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 CBM2014-00135
`Patent 6,772,132
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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
`
`v.
`
`TRADING TECHNOLOGIES INTERNATIONAL, INC.,
`Patent Owner
`
`
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`
`
`
`
`
`
`
`
`Case CBM2014-00135
`Patent 6,772,132
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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. CBM2014-00135
`Patent 6,772,132
`
`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 ’132
`
`patent does not qualify as a CBM patent. Most importantly, the Decision overlooked
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`the explicit scope of the claims, which recite particular features of a graphical user
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`interface (“GUI”) that distinguish the claims from the prior art and were the reasons
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`why the claims were allowed as novel and non-obvious during original examination
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`and confirmed as such in reexamination. As a result, the Decision overlooked (and
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`failed to address) the metes and bounds of CBM review defined by Congress. Indeed,
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`the Decision contradicted the intent of Congress. While the claimed invention is used
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`in the financial industry, the claimed invention is not directed in any way to a business
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`method. Rather, the claims are directed to novel and non-obvious technology—the
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`features of a graphical device. As such, the claims are outside the purview of CBM
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`review as a threshold matter. In addition, by overlooking these claim limitations, the
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`Decision misapprehended and misapplied the technological invention exception. The
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`’132 claims clearly meet the technological invention exception.
`
`II.
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`Standard of Review
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`On rehearing, a decision is reviewed for abuse of discretion.1 An abuse of
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`discretion “occurs when a court misunderstands or misapplies the relevant law,” or
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`1 37 C.F.R. § 42.71(c).
`
`1
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`Case No. CBM2014-00135
`Patent 6,772,132
`makes erroneous factual findings.2 A decision lacking evidentiary support in the
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`
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`record abuses discretion.3 So does a decision based on an erroneous view of the law.4
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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 claims of the ’132 patent are directed to technology embodied in a GUI
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`that is used for trading, which is a financial activity. But the ’132 patent cannot be
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`subjected to Section 18 review because, as explained in the Preliminary Response, it
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`claims a novel GUI tool, not a method of doing business.5 TT pointed to explicit
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`statements by Congress confirming that a patent claiming a novel GUI (like the ’132
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`patent) would not be eligible for Section 18 review.6 The Decision did not respond.
`
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`2 Renda Marine, Inc. v. U.S., 509 F.3d 1372, 1379 (Fed. Cir. 2007).
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`3 MGIC v. Moore, 952 F.2d 1120, 1122 (9th Cir. 1991).
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`4 Atl. Research Mktg. Sys. v. Troy, 659 F.3d 1345, 1359 (Fed. Cir. 2011) (emphasis
`
`added).
`
`5 Preliminary Response, p. 2.
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`6 Preliminary Response, p. 2-3.
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`2
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`Case No. CBM2014-00135
`Patent 6,772,132
`TT cited abundant evidence showing GUIs are technology.7 The Decision
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`
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`agreed.8 TT showed how the claims of the ’132 patent recite particular features of a
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`GUI.9 Again, the Decision agreed that the claims require specific GUI features.10
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`TT also provided volumes of third-party testimony on the claimed GUI’s
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`significant improvement over prior trading systems,11 an improvement recognized by
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`the Federal Circuit.12 But the Decision ignored this evidence. In addition, TT pointed
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`7 Preliminary Response, p. 43-44 (citing other government agencies, college and
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`university programs, and legislative history discussion of GUIs).
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`8 Decision, p. 11 (referring to GUIs as technology).
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`9 Preliminary Response, pp. 18-23 (showing how the claims recite GUIs).
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`10 Decision, p. 11 (finding claim 1 recites “a certain arrangement on a GUI and, via a
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`single action of a user input device on a particular location in the GUI”).
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`11 Preliminary Response, p. 16-17.
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`12 Preliminary Response, p. 18 (quoting the Federal Circuit’s summary of the claims as
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`“The patents claim software. . . . The software’s graphical user interface (“GUI”)
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`includes a ‘dynamic display for a plurality of bids and for a plurality of asks in the
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`market for the commodity and a static display of prices corresponding to the plurality
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`of bids and ask’ . . . . The claimed invention facilitates more accurate and efficient
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`orders in this trading environment.”)
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`3
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`Case No. CBM2014-00135
`Patent 6,772,132
`out how the prosecution history tied allowance to the claimed elements of the GUI.13
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`
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`The reexamination of the ’132 patent again confirmed the claims for the same
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`reasons.14 The Decision ignored this evidence too.
