Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`Paper 34
`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 CBM2014-00137
`Patent No. 7,685,055 B2
`_______________
`
`
`Before SALLY C. MEDLEY, MEREDITH C. PETRAVICK, and
`PHILIP J. HOFFMANN, Administrative Patent Judges.
`
`PETRAVICK, Administrative Patent Judge.
`
`
`
`
`DECISION ON REQUEST FOR REHEARING
`37 C.F.R. § 42.71
`
`
`
`
`
`
`
`
`
`
`Tel: 571-272-7822
`
`
`
`
`Paper 34
`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 CBM2014-00137
`Patent No. 7,685,055 B2
`_______________
`
`
`Before SALLY C. MEDLEY, MEREDITH C. PETRAVICK, and
`PHILIP J. HOFFMANN, Administrative Patent Judges.
`
`PETRAVICK, Administrative Patent Judge.
`
`
`
`
`DECISION ON REQUEST FOR REHEARING
`37 C.F.R. § 42.71
`
`
`
`
`
`
`
`
`
`
`
`CBM2014-00137
`Patent No. 7,685,055 B2
`
`
`n/a
`TSE1
`TSE and Gutterman2
`
`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. 7,685,055 B2 (Ex. 1001, “the ’055 patent”). Trading Technologies
`International, Inc. (“Patent Owner”) filed a Preliminary Response (Paper 17,
`“Prelim. Resp.”) on September 3, 2014.
`The Board instituted covered business method patent review of claims
`1–19 of the ’055 based upon the following grounds:
`Ground
`Prior Art
`§ 101
`§ 103
`§ 103
`
`Challenged Claims
`
`1–19
`1, 3, 4, 6–15, and 17–19
`2 and 5
`
`Paper 19 (“Decision”) 27. The Board did not institute covered business
`method patent review of claim 16 under 35 U.S.C. § 103 over TSE (Id. at
`20-23) and claims 1–19 of the ’055 based upon the ground of obviousness
`over Silverman, Gutterman, and TSE (Id. at 24–26).
`Petitioner and Patent Owner each filed a Request for Rehearing asking
`that the Board reconsider its Decision – Petitioner requesting that we
`institute on the grounds of claim 16 being obvious over TSE or obvious over
`
`1 TOKYO STOCK EXCHANGE OPERATION SYSTEM DIVISION, FUTURES/OPTION
`PURCHASING SYSTEM TRADING TERMINAL OPERATION GUIDE (1998) (Ex.
`1008).
`2 Gutterman et al., U.S. Patent No. 5,297,031 (issued Mar. 22, 1994) (Ex.
`1006).
`
` 2
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`CBM2014-00137
`Patent No. 7,685,055 B2
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`the combination of Silverman, Gutterman, and TSE (Paper 21, “Petitioner’s
`Req. Reh’g”), and Patent Owner requesting that we deny institution because
`the ’055 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. Standard of Review
`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 1338, 1340
`(Fed. Cir. 2004).
`The party challenging the decision has the burden of showing a
`decision should be modified, and the request for rehearing must identify
`specifically all matters the party believes the Board misapprehended or
`overlooked. 37 C.F.R. § 42.71(d).
`
`
`B. Petitioner’s Request for Rehearing
`i. Petitioner’s argument regarding the scope of claim 16
`Petitioner argues that the Board misapprehended the scope of the
`following limitation from claim 16:
`in response to a selection of a particular location of the order
`entry region by a single action of a user input device, setting a
`plurality of parameters for a trade order relating to the
`
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`CBM2014-00137
`Patent No. 7,685,055 B2
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`commodity and sending the trade order to the electronic
`exchange.
`See Petitioner’s Req. Reh’g 2–5. According to Petitioner, “[t]he Board
`interpreted this limitation to mean that a single action selects the particular
`location, sets a plurality of parameters for a trade order, and sends the trade
`order to the electronic exchange” and this interpretation is overly narrow.
`Id. at 3 (citing Decision 25–26). Petitioner argues that the limitation “only
`requires that the selection of a particular location of the order entry region to
`be achieved by a single action” and, that when given this interpretation, both
`TSE and Gutterman meet the limitation. Id. at 4–5.
`We are not persuaded by Petitioner’s argument that we abused our
`discretion because Petitioner’s argument is based upon a mischaracterization
`of our Decision. We did not interpret the limitation to require that “a single
`action selects the particular location, sets a plurality of parameters for a trade
`order, and sends the trade order to the electronic exchange” (Id. at 3).
