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`Paper No.
`Filed: September 3, 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.
`Petitioners
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`v.
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`TRADING TECHNOLOGIES INTERNATIONAL, INC.
`Patent Owner
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`Case CBM2014-00137
`Patent 7,685,055
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`Patent Owner’s Preliminary Response
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`Case No. CBM2014-00137
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`Table of Contents
`PRELIMINARY STATEMENT .................................................................................. 1 
`I. 
`II.  THE PATENTED TECHNOLOGY: THE ’055 CLAIMS’ NOVELTY IS IN
`GUI TECHNOLOGY, NOT A BUSINESS METHOD ................................................. 4 
`III. 
`TRIAL SHOULD NOT BE INSTITUTED BECAUSE THE INVENTIVE
`ASPECTS OF THE CLAIMS DO NOT INVOLVE A METHOD OF DOING
`BUSINESS ............................................................................................................................... 16 
`A.  Patents to Novel GUI Tools, Even if Used in the Field of Trading, are Not
`within the Scope of AIA § 18 ........................................................................................... 17 
`B.  The Congressional Record Confirms that Patents to Novel GUIs, Even If
`Used for Trading, Are Not Within the Scope of AIA § 18 ......................................... 20 
`IV. 
`THE PETITION’S CONCLUSORY STATEMENTS ARE
`INSUFFICIENT TO SHOW THE CLAIMS ARE NOT FOR A
`“TECHNOLOGICAL INVENTION” ............................................................................. 25 
`V.  THE ’055 CLAIMS ARE FOR A TECHNOLOGICAL INVENTION, SO
`THE STATUTE PROHIBITS CBM REVIEW ............................................................... 28 
`A.  The ’055 Claims Solve a Technical Problem ......................................................... 28 
`B.  The ’055 Claims Provide a Technical Solution to the Technical Problem: a
`New GUI Tool that “Tracks” Bid/Ask Indicators Using Re-Positioning Off the
`Top/Bottom of a Display When the Number of Price Levels are Adjusted ............ 32 
`C.  The Claimed Subject Matter that Solves the above Technical Problems using a
`Technical Solution Recites Technical Features that are Novel and Non-obvious. .. 35 
`VI. 
`TD’S PETITION FAILS TO SATISFY THE THRESHOLD
`REQUIREMENTS FOR INSTITUTION OF ITS PROPOSED GROUNDS ........ 37 
`A.  Petitioner’s 35 U.S.C. § 101 Challenge is Uninstitutable. .................................... 38 
`B.  The Petition is Deficient because the Interpretation of Certain Claim Terms
`Leads to Inconsistent Results. .......................................................................................... 40 
`C.  The petition fails to articulate a complete obviousness analysis for
`independent claims 1 and 17 in any of its proposed grounds. .................................... 44 
`VII.  TD’s petition fails to articulate where the “single action” elements of claim 16
`are found in the cited references. .......................................................................................... 46 
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`Case No. CBM2014-00137
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`A.  TSE Fails to Disclose the Claimed Single Action ................................................ 47 
`B.  The Combination of Silverman/Gutterman Fails to Disclose the Claimed
`Single Action. ....................................................................................................................... 50 
`VIII.  Conclusion .................................................................................................................. 52 
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`ii
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`Cases
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`Case No. CBM2014-00137
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`TABLE OF AUTHORITIES
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`Page(s)
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`KSR Int’l Co. v. Teleflex, Inc.,
`550 U.S. 398 (2007) .................................................................................................... 38, 44
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`Trading Techs. Int’l, Inc. v. eSpeed, Inc.,
`595 F.3d 1340 (Fed. Cir. 2010) ........................................................................................ 48
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`Trading Techs. Int’l, Inc. v. Open E Cry, LLC,
`728 F.3d 1309 (Fed. Cir. 2013) .......................................................................................... 5
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`Statutes
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`35 U.S.C. § 101 ............................................................................................................ 38, 39, 40
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`35 U.S.C. § 103(a) .................................................................................................................... 44
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`35 U.S.C. § 322 ................................................................................................................. passim
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`35 U.S.C. § 324(a) ............................................................................................................. 37, 38
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`AIA § 18 ............................................................................................................................ passim
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`Rules
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`37 C.F.R. § 42.22(a)(2) ..................................................................................................... 38, 44
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`37 C.F.R. § 42.301 ................................................................................................................... 28
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`37 C.F.R. § 42.304(b)(4) ..................................................................................... 38, 40, 46, 47
