Paper No. ____
`Filed: December 30, 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.;
`and IBFX, INC.
`
`Petitioners
`v.
`
` TRADING TECHNOLOGIES INTERNATIONAL, INC.
`
`Patent Owner
`_________________
`Case CBM2015-00181
`U.S. Patent 7,676,411
`_________________
`
`PATENT OWNER’S PRELIMINARY RESPONSE
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`

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`Table of Contents
`PRELIMINARY STATEMENT ..................................................................... 1
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`THE CLAIMED INVENTION IS A GUI IMPROVEMENT ........................ 3
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`I.
`
`II.
`
`III. THE ’411 PATENT IS NOT A CBM PATENT ............................................. 8
`
`A.
`
`The Statutory Definition of CBM Requires More Than a
`Recitation of Financial Activity or a Financial Purpose ....................... 9
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`1.
`
`2.
`
`3.
`
`The Legislative History Should Not Be Ignored ......................11
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`GUI Design Is a Technology, Not a Business Method .............13
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`The Claims Do No Qualify for CBMR because they are
`directed to a Combination of GUI Features/Functionality,
`Not a Business Method .............................................................14
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`B.
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`Even If the ’411 Patent Were a CBM, the Claimed GUI
`Improvements Fall within the Technological Invention
`Exception .............................................................................................15
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`1.
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`2.
`
`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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`Petitioners’ Arguments That the Claims Do Not Recite
`Novel and Nonobvious Technology Fail to Address the
`Technological Improvement—the Claimed
`Novel/Nonobvious GUI Elements ............................................17
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`Novel and Nonobvious Improvements to GUIs
`Necessarily Claim Technological Solutions to
`Technological Problems ............................................................18
`
`Petitioners Fail to Explain Why the Claimed GUI
`Improvement is Not a Technological Solution to a
`Technological Problem .............................................................19
`
`IV. THE PETITION SHOULD BE DENIED BECAUSE IT
`REPRESENTS A MISUSE OF THE CBMR PROCESS .............................20
`
`A.
`
`The Board Has the Discretionary Power to Deny This Petition .........21
`
`
`
`i
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`

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`B.
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`Petitioners Misuse CBMR by Purposefully Delaying Their
`Repetition of Arguments .....................................................................22
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`1.
`
`2.
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`Petitioners Present Substantially the Same CBM, § 101,
`and Prior Art Arguments as TDAmeritrade in CBM2014-
`00133 .........................................................................................23
`
`Petitioners Purposefully Delayed This Petition As Part of
`a Coordinated Litigation Strategy .............................................25
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`V.
`
`THE PETITION SHOULD BE DENIED UNDER 35 U.S.C §
`322(A)(2) BECAUSE PETITIONERS FAIL TO SHOW CQG IS
`NOT AN RPI, DESPITE ADMITTED COORDINATION .........................27
`
`VI. PETITIONERS FAIL TO SHOW MORE LIKELY THAN NOT
`THAT THE ’411 PATENT CLAIMS ARE INELIGIBLE UNDER §
`101 .................................................................................................................30
`
`A.
`
`Petitioners Improperly Dismiss a District Court Decision
`Finding the ’132/’304 Claims Eligible under 35 U.S.C. § 101 ...........31
`
`1.
`
`2.
`
`Petitioners Make Similar Errors to CQG’s when
`Applying § 101 to Conclude the ’411 Patent Claims an
`Abstract Idea .............................................................................33
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`Petitioners Make Similar Errors to CQG’s when
`Applying § 101 to Conclude the ’411 Claims Lack an
`Inventive Concept .....................................................................35
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`3.
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`Petitioners Ignore the Claim Language—Just Like CQG ........36
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`B.
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`Petitioners Fail To Show the Claims Are Directed to an
`Abstract Idea ........................................................................................39
`
`1.
`
`2.
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`The Alleged Abstract Idea Has Been Improperly Crafted
`to Ignore Structural and Functional Elements of a GUI
`Tool ...........................................................................................39
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`A User Cannot Perform the Claim with Pen and Paper or
`Mentally ....................................................................................42
`
`C.
`
`The Claims Recite an Inventive Concept, Satisfying Alice
`Prong Two ...........................................................................................43
`ii
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`

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`1.
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`2.
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`3.
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`4.
