trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`CBM2015-00172, Paper No. 83
`March 24, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`IBG LLC, INTERACTIVE BROKERS LLC,
`TRADESTATION GROUP, INC., TRADESTATION
`SECURITIES, INC., TRADESTATION TECHNOLOGIES,
`INC., and IBFX, INC.,
`Petitioners,
`
`v.
`
`TRADING TECHNOLOGIES INTERNATIONAL, INC.,
`Patent Owner.
`____________
`
`CBM2015-00172 (Patent No. 7,783,556 B1)
`____________
`
`Held: October 19, 2016
`____________
`
`
`
`
`
`BEFORE: SALLY C. MEDLEY, MEREDITH C. PETRAVICK,
`and JEREMY M. PLENZLER, Administrative Patent Judges.
`
`
`
`
`The above-entitled matter came on for hearing on Wednesday,
`October 19, 2016, commencing at 10:45 a.m., at the U.S. Patent
`and Trademark Office, 600 Dulany Street, Alexandria, Virginia.
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`
`CBM2015-00172, Paper No. 83
`March 24, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`IBG LLC, INTERACTIVE BROKERS LLC,
`TRADESTATION GROUP, INC., TRADESTATION
`SECURITIES, INC., TRADESTATION TECHNOLOGIES,
`INC., and IBFX, INC.,
`Petitioners,
`
`v.
`
`TRADING TECHNOLOGIES INTERNATIONAL, INC.,
`Patent Owner.
`____________
`
`CBM2015-00172 (Patent No. 7,783,556 B1)
`____________
`
`Held: October 19, 2016
`____________
`
`
`
`
`
`BEFORE: SALLY C. MEDLEY, MEREDITH C. PETRAVICK,
`and JEREMY M. PLENZLER, Administrative Patent Judges.
`
`
`
`
`The above-entitled matter came on for hearing on Wednesday,
`October 19, 2016, commencing at 10:45 a.m., at the U.S. Patent
`and Trademark Office, 600 Dulany Street, Alexandria, Virginia.
`
`
`
`
`
`
`CBM2015-00172
`Patent No. 7,783,556 B1
`
`APPEARANCES:
`
`ON BEHALF OF THE PETITIONERS:
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`ON BEHALF OF PATENT OWNER:
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`ADAM J. KESSEL, ESQ.
`Fish & Richardson P.C.
`One Marina Park Drive
`Boston, Massachusetts 02210-1878
`
`And
`
`ROBERT SOKOHL, ESQ.
`RICHARD M. BEMBEN, ESQ.
`LORI A. GORDON, ESQ.
`KEVIN D. RODKEY, ESQ.
`Sterne Kessler Goldstein Fox
`1100 New York Avenue, N.W.
`Washington, DC 20005
`
`ERIKA H. ARNER, ESQ.
`CORY C. BELL, ESQ.
`RACHEL L. EMSLEY, ESQ.
`Finnegan, Henderson, Farabow, Garrett & Dunner
`Two Freedom Square
`
`11955 Freedom Drive
`Reston, Virginia 20190-5675
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`And
`
`LEIF R. SIGMOND, JR., ESQ.
`MICHAEL D. GANNON, ESQ.
`McDonnell Boehnen Hulbert & Berghoff LLP
`300 South Wacker Drive
`Chicago, Illinois 60606-6709
`
`
`
`
`
` 2
`
`
`
`CBM2015-00172
`Patent No. 7,783,556 B1
`
`
`P R O C E E D I N G S
`- - - - -
`JUDGE PETRAVICK: Now we are going to hear
`arguments in the case of CBM2015-00172.
`Could you please provide us with the names of counsel
`from Patent Owner.
`MR. KESSEL: Yes, good morning, Your Honors. I'm
`Adam Kessel, from Fish & Richardson. I represent the
`TradeStation Petitioners and I will be speaking on behalf of all of
`the Petitioners today.
`JUDGE PETRAVICK: Thank you.
`And for the Patent Owner side, for the record?
