Paper No.
`Filed: December 16, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`TD AMERITRADE HOLDING CORP., TD AMERITRADE, INC., AND TD
`AMERITRADE ONLINE HOLDINGS CORP.,
`Petitioner
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`v.
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`TRADING TECHNOLOGIES INTERNATIONAL, INC.,
`Patent Owner
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`Case CBM2014-00131
`Patent 7,533,056
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`Patent Owner’s Request for Rehearing under 37 C.F.R. § 42.71(c)
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`Filed: December 16, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`TD AMERITRADE HOLDING CORP., TD AMERITRADE, INC., AND TD
`AMERITRADE ONLINE HOLDINGS CORP.,
`Petitioner
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`v.
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`TRADING TECHNOLOGIES INTERNATIONAL, INC.,
`Patent Owner
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`Case CBM2014-00131
`Patent 7,533,056
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`Patent Owner’s Request for Rehearing under 37 C.F.R. § 42.71(c)
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`I.
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`Case No. CBM2014-00131
`Patent 7,533,056
`
`Introduction
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`Trading Technologies (“TT”) requests rehearing of the Decision on Institution
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`because the Panel misapprehended or overlooked facts that establish that the ’056
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`patent does not qualify as a CBM patent. In the first instance, the inventions claimed
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`in the ’056 patent are not business methods. The claims recite technology that
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`Congress explicitly said was not a covered business method— “software tools and
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`graphical user interfaces.”1 While the claimed invention is used in the financial
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`industry, the claims do not recite a method of trading itself, as the Panel erroneously
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`concludes. Congress clearly defined the metes and bounds of what constitutes a CBM,
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`specifically exempting novel and nonobvious software tools and graphical user
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`interfaces (GUIs). The Panel overlooked this legislative history and, more importantly,
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`made a ruling that strikes directly against the intent of Congress. This erroneous view
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`of the law constitutes an abuse of discretion.
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`Further, the Panel completely overlooked specific technological features in the
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`claims that distinguish the claims from the prior art. By overlooking these claim
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`limitations, the Decision misapprehended and misapplied the technological invention
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`exception. Because the Decision overlooked evidentiary evidence, the Panel abused its
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`discretion.
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`1 See section IV below.
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`1
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`II.
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`Case No. CBM2014-00131
`Patent 7,533,056
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`Standard of Review
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`On rehearing, a decision is reviewed for abuse of discretion.2 An abuse of
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`discretion “occurs when a court misunderstands or misapplies the relevant law,” or
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`makes erroneous factual findings.3 A decision lacking evidentiary support in the
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`record abuses discretion.4 So does a decision based on an erroneous view of the law.5
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`Because the Decision misapplies the law and lacks evidentiary support in the record,
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`the Panel abused its discretion and thus erred in instituting trial.
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`III. Current State of the Proceeding
`The inventions claimed in the ’056 patent are not business methods, as Patent
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`Owner repeatedly explained in its Preliminary Response by stressing that the claimed
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`technology is a GUI tool and the associated structural and functional features. To
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`state that "Patent Owner has not explained why facilitating trading in a system is
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`not a method of doing business,”6 misses the point of Patent Owner’s argument.
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`Patent Owner correctly argued that the inventive aspects of the claim do not lie in
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`2 37 C.F.R. § 42.71(c).
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`3 Renda Marine, Inc. v. U.S., 509 F.3d 1372, 1379 (Fed. Cir. 2007).
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`4 MGIC v. Moore, 952 F.2d 1120, 1122 (9th Cir. 1991).
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`5 Atl. Research Mktg. Sys. v. Troy, 659 F.3d 1345, 1359 (Fed. Cir. 2011) (emphasis
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`added).
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`6 Decision, p. 6.
