Paper No.
`Filed: December 16, 2014
`
`
`
`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 7,676,411
`
`
`
`
`
`
`
`
`Patent Owner’s Request for Rehearing under 37 C.F.R. § 42.71(c)
`
`
`
`
`
`
`
`
`
`
`
`
`Filed: December 16, 2014
`
`
`
`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 7,676,411
`
`
`
`
`
`
`
`
`Patent Owner’s Request for Rehearing under 37 C.F.R. § 42.71(c)
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`I.
`
`
`
`
`
`Case No. CBM2014-00133
`Patent 7,676,411
`
`Introduction
`
`Trading Technologies (“TT”) requests rehearing of the Decision on Institution
`
`because the Panel misapprehended or overlooked facts that establish that the ’411
`
`patent does not qualify as a CBM patent. Most importantly, the Decision overlooked
`
`the explicit scope of the claims, which recite particular features of a graphical user
`
`interface (“GUI”) that distinguish the claims from the prior art and were the reasons
`
`why the claims were allowed as novel and non-obvious during examination. As a
`
`result, the Decision overlooked (and failed to address) the metes and bounds of CBM
`
`review defined by Congress. Indeed, the Decision contradicted the intent of Congress.
`
`While the claimed invention is used in the financial industry, the claimed invention is
`
`not directed in any way to a business method. Rather, the claims are directed to novel
`
`and non-obvious technology—the features of a graphical device. As such, the claims
`
`are outside the purview of CBM review as a threshold matter. In addition, by
`
`overlooking these claim limitations, the Decision misapprehended and misapplied the
`
`technological invention exception. The ’411 claims clearly meet the technological
`
`invention exception.
`
`1
`
`
`
`
`
`
`II.
`
`
`
`
`
`Case No. CBM2014-00133
`Patent 7,676,411
`
`Standard of Review
`
`On rehearing, a decision is reviewed for abuse of discretion.1 An abuse of
`
`discretion “occurs when a court misunderstands or misapplies the relevant law,” or
`
`makes erroneous factual findings.2 A decision lacking evidentiary support in the
`
`record abuses discretion.3 So does a decision based on an erroneous view of the law.4
`
`Because the Decision misapplies the law and lacks evidentiary support in the record,
`
`the Panel abused its discretion and thus erred in instituting trial.
`
`III. Current State of the Proceeding
`The claims of the ’411 patent are directed to technology embodied in a GUI
`
`that is used for trading, which is a financial activity. But the ’411 patent cannot be
`
`subjected to Section 18 review because, as explained in the Preliminary Response, it
`
`claims a novel GUI tool, not a method of doing business.5 TT pointed to explicit
`
`
`1 37 C.F.R. § 42.71(c).
`
`2 Renda Marine, Inc. v. U.S., 509 F.3d 1372, 1379 (Fed. Cir. 2007).
`
`3 MGIC v. Moore, 952 F.2d 1120, 1122 (9th Cir. 1991).
`
`4 Atl. Research Mktg. Sys. v. Troy, 659 F.3d 1345, 1359 (Fed. Cir. 2011) (emphasis
`
`added).
`
`5 Preliminary Response, p. 2.
`
`2
`
`
`
`
`
`
`
`
`
`
`
`Case No. CBM2014-00133
`Patent 7,676,411
`
`statements by Congress confirming that a patent claiming a novel GUI (like the ’411
`
`patent) would not be eligible for Section 18 review.6 The Decision did not respond.
`
`TT cited abundant evidence showing GUIs are technology.7 The Decision
`
`agreed.8 TT showed how the claims of the ’411 patent recite particular features of a
`
`GUI.9 Again, the Decision agreed that the claims require specific GUI features.10
`
`TT also provided volumes of third-party testimony on the claimed GUI’s
`
`significant improvement over prior trading systems.11 But the Decision ignored this
`
`evidence. In addition, TT pointed out how the prosecution history tied allowance to
`
`the claimed elements of the GUI.12
`
`
`6 Preliminary Response, p. 2-3.
`
`
`
`7 Preliminary Response, p. 49-50 (citing other government agencies, college and
`
`university programs, and legislative history discussion of GUIs).
`
`8 Decision, p. 11 (referring to GUIs as technology).
`
`9 Preliminary Response, pp. 18-28 (showing how the claims recite GUIs).
`
`10 Decision, p. 11 (finding claim 1 recites “a certain arrangement on a GUI and, via a
`
`single action of a user input device on a particular location in the GUI”).
`
`11 Preliminary Response, p. 17-18.
`
`12 Preliminary Response, pp. 28-33.