`MS. ARNER: Thank you. I'm Erika Arner from
`Finnegan, Henderson, Farabow, Garrett & Dunner. I'm lead
`counsel for the Patent Owners, Trading Technologies. With me
`today at counsel table is Cory Bell, also of Finnegan, and with us
`here in the room are Adam Faier and Jay Knobloch,
`representatives from Trading Technologies in Chicago.
`JUDGE PETRAVICK: Thank you.
`You have 30 minutes. Do you want to reserve time for
`rebuttal?
`MR. KESSEL: Yes, Your Honor, I would like to
`reserve ten minutes for rebuttal.
`JUDGE PETRAVICK: You may begin when ready.
`MR. KESSEL: Thank you, Your Honor. I will begin.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`
`
` 3
`
`
`
`CBM2015-00172
`Patent No. 7,783,556 B1
`
`
`I am here today to speak about the Singer '556 patent,
`which was only challenged under Section 101. There are two
`different Section 101 challenges in this petition. One is the
`Mayo/Alice abstract idea challenge, and the other, which applies
`to a subset of claims, relates to the computer-readable medium
`claims, which are not limited to non-transitory medium.
`I think this may be the most straightforward case that
`we're here to discuss today, and I'm optimistic I will be able to do
`it in less than 20 minutes, but we will see. So, my roadmap is to
`start with Alice step 1, move to Alice step 2, talk about the CRM
`claims, and then if there's a little time, I'll touch on the CBM
`eligibility jurisdiction question.
`Now, starting with Alice step 1, the Board correctly
`found in its institution decision that the claims of the Singer
`patent are directed to the abstract idea of providing a trader with
`financial information to facilitate market trades, and that's really
`all this patent is. That's all that's claimed is putting information
`on the screen, giving a little bit of detail about how it's organized,
`and a little bit of detail about what information is there, but that's
`it.
`
`Market trading is a fundamental and long-standing
`commercial practice. Now, in trying to determine what is the
`abstract idea, and whether the claims, in fact, are directed to an
`abstract idea, one theme in the Federal Circuit decisions is
`whether the claims improve the functioning of a computer. In
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`
`
` 4
`
`
`
`CBM2015-00172
`Patent No. 7,783,556 B1
`
`this case, the claims clearly do not improve the functioning of a
`computer, and we can see that by focusing on what the purported
`invention, what's the improvement here.
`So, I have on the screen, this is slide 2, we'll look at
`what the patent characterizes as the prior art, which is just putting
`market information on the screen. Figure 1 on slide 2 shows one
`organization of market information with bids and offers,
`quantities. Slide 3, which shows figure 2, looks remarkably like
`what's claimed here, but it is the prior art, it's labeled as prior art.
`And here we see a vertical price axis with bids and offers aligned
`along that axis.
`Now, what's the improvement? The claimed
`improvement is to take what was in the prior art, displaying
`market information in a grid on an axis, and adding an additional
`bit of information, it's called the value axis, it's going to show the
`trader what profit or loss they would experience if they executed
`a trade at each of those levels.
`And I'm going to jump all the way to slide 15. Slide 15
`has figure 2, which is the prior art, side by side with figure 8,
`which was annotated in our petition, is annotated here, showing
`what's different in the claim. What's different is that there's a
`value axis, and so the trader has a long position or a short
`position, and they are considering how much are they going to
`make or how much are they going to lose at each of these price
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`
`
`
`
` 5
`
`
`
`CBM2015-00172
`Patent No. 7,783,556 B1
`
`levels, and the screen in this patent, in this claim, shows that
`value. That's it.
`We know from the Electric Power Group case that
`displaying concurrent visualization of two or more types of
`information is not enough to take a patent claim out of the
`abstract idea category. I'd submit that the concurrent
`visualization in the Electric Power Group case was actually a
`little more sophisticated than what we see here, which is just
`adding some numbers on the right where there are other numbers,
`and yet the Federal Circuit held that was an unpatentable abstract
`idea.
`
`The claimed steps here are all steps that computers have
`been doing for decades, and we'll take a look at that on slide 13.
`This is claim 1 of the '556 patent. We have a receiving
`information, in this case it happens to be market information,
`identifying whether the user has a long or short position with
`respect to the commodity on the screen, computing the profit or
`loss, displaying the profit or loss, and essentially updating that
`information as the market changes.
