Paper No. ____
` Filed: December 15, 2015
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`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.;
`IBFX, INC.; CQG, INC.; and CQGT, LLC
`
`Petitioners
`v.
`
` TRADING TECHNOLOGIES INTERNATIONAL, INC.
`
`Patent Owner
`_________________
`Case CBM2015-00179
`U.S. Patent 7,533,056
`_________________
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`PATENT OWNER’S PRELIMINARY RESPONSE
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`CBM2015-00179
`U.S. Patent 7,533,056
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`Contents
`PRELIMINARY STATEMENT ..................................................................... 1
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`I.
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`II. OVERVIEW OF THE CLAIMED INVENTION ........................................... 2
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`A.
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`Independent Claim 1 ............................................................................. 3
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`B. Dependent Claims 5-7 ........................................................................... 5
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`III. THE BOARD SHOULD DENY INSTITUTION BECAUSE THE
`’056 PATENT IS NOT A CBM PATENT ...................................................... 6
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`A.
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`The Statutory Definition of CBM Requires More Than a
`Recitation of Financial Activity or a Financial Purpose ....................... 8
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`1.
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`Petitioners’ Argument That the Legislative History
`Should Be Ignored Is Meritless ................................................ 11
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`B. GUI Design Is a Technology, Not a Business Method ....................... 13
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`C.
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`D.
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`Because the Claims Are Directed to a Combination of GUI
`Features and Functionality Rather than a Method of Doing
`Business, They Do Not Qualify for CBM Review ............................. 15
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`Even If the ’056 Patent Were a CBM, Improvements to GUIs
`Necessarily Fall Within the Technological Invention Exception ....... 15
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`1.
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`2.
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`3.
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`4.
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`Purported Novel and Nonobvious Improvements to GUIs
`Necessarily Claim Novel and Nonobvious Technology ........... 16
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`Each of Petitioners’ Arguments That the Claims Do Not
`Recite Novel and Nonobvious Technology Fails to
`Address the Technological Improvement—the Claimed
`Novel and Nonobvious Interaction between GUI
`Elements .................................................................................... 17
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`Novel and Nonobvious Improvements to GUIs
`Necessarily Claim Technological Solutions to
`Technological Problems ............................................................ 18
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`None of Petitioners’ Arguments Explain Why a New
`GUI Design is Not a Technological Solution to a
`Technological Problem ............................................................. 19
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`i
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`CBM2015-00179
`U.S. Patent 7,533,056
`IV. THE PETITION SHOULD BE DENIED BECAUSE IT
`REPRESENTS A MISUSE OF THE CBMR PROCESS ............................. 23
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`A.
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`B.
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`The Board Has the Discretionary Power to Deny This Petition ......... 23
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`Petitioners Misused CBMR By Purposefully Delaying Their
`Repetition of Arguments ..................................................................... 25
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`1.
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`2.
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`Petitioners Present Substantially the Same CBM, § 101,
`and Prior Art Arguments as TDAmeritrade in CBM2014-
`00131 ......................................................................................... 25
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`Petitioners Have Delayed Filing Purposefully As Part of
`a Coordinated Litigation Strategy ............................................. 29
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`V.
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`THE PETITION FAILS TO SHOW THE ’056 PATENT CLAIMS
`ARE MORE LIKELY THAN NOT INELIGIBLE UNDER § 101 .............. 31
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`A.
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`The ’056 Patent Claims Satisfy Prong One of Alice ........................... 32
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`1.
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`2.
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`3.
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`4.
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`5.
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`6.
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`The Claims Are Directed to the Structure and
`Functionality of a Specific GUI Tool, Not an Abstract
`Idea ............................................................................................ 33
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`The Alleged Abstract Idea Has No Support in § 101
`Jurisprudence ............................................................................ 37
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`Even Using Petitioners’ Fabricated “Abstract Idea,” The
`’056 Claims Are Not Directed To That Abstract Idea .............. 39
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`It Is Undisputed That The ’056 Claims Do Not Preempt
`The Alleged Abstract Idea, Or Any Abstract Idea ................... 40
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`The ’056 Claims Cannot Be Performed With Pen and
`Paper or In A User’s Mind ........................................................ 43
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`Petitioners’ § 101 Arguments Are Further Deficient for
`the Dependent Claims ............................................................... 44
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`B.