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`As the Panel noted, TT “argue[d] that the claims recite a technical feature
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`because they combine structural and functional features of the claimed GUI tool in a
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`novel and non-obvious way.”15 TT also “argue[d] that the claims solve the technical
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`problem of submitting orders to the exchange with speed and accuracy with the
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`technical solution of the combined structural and functional features of the claimed
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`GUI tool.”16 But the Decision failed to meet these arguments. Indeed, the Decision
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`did not address any of the claimed structural and functional features of the GUI tool
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`that are what distinguished the claims from the prior art. Instead, the Decision simply
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`stated that “[a]s written, claim 1 requires the use of a display, an input device, and a
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`GUI (i.e., software), which all were known technology.”17 But this misapprehends the
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`fact that the invention is a GUI with specifically claimed features that were lacking in
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`the prior art. Just as surely as a new display device or a new input device would be a
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`13 Preliminary Response, pp. 24-26.
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`14 Id. at p. 52.
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`15 Decision, p. 10.
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`16 Id. at p. 10.
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`17 Id. at p. 11.
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`4
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`Case No. CBM2014-00135
`Patent 6,772,132
`technological invention, so too is a new GUI tool. In particular, claim 1 requires a
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`
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`GUI that includes a static display of prices, a dynamic display of bids/asks aligned
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`with the static display of prices, and an order entry region with areas corresponding to
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`prices of the static display of prices for receiving single action commands from a user
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`input device to set parameters and send an order.18 This combination of GUI features
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`was not “known technology” but novel and non-obvious technology. The Decision
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`never addressed the claimed combinations of technical features. That the improved
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`GUI is implemented in software is irrelevant.
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`IV. The Decision 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.”19 That conclusion comes directly from the legislative history, because,
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`while Congress wanted the scope of CBMs to be broad with respect to what is a
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`“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
`
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`18 Preliminary Response, pp. 43-44.
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`19 CBM2013-00005, paper 18, p. 6 (Opinion by APJ Medley, March 29, 2013).
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`5
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`Case No. CBM2014-00135
`Patent 6,772,132
`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
`of Congress that such patents would be reviewed and
`invalidated under Section 18.20
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`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
`
`
`20 Ex. 2009, S5428 (emphases added).
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`6
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`Case No. CBM2014-00135
`Patent 6,772,132
`software tools and graphical user interfaces that are
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`
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`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 18.21
`
`[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 18.22
`
`TT pointed to statements from Senator Schumer making clear that the reason behind
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`Section 18 was the supposed low quality of business method patents. 23 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.24 The Decision never addressed any of these statements.
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`21 Ex. 2008, S5433 (emphasis added).
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`22 Id.
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`23 Preliminary Response, pp. 36-37.
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`24 Id.
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`7
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`Case No. CBM2014-00135
`Patent 6,772,132
`If the Decision had considered Congress’s clear understanding, the Decision could
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`
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`only have concluded that the ’132 patent is outside the scope of Section 18 because
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`the claims are not directed to a business method and, in any event, because they are
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`directed to a technological invention. Subjecting the ’132 patent to CBM review is no
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`different from finding patents on devices such as money-sorting machines or staplers
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`subject to Section 18. This makes no sense; these types of patents are clearly not
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`within the scope of Section 18 even if they are used for a financial activity.
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`V. The Decision Misapplied the Technological Invention Test
`Putting aside that the ’132 claims are not subject to Section 18 as a threshold
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`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 ’132 patent is for a technological invention, the
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`Decision characterizes claim 1 as merely requiring “the use of a display, an input
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`device, and a GUI (i.e., software), which all were known technology.”25 The Decision
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`failed to cite anywhere in the record that supports its conclusion.26 The conclusion is
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`not accurate and ignores substantive claim limitations. In particular, as TT explained
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`and no one has disputed, the claims require particular structural and functional
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`25 Decision, p. 11.
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`26 Decision, p. 11.
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`8
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`Case No. CBM2014-00135
`Patent 6,772,132
`features of a GUI.27 This combination of technical features is novel and non-obvious
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`
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`and it is these features that distinguished the claims from the prior art.28 Petitioner
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`never established that these claimed features lack novelty or are obvious. The claims
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`are not directed to generic “software” or to a GUI in general. Rather, the claims
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`require a GUI with particular features that makes it different from the prior art.
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`When the actual claim limitations are properly considered, it is clear that they
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`are for a technological invention. Not only are the claims directed to novel and non-
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`obvious technical features, they also are directed to subject matter that solves a
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`technical problem with a technical solution.
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`1.
`
`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.29 As
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`explained by TT, the claims to a graphical tool are no different from claims to a
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`27 Preliminary Response, pp. 17-24 (explaining the claims recite the technical elements
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`of the inventive tool).