`This is not a new use of a computer. This is not
`anything that is making the computer work differently than it has
`before. In fact, if you compare it to the figure 2 prior art in this
`very patent, everything is the same in the computer except it's just
`putting a little more information on the screen. There's no real
`argument that any of the dependent claims here make a difference
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`
`
` 6
`
`
`
`CBM2015-00172
`Patent No. 7,783,556 B1
`
`under Section 101, they just recite different ways of displaying
`the information, adding additional indicators.
`It's clear from the claims, it's clear from the
`specification, it's clear from the testimony of the Patent Owner's
`expert that we cited in our reply that there are no improvements
`to making the computer run faster, more efficiently, using less
`energy, the computer is not being made to work any differently.
`And we'll just look at slide 14, this is a quote from the
`specification, column 4, lines 3 through 5 -- sorry, that's -- there's
`an additional cite in there, column 14, line 64, through column
`15, line 2. Essentially just saying, as actually is somewhat
`common of patents of this era, you can do this on any computer.
`It's not limited to any particular type of computer, or a network
`apparatus, not limited to any particular hardware or software, you
`can use a general purpose computer, or a special computer, it
`doesn't matter. Everything in this patent shows that it is generic
`computer technology implementing the abstract idea of
`displaying market information.
`Just briefly, we can contrast this with cases like Enfish,
`one of a handful where the Federal Circuit has found
`software-implemented inventions to be patentable. Enfish
`involved a novel database storage schema, a self-referential
`database, I believe is the gist of the technology there, and that
`was something that was very internal to the computer. It actually
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`
`
`
`
` 7
`
`
`
`CBM2015-00172
`Patent No. 7,783,556 B1
`
`made the computer work better. It was not the way that
`computers have always been used.
`That is nothing like this, which is all generic
`technology, putting information on the screen, and the
`information itself is not even new. I'll just briefly touch on the
`point that Patent Owner makes I think in this petition and several
`petitions, that there are many other words in the claim, and it's
`supposedly improper for the Petitioners to take all those words
`and limit them to a limited abstract idea, but that's exactly what
`the Federal Circuit has done over and over and over again in
`these cases. I found three cases we cited, coincidentally each of
`which has an 11-step claim that is summarized in an abstract idea
`that might be two, three, four words, LendingTree v. Zillow,
`11-step claim, 360 words in the claim. What's the idea?
`Coordinating loans. Ultramercial, 11 steps, advertisement as
`currency. OIP v. Amazon, 11 steps, offer-based price
`optimization.
`This is what step 1 is about. It's looking at what is the
`gist, what is the -- what is the main idea of the claim, is it an
`abstract idea, and it is entirely consistent, in fact it's what the
`Federal Circuit mandates we do, to not just recite all 200 words or
`however much it is, you have to see if there's an abstract idea that
`fairly characterizes what's going on, and the Board correctly
`found in instituting this proceeding that there is the abstract idea
`of displaying market information to assist a trader.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`
`
` 8
`
`
`
`CBM2015-00172
`Patent No. 7,783,556 B1
`
`
`Okay. Last point on Alice step one. The Patent Owner
`repeatedly characterizes its invention as a physical tool or a GUI
`tool. That's not what the claim says. The claim does not recite a
`tool, does not recite a physical thing. This is not like a
`mousetrap, or a machine, it is a method for displaying market
`information. There is nothing concrete about that.
`Alice step 2. This is the inventive concept. Is there
`something in the claims that gives us significantly more than the
`abstract idea, something that limits it enough to take it outside of
`the domain of unpatentable ideas? Here the asserted inventive
`concept, as I mentioned, is displaying the plurality of values
`along a value axis. Putting more information. That's all there is.
`And the patent admits that this is information that a
`trader used to have to track mentally. In fact, it would make no
`sense to trade unless you had some sense in your head as to
`whether you were going to make money or lose money, that's the
`name of the game. It's taking whether you want to call it mental
`steps or just information, putting it on the screen.