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`2
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`Case No. CBM2014-00131
`Patent 7,533,056
`any business practice. The preamble of the claim cited by the Panel merely
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`
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`provides context for the application of what is claimed. In its Preliminary
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`Response, TT showed how the claims of the ’056 patent recite particular features
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`such as “displaying a plurality of bid indicators representing quantity associated with
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`the plurality of bid orders, the plurality of bid indicators being displayed at locations
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`corresponding to prices of the plurality of bid orders along a price axis”;
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`“displaying a plurality of offer indicators representing quantity associated with the
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`plurality of offer orders, the plurality of offer indicators being displayed at locations
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`corresponding to prices of the plurality [of] offer orders along the price axis”;
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`and “receiving a user input indicating a desired price for an order to be placed by the
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`user, the desired price being specified by selection of one of a plurality of
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`locations corresponding to price levels along the price axis.”7. The Decision—
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`like the Petition—fails to mention these technical elements leaving us to believe that
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`the Panel failed to consider them.
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`As the ’056 patent itself explains, the “invention relates generally to the field of
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`graphical user interfaces and more particularly to the field of graphical user interfaces
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`for electronic trading systems.”8 While the claims are directed to a method of using
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`7 Preliminary Response, pp. 8-11.
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`8 Preliminary Response, p. 6.
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`3
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`Case No. CBM2014-00131
`Patent 7,533,056
`the novel features of a GUI tool for trading, the claims are not merely directed to
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`
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`trading on a computer, but rather the structural and functional features of a GUI tool.
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`In its Preliminary Response, TT pointed to explicit statements by Congress
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`confirming a patent claiming a novel GUI would be safe from Section 18 review.9 The
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`Decision did not respond.
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`TT also cited abundant evidence showing that GUIs have long been recognized
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`as a technological field.10 The Decision apparently failed to appreciate this evidence.
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`As will be explained in more detail below, for at least these reasons, rehearing
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`should be granted.
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`IV. The Panel Failed to Consider the Metes and Bounds Set by Congress
`The Board has recognized that “novel software tools and graphical user
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`interfaces used within the electronic trading industry to implement trading and asset
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`allocation strategies are not the type of patents targeted for covered business method
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`patent review.”11 That conclusion comes directly from the legislative history, because,
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`9 Preliminary Response, pp. 16-20.
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`10 Preliminary Response, pp. 6-7 (citing other government agencies, college and
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`university programs, and legislative history discussion of GUIs).
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`11 CBM2013-00005, paper 18, p. 6 (Opinion by APJ Medley, March 29, 2013).
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`4
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`Case No. CBM2014-00131
`Patent 7,533,056
`while Congress wanted the scope of CBMs to be broad with respect to what
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`
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`constitutes “financial”, it still recognized that it had limits:
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`[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
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`widely commercialized and used within the electronic
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`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?
`
`[Mr. SCHUMER.] No. Patent holders who have generated
`productive inventions and have provided large numbers of
`American workers with good
`jobs
`through
`the
`development and commercialization of those patents are
`not the ones that have created the business method patent
`problem. While merely having employees and conducting
`business would not disqualify a patent-holder from Section
`18 review, generally speaking, it is not the understanding
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`5
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`Case No. CBM2014-00131
`Patent 7,533,056
`of Congress that such patents would be reviewed and
`invalidated under Section 18.12
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`Furthermore, in other portions of the legislative history, Congress
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`confirmed that claims of the sort at issue here are not CBMs:
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`[Mr. DURBIN.] Examples of such patent-protected
`products
`include machinery
`that counts,
`sorts or
`authenticates currency and paper instruments, and novel
`software tools and graphical user interfaces that are
`
`used by electronic trading industry workers to
`implement trading or asset allocation strategies.
`Vibrant industries have developed around the production
`and sale of these tangible inventions, and I appreciate that
`patents protecting such job-creating products are not
`understood to be the target of section 18.13
`
`[Mr. DURBIN.] . . . I also expect the PTO to keep in mind
`as it crafts these regulations Congress’s understanding
`that legitimate and job-creating technological patents
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`such as those protecting the novel electronic trading
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`software tools and graphical user interfaces discussed
`above are not the target of section 18.14
`
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`12 Ex. 2009, S5428 (emphases added).
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`13 Ex. 2008, S5433 (emphasis added).
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`14 Ex. 2009, S5433 (emphasis added).