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`The ’056 Claims Recite an Inventive Concept, Satisfying Prong
`Two of Alice ........................................................................................ 46
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`ii
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`1.
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`2.
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`3.
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`4.
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`5.
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`6.
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`CBM2015-00179
`U.S. Patent 7,533,056
`The ’056 Claims’ Inventive Concept Improves
`Technology ................................................................................ 46
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`The Claimed Inventive Concept Is “Necessarily Rooted
`in Computer Technology” ......................................................... 48
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`The Petition Is Fundamentally Flawed Because It Fails to
`Disprove the PTO’s Original Conclusion Finding an
`Inventive Concept ..................................................................... 49
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`Petitioners Misconstrue Key Claim Elements As
`“Routine and Conventional” ..................................................... 51
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`The Fact That The Claimed Invention May Be Practiced
`On A Conventional Computer Does Not Preclude Patent
`Eligibility .................................................................................. 55
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`Petitioners’ Inventive Concept Arguments Are Even
`Further Deficient With Respect To At Least Dependent
`Claims 5-7 ................................................................................. 57
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`VI. THE BOARD SHOULD NOT INSTITUTE THE PRIOR ART
`GROUNDS BECAUSE PETITIONERS’ ARGUMENTS FAIL FOR
`MULTIPLE INDEPENDENT REASONS ................................................... 57
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`A.
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`The TSE Grounds Should Not Be Instituted Because Petitioners
`Fail to Establish That TSE Is Prior Art ............................................... 58
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`1.
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`Petitioners Present No Evidence Showing TSE Was
`“Publically Accessible” ............................................................ 58
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`2. Mr. Kawashima’s Testimony—Petitioners’ Only
`“Evidence”—is Uncorroborated and Biased ............................ 61
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`3.
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`4.
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`A Jury Has Already Concluded That TSE Is Not Prior
`Art, Using the Same Evidence—Mr. Kawashima’s
`Testimony .................................................................................. 62
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`The Board Should Deny the TSE Grounds on Claims 5-7
`Because TSE Does Not Disclose or Suggest the Claimed
`“order icon” ............................................................................... 62
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`iii
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`B.
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`C.
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`D.
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`CBM2015-00179
`U.S. Patent 7,533,056
`The Board Should Deny the Silverman-based Grounds Because
`Silverman Does Not Teach a GUI or the Claimed Price Axis ............ 64
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`1.
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`2.
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`Figures 4 and 5 of Silverman do not show a display or a
`GUI ............................................................................................ 64
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`Even if improperly read as teaching a GUI, Silverman
`does not disclose the claimed “price axis” ................................ 67
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`Silverman Does Not Disclose or Teach the Claimed “Order
`Icon”; Therefore, the Board Should Deny the Silverman-based
`Grounds For Claims 5-7 ...................................................................... 71
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`Both Proposed Obviousness Grounds Are the Same as, or
`Merely Cumulative of, Art and Arguments Already Considered
`by the Office, and Petitioners Do Not Attempt to Prove
`Otherwise ............................................................................................. 72
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`VII. THE THRESHOLD JURISDICTIONAL CBM ISSUE IMPACTS
`MANY PATENTS—WARRANTING AN EXPANDED PANEL .............. 75
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`A.
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`The Jurisdictional Dispute Relates to All GUI Improvement
`Patents.................................................................................................. 75
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`B.