`We have several cases holding that the rearrangement
`and display of information does not confer patent eligibility. The
`Electric Power case, information about the grid; CyberSource,
`credit card information; and by the way, even this very narrow
`inventive concept of displaying profit and loss information, we
`know that was in the prior art.
`I'm going to skip to slide 16.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`
`
` 9
`
`
`
`CBM2015-00172
`Patent No. 7,783,556 B1
`
`
`JUDGE PETRAVICK: I'm sorry, I have a question,
`and it's going to be a little off kilter.
`MR. KESSEL: Sure.
`JUDGE PETRAVICK: But I want to ask it. So, in the
`Patent Owner's response, the Patent Owner is arguing that the
`data processing going on in the patent is not significant enough to
`be data processing under the -- for the CBM standard, to meet
`data processing for the CBM standard, but why would that be
`significant enough to be a -- significant more task under the 101?
`Do you think -- how do you -- tell me what you think
`about how those two things play together.
`MR. KESSEL: Right. So, on the CBM eligibility test,
`in our view, and as we read this Board's decisions, and the limited
`Federal Circuit guidance, there are really two prongs, a financial
`prong and then there's a technological exception to the financial
`prong. The Patent Owner, as I read its papers, is positing that
`there's really a third, separate prong. We don't see that. And the
`third prong, according to the Patent Owner, is it must claim a data
`processing method or other operation.
`Now, I think what Your Honor is asking is, if there is
`the requirement for data processing, we the Petitioners are saying
`this data processing is insignificant for 101 purposes, but it's
`enough to get you in for CBM. Well, first, the data processing I
`believe identified, if there is such a requirement, is the processing
`of the financial data to the screen. We don't see anything in the
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`
`
` 10
`
`
`
`CBM2015-00172
`Patent No. 7,783,556 B1
`
`statute and in the regs that require there to be some special sort of
`inventive level of data processing. In fact, that would make the
`whole regime a little odd, because it would have to be inventive
`enough to be a CBM, but then fail at 101. I don't think that's how
`the pieces fit together.
`The other point here, of course, is that the law says that
`it's data processing or other operations, and Patent Owner, as I
`understand it, interprets "other operations" to be limited to
`business methods. I don't see what the basis of that is.
`So, one, we don't think there's a third prong of data
`processing or other method, it's really just the financial method
`and then the technological exception. Two, if there is a
`requirement for data processing, it is done at a minimum in
`converting financial data to visual data. And then three, at a very
`minimum, there are other operations in this patent that relate to
`performance of financial services.
`And that's actually all I was going to say on the CBM
`question.
`JUDGE PETRAVICK: Thank you.
`MR. KESSEL: Okay. Just jumping back to step two, I
`was just pointing out on slide 16, we see the Kane patent, which
`shows -- this delta column in the middle shows profit and loss
`associated with different trades. That was certainly not new
`because it was done locally. It was not even new in the electronic
`training, or in the graphical user interface domain.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`
`
` 11
`
`
`
`CBM2015-00172
`Patent No. 7,783,556 B1
`
`
`One other point generally, whether it's step one or step
`two, this is not a case about whether graphical user interfaces are
`always patentable or never patentable. There's no grand principle
`here. We're looking at these claims and what do they do. We
`know that there are patents that claim steps that involve graphical
`user interfaces that have been found unpatentable. That's the
`Internet Patents case with the back and forward B button and the
`web browser. That's the Mortgage Grader case, where there's an
`interface for I think lenders and borrowers.
`So, we know, at a minimum, the existence of some
`graphical element or that it concerns a GUI, G U I, it certainly
`doesn't make it patentable, per se, but we're not here to say that
`no GUI is ever patentable. We don't need to say that, that's not an
`issue presented for this Board, and I submit that in the papers,
`they're presented as though this is about the patentability of GUIs.
`That's not the case. This is about the patentability of this claim
`for displaying information on the screen.
`And the last point I'll touch on, briefly, is claim 12, and
`its dependents, which recite a computer-readable medium having
`program code recorded thereon for execution on a computer.
