AIPLA’s brief in CLS Bank

It is here.  Having been at the CAFC clerking for Chief Judge Rader when this was decided, I found this very interesting.  I’m not sure what I think of relying upon the idea/expression dichotomy…

About David

Professor of Law, Mercer University School of Law. Formerly Of Counsel, Taylor English Duma, LLP and in 2012-13, judicial clerk to Chief Judge Rader.

19 thoughts on “AIPLA’s brief in CLS Bank

  1. 4

    I love Alapatt (however it is spelled). I had only casually pursued it before clerking, and found its reasoning to be pragmatic and compelling. If I put a new gizmo on a machine and the machine performs a new function, no one would say there’s an eligibility issue, at all.

    1. 4.1

      Yes, Prof. Hricik.

      Combine that with he fact that software is equivalent to firmware and is equivalent to hardware, as well as the recent Nazomi case and also keep in mind that software is a man-made manufacture and machine component that is patent eligible in and of itself (much like a rivet, tire or bullet) and one can easily see that there is far too much hullabaloo over this issue.

    2. 4.2

      David, agreed.

      But you have to realize Alappat was concerned with a graphics unit and a rasterizer for such. Many pro-software patent types, including it appears, the AIPLA Board, advocate the view that Alappat held that a programmed computer was eligible outside the context of a larger machine or process.

      The case did say that, but the problem is, that was dicta.

      1. 4.2.1


        Please visit the exceptions to the printed matter doctrine (as controlling law) and recognize that software is a machine component, fully patent eligible as such (a manufacture – think rivets, tires and bullets).

        Then, (finally), address the legal logic (and explicitly not the facts) of the recent Nazomi case.

        You know, it gets really tedious trying to chase you down and have you acknowledge all these points of law that you run from.

  2. 3

    David, after reading the brief, I have no idea what the brief says. What I want to know is whether, for example, a programmed computer that is programmed to calculate the improved price (State Street Bank) is eligible. Are the claims in Flook eligible where they calculated the improved alarm limit, a number, or those in Benson that covert BCD to binary, just numbers.

    For example, the brief at 21 cites Alappat for the holding of State Street Bank. Did the brief intend to mislead?

    I think it did intend to mislead.

    1. 3.1

      As I have reminded you in the past Ned, all I need is the holding of Alappat and I need not the case of State Street.

      You are trying too hard to force all of State Street on anyone who would disagree with your viewpoint.

      That is not too ethical in itself.

      1. 3.1.1

        no, anon, you and apparently the authors of this brief both flatly state that Alappat held that a programmed computer without more is eligible — regardless of context.

        This is what Alappat held:

        “The claim preamble’s recitation that the subject matter for which Alappat seeks patent protection is a rasterizer for creating a smooth waveform is not a mere field-of-use label having no significance. Indeed, the preamble specifically recites that the claimed rasterizer converts waveform data into output illumination data for a display, and the means elements recited in the body of the claim make reference not only to the inputted waveform data recited in the preamble but also to the output illumination data also recited in the preamble. Claim 15 thus defines a combination of elements constituting a machine for producing an antialiased waveform.”

        Thus the board erred when they held that the substitution of a programmed GP digital computer for the claimed circuits made the claim ineligible.

        “The reconsideration Board majority also erred in its reasoning that claim 15 is unpatentable merely because it “reads on a general purpose digital computer `means’ to perform the various steps under program 1545*1545 control.”[25]”

        There follows a lot of dicta that did not pertain to the case before the court. In it, Rich noted that “We have held that such programming creates a new machine.” Note the phraseology: “We have held.” That is not “We hold.”

        In State Street Bank, here is what Rich said the court held in Alappat:

        “In Alappat, we held that data, transformed by a machine through a series of mathematical calculations to produce a smooth waveform display on a rasterizer monitor, constituted a practical application of an abstract idea (a mathematical algorithm, formula, or calculation), because it produced “a useful, concrete and tangible result” — the smooth waveform.”

        Now, that is an accurate summary of Alappat’s holding — by none other that Rich himself.

        All this is dicta. All of it. And clearly and unambiguously so.

        Turn to State Street Bank.


            Once again Ned, Alappat stand on its own and I do not rely on State Streeteither for the decision itself or any dicta in the decision reflecting on Alappat.

            Don’t try to force feed words into my mouth.


              anon, OK. Quote the holding of Alappat.

              Then we can debate up front and out in the open whether that means what you think it means.


              Sorry Ned – been there and done that and I do not have the bandwidth to once again hold your hand through an Alappat lesson.


              anon, “Been there, done that.”

              Hah! So that all may know, anon once quoted Rader’s concurrence in Alappat as its holding.

              But, he has never once, not once, never, ever stated what the issues on appeal were and how the court decided them. Not once.


              Hah! nothing Ned.

              I have taken your hand and led you through the holdings of Alappat in excruciating detail several times.

              The fact that I simply refuse to do so again gives no credence to your belief system.


          no, anon, you are remembering that I went through Alappat many times in excruciating detail with you. I did so once again in this thread.

          And besides, even I know that a concurrence is not the holding of a case. But, it appears, until I pointed that out to you, you did not.


            But, it appears, until I pointed that out to you, you did not.

            Nothing of the sort Ned.

            Prof. Crouch has restored many of the ancient threads – you can revisit these at your leisure.

  3. 1

    In the Conclusion to the AIPLA Amicus Brief there is mention of the “principle exception” to 101 patentability. What does that mean? Are the authors taking a principled stand here? Or are they referring to the most important or “principal” exception to 101 eligibility?

    Or are the American English and British English languages different, when it comes to the meanings of the words principle and principal?

      1. 1.1.1

        No surprise that, in the first keyboarding, the auto-correct inserted the wrong spelling. The surprise to me was that none of those who approved the Amicus text as indeed fit for submission to SCOTUS noticed the error.

Comments are closed.