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`The CBM Issue Warrants Consideration By an Expanded Panel ....... 76
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`VIII. ALL PETITIONS ON PATENTS IN THE RELATED
`LITIGATIONS SHOULD BE DISMISSED................................................. 77
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`IX. CONCLUSION .............................................................................................. 78
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`iv
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`CBM2015-00179
`U.S. Patent 7,533,056
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`I.
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`PRELIMINARY STATEMENT
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`Petitioners’ CBM and § 101 arguments contain a fundamental flaw—the
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`’056 claims are not directed to taking a known process and performing that process
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`using a generic computer, a generic display/graphical user interface, or the
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`Internet. TT agrees that a claim merely directed to using a generic computer to
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`display market information on a generic GUI or display would be a CBM and
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`possibly have § 101 issues. But that is not the case here, and Petitioners’
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`assumption ignores the actual claim limitations and reflects a misunderstanding of
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`the law. Here, the claims are directed to a combination of specific features and
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`functions of a GUI tool that result in the computer functioning in a different way,
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`allowing the user to interface with the computer in a different way. This fact is
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`further solidified by the inclusion of additional GUI features in the dependent
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`claims. Claims directed to such particular GUI features and functionality—as
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`opposed to claims that merely recite standard computing equipment or that merely
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`require that something be displayed on a generic “GUI” or “display” with no
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`further detail—do not remotely pose a § 101 problem and are not eligible for CBM
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`review (“CBMR”).
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`Petitioners’ obviousness grounds, re-hashing arguments considered during
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`prosecution, do nothing to show the PTO’s original determination was incorrect.
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`First, they rely on non-prior art: a manual (TSE) that they cannot show was
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`1
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`CBM2015-00179
`U.S. Patent 7,533,056
`publically available. Then, in alternate grounds, they rely on a patent drafters’
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`drawings describing an exchange’s inner-workings, which nowhere suggest
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`implementation as a GUI tool or displaying anything from those drawings to a
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`user. Even if improperly viewed as displays, those drawings lack a central element
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`of the claims—a “price axis.” Any contrary argument requires an improper
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`application of the construction of that term. And, Petitioners’ allegation that either
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`reference teaches the claimed “order icon” of claims 5-7 ignores the plain claim
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`language requiring that the “order icon indicat[e] the user’s order.”
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`Further, the petition should be denied because it uses CBMR as a litigation
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`tactic rather than a litigation alternative. The JDG has coordinated filings to cause
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`delay, avoid estoppel, and get multiple chances to respond to TT’s arguments.
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`Moreover, because the CBM issue is (i) an important threshold issue going to the
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`Board’s underlying authority and (ii) a novel dispute that pervades multiple
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`proceedings, TT suggests that expanded panel review would be appropriate.
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`II. OVERVIEW OF THE CLAIMED INVENTION
`The ’056 patent claims specific features and functionality of a GUI tool used
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`for electronic order entry. The claims are not directed to a business method and
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`merely practicing such a method on a generic “GUI” or “display.” The claimed
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`GUI tools improve how a user interfaces with the computer by improving prior
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`GUIs that were used for displaying market information and entering electronic
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`U.S. Patent 7,533,056
`orders. Thus, the claims are directed to technology that improves the functioning of
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`a computer because the claimed invention changes the function of a computer to
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`permit a user to achieve a desired result that is not achieved with a conventional
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`computer without the claimed invention. The ’056 patent claims multiple inventive
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`features, some of which are summarized below.
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`A.
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`Independent Claim 1
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`In independent claim 1, the ’056 patent provides a new “user interface [that]
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`presents [market] information in an intuitive format, allowing the trader to make
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`informed decisions quickly.” Ex. 1001, 2:44-46. The solution includes indicators
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`displayed in a particular way (i.e., relative to an axis on different portions of the
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`computer screen) to enable the user to provide inputs based on a selection of
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`locations along the axis. Id., 1:15-17, 2:44-66. The solution enables the trader to
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`immediately see activity in the market, from which the trader may infer that an
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`item may, for example, “rise in value, and can enter an order to buy for the item
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`immediately while the value for the item still appears low.” Id., 2:32-36.