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`6
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`Case No. CBM2014-00131
`Patent 7,533,056
`TT pointed to statements from Senator Schumer making clear that the reason behind
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`
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`Section 18 was the supposed low quality of business method patents. 15 TT further
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`explained that every example provided by Senator Schumer of patents implicated by
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`Section 18 involved claims whose alleged inventive aspect is directed to a business
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`method or practice.16 The Decision never addressed any of these statements.
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`
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`If the Decision had considered Congress’s clear understanding, the Decision
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`could only have concluded that the ’056 patent is outside the scope of Section 18,
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`because the claims are not directed to a business method and, in any event, are
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`directed to a technological invention. Because the Panel apparently failed to consider
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`the legislative history that is directly on point here with respect to the patentability of
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`software tools and GUIs, the Decision is based on an erroneous view of the law and
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`therefore is an abuse of discretion.
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`V. The Decision Misapplied the Technological Invention Test
`Putting aside that the ’056 claims are not subject to Section 18 as a threshold
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`matter, the claims clearly qualify for the technological invention exception.
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`15 Preliminary Response, pp. 19-20.
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`16 Id.
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`7
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`A.
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`Case No. CBM2014-00131
`Patent 7,533,056
`The Panel Misapplied the Technological Invention Test By
`Ignoring Evidence Showing Novelty, Nonobviousness, and
`Technical Solution
`
`The Panel acknowledges that patents for technological inventions are excluded
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`from challenges as covered business patents17 and that determining whether a patent
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`is for a technological invention requires considering “whether the claimed subject
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`matter as a whole recites a technological feature that is novel and unobvious over the
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`prior art; and solves a technical problem using a technological solution. 37 C.F.R.
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`§ 42.301(b)).”18 The Panel, however, ignored volumes of evidence showing that GUIs
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`are technology,19 and that the claims recite novel and nonobvious technical features.20
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`The Decision ignored all of this evidence. Accordingly, the Panel should grant this
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`request, properly consider the evidence, and properly apply the rule.
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`B. The Record Supports Finding that the Claims Recite Novel and
`Non-Obvious Technology.
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`The Decision improperly describes claim 1 of the ’056 patent as reciting only “a
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`method of receiving bid and offer information of a product from an electronic
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`17 Decision p. 4.
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`18 Decision, p. 5.
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`19 Preliminary Response, pp. 6-7 (citing other government agencies, college and
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`university programs, and legislative history discussion of GUIs).
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`20 Preliminary Response, pp. 8-11, 13-14.
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`8
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`Case No. CBM2014-00131
`Patent 7,533,056
`exchange, displaying the bid and offer information, receiving a user input indicating a
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`
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`default quantity and price for an order(s), and sending the order(s) to an electronic
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`exchange.”21 The Decision then erroneously concludes that claim 1 is merely directed
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`to a method “for displaying transactional information and facilitating trading in a
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`system.”22
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`The Decision improperly simplifies the claim language and ignores the actual
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`recitations in the claims, violating the Supreme Court’s guidance that claims must be
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`considered as a whole. Diamond v. Diehr, 450 U.S. 175, 188 (1981). After generically
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`reciting claim 1 on page 5 (devoid of important detail), the Decision shows on page 7
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`that it relied on its improper generalization by stating “[t]here is no indication in the
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`’056 patent that the inventors invented gathering market information, displaying it to
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`a trader, and using the information to facilitate trading a commodity.”23
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`But Patent Owners do not claim to have invented displaying market
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`information to traders. As stated in the Preliminary Response, the technical features
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`of the claimed solution include particular features of a GUI tool. In particular, the
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`claims require a price axis and displaying bid and ask indicators relative to the axis on
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`different portions of the computer screen and enabling a user to provide inputs based
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`21 Decision, p. 5.
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`22 Decision, p. 6 (emphasis in Decision).
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`23 Decision, p. 7.