`There is no limitation here that the computer-readable medium be
`nontransitory. I went back and forth quite a bit yesterday trying
`to figure out how to pronounce In Re: Nuijten, I think that's the
`closest.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`
`
`
`
` 12
`
`
`
`CBM2015-00172
`Patent No. 7,783,556 B1
`
`
`JUDGE PETRAVICK: Either Nuijten or Nuijten, I've
`heard both.
`MR. KESSEL: My earlier -- I spent some time in
`Holland, and it was a little different, but I'm going to go with
`Nuijten. That case, which came out before this patent issued in
`2007, holds that signals and anything that -- it's just not --
`nontransitory electronic information is nonstatutory subject
`matter, and I'm sure as this panel well knows, it's been the Patent
`Office's practice for many years to reject claims that do not limit
`themselves to nontransitory CRM.
`As I gather Patent Owner's response is, well, that
`wouldn't make sense, because the patent would have been invalid
`the moment it issued. That's kind of a nonsequitur, because the --
`you know, we're here because at least some of the patents that the
`Patent Office issues turn out to be invalid. The fact that the
`Patent Office issued this patent does not, I think, prove that the
`correct claim construction of computer-readable medium in this
`case somehow is an implied nontransitory limitation. We don't
`see that.
`And, in fact, the specification, to the extent there's any
`guidance on what a CRM is for this patent, and these claims, it's
`very broad. This is column 6, lines 6 through 13, and it just gives
`a laundry list of every different type of computer-readable media,
`and then it says, "or any other medium." And, so, there's really
`no hook here to say that this is limited to nontransitory CRM.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`
`
` 13
`
`
`
`CBM2015-00172
`Patent No. 7,783,556 B1
`
`And for that completely independent reason, this set of claims is
`nonstatutory subject matter.
`And that's all I have. I'm happy to answer any other
`questions.
`JUDGE PETRAVICK: I do not have any other
`questions.
`Judge Medley?
`JUDGE MEDLEY: No.
`JUDGE PETRAVICK: Judge Plenzler?
`JUDGE PLENZLER: No, I don't.
`MR. KESSEL: Thank you.
`JUDGE PETRAVICK: You have two minutes left. We
`will add that to your rebuttal time.
`You can begin when you're ready.
`MS. ARNER: Thank you. As a preliminary matter, as I
`understand the Board's ruling was clarified this morning during
`the argument in CBM2015-00179, I am not permitted to apply
`new case law to the facts of this case because it would be outside
`of the Board rules, so I will therefore limit my remarks to the
`cases that have been briefed by the parties; however, there are
`over a dozen 101 cases that the Federal Circuit has issued since
`our Patent Owner response was filed, even more since institution,
`and, of course, when the Board decides this case, it will have to
`apply 101 law as it is at that time. And I'm prepared today to
`discuss any of those cases with the Board. Otherwise, we would
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`
`
` 14
`
`
`
`CBM2015-00172
`Patent No. 7,783,556 B1
`
`request supplemental briefing on the cases at least that have
`issued since then.
`JUDGE PETRAVICK: Are you making the request
`now or are you telling me that you are going to send, according to
`our procedures, an email to the trial box to request supplemental
`briefing?
`MS. ARNER: To request supplemental briefing on the
`new 101 cases.
`JUDGE PETRAVICK: We will await your email
`request.
`MS. ARNER: Thank you.
`JUDGE PETRAVICK: And in general, the Board is
`aware of all the cases coming out of the CAFC, and particularly
`the 101 cases, we do pay attention to those.
`MS. ARNER: Great.
`So, since the Board's proceedings were instituted in
`these cases, the Federal Circuit has issued almost 20 new cases on
`101; since the Patent Owner's response was filed, at least a dozen.
`And the Court has said, I think we all are, that it's wrestling with
`how to apply the Alice/Mayo two-step test to analyze the patent
`eligibility of the claims.
`And as we read those cases, as the Court -- as the Board
`I'm sure is aware, there are themes, or hallmarks that the Court is
`looking at. And I think a few of those in particular are important
`for these cases today. One of them in particular is that the Court
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`
`
` 15
`
`
`
`CBM2015-00172
`Patent No. 7,783,556 B1
`
`has twice reversed tribunals for oversimplifying the claims at step
`1 of the Alice inquiry. That seems to me to be a pretty significant
`departure from prior case law, where the Court is taking a harder
`look, they're calling that step meaningful and taking a harder look
`at claims at that first step.