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`The claimed solution also provides (i) the ability to set a default quantity and
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`(ii) a plurality of locations corresponding to price levels along the price axis, which
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`can be selected to specify a desired price for an order. Id., Fig. 3A, 8:28-40 (e.g.,
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`showing selecting locations corresponding to price levels along the price axis by
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`releasing a bid or offer token at a location). The invention of claim 1 provides an
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`U.S. Patent 7,533,056
`improved interface for providing information to the user and that enables a user to
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`enter orders in a more intuitive manner than the prior art.
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`The independent claim is directed to that solution by requiring an interface
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`that provides for displaying bid and offer indicators relative to a price axis, the
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`ability to set a default quantity, and a plurality of locations corresponding to price
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`levels along the price axis, which can be selected to set a desired price for an order:
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`displaying a plurality of bid indicators representing quantity
`associated with the plurality of bid orders, the plurality of bid
`indicators being displayed at locations corresponding to
`prices of the plurality of bid orders along a price axis;
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`displaying a plurality of offer indicators representing quantity
`associated with the plurality of offer orders, the plurality of
`offer indicators being displayed at locations corresponding to
`prices of the plurality [of] offer orders along the price axis;
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`receiving a user input indicating a default quantity to be used
`to determine a quantity for each of a plurality of orders to be
`placed by the user at one or more price levels;
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`receiving a user input indicating a desired price for an order to
`be placed by the user, the desired price being specified by
`selection of one of a plurality of locations corresponding to
`price levels along the price axis;
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`and sending the order for the default quantity at the desired
`price to the electronic exchange.
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`4
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`CBM2015-00179
`U.S. Patent 7,533,056
`Id., claim 1 (emphases added). Fig. 3A shows an example of this improved GUI:
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`This is not simply a graph, but instead a GUI for entering trade orders that displays
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`specific types of indicators corresponding to a price axis and provides locations
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`corresponding to the price axis that can be selected to set a price for an order. The
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`order is an electronic message sent by the claimed invention to an electronic
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`exchange. Thus, ’056 patent discloses and claims technical features of a GUI tool
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`solving a technical problem arising with prior GUI tools.
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`B. Dependent Claims 5-7
`In addition to the features of independent claim 1, dependent claims 5-7
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`provide further novel and non-obvious improvements. Specifically, dependent
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`claim 5, which depends from independent claim 1, further recites “displaying an
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`order icon at a location that corresponds to the desired price level along the price
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`axis, the order icon indicating the user’s order at the electronic exchange.”
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`5
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`U.S. Patent 7,533,056
`Claim 6, depending from claim 5, requires that the bid indicators, offer indicators
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`and the order icon are displayed with different visual characteristics such that the
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`user can easily discern them. Claim 7, depending from claim 5, requires that the
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`order icon indicates the default quantity working at the electronic exchange.
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`The structure and functionality claimed in claims 5-7 relate to displaying
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`icons representing the user’s own orders, as opposed to the bid and ask indicators
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`that may represent cumulative quantity at the exchange at particular price levels.
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`Displaying these order icons relative to the same price axis that the bid/ask
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`indicators and the price setting locations are displayed against provides a
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`significant advantage over the prior art GUI tools. For example, this additional
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`feature even further improves the usability of the GUI tool by providing a tool that
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`permits the user to more intuitively see their own orders in the context of the
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`overall market. The prior art trading screens displayed information relating to the
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`user’s orders in separate windows. The features of these dependent claims also
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`solve the technical problem of conserving screen real estate.
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`III. THE BOARD SHOULD DENY INSTITUTION BECAUSE THE ’056
`PATENT IS NOT A CBM PATENT
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`TT submits that the test for CBMR should start with whether the purported
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`purpose of the invention is an improvement to an operational method for
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`conducting business. If not, such as where the purported purpose of the invention is
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`to improve the technology used, the claims are outside the scope of CBMR.