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`9
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`Case No. CBM2014-00131
`Patent 7,533,056
`on a selection of locations along the axis.24 The improved GUI tool claimed in the
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`
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`’056 patent permits a trader to immediately see rapidly changing activity in the market,
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`“quickly assemble” the information, ” and react quickly and effectively, not unlike an
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`innovative display in a cockpit of an airplane.25 This is in contrast to conventional
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`systems, where “the trader only knew of the existence of the highest bid, and
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`therefore would not know that demand for the item was increasing.”26 The technical
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`features also include providing the ability to set a default quantity and providing a
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`plurality of locations corresponding to price levels along the price axis, which can be
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`selected to specify a desired price for an order.27 The new GUI tool (and underlying
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`claimed method) provides “a major advantage over conventional methods of trading
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`in which this information is not provided concurrently, and if presented at all, is
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`difficult to process quickly.”28
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`The Preliminary Response established that these technological features of the
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`novel GUI method are recited in the claims.29 The Preliminary Response also
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`24 Preliminary Response, p. 9.
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`25 Petitioner’s Response, pp. 7-8.
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`26 Petitioner’s Response, p. 9.
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`27 Petitioner’s Response, p. 7.
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`28 Petitioner’s Response, p. 10.
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`29 Preliminary response, p. 10.
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`10
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`Case No. CBM2014-00131
`Patent 7,533,056
`established that a GUI is technology.30 The Preliminary Response further established
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`
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`that the claimed GUI features distinguished the method claims at issue in this patent
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`from the prior art.31 From page 15 of the Decision, where it states that the
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`Specification of the ’056 patent “does not disclose a particular way for receiving
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`market information, displaying that information, . . . ”, it is clear that the panel ignored
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`this evidence, erroneously applying the technical test and abusing its discretion.
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`C. The Decision Improperly Failed to Address Whether the Claims
`Solve a Technical Problem Using a Technical Solution.
`
`The Panel must consider “whether the claimed subject matter as a whole . . .
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`solves a technical problem using a technical solution.”32 The Preliminary Response
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`and the ’056 patent explain that trading systems suffered from a significant, technical
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`problem—conventional trading systems made it difficult for a trader to quickly and
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`effectively process disparate information from multiple diverse sources in order to
`
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`30 Preliminary Response, pp. 43-44 (citing other government agencies, college and
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`university programs, and legislative history discussion of GUIs).
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`31 Preliminary Response, pp. 10-11 (citing the Notice of Allowance for recognizing TT
`
`as “an industry leader in creating new and novel ways of displaying information
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`related to the electronic trading art.”).
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`32 37 C.F.R. § 42.301(b).
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`11
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`Case No. CBM2014-00131
`Patent 7,533,056
`make an informed transaction decision.33 Lack of speed, accuracy, usability, and
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`
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`efficiency are classic engineering problems, which Patent Owner solved by creating
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`new technology: a novel and nonobvious GUI tool that operates to compile and
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`present information in an intuitive format that allows a user to quickly and effectively
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`interpret the information and provide input.34
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`The Petition failed to explain why this problem and solution was not
`
`technological in nature, relying instead on conclusory statements that they were not.
`
`The Decision erroneously concludes that “informing a trader of certain stock market
`
`trends or events is more of a financial problem than a technical problem.”35 This
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`conclusion is erroneous on many levels. First, it improperly genericizes the patent
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`claims as reciting merely a method for “informing a trader of certain stock trends.”
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`The claims of the ’056 patent, however, recite more than a generic display of
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`information.36 As explained above, the claims recite particular features of a GUI that
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`were lacking in the prior art.37 Second, the technical problem identified by Patent
`
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`33 Preliminary Response, pp. 7-8.
`
`34 Preliminary Response, p. 8.
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`35 Decision, p. 8 (emphasis added).
`
`36 Preliminary Response, p. 10; see also claim 1.
`
`37 Preliminary Response, pp. 9-10.
`
`12
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`Case No. CBM2014-00131
`Patent 7,533,056
`Owner is one relating to speed, accuracy and efficiency, which are technical problems
`
`
`
`solved by a technical tool, the Patent Owner’s specially designed GUI and use thereof.
`
`D. The Panel Improperly Concluded That the Claims Lack Specific
`Hardware or Software.