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`The Claims Recite “an Inventive Concept Necessarily
`Rooted in Computer Technology,” Similar to the
`’132/’304 Claims.......................................................................43
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`That The Claimed Invention May Be Practiced On
`Conventional Computer Hardware Does Not Preclude
`Patent Eligibility .......................................................................46
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`35 U.S.C. § 101 is Distinct From 35 U.S.C. §§ 102 and
`103 .............................................................................................47
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`Petitioners Misconstrue Key Claim Elements As
`“Insignificant Post Solution Activity” or “Data
`Gathering” .................................................................................49
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`D.
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`E.
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`Petitioners’ Arguments Fail to Consider the PTO’s Most Recent
`Examination Guidance ........................................................................51
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`Claims 26-28 Are Not Outside the Four Permissible Statutory
`Classes of Patentable Subject Matter ..................................................53
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`VII. TSE IS NOT PRIOR ART AND THE TRANSLATION OMITS A
`DISPOSITIVE TRANSLATOR’S NOTE ....................................................54
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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 ...............................................54
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`1.
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`Petitioners Lack Evidence Establishing TSE’s “Public
`Accessibility” ............................................................................54
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`2. Mr. Kawashima’s Testimony—Petitioners’ Only
`“Evidence”—is Not Only Insufficient but Also Biased
`and Uncorroborated...................................................................57
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`3.
`
`A Jury Reviewing the Same Evidence Already
`Concluded That TSE Is Not Prior Art—Petitioners
`Provide Nothing More ..............................................................59
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`B.
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`Petitioners Omit a Material Part of the TSE Translation That
`Defeats Petitioners’ Allegation that TSE Teaches the Claimed
`Movement of Indicators Relative to The Price Axis ...........................59
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`
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`iii
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`VIII. THE BOARD SHOULD DENY INSTITUTION BECAUSE THE
`PROPOSED COMBINATIONS WERE PREVIOUSLY
`CONSIDERED AND PETITIONERS FAIL TO EXPLAIN WHY
`THE PTO ERRED IN ALLOWING THE CLAIMS ....................................62
`
`A.
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`B.
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`C.
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`D.
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`Silverman, Gutterman, TSE, and Aurora (Belden) Were
`Considered and Determined by the Examiner to Not Be the
`Closest Art in the ’411 Prosecution or the Related Parent Patent .......64
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`Two Parent Reexaminations Previously Considered TSE,
`Silverman, Gutterman, and Belden .....................................................66
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`In CBM2014-00133, the Board Found the Claims Patentable
`Over Substantially the Same Combinations of Silverman,
`Gutterman, Togher, and TSE ..............................................................68
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`Petitioners’ Grounds are Based on Previously-Considered,
`Second-Tier References Over Which the Claims Were
`Repeatedly Allowed and Confirmed and Should be Denied
`Under 35 U.S.C. § 325(d) ...................................................................69
`
`E.
`
`Petitioners Should Not Be Allowed to Gap Fill a Prior Denial
`That They Could Have Joined But Did Not ........................................73
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`IX. PETITIONERS’ PRIOR ART GROUNDS FAIL FOR MULTIPLE
`INDEPENDENT REASONS, EVEN IF THE BOARD CONSIDERS
`THE MERITS ................................................................................................75
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`A.
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`B.
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`C.
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`Silverman and Gutterman Do Not Teach the Relative
`Movement Limitations ........................................................................75
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`TSE Fails to Show the Movement of Indicators Relative to a
`Price Axis ............................................................................................76
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`Belden Fails to Cure the Reasons for Patentability over TSE,
`Silverman, Gutterman, and Togher .....................................................77
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`X.
`
`THE THRESHOLD JURISDICTIONAL CBM ISSUE IMPACTS
`MANY PATENTS—WARRANTING AN EXPANDED PANEL ..............80
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`XI. CONCLUSION ..............................................................................................80
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`Case No. CBM2015-00181
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`I.
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`PRELIMINARY STATEMENT
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`Petitioners’ CBM and § 101 arguments are fundamentally flawed—the ’411
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`claims are not directed to a business method/process and practicing it using a
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`generic computer; a generic display or graphical user interface (“GUI”); or the
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`Internet. TT agrees that a claim merely directed to using a generic computer to
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`trade or display market information on a generic GUI would be a CBM and
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`possibly have § 101 issues. But that is not the case here. Petitioners ignore the
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`claim limitations and misapply the law. The ’411 claims are directed to
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`technology—a combination of specific features and functions of a GUI tool that
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`cause a computer to function in a different way. The claimed invention allows a
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`user to interface with the computer in ways that the user cannot do without it. The
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`claims do not merely recite generically displaying data using standard computing
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`equipment/functions. The claimed tool may be used for trading, but the claims are
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`not directed to trading. The ’411 patent is, therefore, far different from patents that
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`qualify as CBMs or have 101 issues (e.g., reciting a business activity, such as
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`selling music or advertising, and merely requiring the activity be practiced with
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`known computing elements). The ’411 claims, directed to particular technological
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`GUI features/functionality, are ineligible for CBM review (“CBMR”) and do not
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`remotely pose a § 101 problem. Indeed, these are the same reasons the ’304 and
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`’132 patents are neither eligible for CBMR nor unpatentable under § 101.