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`6
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`U.S. Patent 7,533,056
`Here, it is undisputed that the claims are purportedly novel/non-obvious over
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`the prior art based on a combination of technological claim features relating to GUI
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`structure/functionality—not based on alleged improvements to a business
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`method/practice. This is dispositive on the CBM issue. Petitioners propose a
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`legally flawed approach—arguing that the indisputably claimed technological
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`features that distinguished the prior art are not novel or are obvious. It is legal error
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`to conduct a 102/103 inquiry in the CBM inquiry. The proper test looks at what
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`makes the claims purportedly or allegedly novel and non-obvious. If it is the steps
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`of a business method/practice, then such claims may qualify as a CBM. However,
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`if it is improvements to technology, as is the case here, such claims cannot qualify
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`as a CBM. This is why a claim to stapler, even if used in a bank, cannot qualify as
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`a CBM. The claims here—directed to a GUI tool for order entry—are no different.
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`As discussed above, the ’056 patent claims a new GUI tool that improves the
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`interaction between the user and the computer. Patents claiming new and improved
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`functions and structure of GUIs are not claiming business methods—making them
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`ineligible for covered business method review. Indeed, patents claiming
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`improvements to GUIs are also ineligible for CBMR because GUI design is a
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`technology—making the claimed GUI improvement a technological invention. The
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`’056 patent stands in stark contrast to claims directed to a business method/practice
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`and merely reciting practicing such a method on a generic “display” or “GUI.” The
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`U.S. Patent 7,533,056
`alleged point of novelty for the ’056 claims lies in the specific combination of
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`particular GUI features, not in a business method or practice.
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`A. The Statutory Definition of CBM Requires More Than a
`Recitation of Financial Activity or a Financial Purpose
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`Petitioners’ CBM arguments rest on the claims reciting financial terms and
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`the claimed GUI being used to place a trade. Pet. 4-5. TT does not dispute that the
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`claims include financial terms or that the claimed GUI tool can be used to place a
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`trade. They do and it can. Instead, TT disputes whether the claims qualify for
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`CBMR under the statutory definition simply because they recite a financial term.
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`The statute does not define a CBM patent as any patent that includes claims with a
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`financial term. Instead, the statute limits its jurisdiction to patents with claims
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`directed to certain methods for performing business operations—hence, the name
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`“covered business method.” Indeed, in addition to the technological invention
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`exception, the statute expressly includes three limitations, of which only one
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`relates to whether the claims are “financial in nature.”
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`1. The statute limits its scope to claims for a “method or corresponding
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`apparatus.” AIA Sec. 18.
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`2. The statute limits those methods or corresponding apparatuses to only
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`ones directed to “data processing or other operations.” Id.
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`3. The statute further limits the data processing or other operations to
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`only those “used in the practice, administration, or management of a
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`8
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`financial product or service.” Id.1
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`Moreover, Petitioners’ suggestion that Versata supports its contention is
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`misplaced. In Versata, the dispute focused on the scope of financial product or
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`service. Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1325 (Fed. Cir.
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`2015). While the Court held that financial product of service in the third limitation
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`should be interpreted broadly, the financial requirement is not in dispute here. Id.
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`Indeed, in Versata, the PTO admitted that not all patents “touching on a
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`‘commercial transaction[]’ or an ‘activity in today’s economy’ will constitute a
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`covered business method patent.” Ex. 2002, 37-38. In that case, the PTO stated that
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`“[i]t implies only that patents directed to the processing of data for providing a
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`financial service—[t]here, pricing—are covered business method patents, as the
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`text of the AIA plainly suggests.” Id. at 38.
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`This is consistent with the legislative history that makes clear that
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`improvements to software tools or GUIs, even if used for trading or other financial
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`activities, were intended to be outside the scope of CBMR. Ex. 1008v2, 157 Cong.