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`Other Authorities
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`77 Fed. Reg. 48620 (Aug. 14, 2012) .................................................................................... 37
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`Agilysys, Inc. v. Ameranth, Inc.,
` CBM2014-00015, Paper 20 (Mar. 26, 2014) ............................................................ 3, 19
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`iii
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`Experian Mktg Solutions, Inc. v. Rpost Commc’ns Ltd.,
`CBM2014-00064, Paper 13 (July 31, 2014) ................................................................... 27
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`Case No. CBM2014-00137
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`Heart Failure Techs., LLC v. CardioKinetix, Inc.,
`IPR2013-00183, Paper 12 (July 31, 2013) ............................................................... 44, 45
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`iv
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`I.
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`PRELIMINARY STATEMENT
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`Case No. CBM2014-00137
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`The Patent Owner, Trading Technologies International, Inc. (“TT”), has been
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`in business since 1994 and currently employs around 400 people. Ex. 2007, Litigation
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`Tutorial, p. 2. Headquartered in Chicago with offices around the world, TT develops
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`and sells electronic trading software. Id. TT’s products include an innovative order
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`entry tool embodied in a graphical user interface (“GUI”) called MD Trader® that
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`permits users to interact with and send orders to electronic exchanges around the
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`world. Id., p 8. MD Trader is a commercial embodiment of the inventions claimed in
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`U.S. Patent No. 7,685,055 (the “’055 patent”).1 Id., p. 35-61. MD Trader is sold to and
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`used by thousands of customers around the world, including almost every major
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`international bank. Id., p. 2.
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`The petition should be denied because it provides only unsupported,
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`conclusory statements insufficient to meet the Petitioners’ burden of showing the
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`claims are directed to a covered business method (“CBM”). First, the petition fails to
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`address the claims as a whole or explain why the claimed combination of features—
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`directed to a tool with particular structural and functional features embodied in a GUI
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`and not a business method—should be treated as a CBM patent. Second, even
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`assuming that the claims involve a business method of the sort intended to be
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`1 The ’055 patent is a continuation-in-part of U.S. Patent No. 6,772,132, which
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`is the subject of CBM2014-00135 also filed by Petitioners.
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`1
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`captured by AIA § 18, the petition fails to show why the claims do not meet the
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`Case No. CBM2014-00137
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`technological exception in Section 18 (“term [covered business method] does not
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`include patents for technological inventions”). Petitioners also do not address the
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`combination of technical structural and functional features that the Patent Office
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`found made the claims novel and nonobvious. See Petition p. 4-7.
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`An analysis of the ’055 claims shows that the patent should not be treated as a
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`CBM patent. The petition presents what TT believes to be a case of first impression
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`(along with Case Nos. CBM2014-00131, CBM2014-00133, CBM2014-00135, and
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`CBM2014-00136 filed by the same petitioner). The ’055 patent claims novel and non-
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`obvious structural and functional features embodied in a graphical user interface
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`(“GUI”) tool, not a method of doing business. The ’055 patent claims a novel GUI
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`tool, not a method of doing business. The inventive aspects of this tool have nothing
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`to do with a business method or practice. The claims do not merely cover displaying
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`and positioning market information. Moreover, the claims are not directed to “a
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`method for performing data processing,” the sole reason alleged by petitioner to argue
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`the ’055 patent claims a CBM. Rather, the claims require specific structural and
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`functional features of GUI elements of a novel tool. There are countless
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`embodiments of tools that are not covered by the claims of the ’055 patent.