`Our Decision states: “[t]he limitation requires that both the setting of
`the parameters and the sending of the order occur in response to a selection
`of a particular location of the order entry region by a single action of a user
`input device.” Decision 22 (emphases original). In other words, we
`interpreted the limitation to require that one of the responses to the selection
`of a particular location is the sending of the order.
`We, then, determined that neither TSE nor Gutterman taught that
`sending the order occurred in response to the selection of the particular
`location. Id. at 22–23. We stated:
`TSE does not describe that the order is sent in response to the
`selection of the area on the Board/Quotation Screen. In TSE,
`the order is sent if or when the send button on the new order
`
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`CBM2014-00137
`Patent No. 7,685,055 B2
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`entry window is selected
`(Id. at 22–23 (emphasis added)) and
`Gutterman does not send the order in response to the selection
`of the order icon in deck pane 135 (i.e., the claimed particular
`location of the order entry region). Instead, the order is sent to
`the fill pane 140 and then when the “SEND FILL” button is
`selected, the order is transmitted
`(Id. at 25–26 (emphasis added)). We determined that neither TSE nor
`Gutterman taught sending the order in response to the selection of the
`particular location, because, in both TSE and Gutterman, the order is sent in
`response to the selection of a send button, not the selection of the particular
`location of the order entry region. In both references, the order is sent to the
`exchange when the send button is selected, if the send button is selected at
`all.
`As can be seen from the above, we did not interpret the limitation at
`
`issue to require that “a single action selects the particular location, sets a
`plurality of parameters for a trade order, and sends the trade order to the
`electronic exchange” ( Petitioner’s Req. Reh’g 3). Because Petitioner’s
`argument is based upon this mischaracterization of our Decision, we are not
`persuaded that we abused our discretion and decline to modify our Decision.
`
`
`ii. Petitioner’s argument regarding the patentability of claim 16
`over the combination of Silverman, Gutterman, and TSE
`
`
`Petitioner argues that we overlooked that the Petition relied upon the
`combination of Silverman and Gutterman, and not Gutterman alone, to meet
`the limitation of claim 16 reproduced above. Petitioner’s Req. Reh’g 6–11.
`In particular, Petitioner argues that the Petition did not rely upon
`
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`CBM2014-00137
`Patent No. 7,685,055 B2
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`Gutterman’s teaching of using a “SEND FILL” button to meet the “sending
`the trade order to the electronic exchange” aspect of the limitation. Id. at 8–
`9.
`
`We are not persuaded by Petitioner’s argument that we abused our
`discretion because Petitioner’s argument is based upon a mischaracterization
`of the Petition. The Petition alleges that claim 16 is unpatentable under 35
`U.S.C. § 103 over Silverman, Gutterman, and TSE. Pet. 8. The Petition
`contains the following:
`In Silverman, a trader places an order “through data entry
`using a conventional keyboard, pointing device such as a mouse
`or any other conventional data entry tool.” (Silverman, 5:25–
`32.) Silverman does not provide any further details on order
`entry. Gutterman provide a graphical user interface (“GUI”)
`displaying order icons representing bids or asks at a specific
`price level.
`. . .
`Each order icon in Gutterman is “active.” That is, when
`the user selects the order icon, the system performs one or more
`actions – such as populating an electronic message with an
`“order’s quantity, price and time stamp.” (Id. at 13:29-31.) A
`trader may immediately transmit this electronic message to
`another party by pressing another “active” button – the
`“SEND” button (Id. at 13:29-43 (“In periods of heavy market
`activity . . . .”).
`As described in further detail below, a PHOSITA would
`have been motivated to use the “active” order icons of
`Gutterman in the keystation display of Silverman to permit a
`trader to place orders.
`Pet. 37–39 (emphases added). See also Pet. 61-62 (similarly
`discussing that the use of Gutterman’s “active” order icons in the
`display of Silverman permits a trader to send trade orders, and,
`therefore, ‘the selection of the “active” order icon sends a trade order
`
` 6
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`CBM2014-00137
`Patent No. 7,685,055 B2
`
`to the electronic exchange’).
`As can be seen from the above, the Petitioner’s argument
`mischaracterizes the ground as presented in the Petition. The Petition states
`that Silverman does not describe any details of order entry other than
`through the use of conventional data entry tool. Id. at 37. The Petition
`explains that Gutterman discloses using active order icons to place orders
`and that selection of an active order icon populates an electronic message,
`which can be sent by pressing a “SEND” button. Id. at 38–39. The Petition
`cites to column 13, lines 29–43 of Gutterman for support. Id. Column 13,
`lines 29–43 of Gutterman describes the trader pressing the “SEND FILL”
`button on the pop-up fill pane 140 to send an order to an electronic clearing
`house. Ex. 1006, col. 13, ll. 29–43. Contrary, to Petitioner’s argument the
`Petition relies upon Gutterman’s disclosure to meet the limitation at issue,
`including the “sending the trade order to the electronic exchange” aspect.