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`1 Petitioners paraphrase the CBM definition to omit the words “or other
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`operations.” Pet. 5. Reading the phrase as written—“a method. . . for performing
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`data processing or other operations used”—makes clear that CBM’s include only
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`claims to certain methods for performing business operations.
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`Rec. S5428, S5433 (daily ed. Sept. 8, 2011) (Sen. Schumer, Sen. Durbin).
`
`[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. . . . [G]enerally speaking, it is not the
`understanding of Congress that such patents would be reviewed
`and invalidated under Section 18.
`Id. at S5428 (emphases added).
`[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.
`Id. at S5433 (emphases added).
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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 protecting the novel
`electronic trading software tools and graphical user interfaces
`discussed above are not the target of section 18.
`Id. (emphasis added).
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`1.
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`Petitioners’ Argument That the Legislative History Should Be Ignored
`Is Meritless
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`Petitioners make two meritless arguments: (1) that Senator Durbin’s remarks
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`regarding Section 18’s scope should be ignored, and alternatively (2) that the
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`legislative history somehow explains that the statute’s “CBM definition covers
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`‘GUI’ claims.” Pet. 9-10. That the statute “lacks any such GUI exception,” as
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`Petitioners argue (Pet. 9), bears no relevance in the determination of whether the
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`Board should examine the legislative history (nor does it bear relevance to what TT
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`actually argues—that novel and nonobvious improvements to GUI tools used in
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`financial applications were not intended to be within the purview of Section 18
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`(see supra)). Petitioners contend that “Senator Durbin was merely expressing his
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`own opinion over the statute’s reach.” Pet. 10. But the legislative history cited by
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`TT was a dialogue of agreement between Senator Durbin and the bill’s sponsor
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`Senator Schumer, and thus is not simply one senator’s “opinion.”
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`The cited statements are completely consistent with the language of the
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`statute and are not contradicted anywhere in the legislative history, including
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`Senator Schumer’s remarks at 157 Cong. Rec. at S5432, which Petitioners cite to
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`imply that Senator Schumer explicitly listed the types of GUI claims at issue here.
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`Pet. 10. He did not. First, in those statements, Senator Schumer simply clarified
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`that the statute applies to a “business method patent regardless of the type or
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`structure of claims contained in the patent,” because “[c]lever drafting of patent
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`applications should not allow a patent holder to avoid PTO review,” and “[a]ny
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`other result would elevate form over substance.” 157 Cong. Rec. at S5432. This
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`does not contradict TT’s argument above or Senator Schumer’s agreement in the
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`legislative history, that the statutory definition of CBM requires more than a
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`recitation of financial activity or a financial use, and that certain trading GUIs (like
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`those claimed here) were discussed as falling outside the statute’s scope.
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`TT does not argue for a wholesale GUI exception to CBM review, as
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`Petitioners’ second argument suggests. Just as a generic “apparatus” claim could
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`meet the definition so could claims that merely recite a generic “GUI” or “display”
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`when that GUI or display is not the purported invention. The Congressional record
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`clarifies the distinction between claims to purportedly novel GUIs (not CBMs) and
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`using a generic GUI as a claim drafting technique (a CBM). See id. at S5409,
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`S5436-37 (Senator Schumer explaining the target as patents claiming computer
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`12
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`features that “after it becomes a practice for a while, someone files a patent and
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`says they want a patent on [it].”). The claims here are not CBMs because they
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`claim a purportedly novel GUI, not a generic GUI as a claim drafting technique to
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`tie up a business method. Indeed, the Petition’s reference to the discussion of
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`“methods for ‘selling and trading financial instruments and other securities’”
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`highlights this distinction. Sen. Schumer was simply saying claims directed to a
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`trading strategy are in, but he also agreed that claims directed to a GUI tool used
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`by traders to implement a trading strategy are out.
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`B. GUI Design Is a Technology, Not a Business Method
`There is no disputing that GUI design is a technology. The field of GUI or
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`human-computer interaction (“HCI”) design has long been recognized as
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`technological. To be clear, TT is talking about claiming specific features that
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`define how a specialized GUI functions, as opposed to generically claiming a
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`“GUI” or a “display” of particular information without any functional details.