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`TT is not aware of any other CBM petition directed to such a patent. To TT’s
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`knowledge, other petitions have been directed to patents where at least arguably some
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`inventive aspect of the claims is directed to a business method or practice. TT submits
`2
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`that claims where all inventive aspects reside in claimed technical features of a tool,
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`Case No. CBM2014-00137
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`such as the GUI tool set forth in the ’055 patent, or a money sorting machine or a
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`stapler, fail to qualify as a CBM as a threshold matter and should not even need to be
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`analyzed under the technological exception (which they would necessarily meet).
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`Indeed, as shown below, the Congressional Record gives claims of the sort at issue
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`here, where the inventive aspect lies in a GUI tool used for trading, as a specific
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`example of claims not subject to Section 18. Ex. 2008, S5428.
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`The ’055 patent also meets the technological exception. The ’055 claims
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`address some technical shortcomings of the inventions described in the ’132 patent,
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`of which the ’055 patent is a CIP. These shortcoming caused the prior art GUIs to
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`lack efficiency, accuracy and usability for some users. Problems of efficiency,
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`accuracy, and usability are all classic technical problems. The ’055 claims provide a
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`technical solution to these problems: a novel and non-obvious GUI tool that
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`addressed these problems to provide a more efficient and usable GUI for some users.
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`The claimed novel and non-obvious technical features (explained below) address and
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`provide a solution to these technical problems. The ’055 patent does not have claims
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`directed to a business practice (or a method of data processing) that merely recite a
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`conventional GUI element, such as generically displaying data. See, e.g., Agilysys, Inc. v.
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`Ameranth, Inc., CBM2014-00015, Paper 20 (Mar. 26, 2014). Rather, the claims are
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`directed to specific technical structural and functional features of a GUI tool that
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`applies technology to overcome technical problems in the art. Congress never
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`intended technical inventions like those claimed in the ’055 patent to be within the
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`Case No. CBM2014-00137
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`purview of covered business method patent review. Ex. 2008, S5428.
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`The assertion in the petition that the claims are obvious fails to address the
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`technical features of the claims and simply rehashes old arguments based on
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`references that have been considered—and overcome—many times before both the
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`Patent Office. Petitioner’s arguments provide only an illusion of propriety, glossing
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`over the detailed, technical features of the claims and ignoring many key facts.
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`Notably, for one important claim element (the “adjusting” element), petitioner
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`provides only conclusory allegations that are contradicted by other statements by
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`petitioner—making all asserted grounds of obviousness deficient on their face.
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`II. THE PATENTED TECHNOLOGY: THE ’055 CLAIMS’ NOVELTY
`IS IN GUI TECHNOLOGY, NOT A BUSINESS METHOD
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`The ’055 patent is a continuation-in-part of the ’132 patent and builds upon the
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`inventions disclosed in that patent, some of which are also claimed in U.S. Patent
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`6,766,304 (the “’304 patent”), and U.S. Patent 7,676,411 (the “’411 patent”).2
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`The general field of art of the ’132, ’304, and ’411 patents and the ’055 patent is
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`the design and operation of GUIs used for trading. See Ex. 2020, ’132 patent, Field of
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`Invention, 1:11-18 (“Specifically, the invention provides a trader with a versatile and
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`efficient tool for executing trades. It facilitates the display of and the rapid placement
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`2 The ’304 and ’411 patents are the subject of CBM2014-00136 and CBM2014-0133,
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`respectively (also filed by Petitioners).
