`
`Paper No. ______
`Filed: September 3, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`
`
`TD AMERITRADE HOLDING CORPORATION, TD AMERITRADE, INC.,
`and TD AMERITRADE ONLINE HOLDINGS CORP.
`Petitioners
`
`v.
`
`TRADING TECHNOLOGIES INTERNATIONAL, INC.
`Patent Owner
`
`
`
`
`
`
`
`
`
`
`
`Case CBM2014-00131
`Patent 7,533,056
`
`
`
`
`
`
`
`
`Patent Owner’s Preliminary Response
`
`
`
`
`
`
`
`
`
`
`
`
`
`

`

`
`
`
`I.
`
`II.
`
`Case No. CBM2014-00131
`
`TABLE OF CONTENTS
`
`PRELIMINARY STATEMENT ............................................................................... 1
`
`THE BOARD SHOULD DENY THE PETITION BECAUSE
`PETITIONERS FAIL TO MEET THEIR BURDEN TO
`ESTABLISH THAT THE ’056 PATENT IS FOR A COVERED
`BUSINESS METHOD ................................................................................................ 3
`
`A.
`
`B.
`
`The Petition’s Conclusory Statements Are Insufficient to Meet the
`Petitioners’ Burden of Showing the Claims Are Directed to a
`Covered Business Method ................................................................................ 3
`
`The Petition’s Conclusory Statements Are Contradicted by the
`’056 Patent ........................................................................................................... 6
`
`1.
`
`2.
`
`3.
`
`Features of Graphical User Interface Tools Are Technical ............ 6
`
`The ’056 Patent Addresses Technical Problems ............................... 7
`
`The ’056 Patent Provides Technical Solutions to These
`Technical Problems Using Technical Features .................................. 8
`
`III. TRIAL SHOULD NOT BE INSTITUTED BECAUSE THE
`INVENTIVE ASPECTS OF THE CLAIMS DO NOT INVOLVE A
`METHOD OF DOING BUSINESS ...................................................................... 11
`
`A.
`
`B.
`
`Patents to Novel GUI Tools, Even If Used in the Field of
`Trading, Are Not Within the Scope of AIA § 18 ....................................... 12
`
`The Congressional Record Confirms that Patents to Novel GUIs,
`Even If Used for Trading, Are Not Within the Scope of AIA § 18 ........ 16
`
`IV. THE BOARD SHOULD DENY THE PETITION BECAUSE ALL
`OF THE GROUNDS IN THE PETITION ARE
`UNINSTITUTABLE ................................................................................................. 21
`
`A.
`
`B.
`
`Petitioners’ 35 U.S.C. § 101 Challenge Is Uninstitutable ........................... 22
`
`Petitioners’ Written Description Challenge Was Previously
`Rejected by a District Court and Depends on a Proposed Claim
`Construction that Is Irreconcilable with Petitioners’ Previous
`Admissions ........................................................................................................ 23
`
`
`
`i
`
`

`

`Case No. CBM2014-00131
`
`C.
`
`D.
`
`The Indefiniteness Challenge to Claim 7 Is Uninstitutable Because
`the Petition Fails to Articulate Information Necessary to Show
`that “Indicates the Default Quantity Working at the Electronic
`Exchange” Is Indefinite .................................................................................. 25
`
`All of the Obviousness Grounds for Claims 1-15 Are
`Uninstitutable Because the Petition Fails to Articulate Why It
`Raises Any Art or Arguments that Are Not the Same as, or
`Merely Cumulative of, Art and Arguments Already Considered by
`the Office .......................................................................................................... 27
`
`E.
`
`All of the Obviousness Grounds for Claims 1-15 Are
`Uninstitutable Because the Petition’s Arguments Are Incomplete .......... 28
`
`1.
`
`2.
`
`The Petition Fails to Articulate Where Each of the Claim
`Elements Is Found in the Cited Art .................................................. 28
`
`The Petition Fails to Account for Antecedent Basis of “the
`Desired Price” of Claim 4 for Any of the Grounds ....................... 29
`
`V.
`
`CONCLUSION........................................................................................................... 30
`
`
`
`
`
`
`
`ii
`
`