`As stated in our Decision and discussed above, Gutterman does not
`meet this limitation because Gutterman does not teach sending the order in
`response to the selection of the active order icon. Decision 25–26. In
`Gutterman, the order is sent not in response to the selection of the active
`order icon, but in response to the selection of the “SEND FILL” button. Id.
`Because Petitioner’s argument is based upon a mischaracterization of
`the Petition, we are not persuaded that we abused our discretion and decline
`to modify our Decision.
`
`
`C. Patent Owner’s Request for Rehearing
`i. Patent Owner’s argument regarding the legislative history
`Patent Owner argues that the Board overlooked its argument that a
`
`
`
` 7
`
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`CBM2014-00137
`Patent No. 7,685,055 B2
`
`patent claiming a novel Graphical User Interface (“GUI”) used in the
`electronic trading industry (like the ’055 patent) is intended by Congress to
`be excluded from covered business method patent review. Patent Owner’s
`Req. Reh’g 2–8 (citing to remarks made by Senators Durbin and Schumer in
`the legislative history of the America Invents Act.) Patent Owner argues
`that the ’055 patent cannot be subject to covered business method patent
`review because “it claims a novel GUI tool, not a method of doing
`business.” Id. at 2.
`We did not overlook Patent Owner’s argument. See Decision 7–9.
`Initially, we note that Patent Owner’s argument is misplaced if Patent Owner
`means that some categories of invention are regarded presumptively as being
`excluded from a covered business method patent review. Nothing cited to us
`by Patent Owner in the legislative history of the AIA makes that suggestion.
`While some novel software tools and graphical user interfaces used within
`the electronic trading industry to implement trading are not the type of
`patents targeted for covered business method patent review, each claimed
`invention still has to be evaluated individually to determine if it is eligible
`for a covered business method patent review. A determination of whether a
`patent is eligible for a covered business method patent review under the
`statue is made on a case by case basis on the facts of each case. 37 C.F.R.
`§ 42.301(b).
`In our Decision, we evaluated claim 13 of the ’055 patent and
`
`
`3 As explained in our Decision, a patent only need have one claim directed
`to a covered business method to be eligible for a covered business method
`patent review. Decision 9. In the Decision, we focused on claim 1, and we
`focus on claim 1 for purposes of the rehearing decision.
`
` 8
`
`
`
`
`
`
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`CBM2014-00137
`Patent No. 7,685,055 B2
`
`determined that the ’055 patent is a covered business method patent because
`claim 1 “claims a method or corresponding apparatus for performing data
`processing or other operations used in the practice, administration, or
`management of a financial product or service” (see 37 C.F.R. § 42.301(a)),
`and because the claimed subject matter as a whole either does not 1) recite a
`technological feature that is novel and unobvious over the prior art or 2)
`solve a technical problem using a technological solution (see 37 C.F.R.
`§ 42.301(b)). Decision 7–12.
`We explained that claim 1 is directed to “[a] method for repositioning
`a static price axis on a graphical user interface for displaying market
`information of a commodity being traded at an electronic exchange” and
`recites steps of displaying market information of traded commodities. Id. at
`9. We determined that claim 1 recites a method for performing data
`processing or other operations used in the practice, administration, or
`management of a financial product or service (i.e., trading on an electronic
`exchange). Id. We, then, explained that claim 1 was not a technological
`invention because it does not 1) recite a technological feature that is novel
`and unobvious over the prior art or 2) solve a technical problem using a
`technological solution. See Decision 9–12.
`Patent Owner also argues that, in applying the technological invention
`test, we overlooked that the ’055 patent claims a specific GUI that includes a
`novel and non-obvious combination of functional and structural features.
`See Patent Owner’s Req. Reh’g 8–12. We note that Patent Owner’s Request
`for Rehearing, itself, does not specify, which claimed combined functional
`and structural features of the GUI are novel and non-obvious. See id.
`We did not overlook Patent Owner’s argument. See Decision 9–12.
`
` 9
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`CBM2014-00137
`Patent No. 7,685,055 B2
`
`
`In our Decision, we noted the following:
`techniques, for
`The following claim drafting
`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).