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`Petitioners have also not shown that the claims are more likely than not
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`unpatentable based on the asserted prior art. First, Petitioners have not shown that
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`TSE is prior art. Second, Petitioners omit a material translator’s note that defeats
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`their assertion that the TSE discloses the claimed moving of indicators relative to a
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`price axis. Third, all of the lesser prior art grounds presented here should denied
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`under § 325(d). Petitioners have not even attempted to meet their burden to show
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`the asserted grounds are more relevant than previously considered grounds or that
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`they present the previously-considered and rejected references for a “substantially
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`different purpose.” Nor have they explained why the PTO erred in its four prior
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`patentability determinations. Fourth, even if the Board considers the merits, each
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`of the asserted prior art grounds is deficient: TSE fails to teach the claimed order
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`entry region, Gutterman and Silverman fail to teach the claimed relative movement
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`of the indicators to different locations with respect to the price axis, and Belden
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`fails to teach the claimed “single action.” The Board should deny all prior art
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`grounds because the claimed combination is not obvious and the Petition fails to
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`provide any reasons the prior examinations were wrong.
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`The Board should also deny the Petition because Petitioners use it as a
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`litigation tactic rather than an alternative. The Joint Defense Group (“JDG”)
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`coordinated filings to cause delay, avoid estoppel, and get multiple chances to
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`respond to TT’s arguments. Moreover, because the CBM scope is (i) a threshold
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`Case No. CBM2015-00181
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`issue on the Board’s underlying authority and (ii) a novel dispute pervading
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`multiple proceedings, TT suggests that an expanded panel for the CBM issue.
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`II. THE CLAIMED INVENTION IS A GUI IMPROVEMENT
`The ’411 patent claims specific features/functionality of a GUI tool used for
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`electronic order entry. See Ex. 1001, 1:22-24. The Federal Circuit described a
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`problem with the prior art when discussing the patent’s parent patent:
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`[T]he prior art . . . displays had grids for the inside market that
`never changed. As the market fluctuated, however, the prices
`listed in those grids changed—often times very rapidly. To buy
`at the inside market, a trader, for example, placed the mouse
`cursor on the grids for the inside market and clicked the mouse.
`Of course, as traders sent bids and offers to the market, the
`price and quantity of the traded commodity changed. These
`changes altered the inside market. In the prior art era with fixed
`grids for the inside market, traders had a problem. A trader who
`wished to place an order at a particular price would miss that
`market opportunity if the inside market moved as the trader
`tried to enter an order. In a fast moving market, missing an
`intended price could happen often and have very significant
`economic consequences.
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`Trading Techs. Int’l, Inc. v. eSpeed, Inc., 595 F.3d 1340, 1345-46 (Fed. Cir. 2010).
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`The claimed combination of, inter alia, displaying bid/ask display regions
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`with graphical locations corresponding to price levels along a price axis,
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`Case No. CBM2015-00181
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`dynamically displaying indicators in graphical locations of the bid/ask display
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`regions, moving the indicators relative to the price axis to new graphical locations,
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`and an order entry region with areas corresponding to levels of the price axis that
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`can be selected via a single action of a user input device to both set a price for and
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`send the trade order (i.e., an electronic message) having a default quantity to the
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`electronic exchange, provides the advantages over prior order entry screens.12 See
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`Ex. 1001, 3:3-37. This claimed functionality differs from conventional order entry
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`screens and addresses a specific accuracy problem created by prior order entry
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`screens without sacrificing speed.
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`Figs. 3 and 4 of the ’411 patent (annotated below) show an embodiment at a
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`time just before (T1) and after (T2) receipt of an update from the electronic
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`exchange reflecting a change in the inside market (the best bid and best ask price).