`
`3
`
`
`
`
`
`
`
`
`
`
`
`Case No. CBM2014-00133
`Patent 7,676,411
`
`As the Panel noted, TT “argue[d] that the claims recite a technical feature
`
`because they combine structural and functional features of the claimed GUI tool in a
`
`novel and non-obvious way.”13 TT also “argue[d] that the claims solve the technical
`
`problem of submitting orders to the exchange with speed and accuracy with the
`
`technical solution of the combined structural and functional features of the claimed
`
`GUI tool.”14 But the Decision failed to meet these arguments.
`
`Indeed, the Decision did not address any of the claimed structural and
`
`functional features of the GUI tool that are what distinguished the claims from the
`
`prior art. Instead, the Decision simply stated that “[a]s written, claim 1 requires the
`
`use of a display, an input device, and a GUI (i.e., software), which all were known
`
`technology.”15 But this misapprehends the fact that the invention is a GUI with
`
`specifically claimed features that were lacking in the prior art. Just as surely as a new
`
`display device or a new input device would be a technological invention, so too is a
`
`new GUI tool. In particular, claim 1 requires a GUI that combines the features of a
`
`price axis, bid and ask display regions, dynamically displayed bid/ask indicators in
`
`locations of the bid/ask display regions corresponding to levels on the price axis,
`
`
`13 Decision, p. 10.
`
`14 Decision, p. 10.
`
`15 Decision, p. 11.
`
`4
`
`
`
`
`
`
`
`
`
`
`
`Case No. CBM2014-00133
`Patent 7,676,411
`
`moving bid/ask indicators relative to the price axis based on market changes, and an
`
`order entry region with areas corresponding to price levels of the price axis that
`
`receive single action commands to set a price and send an order.16 This combination
`
`of GUI features was not “known technology” but novel and non-obvious technology.
`
`The Decision never addressed the claimed combinations of technical features. That
`
`the improved GUI is implemented in software is irrelevant.
`
`IV. The Decision Failed to Consider the Metes and Bounds Set by Congress
`The Board has recognized that “novel software tools and graphical user
`
`interfaces used within the electronic trading industry to implement trading and asset
`
`allocation strategies are not the type of patents targeted for covered business method
`
`patent review.”17 That conclusion comes directly from the legislative history, because,
`
`while Congress wanted the scope of CBMs to be broad with respect to what is a
`
`“financial product or service,” it still recognized that it had limits:
`
`[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
`
`16 Preliminary Response, pp. 50-51.
`
`17 CBM2013-00005, paper 18, p. 6 (Opinion by APJ Medley, March 29, 2013).
`
`5
`
`
`
`
`
`
`
`
`
`
`
`Case No. CBM2014-00133
`Patent 7,676,411
`
`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
`of Congress that such patents would be reviewed and
`invalidated under Section 18.18
`
`Furthermore, in other portions of the legislative history, Congress
`
`confirmed that claims of the sort at issue here are not CBMs:
`
`[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
`
`
`18 Ex. 2009, S5428 (emphases added).
`
`6
`
`
`
`
`
`
`
`
`
`
`
`Case No. CBM2014-00133
`Patent 7,676,411
`
`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 18.19
`
`[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
`
`such as those protecting the novel electronic trading
`
`software tools and graphical user interfaces discussed
`above are not the target of section 18.20
`
`TT pointed to statements from Senator Schumer making clear that the reason behind
`
`Section 18 was the supposed low quality of business method patents.21 TT further
`
`explained that every example provided by Senator Schumer of patents implicated by
`
`Section 18 involved claims whose alleged inventive aspect is directed to a business
`
`method or practice.22 The Decision never addressed any of these statements.
`
`
`19 Ex. 2008, S5433 (emphasis added).
`
`20 Ex. 2009, S5433 (emphasis added).
`
`21 Preliminary Response, pp. 38-41
`
`22 Id.
`
`7
`
`
`
`
`
`
`
`
`
`
`
`Case No. CBM2014-00133
`Patent 7,676,411
`
`If the Decision had considered Congress’s clear understanding, the Decision could
`
`only have concluded that the ’411 patent is outside the scope of Section 18 because
`
`the claims are not directed to a business method and, in any event, because they are
`
`directed to a technological invention. Subjecting the ’411 patent to CBM review is no
`
`different from finding patents on devices such as money-sorting machines or staplers
`
`subject to Section 18. This makes no sense; these types of patents are clearly not
`
`within the scope of Section 18 even if they are used for a financial activity.