`Decision 10–11. We determined that method claim 1 recites a display and
`input device. Decision 11. This is the only hardware recited by claim 1,
`and, as noted in the Decision, the ’055 patent describes that such hardware
`was known. Id. (citing Ex. 1001, col. 5, ll. 2–7; col. 5, ll. 24–27).
`We also determined that claim 1 also recites a GUI, which is
`implemented in software. Decision 11. As noted in our Decision, the ’055
`patent describes “commercially available trading applications” that provide
`interfaces that display bid and ask quantities in association with a static price
`scale. Id. (citing Ex. 1001, col. 5, l. 66–col. 6, l. 7). The ’055 patent states
`that X_TRADER®, a commercially available trading application, which
`provides an interface MD_TRADERTM, is such an application. Ex. 1001,
`col. 5, l. 66 – col. 6, l. 7. In describing the preferred embodiment in which
`items of interest are repositioned in the display, the ’055 patent states: “The
`trading application preferably is X_TRADER®, using an MD_TRADERTM -
`
`10
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`CBM2014-00137
`Patent No. 7,685,055 B2
`
`style display.” Ex. 1001, col. 25, ll. 14–15.
`Given the above, 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 and unobvious over the prior art and we decline to
`modify our Decision.
`Patent Owner also argues that, in applying the technological invention
`test, we mischaracterized the problem of the ’055 patent and overlooked that
`the problems solved by the ’055 patent are “the problem of market indicators
`moving to what some viewers viewed as undesirable locations relative to the
`price axis in prior graphical tools” and “the problem of the market indicators
`moving off the price axis in prior graphical tools.” Patent Owner’s Req.
`Reh’g 12–14.
`We did not overlook Patent Owner’s argument, and we did not
`mischaracterize the problem. See Decision 9–12. In our Decision we stated:
`The ’055 patent solves the problem of trader[s] having to read a
`display of prices for a commodity and enter a trade order before
`the price for the commodity changes. See Ex. 1001, col. 2, ll.
`35–67. The ’055 patent solves this problem by displaying
`market information in a certain arrangement on a GUI and
`allowing for the repositioning of the information on the display.
` Decision 12 (citing to Ex. 1001, col. 2, ll. 35–67). Our statement of the
`problem and solution is consistent with the ’055 patent, which states:
`The more time a trader takes entering an order, the more likely
`the price on which the trader wanted to bid or offer will change
`or not be available in the market. … In such liquid market, the
`prices of the commodities fluctuate rapidly. On a trading
`screen, this results in rapid changes in the price and quantity
`fields within the market grid. If the trader intends to enter an
`order at a particular price, but misses the price because the
`market prices moved before the trader could enter the order, the
`
`11
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`CBM2014-00137
`Patent No. 7,685,055 B2
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`
`trader may lose hundreds, thousands, even millions of dollars.
`The faster a trader can trade, the less likely it will be that the
`trader will miss the trader’s price[.]
`Ex. 1001, col. 2, ll. 39–55. The ’055 patent also states, in describing the
`preferred embodiment in which items of interest are repositioned in the
`display,: “A trader may use automatic positioning to always have a visual
`reference of where the market is trading, increasing the likelihood of
`entering quantities and having those quantities filled at desirable prices.”
`Ex. 1001, col. 26, ll. 30–34.
`
`We further determined that method claim 1’s use of the display, input
`device and GUI to solve this problem was no more than a recitation of
`known technologies, for the same reasons as discussed above. See Decision
`12.
`
`Given the above, Patent Owner has not shown that the Board abused
`its discretion in determining that claim 1 does not recite a technological
`solution to a technological problem and we decline to modify our Decision.
`
`
`III. CONCLUSION
`We are not persuaded of an abuse of discretion either by Petitioner or
`
`Patent Owner.
`
`
`IV. ORDER
`
`Accordingly, it is
`ORDERED that each Request for Rehearing is denied.
`
`
`
`
`
`
`
`
`12
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`CBM2014-00137
`Patent No. 7,685,055 B2
`
`FOR PETITIONER:
`
`Lori Gordon
`Jonathan Strang
`Robert E. Sokohl
`STERN, KESSLER, GOLDSTEIN &FOX P.L.L.C.
`lgordon-ptab@skgf.com
`jstrang-ptab@skgf.com
`rsokohl-ptab@skgf.com
`
`FOR PATENT OWNER:
`
`Erika H. Arner
`Joshua L. Goldberg
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
`erika.arner@finnegan.com
`joshua.goldberg@finnegan.com
`
`Steven F. Borsand
`TRADING TECHNOLOGIES INTERNATIONAL, INC.
`Steve.Borsand@tradingtechnologies.com
`
`
`
`
`
`13
`
`
`
`
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