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`1 The elements of displaying bid/ask display regions, dynamically displaying
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`indicators and moving the indicators relative to the price axis are collectively
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`referred to herein as the Relative Movement Limitations for shorthand.
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`2 The elements of selected via a single action to set and send a trade order are
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`referred to as “single action order entry” for shorthand
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`Case No. CBM2015-00181
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`Claim 1
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`Fig. 3 (T1)
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`Fig. 4 (T2)
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`Accordingly, the claimed GUI tool addresses problems with speed, accuracy, and
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`usability—all classic engineering problems.
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`While undisputed, the claimed invention clearly improves prior trading
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`screens. For example, the patent discloses that improvement increases the
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`likelihood that an order will be placed at the intended price. Ex. 1001, 3:6-7, 65-67.
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`The Federal Circuit also recognized that the invention provides the advantage over
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`the prior art that “a trader can visually follow the market movement as the inside
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`market shifts up and down along the price column.” Trading Techs., 595 F.3d at
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`1347. The patent also discloses this advantage. Ex. 1001, 7:15-53; 9:4-14. The
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`Federal Circuit also summarized several advantages of the claimed invention over
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`prior GUI tools in a decision involving the ’411 patent in which all of the
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`Petitioners were Appellees. Trading Techs. Int’l, Inc. v. Open E Cry, LLC et al.,
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`728 F.3d 1309, 1313-14 (Fed. Cir. 2013).
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`This claimed combination was the reason for the PTO’s repeated
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`confirmation of the claims in this and related patents (in quality-reviewed original
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`examination and subsequent reexaminations). The claims of the ‘132/’304 and
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`’411 patents can be grouped for the purposes of the issues in this Petition. Indeed,
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`the distinguishing features previously relied upon by the PTAB to deny the prior
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`art grounds were similar. Compare CBM2014-00135, Paper 19, ’132 Inst. Dec.,
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`17 with CBM2014-00133, Paper 19, ’411 Inst. Dec, 17.
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`Case No. CBM2015-00181
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`When the PTO examined/reexamined the ’132/’304 claims, it used the
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`BRC of “static”: price levels do not normally move unless a re-centering command
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`is received. See Ex. 2069, 8; Ex. 2070. A GUI with a price axis in which the best
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`bid and ask indicators move relative to the price axis based on market changes (as
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`claimed in the ’411) meets the BRC of static. In other words, when the Office
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`examined the ’132/’304 claims to assess whether the combination of a “static”
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`price axis, dynamic indicators and single action order entry was novel and
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`nonobvious, it looked at the same issue presented by the ’411 claims. The main
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`reason TT pursued the ’411 patent claims was because “static” in the ‘132/’304
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`patents was construed more narrowly in litigation as “price levels do not move
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`unless a manual re-positioning command is received.” Trading Techs., 728 F.3d at
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`1315 (emphasis added). The Examiner viewed the ’411 claims with the Relative
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`Movement Limitations to be of commensurate scope with static under BRI (not
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`“static” as construed in litigation). Ex. 1002, pp. 86-87 (10/06/08 Office Action)
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`(making double patenting rejection stating the ’411 claims (that do not use the
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`word “static,” but instead recite “relative movement” of the best bid/ask indicators
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`relative to a price axis) were, in the Examiner’s eyes, “commensurate in scope”
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`with the claims of the ’132 (which recite “static”)); See Ex. 2069-70 (interview
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`summaries in related continuations with same examiner, making clear that he
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`viewed BRC of “static” to be broader than how construed in litigation). Ultimately,
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`Case No. CBM2015-00181
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`the PTO allowed the ’411 over the same art considered in the ’132/’304 patents,
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`both originally and on reexamination. See, Ex. 1001, pp. 1-6.
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`III. THE ’411 PATENT IS NOT A CBM PATENT
`The CBMR test should start with whether the purpose of the claimed
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`invention is an improvement to an operational method for conducting business. If
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`not—e.g., where the purpose of the claimed invention is to improve the technology
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`used—the claims are ineligible for CBMR.
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`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 improvements to a business method/process
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`or on merely implementing such a business method/process on computers. Indeed,
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`the claims are not even directed to a business method or process. This is
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`dispositive. Petitioners propose a legally flawed approach—arguing that the
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`indisputably claimed technological features that distinguished the prior art are
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`obvious. It is legal error to conduct a 102/103 inquiry in the CBM inquiry. The
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`proper test looks at what makes the claims purportedly novel and non-obvious. If it
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`is the steps of a business method/process, then such claims may qualify as a CBM.