`

`Case No. CBM2014-00131
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`
`Amgen Inc. v. Chugai Pharm. Co.,
`927 F.2d 1200 (Fed. Cir. 1991) ........................................................................................ 25
`
`Diamond v. Diehr,
`450 U.S. 175 (1981) ........................................................................................................... 23
`
`Gen. Am. Transp. Corp. v. Cryo-Trans, Inc.,
`93 F.3d 766 (Fed. Cir. 1996) ............................................................................................ 26
`
`In re Warmerdam,
`33 F.3d 1354 (Fed. Cir. 1994) .......................................................................................... 25
`
`Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
`132 S. Ct. 1289 (2012) ....................................................................................................... 22
`
`Merck & Co. v. Teva Pharm. USA, Inc.,
`395 F.3d 1364 (Fed. Cir. 2005) ........................................................................................ 26
`
`Process Control Corp. v. HydReclaim Corp.,
`190 F.3d 1350 (Fed. Cir. 1999) ........................................................................................ 26
`
`Trading Tech. Int’l, Inc. v. BCG Partners, Inc.,
`852 F. Supp. 2d 1027 (N.D. Ill. 2012) ............................................................................ 24
`
`Statutes
`
`35 U.S.C. § 101 ............................................................................................................ 21, 22, 23
`
`35 U.S.C. § 112 .................................................................................................................. 24, 25
`
`35 U.S.C. § 322(a)(3) ........................................................................................................ 21, 28
`
`35 U.S.C. § 324(a) ............................................................................................................. 21, 25
`
`35 U.S.C. § 325(d) .................................................................................................................... 27
`
`AIA § 18 ............................................................................................................................ passim
`
`iii
`
`

`

`Case No. CBM2014-00131
`
`Rules
`
`37 C.F.R. § 1.75(d)(1) .............................................................................................................. 29
`
`37 C.F.R. § 42.22(a)(2) ............................................................................................................ 21
`
`37 C.F.R. § 42.100(b) .............................................................................................................. 25
`
`37 C.F.R. § 42.204(b)(4) ......................................................................................................... 28
`
`Other Authorities
`
`77 Fed. Reg. 48620 (Aug. 14, 2012) .................................................................................... 21
`
`Agilysys, Inc. v. Ameranth, Inc.,
` CBM2014-00015, Paper 20 (Mar. 26, 2014) ............................................................ 2, 15
`
`Experian Mktg Solutions, Inc. v. Rpost Commc’ns Ltd.,
`CBM2014-00064, Paper 13 (July 31, 2014) ..................................................................... 4
`
`
`
`
`
`iv
`
`

`

`
`
`I.
`
`Case No. CBM2014-00131
`
`PRELIMINARY STATEMENT
`
`The Patent Owner is Trading Technologies International, Inc. (“TT” or
`
`“Patent Owner”). TT has been in business since 1994 and currently employs around
`
`400 people. Ex. 2007, p. 2. Headquartered in Chicago with offices around the world,
`
`TT develops and sells electronic trading software. Id. TT’s products include an
`
`innovative order entry tool embodied in a graphical user interface (“GUI”) called MD
`
`Trader® that permits users to interact with and send orders to electronic exchanges
`
`around the world. Id., pp. 2, 8. MD Trader is a commercial embodiment of the
`
`inventions claimed in U.S. Patent No. 7,533,056 (“the ’056 patent”). MD Trader is
`
`sold to and used by thousands of customers around the world, including almost every
`
`major international bank. Id., p. 2. TT has been ranked one of Illinois’ most
`
`innovative companies. Id. Indeed, “Chicago-based Trading Technologies pulled off a
`
`rare trifecta in Crain’s annual look at the most innovative companies in Illinois based
`
`on patent activity, a ranking that weighs both quantity and quality.” Ex. 2020, Crain’s
`
`Eureka Index ranks Chicago’s Most Innovative Firms, p. 2.
`
`The petition should be denied because it fails to satisfy the statutory and
`
`regulatory requirements for institution. The petition includes only unsupported,
`
`conclusory statements. This is insufficient to meet TD Ameritrade Holding
`
`Corporation, TD Ameritrade, Inc., and TD Ameritrade Online Holdings Corp.’s
`
`(collectively “Petitioners” or “TD”) burden of showing the claims are directed to a
`
`covered business method (“CBM”). These statements are also insufficient because
`
`
`
`
`