`
`V. The Decision Misapplied the Technological Invention Test
`Putting aside that the ’411 claims are not subject to Section 18 as a threshold
`
`matter, the claims clearly qualify for the technological invention exception.
`
`A.
`
`The Decision Improperly Ignores the Claim Limitations That
`Recite Novel and Non-Obvious Technology
`
`In its analysis of whether the ’411 patent is for a technological invention, the
`
`Decision characterizes claim 1 as merely requiring “the use of a display, an input
`
`device, and a GUI (i.e., software), which all were known technology.”23 The Decision
`
`failed to cite anywhere in the record that supports its conclusion.24 The conclusion is
`
`not accurate and ignores substantive claim limitations. In particular, as TT explained
`
`and no one has disputed, the claims require particular structural and functional
`
`
`23 Decision, p. 11.
`
`24 Id.
`
`8
`
`
`
`
`
`
`
`
`
`
`
`Case No. CBM2014-00133
`Patent 7,676,411
`
`features of a GUI.25 This combination of technical features is novel and non-obvious
`
`and it is these features that distinguished the claims from the prior art.26 Petitioner
`
`never established that these claimed features lack novelty or are obvious. The claims
`
`are not directed to generic “software” or to a GUI in general. Rather, the claims
`
`require a GUI with particular features that makes it different from the prior art.
`
`When the actual claim limitations are properly considered, it is clear that they
`
`are for a technological invention. Not only are the claims directed to novel and non-
`
`obvious technical features, they also are directed to subject matter that solves a
`
`technical problem with a technical solution.
`
`
`25 Preliminary Response, pp. 11-28 (explaining the claims recite the technical elements
`
`of the inventive tool, including dynamically displaying indicators relative to a price
`
`axis such that the indicators move relative to a price axis and areas corresponding to
`
`levels of the price axis to receive order entry commands).
`
`26 Preliminary Response, 28-33 (explaining how the technical elements of the
`
`inventive tool recited in the claims distinguish the prior art in prosecution).
`
`9
`
`
`
`
`
`
`
`
`
`1.
`
`
`
`Case No. CBM2014-00133
`Patent 7,676,411
`
`The Record Only Supports Finding that the Claims Recite a
`Technological Feature That Is Novel and Non-Obvious
`
`As set forth above, the claims recite particular novel and non-obvious features
`
`of a GUI. The Preliminary Response established that GUIs are technology.27 As
`
`explained by TT, the claims to a graphical tool are no different from claims to a
`
`mechanical device.28 The Panel agreed that GUIs are technology.29 However, the
`
`Panel mistakenly treated the claims as directed to any generic GUI.30
`
`The Panel also seemed to equate the claimed GUI with “software.”31 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 features of the
`
`GUI, which are not conventional. While using software to create GUIs in general may
`
`have been known, the specific combination of GUI features claimed in the ’132
`
`patent was not known. That the claimed GUI can be implemented in different types
`
`of software does not mean it is non-technical. Indeed, if that was the test, no claim to
`
`27 Preliminary Response, p. 49-50 (citing other government agencies, college and
`
`university programs, and legislative history discussion of GUIs).
`
`28 Preliminary Response, p. 28.
`
`29 Decision, p. 11.
`
`30 Id.
`
`31 Id.
`
`10
`
`
`
`
`
`
`
`
`
`
`
`Case No. CBM2014-00133
`Patent 7,676,411
`
`technology implemented using software could recite novel or non-obvious
`
`technology.
`
`Moreover, just because the new GUI claimed in the ’411 patent can be
`
`practiced by more than one type of computer does not make it non-technological.
`
`This also holds for all types of software inventions. For example, SSL (used for
`
`security on nearly every type of computer with a web browser) does not change the
`
`underlying components of the computer and does not require use of a particular
`
`programing language, but it is still technological. Similarly, the claimed GUI of the
`
`’411 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 claimed GUI is a new tool that improves upon an old tool), not elements other
`
`than the invention, that makes the claimed invention technological.32 The claims here
`
`to a novel graphical tool are no different than claims to a novel physical tool made of
`
`steel—that the physical tool can be made of different types of known steel using
`
`known crafting techniques is irrelevant to whether the finished tool is technological.
`
`Importantly, the ’411 claims are not directed to conducting on a computer a
`
`business practice that existed before computers. Rather, the claims are directed to the
`
`features of a new graphical tool that did not exist previously on computers or before
`
`
`32 Preliminary Response, pp. 46-57.