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`The Association for Computing Machinery (“ACM”), one of the leading
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`computing organizations, recognizes the importance of this technology field.
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`“Research in human-computer interaction (HCI) has been spectacularly successful,
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`and has fundamentally changed computing.” Ex. 2003, 2. “One example is the
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`ubiquitous graphical interface used by Microsoft Windows 95, which is based on
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`the Macintosh, which is based on work at Xerox PARC, which in turn is based on
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`early research at the Stanford Research Laboratory (now SRI) and at [the]
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`Massachusetts Institute of Technology.” Id. “Even the remarkable growth of the
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`World Wide Web is a direct result of HCI research: applying hypertext technology
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`to browsers allows one to traverse a link across the world with a click of the
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`mouse. More than anything else, improvements to interfaces have triggered this
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`explosive growth.” Id.
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`Our government’s leading scientific research centers also recognize the
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`importance of user interface design. For example, NASA’s Ames Research Center
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`contains an entire Human-Computer Interaction Group. Ex. 2004. They describe
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`their research activities as follows:
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`The Ames HCI Group contributes to the development of
`measurably better NASA software through careful application
`of HCI methods. We follow an iterative process that consists of
`user research, interaction design, and usability evaluation. It is
`commonly assumed that HCI is exclusively focused on the
`interface. We are focused on the users and their goals in order
`to build the right tool which means that we are focused on
`functionality as well as interface.
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`Ex. 2005. And many colleges and universities offer courses and programs centered
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`on interface design to train the engineers and programmers who will develop the
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`next generation of interface technology. Exs. 2006-2012.
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`Petitioners do not disagree. For example, they admit that a person of
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`ordinary skill in the art would need technical experience. Pet. 13. And Petitioners’
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`declarant admits that GUIs are technology. Ex. 1032, ¶ 6.
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`C. Because the Claims Are Directed to a Combination of GUI Features
`and Functionality Rather than a Method of Doing Business, They Do
`Not Qualify for CBM Review
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`Despite Petitioners’ assertions that the claims are directed to a method of
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`doing business, the PTO allowed the claims because of the claimed combination of
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`GUI features and functionality. See supra at II. And the specification discloses that
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`the invention is an improvement to existing trading GUIs, not a method of
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`executing trading. Id. Indeed, Petitioners give no reason to reverse the prior
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`analysis conducted by the PTO during prosecution. See infra at VI. Accordingly,
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`the Board should deny institution because the patent explicitly discloses, and the
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`prosecution history confirms, that the invention is an improvement to prior art GUI
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`technology. Such patents are not directed to operational business processes and fall
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`outside the scope of CBMR. To find otherwise would be legal error.
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`D. Even If the ’056 Patent Were a CBM, Improvements to GUIs
`Necessarily Fall Within the Technological Invention Exception
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`The AIA explicitly excludes patents directed to technological inventions
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`from CBMR. AIA, § 18. The Board considers two things “[i]n determining
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`whether a patent is for a technological invention”: “whether the claimed subject
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`matter as a whole recites a technological feature that is novel and unobvious over
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`the prior art” and whether the claimed subject matter “solves a technical problem
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`using a technical solution.” 37 C.F.R. § 42.301(b)2. The claimed interaction
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`between elements of a GUI does both, so the ’056 patent is not eligible for CBMR.
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`TT also submits that this test should not subsume the merits, but should instead
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`focus on the patents disclosure and prosecution to determine whether the claims
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`are directed to a technological invention. The relevant question is whether the
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`claimed combination that is purportedly novel/non-obvious relates to technology,
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`not whether it is in fact novel/non-obvious. Indeed, subsuming the merits into the
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`jurisdictional determination would be legal error.
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`1.
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`Purported Novel and Nonobvious Improvements to GUIs N