26, second

the

often

asserted

paragraph)

claimed

that

computer-

implemented
states

("exchanging

that the patents'

this

common

"exchanging

comprising

obligations")

method

specification

obligations"

at least 7 (binary)

as being

inventive.

discloses

that

actually

is

disclosed

concepts

concept
independent

Namely,

compound

it

concept

(whereby

even -

here being moot

none
usual

of its 7 independent
patent-eligible

obligations"
These
properties

property

7 independent

of the compound

the "shadow"

the "start-of-the-day

the "transaction

the "chronological

the "end=of-the-day

the "irrevocable,

the "ultimate
the

is exempted
of

this

f_om patent-eligibility

compound

inventive

but is a
"exchanging

concept).

whereby

concepts

concepts
concept

identified

by

the

majority

opinion

as

- are in principle:

concept,
balance"
based

concept,

adjustment"

adjustment"

concept,
concept,

reflect the adjustments"

time invariant

exchange
chosen

obligations"

of obligations"
concept

names

concept,
concept,

and

concept,
establish

presentation.

11

the

nexus

to

the

opinion's

According
disclosed

(see

"exchanging
claimed

to the CLS
above)

decision,

by the patents'

obligations"

test may also be passed,

and its particular

IV.

KSR

solution

/ BILSKI

The "compound
KStL

the 102/103

/MAYO

are in total
concept

and

hence

equivalent

are
to the

making-up

establish

(see the SUMMARY).

due to the elaborate

concepts

thus

the

Possibly,
description

SIMPLIFY
& CLARIFY
&112 TESTS
disaggregation"

MAYO

/simplicity/dependability,

independent

the

positive

step 2) of the
of the problem

_) in the specification.

concept

BILSKI,

inventive

invention

result of step 1) of the test suggested

(binary)

specification,

compound

"computer-implemented"

suggested

these

decisions,

as just outlined

and 112 tests of claimed

technique,

ALSO

induced

provides

the

102/103

by the USSC's
same

clarity.

for the 101 test in the CLS case,

inventions

also to

and hence vastly increases

legal

predictability.
This is shown
be

available

shortly

in more detail than above

(www.fstp-expert-system.eom).

cases/memorandum,
Procedure
(July

namely:

for Subject

3, 2012),

and

in footnote

Matter

1) the

the 7 CAFC

This

USPTO's

Eligibility

12

in

footnote

MEMORANDUM

Analysis

decisions

4 of a document

... Involving

2) CLS

Bank

that will

analyses

"2012
Laws

Interim

of Nature"

3) BANCORP

4)

AMP

5) RETRACTABLE

TECHNOLOGIES

6) NOAH

7) ULTRAMERCIAL

and 8) PHILLIPS.
Each

of these 8

disaggregatingcompound

documents

circles around

this

new

necessity

of

inventiveconcept in testingclaimed inventionsunder

I01, I02/I03, 112 - a necessitynot existingwhen dealing with tangible subject

matter,i.e.caused by patentsdealingwith "model based" inventions,
as typicalfor
all emerging technologies. Anyone

of it already partiallypracticescompound

inventiveconcept disaggregati0n,
yet inconsistently,
as none of them recognized it
as an explicitand necessary requirement for testingan inventionunder 101,
I02/I03, 112.

13

CONCLUSION
An analysis
inventive

under 101 can begin

concept

compound

but exactly

what

this approach

inventive

concepts

the MAYO

decision

decisions

follow

identified

first step in any 101,102/103,

issue

as

this

unquestionable

step

is

practice

predictability
this

consistent

"compound

in patent

unquestionable

it should

and

112 test

for

in patent

and recent

of a claimed
the

CAFC

as a clearly
invention

at

scientifically

should be based.
step is indispensable.

seems

method,

new

be applied

determining

IT, this

law, there

scientific

requires,

Yet,

indispensable

of advanced

is nothing

And,

to be no other option

as enabled

for

but to

by advanced

IT and

with the patent clause of the Constitution.

Thus,

USSC

precedent

cases can be applied

z) SSBG
Highest

implicitly.

facts, on which all legal determinations

From the point of view

regaining

the suggested

disaggregation".

Disaggregating
jurisprudence,

by performing

as established

systematically

innovations

the KSR/BILSKI/MAFO

using this approach D.

is grateful for the extremely

Courts
of the
US and

epistemological
grounds
for

in at least

thoughtful
embodied

elaborations
by their

problems of innovations
- their considerations
broader
discussions
related
to promoting
in

all

emerging

technologies,

and

thereby

performed
precedents

by both
on the

provide the fertile

socially
desirable
achieving

economic

progress.
Comments

are highly

appreciated
14

on www.fstp-expert-system.com

Respectfully

Submitted,

Chid S. Iyer
Sughrue Mion, PLLC
2100 Pennsylvania
Ave, NW
Suite 800
Washington,
DC 20037
Tel: (202) 293-7060
Fax: (202) 293-7860
mdzwonczyk(_,sughrue.com
Attorney for
Sigram Schindler Betciligungsgesellschaft

15

mbH

CERTIFICATE
UNITED

STATES

COURT

OF SERVICE

OF APPEALS

I hereby certify that on this 6 _ of December,

CURIAE,
Court,

AMICUS

U.S. Court

Washington,

CURIAE
of Appeals

D.C. 20439,

record via overnight

FOR THE FEDERAL

the Defendants-Appellants

Brief was filed via hand delivery

for the Federal

and that copies

Circuit,

Mark A. Perry
Gibson, Dram & Crutcher LLP
1050 Connecticut Avenue, N.W.
,, _.,l,.ls_,,L,,

_.,,.. 20036-5306

Defendant-Appellant
David Milton Krinsky
Williams
& Connolly LLP
725 12_ Street, N.W.
Washington,

DC 20005

BYRON

S. ADAMS

LEGAL

& COMMERCIAL

1615 L Street N.W.,

Washington,

PRINTERS

Suite 100

DC 20036

(202)

347-8203

of

Place NW,

were served on the following

Plaintiffs-Appellees

AMICUS

with the Clerk

717 Madison

courier:

CIRCUIT

counsel

of

CERTIFICATE
LIMITATION,

OF COMPLIANCE

TYPEFACE

WITH

REQUIREMENTS,

TYPE-VOLUME
AND

TYPE

STYLE

REQUIREMENTS
1.

This brief complies

Appellate

Procedure

with the type-volume

32(a)(7)(B)

The brief contains

exempted
2.

Appellate

Procedure

2216 words,

the type style requirements

or Federal

excluding

Procedure

with the typeface

32(a)(5)

of Federal Rule of

or Federal Rule of Appellate

by Federal Rule of Appellate

This brief complies

limitation

Procedure

28. l(e).

the parts of the brief

32(a)(7)(B)(iii).

requirements

of Federal Rule

Rule of Appellate

of Federal Rule of Appellate

Procedure
Procedure

of

28. l(e)

32(a)(6).

Mich_
Chid S. Iyer
Sughrue Mion, PLLC
2100 Pennsylvania
Ave, NW
Suite 800
Washington,

DC 20037

Tel: (202) 293-7060

Fax: (202) 293-7860
mdzwonczyk
@sughrue.com
Attorney for
Sigram Schindler BeteiligungsgesellschaR

mbH

and