`

`Case No. CBM2014-00131
`
`they are contradicted by the ’056 patent itself. At the time of the invention of the ’056
`
`patent, the inventors recognized that trading systems suffered from a significant,
`
`technical problem—conventional trading systems made it difficult for a trader to
`
`quickly and effectively process disparate information from multiple diverse sources in
`
`order to make an informed transaction decision. See Ex. 1001, 1:56-2:4. This is a
`
`technical problem—lack of speed, accuracy, and efficiency are classic engineering
`
`problems. Moreover, this is a problem in the technical field of human-computer
`
`interfaces. The ’056 patent solved this problem by creating new technology: a novel
`
`and nonobvious GUI tool that operates to compile and present information in an
`
`intuitive format that allows a user to quickly and effectively interpret the information
`
`and provide input. See id.
`
`The petition should also be denied because the ’056 patent is not a CBM
`
`patent. Instead, the claims recite a novel GUI tool that may be used in the field of
`
`trading. Unlike previous GUI patents considered by the PTAB, which claimed only
`
`adding a “conventional” display to a business method, this case is one of first
`
`impression (along with other petitions concurrently filed by Petitioners), involving an
`
`innovative computer tool that applied technology to overcome problems in the art.
`
`See, e.g., Agilysys, Inc. v. Ameranth, Inc., CBM2014-00015, Paper 20 (Mar. 26, 2014). The
`
`claims are directed to specific structural and functional features of a GUI—they do
`
`not just generically recite a GUI. Congress never intended technical inventions like
`
`those claimed in the ’056 patent to be subjected to CBM patent review. Petitioners’
`
`2
`
`

`

`Case No. CBM2014-00131
`
`arguments to the contrary provide only an illusion of propriety, glossing over the
`
`detailed, technical features of the claims and ignoring many key facts.
`
`Moreover, the patentable subject matter, written description, indefiniteness,
`
`and obviousness grounds proposed in the petition also fail to address the technical
`
`features of the claims. Because TD’s petition is deficient in multiple ways, the Board
`
`should deny it as uninstitutable for failing to establish a reasonable likelihood of
`
`prevailing on any claim.
`
`II. THE BOARD SHOULD DENY THE PETITION BECAUSE
`PETITIONERS FAIL TO MEET THEIR BURDEN TO ESTABLISH
`THAT THE ’056 PATENT IS FOR A COVERED BUSINESS
`METHOD
`A.
`
`The Petition’s Conclusory Statements Are Insufficient to Meet the
`Petitioners’ Burden of Showing the Claims Are Directed to a
`Covered Business Method
`
`To support Petitioners’ claim that the ’056 patent is not directed to a
`
`technological invention, the petition asserts that “the claims of the ’056 patent do not
`
`recite a technical feature that is novel or unobvious over the prior art, and do not
`
`solve a technical problem with a technical solution.” Petition, p. 5. It supports this
`
`conclusion with a simple statement that “[the claims] recite only well-understood,
`
`routine, and conventional steps of receiving market information, displaying it
`
`graphically to a trader, who enters buy and sell orders, and sending the trader’s orders
`
`to the exchange to be executed.” Id. This simple statement is insufficient because:
`
`3
`
`

`

`Case No. CBM2014-00131
`
` The petition provides no explanation or evidence to support its simple
`
`statement,
`
` The petition fails to address the particular combinations of technical
`
`features of any claim of the ’056 patent as a whole, and
`
` The petition ignores the technical problem and solution addressed by the
`
`claimed invention and discussed in the ’056 patent.
`
`Accordingly, Petitioners’ arguments amount to nothing more than conclusory
`
`attorney argument, which is not sufficient to establish that a patent is directed to a
`
`CBM. See, e.g., Experian Mktg Solutions, Inc. v. Rpost Commc’ns Ltd., CBM2014-00064,
`
`Paper 13, pp. 7-10 (July 31, 2014).
`
`The petition acknowledges the requirement to consider claims as a whole to
`
`determine whether they cover a “technological invention,” but fails to follow it.
`
`See Petition, p. 5. Instead, as noted above, the petition dissects the claims into a few
`
`clipped and generalized phrases (e.g., “receiving market information,” “displaying it
`
`graphically to a trader,” and “sending the trader’s orders to the exchange to be
`
`executed”) to argue that the claims are not technological. Id. Such conclusory and
`
`unsupported allegations are insufficient to support institution. Because the petition
`
`fails to address the claims as a whole, institution should be denied for failing to
`
`present a complete analysis.
`
`4
`
`

