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 CBM2014-00137
`Patent 7,685,055
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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
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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 Request for Rehearing under 37 C.F.R. § 42.71(c)
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`I.
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`Case No. CBM2014-00137
`Patent 7,685,055
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`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 ’055
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`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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`As a result, the Decision overlooked (and failed to address) the metes and bounds of
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`CBM review defined by Congress. Indeed, the Decision contradicted the intent of
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`Congress. While the claimed invention is used in the financial industry, the claimed
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`invention is not directed in any way to a business method. Rather, the claimed
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`invention is directed to novel and non-obvious technology—the features of a
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`graphical device.1 As such, the claims are outside the purview of CBM review as a
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`threshold matter. In addition, by overlooking these claim features, the Decision
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`misapprehended and misapplied the technological invention exception.
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`1 Although Petitioner persuaded the Panel to institute trial as to whether certain claims
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`are obvious, no administrative or judicial body has found any claim of the ’055 patent
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`to be anticipated or obvious.
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`1
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`II.
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`Case No. CBM2014-00137
`Patent 7,685,055
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`Standard of Review
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`On rehearing, a decision is reviewed for abuse of discretion.2 An abuse of
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`discretion “occurs when a court misunderstands or misapplies the relevant law,” or
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`makes erroneous factual findings.3 A decision lacking evidentiary support in the
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`record constitutes an abuse of discretion.4 Likewise, “[a] decision based on an
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`erroneous view of the law . . . [also] invariably constitutes an abuse of discretion.”5 Because
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`the Panel’s Decision lacks evidentiary support in the record and misapplies the law,
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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 ’055 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 ’055 patent cannot be
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`subjected to Section 18 review because it “claims a novel GUI tool, not a method of
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`doing business.”6 TT pointed to explicit statements by Congress confirming that a
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`2 37 C.F.R. § 42.71(c).
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`3 Renda Marine, Inc. v. U.S., 509 F.3d 1372, 1379 (Fed. Cir. 2007).
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`4 MGIC v. Moore, 952 F.2d 1120, 1122 (9th Cir. 1991).
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`5 Atl. Research Mktg. Sys. v. Troy, 659 F.3d 1345, 1359 (Fed. Cir. 2011) (emphasis
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`added).
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`6 Preliminary Response, p. 2.
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`2
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`Case No. CBM2014-00137
`Patent 7,685,055
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`patent claiming a novel GUI (like the ’055 patent) would not be eligible for Section 18
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`review.7 The Decision did not respond.
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`TT cited abundant evidence showing GUIs are technology.8 The Decision
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`agreed.9 TT showed how the claims of the ’055 patent recite particular features of a
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`GUI.10 Again, the Decision agreed.11
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`TT also pointed out how the prosecution history tied allowance to the claimed
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`elements of the GUI.12 The Decision ignored this evidence.
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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.”13 TT also “argue[d] that the claims solve the technical
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`7 Preliminary Response, p. 3-4.
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`8 Preliminary Response, p. 31-32 (citing other government agencies, college and
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`university programs, and legislative history discussion of GUIs).
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`9 Decision, p. 12 (referring to GUIs as technology).
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`10 Preliminary Response, pp. 6-14 (showing how the claims recite GUIs).
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`11 Decision, p. 11 (finding claim 1 recites “a certain arrangement on a GUI and allows
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`for the repositioning of the information on the display”).
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`12 Preliminary Response, pp. 14-15.
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`13 Decision, p. 10.
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`3
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`Case No. CBM2014-00137
`Patent 7,685,055
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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.”14 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 “[c]laim 1’s use of a display, an input device, and a GUI (i.e., software)
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`were all known technology.”15 But this misapprehends the fact that the invention is a
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`GUI with specifically claimed features that were found to be lacking in the prior art.
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`Just as surely as a new display device or a new input device would be a technological
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`invention, so too is a new GUI tool. In particular, claim 1 requires much more than
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`known technology. Claim 1 requires a GUI with certain structural and functional
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`features, including a specific manner in which to re-position a static price axis and
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`adjusting the number of price levels of the displayed price axis.16 This combination of
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`GUI features was not “known technology” but novel and non-obvious technology.17
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`14 Decision, p. 10.
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`15 Decision, p. 12.
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`16 Preliminary Response, p. 14.
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`17 Petitioner’s patentability arguments based on prior art should not be considered as
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`part of determining whether the ‘055 patent is a CBM. Otherwise, the technological
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`Case No. CBM2014-00137
`Patent 7,685,055
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`The Decision never addressed the claimed combinations of technical features. That
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`the improved 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.”18 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:
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`[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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`widely commercialized and used within the electronic
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`trading industry to implement trading and asset
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`exception would become a nullity. Most petitioners raise some sort of
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`novelty/obviousness challenge. What is relevant is that the claim as a whole is
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`directed to a technical feature that was the reason for novelty and non-obviousness of
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`the claims over the prior art considered.