`The Enfish case is a good example of that, where the
`Court talked about the difference between claims being directed
`to something and claims involving something, and that to find out
`whether the claim is -- overall claim is directed to an abstract
`idea, that is really the question at step one.
`And to do that, the Court has explained, and did in
`Enfish, you need to look at the claims and what they say, you
`need to also look to the specification. And there are things or
`hallmarks in the specification and in the claims that can
`underscore that the claims are not abstract at step one. And, for
`example, in Enfish, the Court found, based on the specification
`and the claims, that the invention, the overall character there, was
`an innovative, logical model for a computer database.
`And they found that that was not abstract, even at step
`one, because they were not claiming just a general process for
`storing data, or a general database, but they were claiming a very
`specific structure for that database. And other cases have
`similarly looked at the invention at step one, and found that when
`the claims overall were directed to something besides an abstract
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`
`
`
`
` 16
`
`
`
`CBM2015-00172
`Patent No. 7,783,556 B1
`
`idea, and the claims recited that something, then they were not
`abstract.
`TT's claims, the '556 claims in particular, are not
`abstract at step 1, because when you look at the actual language
`in the claims, they recite specific structure makeup and
`functionality of a GUI. They explain a method for producing that
`GUI. They describe exactly what the pieces are of the interface,
`they are price -- or value axis, they are price indicators, they
`describe how they are arranged, the structure. So, they have the
`pieces and they have the structure of where they are on the
`display relative to one another. So, the indicators are arranged
`along the value axis -- location corresponding to values along the
`value axis.
`The claims also recite functionality of the GUI,
`specifically in the claims, moving the first indicator relative to the
`value axis. These are all elements that are specifically recited in
`the '556 claims that explain the details of what the invention is the
`focus -- what is the focus of the invention.
`Petitioners urge the Board to adopt its abstract idea. In
`the institution decision, it was providing a trader with financial
`information to facilitate market trades, but when you actually
`look at what the claims say and you read the specification, it's
`clear that that oversimplification would be an error.
`The second theme that I think is important and notable
`in the recent case law from the Federal Circuit is the Court's
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`
`
` 17
`
`
`
`CBM2015-00172
`Patent No. 7,783,556 B1
`
`reminder that the overall question on 101 is preemption, and they
`go back all the way to the Morse case, to the telephone cases,
`where the Supreme Court explained that you cannot have a patent
`for a result, without worrying about what process or machine is
`used to accomplish that result. And these cases recently from the
`Federal Circuit have re-emphasized that focus of a -- of a
`particular way to achieve a result rather than the claim that recites
`just the result.
`The Electric Power case is one that was mentioned by
`the Petitioners, and there, it's quite distinguishable from this case.
`There, the Court said that the GUI was used or the user interface
`was used simply for displaying the results of the analysis that was
`done, and in particular, the Court distinguished it from cases like
`TT's. The Court said, "merely presenting the result of an abstract
`process -- abstract processes of collecting and analyzing
`information without more (such as identifying a particular tool for
`presentation) is abstract as an ancillary part of the collection and
`analysis." And that's what they had in Electric Power, as the
`Petitioners argued, they had a generic displaying step at the end
`of the process. That is separate and apart from what Trading
`Technologies has in its claims.
`I would also point you to the Bascom case for this
`proposition of the focus on avoiding preemption by having
`enough specific details, and in Bascom, the Court agreed with the
`applicant there or the patent owner there that there were not
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`
`
` 18
`
`
`
`CBM2015-00172
`Patent No. 7,783,556 B1
`
`specific new computers, that they did not purport to have
`invented a network or an Internet filter or a computer. What they
`had instead was what the Court said was patent-eligible,
`nonconventional, nongeneric arrangement of known components.