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`of trade orders …”); see also Ex. 1001, Field of Invention, 1, lines 26-31 (“…directed
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`Case No. CBM2014-00137
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`to tools for trading products that can be traded with quantities and/or prices.”); see
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`also Ex. 1001, Summary, 3:3-5 (“The preferred embodiments relate to a system and
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`method of automatic repositioning of market information in a graphical user
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`interface.”); see also Trading Techs. Int’l, Inc. v. Open E Cry, LLC, 728 F.3d 1309, 1321
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`(Federal Circuit describing subject matter of ’055 patent as “For example, the new
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`matter added to the ’055 patent includes express descriptions of ‘static’ price axes that
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`can automatically re-center based on predefined criteria.”).
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`The claimed improvement in the ’055 patent lies in specific structural and
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`functional features of a GUI tool. The claims recite specific structural and functional
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`features of a GUI tool that are technical and it is the combination of these technical
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`features that makes the claims novel and non-obvious. The inventive features of the
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`claims are the features of the GUI tool and not a business method or practice. The
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`claims are not directed to a trading strategy (e.g., buy low, sell high). The claims read
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`as a whole, as well as the prosecution history, make clear that the inventive aspects of
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`the claims lie solely in the particular claimed features of the GUI tool. To meet the
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`method claim, the claimed combination of structural and functional features must be
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`used.
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`The combination of these claimed features, including the features of adjusting
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`the price levels of the price axis and the re-positioning elements that claim automatic
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`re-positioning of the price axis based on the bid/ask indicators moving a
`5
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`predetermined distance from the top or bottom of the displayed price axis are the
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`Case No. CBM2014-00137
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`reason why the Examiner allowed the claims over the same prior art being asserted by
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`petitioner.
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`The technical structural and functional features required by claim 1 of the ’055
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`patent are depicted in the chart below (which uses screenshots of TT’s MD Trader
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`product to illustrate the claims):
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`Case No. CBM2014-00137
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`Claim Elements
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`Graphical User Interface Elements
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`Static
`price axis
`on a
`graphical
`user
`interface
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`A method for
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`repositioning a static
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`price axis on a graphical
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`user interface for
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`displaying market
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`information of a
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`commodity being traded
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`at an electronic
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`exchange, the method
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`comprising:
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`First plurality of price levels along a static
`price axis ranging from a lowest value to a
`highest value
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`Current
`highest
`bid price
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`Current
`lowest ask
`price
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`receiving market
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`information relating to a
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`commodity from an
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`electronic exchange via
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`a computing device, the
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`market information
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`comprising an inside
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`market with a current
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`highest bid price and a
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`current lowest ask price
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`for the commodity;
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`displaying a first
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`plurality of price levels
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`along a static price axis
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`on a graphical user
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`interface of a display
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`device associated with
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`the computing device,
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`where the first plurality
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`of price levels range
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`8
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`from a lowest value to a
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`highest value along the
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`static price axis;
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`in response to an input
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`command received via
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`an input device
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`associated with the
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`computing device,
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`adjusting the first
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`plurality price levels
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`among a range of price
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`levels to an adjusted
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`plurality of price levels
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`including the first
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`plurality of price levels
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`Case No. CBM2014-00137
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`Static price
`axis at T1
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`Input device
`used to
`expand price
`levels (e.g.,
`from 19 (at
`T1) to 25 (at
`T2))
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`Static price
`axis at T2
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`Static price axis
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`Highest value
`along the static
`price axis
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`Ask display
`region
`comprising a
`plurality of
`locations
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`Lowest value
`along the static
`price axis
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`displaying a bid and ask
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`display region on the
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`graphical user interface,
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`the bid and ask display
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`region comprising a
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`plurality of locations
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`corresponding to the
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`first plurality of price
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`levels displayed along
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`the static price axis,
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`wherein each location
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`corresponds to one of
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`the first plurality of
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`price levels, and
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`wherein a number of
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`the plurality of locations
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`changes according to
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`adjusting the first
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`plurality of price levels;
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`Bid display
`region
