Trials@uspto.gov
`Tel: 571-272-7822
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`
`
`
`Paper 29
`Entered: February 2, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`TD AMERITRADE HOLDING CORP., TD AMERITRADE, INC., and
`TD AMERITRADE ONLINE HOLDINGS CORP.,
`Petitioner,
`
`v.
`
`TRADING TECHNOLOGIES INTERNATIONAL, INC.,
`Patent Owner.
`_______________
`
`Case CBM2014-00133
`Patent No. 7,676,411 B2
`_______________
`
`
`Before SALLY C. MEDLEY, MEREDITH C. PETRAVICK, and
`PHILIP J. HOFFMANN, Administrative Patent Judges.
`
`HOFFMANN, Administrative Patent Judge.
`
`
`
`
`DECISION ON REQUEST FOR REHEARING
`37 C.F.R. § 42.71
`
`
`
`
`
`
`
`
`
`
`Tel: 571-272-7822
`
`
`
`
`Paper 29
`Entered: February 2, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`TD AMERITRADE HOLDING CORP., TD AMERITRADE, INC., and
`TD AMERITRADE ONLINE HOLDINGS CORP.,
`Petitioner,
`
`v.
`
`TRADING TECHNOLOGIES INTERNATIONAL, INC.,
`Patent Owner.
`_______________
`
`Case CBM2014-00133
`Patent No. 7,676,411 B2
`_______________
`
`
`Before SALLY C. MEDLEY, MEREDITH C. PETRAVICK, and
`PHILIP J. HOFFMANN, Administrative Patent Judges.
`
`HOFFMANN, Administrative Patent Judge.
`
`
`
`
`DECISION ON REQUEST FOR REHEARING
`37 C.F.R. § 42.71
`
`
`
`
`
`
`
`
`
`
`
`Case CBM2014-00133
`Patent No. 7,676,411 B2
`
`
`I. INTRODUCTION
`TD Ameritrade Holding Corp., TD Ameritrade, Inc., and TD
`Ameritrade Online Holdings Corp. (collectively, “Petitioner”) filed a
`Petition (Paper 1, “Pet.”) on May 19, 2014, which requested review under
`the transitional program for covered business method patents of U.S. Patent
`No. 7,676,411 B2 (Ex. 1001, “the ’411 patent”). Trading Technologies
`International, Inc. (“Patent Owner”) filed a Preliminary Response (Paper 18,
`“Prelim. Resp.”) on September 3, 2014. The Board instituted covered
`business method patent review of claims 1–28 of the ’411 patent under 35
`U.S.C. § 101, and denied institution of any claims under 35 U.S.C. § 103.
`Paper 19 (“Decision”). Petitioner and Patent Owner each filed a Request for
`Rehearing asking that the Board reconsider its Decision – Petitioner
`requesting that we institute based on grounds 2 and 3 of the Petition because
`claims 1–28 are obvious based on Silverman, Gutterman, and Togher with or
`without Paal (Paper 21, “Petitioner’s Req. Reh’g”), and Patent Owner
`requesting that we deny institution because the ’411 patent does not qualify
`for covered business method patent review (Paper 22, “Patent Owner’s Req.
`Reh’g”).
`We have considered each Request for Rehearing, but decline to
`modify the Decision.
`
`
`II. ANALYSIS
`A. Petitioner’s Request for Rehearing
`When rehearing a decision on petition, the Board will review the
`decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of
`discretion may be determined if a decision is based on an erroneous
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`Case CBM2014-00133
`Patent No. 7,676,411 B2
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`interpretation of law, if a factual finding is not supported by substantial
`evidence, or if the decision represents an unreasonable judgment in weighing
`relevant factors. See Arnold Partnership v. Dudas, 362 F.3d 1338, 1340
`(Fed. Cir. 2004). For the reasons that follow, Petitioner does not show that
`the Board abused its discretion.
`Petitioner contends that our Decision is based upon a misapprehension
`that the Petition did not rely on Togher to disclose the single action
`limitation. Petitioner’s Req. Reh’g, 2. According to Petitioner, had our
`Decision properly considered Petitioner’s remarks regarding Togher’s
`disclosure, we would have instituted review of claims 1–28 as obvious based
`on Silverman, Gutterman, and Togher with or without Paal. Id.