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`However, if it is improvements to technology, as is the case here, it 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 ’411 patent claims a new GUI tool that improves the
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`functioning of a computer rather than a purportedly new business method. The
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`’411 patent is, therefore, ineligible for covered business method review.
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`Moreover, the ’411 patent is ineligible for CBMR because the claimed GUI
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`features are technology—making the claimed GUI improvement a technological
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`invention. The ’411 patent stands in stark contrast to claims directed to a business
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`method/process and merely implementing such on a generic “display” or “GUI.”
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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’ conclusory CBM paragraph rests on the claimed GUI being used
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`to trade and the Board’s prior finding that the claims recite financial terms. Pet. 4.
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`TT does not dispute that the claims include financial terms or that the claimed GUI
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`tool can be used to trade. But, this is not determinative. The statute does not define
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`a CBM patent as any patent including claims with a financial term. Instead, the
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`statute limits its jurisdiction to patents with claims directed to certain methods for
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`performing business operations—hence, the name “covered business method.”
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`Indeed, in addition to the technological invention exception, the statute includes
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`three express limitations, with only one relating to being “financial in nature:” The
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`statute (1) limits its scope to claims for a “method or corresponding apparatus,” (2)
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`limits those methods or corresponding apparatuses to only ones directed to “data
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`processing or other operations,” and (3) limits the data processing or other
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`Case No. CBM2015-00181
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`operations to only those “used in the practice, administration, or management of a
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`financial product or service.” AIA, § 18.3
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`Moreover, Petitioners’ reliance on Versata is misplaced. In Versata, the
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`Court held that financial product or service in the third limitation should be
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`interpreted broadly. Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1325
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`(Fed. Cir. 2015). However, the financial requirement is not in dispute here. Indeed,
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`the PTO admitted that not all patents “touching on a ‘commercial transaction[]’ or
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`an ‘activity in today’s economy’ will constitute a covered business method patent.”
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`Ex. 2006, 37-38. The PTO stated that “[i]t implies only that patents directed to the
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`processing of data for providing a financial service—[t]here, pricing—are covered
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`business method patents, as the text of the AIA plainly suggests.” Id., 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 to implement a trading
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`strategy or other financial activity, are outside the scope of CBMR. 157 Cong. Rec.
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`S5428, S5433 (daily ed. Sept. 8, 2011) (Sens. Schumer, Durbin).
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`3 Petitioners paraphrase the CBM definition to omit the words “or other
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`operations.” Pet. 3. 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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`that possess patents
`[Mr. DURBIN]…[S]ome companies
`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. .
`.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., S5428 (emphasis added); see also id., S5433.
`The Legislative History Should Not Be Ignored
`1.
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`Petitioners make two meritless arguments: (1) Senator Durbin’s remarks
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`regarding Section 18’s scope should be ignored, and alternatively (2) 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 explicitly “lacks any such GUI
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`exception,” as Petitioners argue (Pet. 9), is not relevant to whether the Board
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`should examine the legislative history (nor is it relevant to what TT actually
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`argues—that novel/nonobvious improvements to GUI tools used in financial
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`applications were not intended to be within the purview of Section 18 (see supra)).
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`Petitioners argue “Senator [Durbin] was merely expressing his own opinion over
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`the statute’s reach.” Pet. 9. But the legislative history TT cited includes a dialogue
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`of agreement between Senator Durbin and the bill’s sponsor Senator Schumer, and
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`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. Petitioners mis-
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`cite Senator Schumer’s remarks at 157 Cong. Rec. at S5432 as explicitly listing the
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`type of GUI claims at issue here. Pet. 9-10. First, in those statements, Senator
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`Schumer simply clarified that the statute applies to a “business method patent
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`regardless of the type or structure of claims contained in the patent,” because
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`“[c]lever drafting of patent applications should not allow a patent holder to avoid
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`PTO review,” and “[a]ny other result would elevate form over substance.” 157
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`Cong. Rec. at S5432. This does not contradict TT’s argument above or Senator
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`Schumer’s agreement in the legislative history, that the statutory definition of
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`CBM requires more than a recitation of financial activity or a financial use, and
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`that certain trading GUIs (like those claimed here) are 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
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`“display” when that GUI or display is not the purported invention. The
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`Congressional record clarifies the distinction between claims to purportedly novel
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`GUIs (not CBMs) and using a generic GUI as a claim drafting technique (a CBM).