`

`Case No. CBM2014-00131
`
`The petition fails to explain why the technical problem and solution identified
`
`in the ’056 patent itself are not technological and why the claimed combination of
`
`structural and functional features that were the reason for allowance and that provide
`
`the technical solution to the stated problem are not technical features. Because the
`
`petition merely asserts that the ’056 patent does not solve a technical problem with a
`
`technical solution, the petition should be denied for failing to present a complete
`
`analysis.
`
`The claims as a whole are directed to technical features that were the reasons
`
`for allowance as being novel and nonobvious over the prior art.1 Rather than address
`
`these features, the petition asserts that they are “well-understood, routine, and
`
`conventional steps of receiving market information, displaying it graphically to a
`
`trader, who enters buy and sell orders, and sending the trader’s orders to the exchange
`
`to be executed” without providing any support. Id. Such conclusory and unsupported
`
`allegations are insufficient to support institution. As discussed below, the claims
`
`include numerous technical features that are the basis for novelty and nonobviousness
`
`over the art. Accordingly, the petition fails to show that the ’056 patent is not for a
`
`technological invention.
`
`
`1 Petitioners’ patentability arguments (set forth in its grounds for challenging at pages
`
`27-75 of the petition) do not relate to the threshold question of whether trial should
`
`be instituted under AIA § 18(1)(E).
`
`5
`
`

`

`Case No. CBM2014-00131
`
`B. The Petition’s Conclusory Statements Are Contradicted by the
`’056 Patent
`
`The petition mischaracterizes the ’056 patent as claiming “a method for trading
`
`financial instruments.” Id., p. 4. However, as the ’056 patent explains, the “invention
`
`relates generally to the field of graphical user interfaces and more particularly to the
`
`field of graphical user interfaces for electronic trading systems.” Ex. 1001, 1:15-17.
`
`While the claimed GUI tool may be used for trading, it is not merely directed to a
`
`method of trading itself.
`
`1. Features of Graphical User Interface Tools Are Technical
`The design and implementation of human-computer interfaces, such as GUIs,
`
`have long been recognized as a technological field. For example, NASA includes a
`
`Human Systems Integration Division. Ex. 2008. That Division covers several
`
`“technical areas,” including the Human Computer Interaction (“HCI”) Group. Id.
`
`The HCI Group is described as follows:
`
`The Ames HCI Group contributes to the development of
`measurably better NASA
`software
`through careful
`application of HCI methods. We follow an iterative process
`that consists of user research, interaction design, and
`usability evaluation. It is commonly assumed that HCI is
`exclusively focused on the interface. We are focused on the
`users and their goals in order to build the right tool which
`means that we are focused on functionality as well as
`interface.
`
`6
`
`

`

`Case No. CBM2014-00131
`
`Ex. 2009. It is not just the government that recognizes interface design as a field of
`
`technology. For example, many colleges and universities offer science degrees in
`
`human-computer interaction. Exs. 2010-2016. Congress also explained that it did not
`
`intend novel GUI tools, even if used for trading, to be subjected to CBM review.
`
`Ex. 2017, S5428.
`
`2. The ’056 Patent Addresses Technical Problems
`The ’056 patent discloses technical problems in the field of human-computer
`
`interaction with trading systems identified by the inventors and the novel and
`
`nonobvious technological features they used to solve them. For example, the ’056
`
`patent identifies the following technical problems of providing a more intuitive and
`
`effective interface that allows a user to act quicker:
`
`[I]t is often difficult for a trader to quickly assemble this
`information from diverse and often unrelated sources or
`even effectively process all of this information in order to
`make an
`informed
`transaction decision. From
`this
`information, and other external information, the trader
`must attempt to determine trends in the buying or selling
`for the item in order to anticipate the market and the
`demand for a particular item.
`
`Thus, a system is needed in which trend information of
`market demand for an individual item is provided to traders
`in an intuitive format which allows traders to quickly
`interpret how market demand is changing to an item. A
`
`7
`
`