`
`11
`
`
`
`
`
`
`
`
`
`
`
`Case No. CBM2014-00133
`Patent 7,676,411
`
`computers. As previously explained, the legislative history is clear on this issue:
`
`advances in software and GUI inventions are not covered business methods and are
`
`technological.33 When the actual claim limitations, which claim unknown technology,
`
`are considered, it is clear that the claims recite a technological feature that is novel and
`
`non-obvious over the prior art. TT submits that for this reason alone, the ’411 patent
`
`is for a technological invention and, therefore, is not a CBM.
`
`2.
`
`The Decision Improperly Failed To Address the Technical
`Problems Solved By the Claimed Technical Solution
`
`The Decision must consider “whether the claimed subject matter as a whole
`
`. . . solves a technical problem using a technical solution.”34 The Decision failed to
`
`address either of the two technical problems solved by the invention claimed by TT.35
`
`In particular, the Decision did not address the problem of speed and accuracy with
`
`prior graphical tools.36 In addition, the Decision did not address the inadequate
`
`visualization of prior graphical tools.37 TT explained how both of these problems are
`
`technical, as they relate to classic engineering problems of efficiency, precision and
`
`33 Preliminary Response, pp. 38-44.
`
`34 37 C.F.R. § 42.301(b) (emphasis added).
`
`35 Compare Preliminary Response, pp. 46-57 with Decision, p. 11.
`
`36 Id.
`
`37 Id.
`
`12
`
`
`
`
`
`
`
`
`
`
`
`Case No. CBM2014-00133
`Patent 7,676,411
`
`usability.38 Rather than addressing these technical problems, the Decision only
`
`addressed the following characterization of a purported problem: “the problem of a
`
`trader having to read a display of prices for a commodity and enter a trade order
`
`before the price of the commodity changes.”39 This characterization does not
`
`adequately convey the technical problems identified above. Accordingly, the Decision
`
`improperly failed to address whether the claimed subject matter as a whole solves “a
`
`technical problem using a technical solution” because it failed to consider all of the
`
`problems solved by the claimed invention.
`
`Once the technical problems of speed/accuracy and visualization are properly
`
`understood, it is clear that the claimed subject matter as a whole solves a technical
`
`problem using a technical solution. As set forth above, the Decision incorrectly
`
`ignores substantive limitations of the claims and mischaracterizes claim 1 as being
`
`merely directed to “a display, an input device, and a GUI (i.e., software), which were
`
`all known technology.”40 The actual claim limitations recite technical features of a
`
`GUI that solve the technical problems identified above. This is just like the interfaces
`
`
`38 Preliminary Response, pp. 49-50.
`
`39 Decision, p. 11.
`
`40 Decision, p. 11.
`
`13
`
`
`
`
`
`
`
`
`
`
`
`Case No. CBM2014-00133
`Patent 7,676,411
`
`designed by NASA, which solve technical problems by focusing on functionality and
`
`the interface to “build the right tool.”41
`
`Because the claims recite a new graphical user interface tool, not merely the
`
`process of executing a trade, they are outside the scope of Section 18 review.
`
`Congress understood that “technological patents such as those protecting the novel
`
`electronic trading software tools and graphical user interfaces discussed above are not
`
`the target of section 18.”42 Moreover, the claims of the ’411 patent satisfies both
`
`prongs of the technological invention definition.43 Accordingly, TT requests rehearing
`
`of the Decision and denial of the petition because the ’411 patent is not a covered
`
`business method patent.
`
`
`41 Ex. 2054; see also Preliminary Response, pp. 49-50.
`
`42 Ex. 2009, S5433.
`
`43 TT does not agree with the Panel’s assertion that qualification for the technological
`
`invention exception requires satisfaction of both prongs of 37 C.F.R. 42.301(b)
`
`because either prong independently shows that claims are recite a technological
`
`invention. Indeed, rule 42.301(b) only requires that the prongs are “considered,” not
`
`met. In any event, both are met here.
`
`14
`
`
`
`
`
`
`
`
`VI. Conclusion
`
`
`
`Case No. CBM2014-00133
`Patent 7,676,411
`
`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
`
`instituting trial. Accordingly, the Panel should grant this request and deny institution.
`
`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 S Riverside Plaza, Suite 1100
`Chicago, IL 60606
`
`Attorneys for Patent Owner Trading
`Technologies International, Inc.
`
`
`
`
`
`15
`
`
`
`
`
`
`
`Case No. CBM2014-00133
`Patent 7,676,411
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of the foregoing Patent Owner’s
`
`
`
`
`
`
`
`Request for Rehearing 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
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`/Ashley F. Cheung/
`Ashley F. Cheung
`Case Manager
`
`
`
`
`
`
`
`FINNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER, LLP
`
`
`16
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