`comprising
`a plurality
`of locations
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`Case No. CBM2014-00137
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`Static price axis
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`First
`indicator
`representing
`a quantity
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`FIG. 3 and 4
`of the ’055
`patent show
`ascending
`and
`descending
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`displaying a first
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`indicator representing a
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`quantity associated with
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`the current highest bid
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`price at a first location
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`in the plurality of
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`locations of the bid and
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`ask display region,
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`wherein the first
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`indicator ascends or
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`descends the static price
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`axis as changes in the
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`current highest bid price
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`occur as a result of each
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`of the plurality of price
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`levels along the static
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`price axis not changing
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`positions on the
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`graphical user interface
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`unless a reposition
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`11
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`command is received;
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`displaying a second
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`indicator representing a
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`quantity associated with
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`the current lowest ask
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`price at a second
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`location in the plurality
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`of locations of the bid
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`and ask display region,
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`wherein the second
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`indicator ascends or
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`descends the static price
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`axis as changes in the
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`current lowest ask price
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`occur as a result of each
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`of the plurality of price
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`levels along the static
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`price axis not changing
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`positions on the
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`graphical user interface
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`Case No. CBM2014-00137
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`Static price axis
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`Second
`indicator
`representing
`a quantity
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`FIG. 3 and 4 of
`the ’055 show
`Ascending and
`Descending
`
`
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`12
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`unless the reposition
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`command is received;
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`receiving the reposition
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`command to reposition
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`the static price axis
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`when a designated price
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`is within a designated
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`number of price levels
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`from the lowest value or
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`the highest value along
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`the static price axis; and
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`Case No. CBM2014-00137
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`Receiving
`reposition
`command when
`designated price
`(e.g., LTP) within
`designated number
`of price levels (e.g.,
`3 levels) from
`highest value (e.g.,
`2003.75)
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`FIG. 16B of the ’055
`patent shows user
`setting
`predetermined price
`levels
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`13
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`responsive to receiving
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`the reposition
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`command, automatically
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`repositioning the static
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`price axis on the
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`graphical user interface
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`such that a current
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`inside market price is
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`displayed at a new
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`desired location.
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`Case No. CBM2014-00137
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`Repositioning the
`static price axis
`from T1 to T2
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`
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`Current
`inside
`market price
`at T1
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`Inside
`
`market price
`at new
`desired
`location at
`T2
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`As shown above, the ’055 patent claims substantially more than merely
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`“displaying and positioning of market information using a graphical user interface.”
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`See Petition, p. 7 (“the claims of the ’055 patent are directed to displaying and
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`positioning market information using a graphical user interface displayed on a display
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`screen.”). The claims of the ’055 patent, never addressed in detail by Petitioner,
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`require particular structural and functional features of a GUI tool, including a specific
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`manner in which to re-position a static price axis and adjusting the number of price
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`levels of the displayed price axis. During prosecution, the claims were allowed because
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`of this combination of structural and functional GUI features. See Ex. 1002, pp. 463-
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`473 (RCE dated March 5, 2009) and pp. 486 (following NOA dated May 20, 2009).
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`Case No. CBM2014-00137
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`(The RCE added the adjusting the price levels element and the NOA subsequently
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`placed the case in condition for allowance).
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`Accordingly, the claims recite a tool that combines a particular set of structural
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`and functional features embodied in a GUI, not a method of doing business.
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`Furthermore, in the ’055 patent, the claimed subject matter not only recites different
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`structural components, the claims also explain the make-up or placement of these
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`structural features relative to each other. Accordingly, the ’055 claims should be
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`analyzed no differently than if they recited a mechanical device. Indeed, the claimed
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`tool is implemented graphically merely because of the state of technology today—it
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`would be possible to implement a comparable tool mechanically.
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`While it is true that the claimed tool can be used to perform a business method
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`or practice, just like a money-sorting machine can, what makes the claim inventive has
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`nothing to do with any business method or practice. Pure technology patents like this
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`one do not belong in CBM review. The intent of Congress was to permit special
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`review of suspect patents on common business practices created in the wake of the
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`State Street Bank decision, not to allow a later attack on a technology patent.