`

`Case No. CBM2014-00131
`
`is also needed which provides contextual
`system
`information about the item or the market to the trader
`while the trader is trading on a specific item in a manner
`which allows the trader to quickly interpret the information
`and then act accordingly.
`
`Ex. 1001, 1:56-2:4; see also id., 2:54-55 (discussing features “further enhancing the
`
`trader’s ability to quickly ascertain the current state of the market”); id., 2:65-66
`
`(discussing a feature that “allows the trader to quickly determine his or her relative
`
`position in the marketplace”). In addition, deficiencies in speed, accuracy, efficiency,
`
`and usability are classic technical engineering problems.
`
`3. The ’056 Patent Provides Technical Solutions to These
`Technical Problems Using Technical Features
`
`The ’056 patent explains that the invention addresses these technical problems
`
`in prior art computer trading systems by creating new technology in the form of a
`
`new GUI tool. That is, the invention uses technical features to provide a technical
`
`solution. For example, the ’056 patent discloses a new “user interface [that] presents
`
`this information in an intuitive format, allowing the trader to make informed decisions
`
`quickly.” Id., 2:44-46. Figure 3A of the ’056 patent illustrates an embodiment
`
`comprising these features.
`
`8
`
`

`

`Case No. CBM2014-00131
`
`The technical features of this solution include indicators that are displayed in a
`
`particular way (i.e., relative to an axis on different portions of the computer screen) to
`
`enable the user to provide inputs based on a selection of locations along the axis. Id.,
`
`1:15-17, 2:44-66. The trader is able to immediately see activity in the market, from
`
`which the trader may infer that an item may, for example, “rise in value, and can enter
`
`an order to buy for the item immediately while the value for the item still appears
`
`low.” Id., 2:32-36. This is in contrast to conventional systems, where “the trader only
`
`knew of the existence of the highest bid, and therefore would not know that demand
`
`for the item was increasing.” Id., 2:36-39. The technical features also include providing
`
`the ability to set a default quantity and providing a plurality of locations
`
`9
`
`

`

`Case No. CBM2014-00131
`
`corresponding to price levels along the price axis, which can be selected to specify a
`
`desired price for an order. Id., Fig. 3A, 8:28-40 (e.g., patent shows selecting locations
`
`corresponding to price levels along the price axis by releasing a bid or offer token at a
`
`location). The new GUI tool provides “a major advantage over conventional methods
`
`of trading in which this information is not provided concurrently, and if presented at
`
`all, is difficult to process quickly.” Id., 3:45-48.
`
`These technological improvements are recited in the claims. See, e.g., id.,
`
`13:60-14:20. Specifically, claim 1 is expressly directed to a “method of operation used
`
`by a computer for displaying transactional information and facilitating trading.” Id.,
`
`13:60-61. Further, claim 1 recites “bid indicators being displayed at locations
`
`corresponding to prices of the plurality of bid orders along a price axis,” “offer
`
`indicators being displayed at locations corresponding to prices of the plurality offer
`
`orders along the price axis,” “receiving a user input indicating a default quantity to be
`
`used to determine a quantity for each of a plurality of orders to be placed by the user
`
`at one or more price levels,” and “receiving a user input indicating a desired price for
`
`an order to be placed by the user, the desired price being specified by selection of one
`
`of a plurality of locations corresponding to price levels along the price axis.” Id.,
`
`14:1-18.
`
`These novel and nonobvious improvements, as argued by TT and recognized
`
`by the Office when the ’056 patent was allowed, Ex. 1002, pp. 168-181, 254-258, are
`
`precisely the types of technical features used in the technical field of human-computer
`
`10
`
`

`

`Case No. CBM2014-00131
`
`interfaces to “build the right tool” based on “functionality as well as interface.”
`
`Ex. 2009. Thus, the claims are directed to particular structural and functional features
`
`of a GUI tool. Such features and tools are technical. The Notice of Allowance for the
`
`’056 patent even recognizes TT as “an industry leader in creating new and novel ways
`
`of displaying information related to the electronic trading art.” Ex. 1002, p. 256.
`
`In characterizing the patent as claiming the “well-understood, routine, and
`
`conventional step[]” of “displaying [market information] graphically to a trader, who
`
`enters buy and sell orders,” is nothing more than “well-understood, routine, and
`
`conventional,” the petition glosses over the specific technical features that are at the
`
`core of the claimed invention. Petition, p. 5. Because the petition fails to explain why
`
`the technical problems and solutions identified in the ’056 patent itself are not
`
`technological, Petitioners have not shown that the ’056 patent is eligible for CBM
`
`review. Accordingly, the petition should be denied.
`
`III. TRIAL SHOULD NOT BE INSTITUTED BECAUSE THE
`INVENTIVE ASPECTS OF THE CLAIMS DO NOT INVOLVE A
`METHOD OF DOING BUSINESS
`
`To argue that the ’056 patent is a CBM, the petition states that a “patent that
`
`claims a method for performing data processing in the practice, administration or
`
`management of a financial product or service is a covered business method patent.”
`
`Petition, p. 4. Petitioners then state, without support, that the ’056 patent meets this
`
`definition. Petitioners fail to explain why the ’056 patent claims are directed to a
`
`method of “performing data processing.” Petitioners merely state that independent
`
`11
`
`