`Although Petitioner cites to various portions of the Petition
`characterizing Togher’s disclosure, for the following reasons we find that
`Petitioner relied on Silverman and Gutterman to render obvious claim 1’s
`limitation “selecting a particular graphical area in the order entry region
`through a single action of the user input device to . . . set a price for the trade
`order and send the trade order . . . to the electronic exchange,” and relied on
`Togher to disclose the claim limitation “the trade order having a default
`quantity.” Thus, Petitioner’s argument that Togher discloses “a single action
`of the user input device [] both set[ting] a price for the trade order and
`send[ing] the trade order having a default quantity” is not timely raised, and
`will not be a basis for instituting covered business method patent review.
`Section B., 4., g) of the Petition included Petitioner’s arguments
`regarding the obviousness of the limitation at issue. Here, Petitioner stated:
`[I]n the GUI of Silverman and Gutterman, a
`user can “select[] a particular graphical area in the
`order entry region” “by touching the corresponding
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`Case CBM2014-00133
`Patent No. 7,676,411 B2
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`order icon.” (Gutterman, 13:27–29.) The touching
`of the corresponding order icon is “a single action
`of the user input device.” When a mouse is
`utilized, the single action of the user input device
`in this embodiment of Gutterman would be a
`single or double mouse click. (Roman Dec.,
`¶119.)
`
`Gutterman discloses that selecting (e.g.,
`touching) an order icon sets “the order’s quantity,
`price, and timestamp.” (Gutterman, 13:29–31.)
`However, Gutterman does not disclose “a trade
`order having a default quantity.” Togher discloses
`the use of default quantities.
`
`Pet. 43–44 (original emphases omitted, our emphases added). Based on the
`above, Petitioner clearly relied on Silverman and Gutterman, and not
`Togher, to disclose the claimed single action that sets a price and sends the
`trade order. This is consistent with other portions of the Petition which
`relied on Gutterman to disclose a single action that sets a price and sends a
`trade order – e.g.:
`
`A trader may immediately transmit this
`electronic message to another party by pressing
`another “active” button - the “SEND FILL” button.
`(Id. at 13:29–43 (“In periods of heavy market
`activity . . . .”) As described in the specification of
`the ’411 patent, any action by a user within a short
`period of time, whether comprising one or more
`clicks of a mouse button or other input device
`qualifies as a “single action.” Thus, Gutterman’s
`disclosure of a user making two selections within a
`short period of time is a single action. (Roman
`Dec., ¶77.)
`
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`
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`Id. at 20.
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`Case CBM2014-00133
`Patent No. 7,676,411 B2
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`Petitioner now points to other characterizations of Togher in the
`Petition in an attempt to establish that Petitioner relied on Togher to disclose
`the claimed single action that sets a default quantity and sends the trade
`order. See Petitioner’s Req. Reh’g, 3–8. We are not persuaded. For
`example, Petitioner points to the statement “the combination of Silverman
`and Gutterman does not explicitly disclose a single action ‘to both set a price
`for the trade order and send the trade order having a default quantity to the
`electronic exchange.’ However, Togher discloses this limitation.” Id. at 4,
`citing Petition 42 (emphases omitted). This statement is not properly
`interpreted, however, as meaning that Petitioner relied on Togher to disclose
`a single action that does each of the following: 1) sets a price for a trade
`order; 2) provides a default quantity for the trade order; and 3) sends the
`trade order having the set price and provided default quantity, as Petitioner
`seems to allege. Petitioner’s characterization of Togher which followed this
`broad statement did not, for example, sufficiently explain how Togher sets a
`price – rather the quoted portion of Togher establishes only that a trader may
`“respond to . . . [an] offer price.” Petition 42, citing Togher 9:1–6. Further,
`Petitioner stated in the next sentence of the Petition that “Togher discloses
`setting default values for trade orders,” and then quoted portions of Togher
`directed to setting a default trade value. Id. Importantly, in the Petition
`Petitioner did not discuss anything about what happens when a “Buy button”
`or a “Sell button” is activated in Togher (e.g., that the order is sent to an
`electronic exchange), or even how, specifically, either button is activated.
`Thus, we conclude that Petitioner was not concerned in describing in the
`Petition how Togher disclosed a single action that sets a price, provides a
`default quantity, and sends a trade order, because Petitioner was not relying
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`Case CBM2014-00133
`Patent No. 7,676,411 B2
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`on Togher to disclose such a limitation of claim 1.
`
`B.
`
`Patent Owner’s Request for Rehearing
`As stated above, when rehearing a decision on petition, the Board will
`review the decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An
`abuse of discretion may be determined if a decision is based on an erroneous
`interpretation of law, if a factual finding is not supported by substantial
`evidence, or if the decision represents an unreasonable judgment in weighing
`relevant factors. See Arnold Partnership v. Dudas, 362 F.3d at 1340. For
`the reasons that follow, Patent Owner does not show that the Board abused
`its discretion.