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`15
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`III. TRIAL SHOULD NOT BE INSTITUTED BECAUSE THE
`INVENTIVE ASPECTS OF THE CLAIMS DO NOT INVOLVE A
`METHOD OF DOING BUSINESS
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`Case No. CBM2014-00137
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`To argue that the ’055 patent claims a CBM, the petition states that “a patent
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`that claims a method for performing data processing in the practice, administration or
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`management of a financial product or service is a covered business method patent.”
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`Petition, p. 4. Petitioners then state, without support, that the ’055 patent meets this
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`definition. Id. Petitioners fail to explain why the ’055 claims are directed to a method
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`of “performing data processing.” Petitioners merely state that it “expressly claims
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`repositioning a static price axis on a graphical user interface for displaying market
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`information of a commodity being traded at an electronic exchange, including
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`receiving market information for a commodity, displaying bids and asks in the market
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`and selecting an area on a display to set parameters for the trade order and send the
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`trade order to the electronic exchange.” Id., pp. 4-5. This statement ignores substantive
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`limitations of the independent claims which recite the make-up or structure of the
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`GUI tool. Not only does this statement ignore substantive limitations of the
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`independent claims, neither independent claim 1 or 17 recite “selecting an area on a
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`display to set parameters” or “send the trade order to the electronic exchange.” Also,
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`the statement does not explain Petitioners’ basis for arguing that even its incomplete
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`and inaccurate summary of the claims would qualify as a method of “performing data
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`processing.” Thus, Petitioners fail to support its argument that the ’055 patent is a for
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`16
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`a CBM and institution should be denied based on this deficiency alone. Moreover, as
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`Case No. CBM2014-00137
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`set forth below, the ’055 patent is not for a CBM.
`
`A.
`Patents to Novel GUI Tools, Even if Used in the Field of Trading,
`are Not within the Scope of AIA § 18
`
`TT believes this petition presents a case of first impression (along with Case
`
`Nos. CBM2014-00131, CBM2014-00133, CBM2014-00135, and CBM2014-00136).
`
`To TT’s knowledge, all other petitions considered by the PTAB have involved patents
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`that included claims where it was at least arguable that an alleged inventive aspect of
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`the claims was directed to a business method or practice.
`
`The ’055 claims are directed to the structures and features embodied in a GUI
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`tool. Indeed, all inventive aspects arise in the claimed components and features of the
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`tool, not in any business method or practice. The claims specifically recite what is
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`displayed and how the display operates. A tool that meets the claims could be used to
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`practice a business method, such as a trading strategy (e.g., buy low, sell high). But, the
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`claims are NOT directed to any trading strategy. For purposes of the threshold CBM
`
`inquiry, the ’055 claims are no different than claims directed to the features of an
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`innovative money-sorting machine, stapler, calculator, medical diagnostic tool, or any
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`other inventive technological tool. Such tools can be used in the financial industry—
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`but they are not business methods or practices. Ex. 2008, S5428
`
`In arguing that the ’055 patent is a CBM, Petitioners do not address in any way
`
`the structural and functional features of a GUI discussed above that were the reasons
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`why all claims were allowed. The petition provides no analysis for any of the
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`Case No. CBM2014-00137
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`substantive elements of the claimed subject matter. For instance, the petition is silent
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`as to “in response to an input command received via an input device associated with
`
`the computing device, adjusting the first plurality price levels among a range of price
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`levels to an adjusted plurality of price levels including the first plurality of price levels”
`
`and “receiving the reposition command to reposition the static price axis when a
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`designated price is within a designated number of price levels from the lowest value or
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`the highest value along the static price axis.” See Ex. 1001, 34:15–67.
`
`Petitioners’ out of context focus on select language from claim 1 in arguing that
`
`the claims are a CBM elevates form over substance in the same way that some patent
`
`owners have done when arguing claims do not qualify as CBMs due to the mere
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`addition of a conventional computing device to a claim directed to a business method.