`

`Case No. CBM2014-00131
`
`claim 1 “expressly claims receiving existing buy and sell orders (i.e., bid and offer
`
`information) from an exchange, displaying them to a trader, receiving the trader’s
`
`inputs for a desired order (i.e., price and quantity to buy or sell), and sending the
`
`trader’s order to the exchange to be executed.” Id., p. 5. This statement ignores
`
`substantive limitations of the independent claim that are limited to the make-up or
`
`structure of the GUI tool. This statement also does not explain Petitioners’ basis for
`
`arguing that even their incomplete summary of the claims would qualify as a method
`
`of “performing data processing.” Thus, Petitioners fail to support their argument that
`
`the ’056 patent is a CBM patent and institution should be denied based on this
`
`deficiency alone. In any event, as set forth below, the ’056 patent does not in fact
`
`claim a CBM.
`
`A.
`
`Patents to Novel GUI Tools, Even If Used in the Field of Trading,
`Are Not Within the Scope of AIA § 18
`
`TT believes this petition presents a case of first impression (along with
`
`CBM2014-00133, CBM2014-00135, CBM2014-00136, and CBM2014-00137 filed by
`
`Petitioners). To TT’s knowledge, all other petitions considered by the PTAB have
`
`involved patents that included claims where it was at least arguable that an alleged
`
`inventive aspect of the claims was directed to a business method or practice. The ’056
`
`patent claims—although structured as method claims—are directed to structural and
`
`functional features embodied in a GUI tool. Indeed, all inventive aspects arise in the
`
`claimed components and features of the tool, not in any business method or practice.
`
`12
`
`

`

`Case No. CBM2014-00131
`
`They specifically recite what is displayed and how the display operates. In other
`
`words, the claims are directed to the features of a tool. A tool that meets the claims
`
`could be used to practice a business method, such as a trading strategy (e.g., buy low,
`
`sell high). But, the claims are NOT directed to any trading strategy. For purposes of
`
`the threshold CBM inquiry, the ’056 patent claims are no different than claims
`
`directed to the features of an innovative money-sorting machine, stapler, calculator,
`
`medical diagnostic tool, or any other inventive technological tool or device. Such
`
`devices can be used in the financial industry—but they are not business methods or
`
`practices. Ex. 2017, S5428.
`
`In arguing that the ’056 patent claims a CBM, Petitioners do not address in any
`
`way the claimed structural and functional features of a GUI, discussed above, which
`
`were the reasons why all claims were allowed. The petition provides no analysis for
`
`any of the substantive elements of the claimed subject matter. For instance, the
`
`petition is silent as to “displaying a plurality of bid indicators representing quantity
`
`associated with the plurality of bid orders, the plurality of bid indicators being
`
`displayed at locations corresponding to prices of the plurality of bid orders
`
`along a price axis”; “displaying a plurality of offer indicators representing quantity
`
`associated with the plurality of offer orders, the plurality of offer indicators being
`
`displayed at locations corresponding to prices of the plurality [of] offer orders
`
`along the price axis”; and “receiving a user input indicating a desired price for an
`
`order to be placed by the user, the desired price being specified by selection of one
`
`13
`
`