`
`The Decision erroneously states that “[c]laim 1 does not recite specific
`
`hardware or software for performing the steps of method claim 1, or a GUI tool.”38
`
`This is incorrect. Claim recites a “method of operation used by a computer for
`
`displaying transactional information and facilitating trading” that performs according
`
`to the particular fashion described in the subsequent claim elements. The method
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`described is a specific one, all performed by a novel and nonobvious GUI tool. Any
`
`other conclusion is inaccurate and ignores substantive claim limitations. That the
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`Panel did not appreciate this is an abuse of discretion.
`
`To be clear, TT is not relying on the fact that the claimed GUI is implemented
`
`in “software” to establish that it is technological. Rather, TT is relying on the claimed
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`features of the GUI, which are not conventional. While using software to create GUIs
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`in general may have been known, the specific combination of GUI features claimed in
`
`the ’056 patent was not known. That the claimed GUI can be implemented in
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`different types of software does not mean it is non-technical. Indeed, if that were the
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`test, no claim to technology implemented using software could recite novel or non-
`
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`38 Decision, p. 6.
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`13
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`Case No. CBM2014-00131
`Patent 7,533,056
`obvious technology. Just because the method underlying the new GUI claimed in the
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`
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`’056 patent can be practiced by more than one type of computer does not make it
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`non-technological. This also holds for all types of software inventions. For example,
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`SSL (used for security on nearly every type of computer with a web browser) does not
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`change the underlying components of the computer and does not require use of a
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`particular programing language, but it is still technological. Similarly, the claimed
`
`method underlying the new GUI of the ’056 patent does not change the underlying
`
`hardware components of the computer and does not require use of a particular
`
`programing language. But it is the invention (the method underlying the new GUI is a
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`new tool that improves upon an old tool), not elements other than the invention, that
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`makes the claimed invention technological.39 The claims here to a novel graphical tool
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`are no different than claims to a novel physical tool made of steel—that the physical
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`tool can be made of different types of known steel using known crafting techniques is
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`irrelevant to whether the finished tool is technological.
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`When the actual claim limitations, which claim unknown technology, are
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`considered, it is clear that the claims recite a technological feature that is novel and
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`non-obvious over the prior art. TT submits that for this reason alone, the ’056 patent
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`is for a technological invention and, therefore, is not a CBM.
`
`
`39 Preliminary Response, pp. 44-53.
`
`14
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`Case No. CBM2014-00131
`Patent 7,533,056
`Accordingly, Trading Technologies requests rehearing of the Decision on
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`
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`Institution and denial of the petition because the ’056 patent is not a covered business
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`method patent.
`
`VI. Conclusion
`
`Because the Decision on Institution misapplies the law and lacks any
`
`evidentiary support in the record, the Panel abused its discretion and thus erred in
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`instituting trial. Accordingly, the Panel should grant this request and deny institution.
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`Respectfully submitted,
`
`Dated: December 16, 2014
`
`
`
`
`By:
`Erika H. Arner, Lead Counsel
`Registration No. 57,540
`
`Joshua L. Goldberg, Backup Counsel
`Registration No. 59,369
`
`Finnegan, Henderson, Farabow, Garrett
`& Dunner, LLP
`11955 Freedom Drive
`Reston, VA 20190
`
`Steven F. Borsand, Backup Counsel
`Registration No. 36,752
`Trading Technologies
`International, Inc.
`222 South Riverside Plaza, Suite
`1100
`Chicago, IL 60606
`
`Attorneys for Patent Owner Trading
`Technologies International, Inc.
`
`15
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`Case No. CBM2014-00131
`Patent 7,533,056
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of the foregoing Patent Owner’s
`
`
`
`
`
`Request for Hearing was served on December 16, 2014, via email directed to
`
`counsel of record for the Petitioner at the following:
`
`Lori A. Gordon
`lgordon-ptab@skgf.com
`
`Jonathan M. Strang
`jstrang-ptab@skgf.com
`
`Robert E. Sokohl
`rsokohl-ptab@skgf.com
`
`
`
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`1100 New York Avenue, N.W.
`Washington, D.C. 20005-3934
`
`
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`
`
`
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`
`
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`
`
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`
`
`/Ashley F. Cheung/
`Ashley F. Cheung
`Case Manager
`
`
`
`
`
`
`
`FINNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER, LLP
`
`
`16
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