`
`In substance, however, the claims describe a GUI tool that includes specific technical
`
`structural and functional features and it is the combination of these technical features
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`that make the claims novel and non-obvious. The claims read as a whole, and the
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`prosecution history, make clear that the inventive aspects of the claims lie solely in the
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`particular claimed features of the GUI tool. To meet the claims, this combination of
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`structural and functional features must be used. The claims are NOT merely directed
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`to displaying or positioning market information, as alleged without support by
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`Petitioners. Petition, p. 7.
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`Case No. CBM2014-00137
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`TT acknowledges that a patent that merely adds a general purpose computer to
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`a business method is subject to CBM review. For example, merely adding a generic
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`step of “displaying” data to a claim directed to a business method or practice (where
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`the alleged novelty resides at least in part in that business method or practice) does
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`not remove such a claim from coverage as a CBM. See e.g., Agilysys, Inc. CBM2014-
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`00015, Paper 20. Arguments to the contrary have been criticized as elevating form
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`over substance. The ’055 patent is not merely claiming conducting displaying and
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`positioning market information on a display.
`
`But claims directed to novel and non-obvious technology (where the alleged
`
`novelty does not reside at all in any business method or data processing technique),
`
`such as a new GUI tool that might be used in a field like trading, is not subject to
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`CBM review as a threshold matter. The ’055 claims are not merely claiming a generic
`
`display on top of a business method. Again, the claims are directed to the specific
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`features and functionality of what is displayed, and do not qualify as a CBM. Congress
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`did not intend for patents directed to such types of GUI tools, even if used for
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`trading, to be subject to CBM review. Ex. 2008, S5428. Again, the inventors did not
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`claim to have invented a new trading strategy, merely conducting a trade
`
`electronically, or merely displaying trading data on computers. See Ex. 1001, Col. 34:
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`Lines 15-67.
`
`Petitioners’ apparent position that a claim in which no aspect of alleged novelty
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`resides in a business method or practice can qualify as a CBM ignores the statutory
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`limitation that Section 18 review is limited to “covered business method” patents.
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`Case No. CBM2014-00137
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`
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`Moreover, as set forth below, such a requirement is made clear by the legislative
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`history and the entire purpose of Section 18.
`
`B. The Congressional Record Confirms that Patents to Novel GUIs,
`Even If Used for Trading, Are Not Within the Scope of AIA § 18
`
`Petitioners markedly fail to point to portions of the legislative history that are
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`directly on point here. For example, the following exchange between Senators Durbin
`
`and Schumer (the sponsor of Section 18) make clear that the ’132 patent claims do
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`not qualify as CBMs:
`
`[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
`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
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`Case No. CBM2014-00137
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`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.
`
`Ex. 2008, S5428 (emphases added).
`
`Furthermore, in other portions of the legislative history, Senator Durbin
`
`further confirms 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
`
`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.
`
`Ex. 2008, S5433 (emphases added).
`
`[Mr. DURBIN.] I am confident that the PTO will keep this
`in mind as it works to craft regulations implementing the
`technological invention exception to section 18. I also
`expect the PTO to keep in mind as it crafts these
`regulations Congress’s understanding that legitimate
`
`
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`Case No. CBM2014-00137
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`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.
`
`Ex. 2008, S5433 (emphasis added).
`
`These statements from Senators Durbin and Schumer are consistent with the
`
`language of the statute and the policy reasons behind the new law. This is further
`
`illustrated by the following additional statements by Senator Schumer in the legislative
`
`history explaining the reason behind Section 18:
`
`[Mr. SCHUMER.] Business method patents are the bane
`of the patent world. . . . State Street launched an avalanche
`of patent applications seeking protection for common
`business practices. The quality of these business
`method patents has been much lower than that of other
`patents, as Justice Kennedy noted in his concurring opinion
`in