`

`Case No. CBM2014-00131
`
`of a plurality of locations corresponding to price levels along the price axis.”
`
`Ex. 1001, 14:1-18 (emphases added).
`
`Petitioners’ out-of-context focus on select language from claim 1 in arguing
`
`that the ’056 patent claims a CBM elevates form over substance in the same way that
`
`some patent owners have done when arguing claims do not qualify as CBMs due to
`
`the mere addition of a conventional computing device/step to a claim directed to a
`
`business method. In substance, however, the claims describe a tool/device that
`
`includes specific technical structural and functional features, and it is the combination
`
`of these technical features that makes the claims novel and nonobvious. The claims,
`
`when read as a whole, and the prosecution history make clear that the inventive
`
`aspects of the claims lie solely in the particular claimed features of the GUI tool. TT
`
`has never contended that it invented, and has not attempted to patent, any “method
`
`for trading financial instruments.” Petition, p. 4. To meet the claim, the claimed
`
`combination of structural and functional features must be used. The claims are NOT
`
`directed generally to merely trading financial instruments as alleged, without support,
`
`by Petitioners. Id.
`
`The ’056 patent claims should be analyzed no differently than if they recited a
`
`mechanical device. Indeed, the claimed tool is implemented graphically merely
`
`because of the state of technology today; it would be possible to implement a
`
`comparable tool mechanically. A claim directed to a mechanical device with
`
`mechanical analogs to the price axis, indicators corresponding to levels of the price
`
`14
`
`

`

`Case No. CBM2014-00131
`
`axis, the ability to set a default quantity, and the ability to select locations
`
`corresponding to levels of the price axis to set a desired price for an order would
`
`clearly not fall within AIA § 18. A method claim that requires all of the same structure
`
`and functions, but also requires that the structure/functions be used (e.g., requiring
`
`the step of making a selection and sending an order), should likewise clearly fall
`
`outside the scope of Section 18.
`
`TT acknowledges that a patent that merely adds a general purpose computer to
`
`a business method is subject to CBM review. For example, merely adding a generic
`
`step of “displaying” data to a claim directed to a business method or practice (where
`
`the alleged novelty resides at least in part in that business method or practice) does
`
`not remove such a claim from coverage as a CBM. See, e.g., CBM2014-00015, Paper
`
`20. Arguments to the contrary have been criticized as elevating form over substance.
`
`The ’056 patent is not merely claiming trading financial instruments on a computer.
`
`But claims directed to novel and nonobvious technology (where the alleged
`
`novelty does not reside at all in any business method or data-processing method), like
`
`a new GUI tool that might be used in a field like trading, are not subject to CBM
`
`review as a threshold matter. The ’056 patent claims are not merely claiming a generic
`
`display on top of a business method. Again, the claims are directed to the specific
`
`features and functionality of what is displayed and how it operates, and do not qualify
`
`as a CBM. Congress did not intend for patents directed to such types of tools, even if
`
`used for trading, to be subject to CBM review. Ex. 2017, S5428.
`
`15
`
`

`

`Case No. CBM2014-00131
`
`The inventors did not claim to have invented a new trading strategy, merely
`
`conducting a trade electronically, or merely displaying trading data on computers.
`
`See Ex. 1001, 1:15-18. Petitioners’ apparent position that a claim in which no aspect of
`
`alleged novelty resides in a business method or practice can qualify as a CBM runs
`
`counter to the fact that the statute addresses “covered business method” patents and
`
`the reasons behind the statute, as explained below.
`
`B. The Congressional Record Confirms that Patents to Novel GUIs,
`Even If Used for Trading, Are Not Within the Scope of AIA § 18
`
`Petitioners markedly fail to point to portions of the legislative history that are
`
`directly on point here. For example, the following exchange between Senators Durbin
`
`and Schumer (the sponsor of Section 18) makes clear that the ’056 patent does not
`
`qualify as a CBM:
`
`[Mr. DURBIN.] . . . [S]ome companies that possess patents
`categorized by the PTO as class 705 business method
`patents have used the patents to develop novel software
`tools and graphical user interfaces that have been
`
`widely commercialized and used within the electronic
`
`trading industry to implement trading and asset
`allocation strategies. Additionally, there are companies
`that possess class 705 patents which have used the patents
`to manufacture and commercialize novel machinery to
`count, sort, and authenticate currency and paper
`instruments. Are these the types of patents that are the
`target of Section 18?
`
`16
`
`

`

`Case No. CBM2014-00131
`
`
`[Mr. SCHUMER.] No. Patent holders who have generated
`productive inventions and have provided large numbers of
`Ameri