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`28 Id. at pp. 24-26 (explaining how the technical elements of the inventive tool recited
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`in the claims distinguish the prior art in prosecution).
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`29 Id. at pp. 43-44 (citing other government agencies, college and university programs,
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`and legislative history discussion of GUIs).
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`9
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`Case No. CBM2014-00135
`Patent 6,772,132
`mechanical device.30 The Panel agreed that GUIs are technology.31 However, the
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`
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`Panel mistakenly treated the claims as directed to any generic GUI.32
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`The Panel also seemed to equate the claimed GUI with “software.”33 To be
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`clear, TT is not relying on the fact that the claimed GUI is implemented in “software”
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`to establish that it is technological. Rather, TT is relying on the claimed features of the
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`GUI, which are not conventional. While using software to create GUIs in general may
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`have been known, the specific combination of GUI features claimed in the ’132
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`patent was not known. That the claimed GUI can be implemented in different types
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`of software does not mean it is non-technical. Indeed, if that was the test, no claim to
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`technology implemented using software could recite novel or non-obvious
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`technology.
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`Moreover, just because the new GUI claimed in the ’132 patent can be
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`practiced by more than one type of computer does not make it non-technological.
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`This also holds for all types of software inventions. For example, SSL (used for
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`security on nearly every type of computer with a web browser) does not change the
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`underlying components of the computer and does not require use of a particular
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`30 Preliminary Response, p. 24.
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`31 Decision, p. 11.
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`32 Id.
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`33 Id.
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`10
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`Case No. CBM2014-00135
`Patent 6,772,132
`programing language, but it is still technological. Similarly, the claimed GUI of the
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`
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`’132 patent does not change the underlying hardware components of the computer
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`and does not require use of a particular programing language. But it is the invention
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`(the claimed GUI is a new tool that improves upon an old tool), not elements other
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`than the invention, that makes the claimed invention technological.34 The claims here
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`to a novel graphical tool are no different than claims to a novel physical tool made of
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`steel—that the physical tool can be made of different types of known steel using
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`known crafting techniques is irrelevant to whether the finished tool is technological.
`
`Importantly, the ‘132 claims are not directed to conducting on a computer a
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`business practice that existed before computers. Rather, the claims are directed to the
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`features of a new graphical tool that did not exist previously on computers or before
`
`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
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`technological.35When the actual claim limitations, which claim unknown technology,
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`are 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 ’132 patent
`
`is for a technological invention and, therefore, is not a CBM.
`
`
`34 Preliminary Response, pp. 44-53.
`
`35 Id. at pp. 32-37.
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`11
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`2.
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`Case No. CBM2014-00135
`Patent 6,772,132
`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.”36 The Decision failed to
`
`address either of the two technical problems solved by the invention claimed by TT.37
`
`In particular, the Decision did not address the problem of speed and accuracy with
`
`prior graphical tools.38 In addition, the Decision did not address the inadequate
`
`visualization of prior graphical tools.39 TT explained how both of these problems are
`
`technical, as they relate to classic engineering problems of efficiency, precision and
`
`usability.40 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.”41 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
`
`36 37 C.F.R. § 42.301(b) (emphasis added).
`
`37 Compare Preliminary Response, pp. 42-50 with Decision, p. 11.
`
`38 Id.
`
`39 Id.
`
`40 Preliminary Response, pp. 42-44.
`
`41 Decision, p. 11.
`
`12
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`Case No. CBM2014-00135
`Patent 6,772,132
`technical problem using a technical solution” because it failed to consider all of the
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`
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`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.”42 The actual claim limitations recite technical features of a
`
`GUI that solve the technical problems identified above. This is just like the interfaces
`
`designed by NASA, which solve technical problems by focusing on functionality and
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`the interface to “build the right tool.”43
`
`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.
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`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.”44 Moreover, the claims of the ’132 patent satisfies both
`
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`42 Decision, p. 11.
`
`43 Ex. 2053; see also Preliminary Response, pp. 43-44.
`
`44 Ex. 2009, S5433.
`
`13
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`Case No. CBM2014-00135
`Patent 6,772,132
`prongs of the technological invention definition.45 Accordingly, TT requests rehearing
`
`
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`of the Decision and denial of the petition because the ’132 patent is not a covered
`
`business 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
`
`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
`
`
`45 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
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`Case No. CBM2014-00135
`Patent 6,772,132
`
`
`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.
`
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`15
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`Case No. CBM2014-00135
`Patent 6,772,132
`
`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
`
`
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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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