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`See id., S5409, S5436-37. The claims here are not CBMs because they claim a
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`purportedly novel GUI, not a generic GUI as a claim drafting technique to tie up a
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`business method. Indeed, the Petition’s reference to the discussion of “methods for
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`‘selling and trading financial instruments and other securities’” highlights this
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`distinction. Pet. 9-10. Sen. Schumer was simply saying claims directed trading
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`strategies are in, but he also agreed that claims directed to GUI tools used by
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`traders to implement such trading strategies are out.
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`2. 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 claims specific features that define how a
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`specialized GUI functions, as opposed to generically claiming a “GUI” or a
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`“display” of information without any functional details.
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`The Association for Computing Machinery, a leading computing
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`organization, recognizes the importance of this technology field. “Research in
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`human-computer interaction (HCI) has been spectacularly successful, and has
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`fundamentally changed computing.” Ex. 2007, 2. “Even the remarkable growth of
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`the World Wide Web is a direct result of HCI research: applying hypertext
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`technology to browsers allows one to traverse a link across the world with a click
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`of the mouse. More than anything else, improvements to interfaces have triggered
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`Case No. CBM2015-00181
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`this 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 HCI Group. Ex. 2008. They describe their mission as:
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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. 2009. And many colleges and universities offer courses and programs centered
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`on interface design to train engineers and programmers. Exs. 2010-2016.
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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. 1023, ¶ 7; Ex. 1019, ¶ 8.
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`3.
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`The Claims Do No Qualify for CBMR because they are directed to a
`Combination of GUI Features/Functionality, Not a Business Method
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`The specification discloses that the invention is an improvement to existing
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`trading GUIs, not a method of trading. Supra, II. Despite Petitioners’ assertions
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`that the claims are directed to a business method, the PTO allowed the claims over
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`prior trading screens, such as TSE. Ex. 1002, 141. Indeed, Petitioners give no
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`reason to reverse the prior analysis conducted by the PTO, which includes a review
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`of this application’s parents’ prosecution histories and reexaminations. Id.
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`Accordingly, the Board should deny institution because the invention improves
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`prior art GUI technology. See Ex. 2040, 6 (allowing claims in the ’132 patent
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`based on the combination of a “‘dynamic display’ of a plurality of the quantity of
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`bids and asks aligned with a ‘static display’ of corresponding prices . . . aligned
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`with a ‘static display of corresponding prices” and where “a trader places a trade
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`order with the pointer in the area of the order entry region of the dynamic market
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`depth region, through a single computer implemented action.”); Ex. 2041. Such
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`patents are not directed to operational business processes and lack CBM
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`jurisdiction—to find otherwise would be legal error.
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`B.
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`Even If the ’411 Patent Were a CBM, the Claimed GUI Improvements
`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. § 18. The Board considers two things “[i]n determining whether a
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`patent is for a technological invention”: “whether the claimed subject matter as a
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`whole recites a technological feature that is novel and unobvious over the prior art”
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`and whether the claimed subject matter “solves a technical problem using a
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`technical solution.” 37 C.F.R. § 42.301(b).4 The claimed interaction between
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`4 The definition requires consideration of both prongs.
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`Case No. CBM2015-00181
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`elements of a GUI does both, rendering ’411 patent ineligible for CBMR. This test
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`cannot subsume the merits because that would be legal error. Instead, the test
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`should focus on whether the claimed combination that is purportedly novel/non-
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`obvious relates to technology, not whether it is in fact novel/non-obvious.
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`1.
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`Purported Novel and Nonobvious Improvements to GUIs Necessarily
`Claim Novel and Nonobvious Technology
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`The first part of the technological invention test—whether the claimed
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`subject matter as a whole recites a technological feature that is novel and
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`unobvious over the prior art—should not focus on the ultimate issue of novelty or
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`non-obviousness. See Versata, 793 F.3d at 1326 (“At this early stage of the
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`process, when the PTO is first determining whether the patent at issue is even a
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`CBM, there would seem to be little cause to determine what will be one of the
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`ultimate questions if review is granted—did the PTO err in the first instance when
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`it originally determined that the invention was novel and nonobvious?”).
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`Accordingly, because GUIs are technology, a patent that describes its invention as
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`an improvement to prior GUIs and which was allowed based on a combination of
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`GUI features satisfies this part of the test. C.f. SightSound Techs. v, Apple, Inc.,
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`Nos. 2015–1159, 2015–1160, 2015 WL 8770164 at *5