`Patent Owner argues that the Board abused its discretion when it
`failed to consider “statements by Congress confirming that a patent claiming
`a novel GUI (like the ’411 patent) would not be eligible for Section 18
`review.” Patent Owner’s Req. Reh’g, 3. We did not overlook Patent
`Owner’s arguments regarding the legislative history. See Dec. 8–9.
`In the Decision, we explained that claim 11 is directed to a method of
`displaying market information relating to and facilitating trading of a
`commodity being traded on an electronic exchange. As further explained,
`the only hardware recited in claim 1 is a display and an input device, which
`both were known technology. Dec. 11–12. Further recitations in claim 1 are
`directed to use and operation of the GUI – for example, displaying market
`
`
`1 As explained in the Decision, a patent only need have one claim directed
`to a covered business method to be eligible for a covered business method
`patent review. In the Decision, we focused on claim 1. We focus on claim 1
`for purposes of the rehearing decision.
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`Case CBM2014-00133
`Patent No. 7,676,411 B2
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`information in a certain arrangement on the GUI, as well as setting order
`parameters and sending the order to the exchange with the GUI. Id. Thus,
`inasmuch as claim 1 recites only known hardware, Patent Owner does not
`persuade us that claim 1 recites a novel GUI tool.
`Patent Owner argues that the Board misapplied the technological
`invention test. Patent Owner’s Req. Reh’g, 8. In particular, Patent Owner
`argues that we overlooked the novel and unobvious technological features
`claimed. Id. at 8–12. In the Decision, we noted the following:
`The following claim drafting
`techniques, for
`example, typically do not render a patent a
`“technological invention”:
`(a) Mere recitation of known technologies,
`such as computer hardware, communication
`or computer networks, software, memory,
`computer–readable
`storage
`medium,
`scanners, display devices or databases, or
`specialized machines, such as an ATM or
`point of sale device.
`(b) Reciting the use of known prior art
`technology to accomplish a process or
`method, even if that process or method is
`novel and non–obvious.
`77 Fed. Reg. 48,756, 48,763–64 (Aug. 14, 2012).
`Dec. 11. As noted in the Decision, claim 1 requires the use of known
`technology – a display, an input device, and a GUI (i.e., software). Id. As
`indicated above, reciting the use of known prior art technology to
`accomplish a process or method, even if the process or method is novel and
`non-obvious, does not render a patent a “technological invention.” For these
`reasons, Patent Owner has not shown that the Board abused its discretion in
`determining that claim 1 does not recite a technological feature that is novel
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`Case CBM2014-00133
`Patent No. 7,676,411 B2
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`and unobvious over the prior art.
`Patent Owner also argues that the Decision improperly failed to
`address whether claim 1 solves a technical problem using a technical
`solution. Patent Owner’s Req. Reh’g 12. In particular, Patent Owner
`indicates “[t]he Decision failed to address either of the two technological
`problems solved by the invention claimed[;] . . . . the problem of speed and
`accuracy with prior graphical tools . . . . [and] the inadequate visualization of
`prior graphical tools.” Id. Inasmuch as Patent Owner does not demonstrate
`sufficiently how the language of claim 1 recites such limitations, we do not
`find the arguments persuasive.
`
`Conclusion
`C.
`Consequently, we are not persuaded of an abuse of discretion either
`
`by Petitioner or Patent Owner.
`
`
`III. ORDER
`
`Accordingly, it is
`ORDERED that each Request for Rehearing is denied.
`
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`Case CBM2014-00133
`Patent No. 7,676,411 B2
`
`FOR PETITIONER:
`
`Lori Gordon
`Robert E. Sokohl
`Jonathan Strang
`STERNE, KESSLER, GOLDSTEIN & FOX
`lgordon-ptab@skgf.com
`rsokohl-ptab@skgf.com
`jstrang-PTAB@skgf.com
`
`FOR PATENT OWNER:
`
`Erika H. Arner
`Joshua L. Goldberg
`FINNEGAN, HENDERSON, FARABOW, GARRETT, AND DUNNER,
`LLP
`erika.arner@finnegan.com
`joshua.goldberg@finnegan.com
`
`Steven F. Borsand
`TRADING TECHNOLOGIES INTERNATIONAL, INC.
`Steve.Borsand@tradingtechnologies.com
`
`
` 9
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