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`18 CBM2013-00005, paper 18, p. 6 (Opinion by Administrative Patent Judge Medley,
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`March 29, 2013).
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`Case No. CBM2014-00137
`Patent 7,685,055
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`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?
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`[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 18.19
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`Furthermore, in other portions of the legislative history, Congress
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`confirmed that claims of the sort at issue here are not CBMs:
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`[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
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`used by electronic trading industry workers to
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`19 Ex. 2008, S5428 (emphases added).
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`Case No. CBM2014-00137
`Patent 7,685,055
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`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 18.20
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`[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
`and job-creating technological patents such as those
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`protecting the novel electronic trading software tools
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`and graphical user interfaces discussed above are not
`the target of section 18.21
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`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. 22 TT further
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`explained that every example provided by Senator Schumer of patents implicated by
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`20 Ex. 2008, S5433 (emphases added).
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`21 Ex. 2008, S5433 (emphasis added).
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`22 Preliminary Response, pp. 22-23.
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`Case No. CBM2014-00137
`Patent 7,685,055
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`Section 18 involved claims whose alleged inventive aspect is directed to a business
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`method or practice.23 The Decision never addressed any of these statements.
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`If the Decision had considered Congress’s clear understanding, the Decision
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`could only have concluded that the ’055 patent is outside the scope of Section 18,
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`whether because the claims are not directed to a business method or because they are
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`directed to a technological invention. Subjecting the ’055 patent to CBM review is no
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`different than 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 ’055 claims are not subject to Section 18 as a threshold
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`matter, the claims clearly qualify for the technological invention exception.
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`A.
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`The Decision Improperly Ignores the Claim Limitations That
`Recite Novel and Non-Obvious Technology
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`In its analysis of whether the ’055 patent is for a technological invention, the
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`Decision characterized “[c]laim 1’s use of a display, an input device, and a GUI (i.e.,
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`software) [as] known technology.”24 This conclusion is not accurate and ignores
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`substantive claim limitations. In particular, as TT explained and no one has disputed,
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`23 Preliminary Response, p. 23.
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`24 Decision, p. 12.
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`Case No. CBM2014-00137
`Patent 7,685,055
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`the claims require particular structural and functional features of a GUI.25 This
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`combination of features is novel and non-obvious, and it is these features that
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`distinguished the claims from the prior art.26 Petitioner never established that these
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`claimed features lack novelty or are obvious. The claims are not generically directed to
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`any “software” or to a GUI in general. Rather, the claims require a GUI with
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`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.
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`The Record Only Supports Finding that the Claims Recite a
`Technological Feature That Is Novel and Non-Obvious
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`As set forth above, the claims are directed to particular novel and non-obvious
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`features of a GUI. The Preliminary Response established that GUIs are technology.27
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`As explained by TT, the claims are directed to a graphical tool and are no different
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`25 See, e.g., Preliminary Response, pp. 4-15.
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`26 Preliminary Response, pp. 14-15.
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`27 Preliminary Response, p. 31-32 (citing other government agencies, college and
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`university programs, and legislative history discussion of GUIs).
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`Case No. CBM2014-00137
`Patent 7,685,055
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`than claims directed to a mechanical device.28 The Panel agreed that GUIs are
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`technology.29 However, the Panel mistakenly treated the claims as directed to any
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`generic GUI.30
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`The Panel also seemed to equate the claimed GUI with “software.”31 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 ’055
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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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`As previously explained, the legislative history is clear on this issue: advances in
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`software and GUI inventions are not covered business methods.32 Just because the
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`28 Preliminary Response, p. 15.
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`29 Decision, p. 12 (referring to GUIs as technology).
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`30 Decision, p. 11.
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`31 Decision, p. 11.
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`32 Preliminary Response, pp. 20-25.
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`Case No. CBM2014-00137
`Patent 7,685,055
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`new GUI claimed in the ’055 patent can be practiced by more than one type of
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`computer does not make it non-technological. This also holds for all types of software
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`inventions. For example, SSL (used for security on nearly every type of computer with
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`a web browser) does not change the underlying components of the computer and
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`does not require use of a particular programing language, but it is still technological.