`That is what we have in the TT claims at least, this
`nonconventional, nongeneric arrangement. In the structure of the
`claims as I went through before, the structure, the pieces of the
`claim -- of the claim, the pieces of the GUI, how they are
`arranged relative to each other, and what happens, what they do
`relative to each other. For the '556, we have that moving of an
`indicator relative to the axis.
`In the '556 patent in particular, there are dependent
`claims that add additional detail, as we explained in our Patent
`Owner response. For example, I'll point you to dependent claims
`2 and 3, which add additional detail and functionality to the -- to
`the claimed GUI.
`I think it's important for the Board to note and to discuss
`the many cases from the Federal Circuit involving interfaces.
`There are several of them. Both older, and recently I think earlier
`this week maybe or last week we had one, where there is an
`interface in the claims, and what makes them not patentable.
`I think it's important to look at those cases because they
`really distinguish, just like that Electric Power case, why Trading
`Technologies' claims are different. They are the example of a
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`
`
`
`
` 19
`
`
`
`CBM2015-00172
`Patent No. 7,783,556 B1
`
`graphical user interface that satisfies Section 101 because of the
`structure, makeup and functionality requirements in the claim.
`The Petitioners have admitted here that the GUI, or a
`user interface, is just like other computer components like a
`database, or a server. And, so, adding them to a claim does not
`make them patentable. That's their argument about that. And
`that's what those cases stand for, is that adding a generic user
`interface is just like adding any other computer component to a
`claim.
`
`But changing the way that those computer components
`function is patentable, and that's shown in the Enfish case. There,
`as hard as the Petitioners try to make that case about something
`physical, there the Court said specifically that it was not physical,
`that what was done was a logical database structure that improved
`the way data was stored, that that improvement to a database was
`what made the claim patentable. That that was an improvement
`to a piece of technology -- a routine computer component.
`Just as we have here, a graphical user interface is a
`routine computer component, yet when you describe the
`specificity in these claims of the pieces, the relationship between
`them, and the way they move, and function, with the user and
`with themselves, that is what takes us out of those interface cases.
`The Petitioners have mentioned several of those, I will
`mention a couple of others. The Intellectual Ventures v.
`CapitalOne is one where the concept was an interactive interface.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`
`
` 20
`
`
`
`CBM2015-00172
`Patent No. 7,783,556 B1
`
`That was the language in the claims. And that sounds kind of
`interesting, until you actually look at that case. The Petitioners or
`the Patent Owner there called the interactive interface the brains
`of the operation. And yet they proposed a very broad claim
`construction for that, and they called it -- they only called it a
`interactive interface without providing any details to how it
`functioned, what it looked like, what it did.
`And the Court called them out and said, they gave only
`a vague and generic description of this interactive interface. And
`that's sort of like claiming the result, calling the thing interactive,
`without claiming what actually makes it interactive. That's a
`common theme in some of the other interface cases is where
`the -- when you look at the overall focus of the invention, and all
`the back and forth when the Petitioners' counsel mentioned as
`Internet patents, and there, what the patent talked about was how
`great it was because they could maintain the state of the data that
`you're putting into a form, even if you use the forward and back
`buttons on your browser, the state is maintained. And in the
`claims, they recite that, maintaining the state.
`But while that sounds like something important, the
`Court said that they didn't tell us how to maintain the state, that
`the overall focus of that invention was maintaining the state. And
`that that was not explained in the claims, how that happens. And
`that's the claiming of the result rather than the -- than the how or
`the particular details that get you to the result. Trading
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`
`
` 21
`
`
`
`CBM2015-00172
`Patent No. 7,783,556 B1
`
`Technologies' claims, of course, have the more detail that sets
`them apart and really calls them out as satisfying 101, unlike
`those interface cases.
`JUDGE PETRAVICK: What's interactive about the
`method of claim 1?
`MS. ARNER: So, claim 1, the functionality that's
`recited in claim 1, I would say is the moving, it's that final clause
`in claim 1, where the first interactive -- where the first indicator is
`moved relative to the value axis to indicate something to the
`viewer, to the user.
`JUDGE PETRAVICK: So --
`MS. ARNER: And then claims 2 and 3 add detail.
`JUDGE PETRAVICK:
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