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`Similarly, the claimed GUI of the ’055 patent does not change the underlying
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`hardware components of the computer and does not require use of a particular
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`programing language. But it is the invention (the claimed GUI is a new tool that
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`improves upon an old tool), not elements other than the invention, that makes the
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`claimed invention technological.33 The claims here to a novel graphical tool are no
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`different than claims to a novel physical tool made of steel—that the physical tool can
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`be made of different types of known steel using known crafting techniques is
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`irrelevant to whether the finished tool is technological. Importantly, the ’055 claims
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`are not directed to conducting on a computer a business practice that existed before
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`computers. Rather, the claims are directed to the features of a new graphical tool that
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`did not exist previously either on computers or before computers.
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`When the actual claim limitations, which claim previously unknown
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`technology, are considered, it is clear that the claims recite a technological feature that
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`33 Preliminary Response, pp. 32-37.
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`11
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`Case No. CBM2014-00137
`Patent 7,685,055
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`is novel and non-obvious over the prior art. TT submits that for this reason alone, the
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`’055 patent is for a technological invention and, therefore, is not a CBM.
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`2.
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`The Decision Improperly Failed To Address The Technical
`Problems Solved By The Claimed Technical Solution
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`The Decision must consider “whether the claimed subject matter as a whole
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`. . . solves a technical problem using a technical solution.”34 The Decision failed to
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`address either of the two technical problems solved by the invention that were
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`identified by TT.35 In particular, the Decision did not address the problem of market
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`indicators moving to what some viewers viewed as undesirable locations relative to
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`the price axis in prior graphical tools.36 In addition, the Decision did not address the
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`problem of the market indicators moving off the price axis in prior graphical tools.37
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`TT explained how both of these problems are technical, as they relate to classic
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`engineering problems of efficiency, speed, and usability.38 Rather than addressing
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`these technical problems, the Decision only addressed the following characterization
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`of a purported problem: “the problem of a trader having to read a display of prices
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`34 37 C.F.R. § 42.301(b) (emphasis added).
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`35 Compare Preliminary Response, pp. 28-35 with Decision, p. 12.
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`36 Id.
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`37 Id.
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`38 Preliminary Response, pp. 30-32.
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`12
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`Case No. CBM2014-00137
`Patent 7,685,055
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`for a commodity and enter a trade order before the price of the commodity
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`changes.”39 This characterization does not adequately convey the technical problems
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`identified above. Accordingly, the Decision improperly failed to address whether the
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`claimed subject matter as a whole solves “a technical problem using a technical
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`solution.”
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`Once the technical problems of market indicators moving to what some
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`viewers viewed as undesirable locations relative to the price axis and moving off the
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`price axis are properly understood, it is clear that the claimed subject matter as a
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`whole solves a technical problem using a technical solution. As set forth above, the
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`Decision incorrectly ignores substantive limitations of the claims and mischaracterizes
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`claim 1 as simply using “a display, an input device, and a GUI (i.e., software) [that]
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`were all known technology.”40 The actual claim limitations recite technical features of
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`a GUI that solve the technical problems identified above.
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`Because the claims recite a new graphical user interface tool, not merely the
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`process of executing a trade, they are outside the scope of covered business method
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`review. Congress understood that “technological patents such as those protecting the
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`novel electronic trading software tools and graphical user interfaces discussed above
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`39 Decision, p. 12.
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`40 Decision, p. 12.
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`Case No. CBM2014-00137
`Patent 7,685,055
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`are not the target of section 18.”41 Moreover, the claims of the ’055 patent satisfy both
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`prongs of the technological invention definition.42 Accordingly, TT requests rehearing
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`of the Decision and denial of the petition because the ’055 patent is not a covered
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`business method patent.
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`VI. Conclusion
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`Because the Decision on Institution lacks any evidentiary support in the record
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`and misapplies the law, the Panel abused its discretion and thus erred in instituting
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`trial. Accordingly, the Panel should grant this request and deny institution.
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`Respectfully submitted,
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`Dated: December 16, 2014
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`By:
`Erika H. Arner,
`Reg. No. 57,540
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`41 Ex. 2008, S5433.
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`42 TT does not agree with the Panel’s assertion on page 10 of the Decision that
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`qualification for the technological invention exception requires satisfaction of both
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`prongs of 37 C.F.R. 42.301(b) because either prong independently shows that claims
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`recite a technological invention. In any event, both are met here.
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`14
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`Case No. CBM2014-00137
`Patent 7,685,055
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a copy of the foregoing Patent Owner’s
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`
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`Request for Rehearing was served on December 16, 2014, via email directed to
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`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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`
`
`/Ashley F. Cheung/
`Ashley F. Cheung
`Case Manager
`
`
`
`
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`
`
`FINNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER, LLP
`
`
`15
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