Paper No. ______
` Filed: July 21, 2016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`IBG LLC and INTERACTIVE BROKERS LLC,
`
`Petitioners
`v.
`
`TRADING TECHNOLOGIES INTERNATIONAL, INC.
`
`Patent Owner
`_________________
`Case CBM2016-00009
`U.S. Patent 7,685,055
`_________________
`
`PATENT OWNER’S RESPONSE
`
`
`
`
`
`
`
`

`
`Case CBM2016-00009
`U.S. Patent No. 7,685,055
`
`
`
`
`I.
`
`II.
`
`Table of Contents
`
`THE CLAIMED INVENTION ....................................................................... 1
`
`THE ’055 PATENT CLAIMS ARE ELIGIBLE UNDER 35 U.S.C.
`§ 101 ..............................................................................................................11
`
`A.
`
`The Claims Are Not Directed to an “Abstract Idea” Under Alice
`Prong 1.................................................................................................13
`
`1.
`
`2.
`
`3.
`
`4.
`
`Petitioners Incorrectly Ignore and Overgeneralize the
`Claim Elements in Arguing the Claims Are Directed to
`an Abstract Idea ........................................................................13
`
`TT’s Claims Are Eligible Under Prong 1 of Alice
`Because They Improve the Functioning of the Computer ........14
`
`TT’s Claims Are Eligible Under Prong 1 of Alice
`Because the Claimed Invention Is Rooted in Technology........15
`
`TT’s Claims Are Eligible under Prong 1 of Alice Because
`They Are Not Directed to a Fundamental Economic or
`Longstanding Commercial Practice, a Business Method,
`or a Generic GUI .......................................................................17
`
`B.
`
`The Claims Are Eligible Under Prong 2 of Alice Because They
`Recite an Inventive Concept ...............................................................19
`
`1.
`
`TT’s Claims Are Even More Technological Than Those
`in DDR Holdings and Would Exceed a Technological
`Arts Test ....................................................................................22
`
`2.
`
`The Claimed Invention Is New Technology .............................24
`
`III. TT’S CLAIMS DO NOT COVER SIGNALS ..............................................25
`
`IV. THE ’055 PATENT IS NOT A CBM PATENT ...........................................26
`
`A.
`
`The ’055 Patent Does Not Claim “Data Processing” or “Other
`Operations” (e.g., a Business Method) ................................................26
`
`
`
`i
`
`

`
`Case CBM2016-00009
`U.S. Patent No. 7,685,055
`TT’s Claims Are Directed to a GUI Tool, Not “Data
`Processing” ................................................................................26
`
`The Statutory Definition of CBM Requires More Than a
`Recitation of Financial Activity or Purpose .............................27
`
`1.
`
`2.
`
`B.
`
`The ’055 Patent Also Falls Under the Technological Exception ........28
`
`1.
`
`2.
`
`3.
`
`4.
`
`Technical Feature that Is Novel and Unobvious .......................29
`
`TT’s Claims Solve a Technical Problem with a Technical
`Solution .....................................................................................29
`
`TT’s Claims Do Not Merely Solve a Business Problem ..........30
`
`Use of Known Technologies Does Not Render the
`Claims Non-Technical ..............................................................31
`
`V.
`
`CLAIM CONSTRUCTION ..........................................................................32
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`“Adjusting the First Plurality [of] Price Levels...” ............................32
`
`“Receiving the Repositioning Command to Reposition the
`Static Price Axis When a Designated Price Is Within a
`Designated Number of Price Levels from the Lowest Value or
`the Highest Value Along the Static Price Axis” .................................37
`
`“Static Price Axis”...............................................................................40
`
`“Receiving a Manual Command from a User Input Device to
`Reposition the Static Price [Axis]” .....................................................41
`
`“Order Entry Region” and “In Response to a Selection of a
`Particular Location in the Order Entry Region by a Single
`Action of a User Input Device, Setting a Plurality of Parameters
`for a Trade Order Relating to the Commodity and Sending the
`Trade Order to the Electronic Exchange” ...........................................42
`
`VI. THE PETITION FAILS TO ESTABLISH TSE IS PRIOR ART .................43
`
`A.
`
`The Evidence Fails to Prove TSE Was Publicly Accessible ..............45
`
`1.
`
`TSE Was Not Distributed to POSAs ........................................46
`
`
`
`ii
`
`

`
`Case CBM2016-00009
`U.S. Patent No. 7,685,055
`There Is No Evidence TSE Was Available to the POSA
`Exercising Reasonable Diligence .............................................47
`
`2.
`
`B. Kawashima’s Testimony Is Uncorroborated and Biased, and
`Therefore Legally Insufficient ............................................................48
`
`1.
`
`2.
`
`Kawashima’s Testimony Is Uncorroborated ............................48
`
`Kawashima Is Not a Disinterested Witness ..............................49
`
`VII. TSE FAILS TO RENDER OBVIOUS CLAIMS 1 and 17 ...........................51
`
`A.
`
`Petitioners’ Obviousness Arguments Fail for Multiple
`Independent Reasons ...........................................................................52
`
`1.
`
`2.
`
`3.
`
`4.
`
`TSE Does Not Teach or Suggest the Claimed “Adjusting
`the First Plurality [of] Price Levels...” .....................................53
`
`TSE Fails to Teach or Disclose “Adjusting the First
`Plurality [of] Price Levels... to an Adjusted Plurality of
`Price Levels Including the First Plurality of Price Levels” ......60
`
`TSE Fails to Render Obvious “Wherein a Number of the
`Plurality of Locations [in the Bid and Ask Display
`Region] Changes According to Adjusting the First
`Plurality of Price Levels” ..........................................................65
`
`TSE Fails to Render Obvious “Receiving the Reposition
`Command to Reposition the Static Price Axis When a
`Designated Price Is Within a Designated Number of
`Price Levels from the Lowest Value or the Highest Value
`Along the Static Price Axis” .....................................................68
`
`5.
`
`TSE Does Not Reposition a Current Inside Market Price
`at a New Desired Location ........................................................71
`
`B.
`
`TSE Teaches Away from the Claimed Invention ...............................73
`
`VIII. TSE FAILS TO RENDER OBVIOUS THE DEPENDENT CLAIMS ........77
`
`A.
`
`TSE Does Not Render Obvious the “Manual Command… to
`Reposition the Static Price [Axis]” .....................................................77
`
`
`
`iii
`
`

`
`Case CBM2016-00009
`U.S. Patent No. 7,685,055
`TSE Does Not Render Obvious the Repositioning of Claims 7-
`12 .........................................................................................................79
`
`B.
`
`C.
`
`TSE Does Not Render Obvious Claims 13 and 18 .............................83
`
`IX. TSE AND BELDEN DO NOT RENDER OBVIOUS CLAIM 16 ...............84
`
`X.
`
`TSE AND GUTTERMAN DO NOT RENDER OBVIOUS CLAIMS
`2 AND 5 .........................................................................................................85
`
`XI. CONCLUSION ..............................................................................................89
`
`
`
`
`
`iv
`
`

`
`Case CBM201 6—00009
`
`U.S. Patent No. 7,685,055
`
`I.
`
`THE CLAIMED INVENTION
`
`U.S. Patent No. 7,685,055 (“the ’055 patent”) includes two independent
`
`claims—claims 1 and 17. Each of these claims requires a specific combination of
`
`GUI functionality. For example, the structural and ftmctional features of claim 1
`
`are depicted in the chart below (using illustrative screenshots of Patent Owner
`
`Trading Technologies’ (“TT”) MD Trader product—a commercial embodiment of
`
`the claimed invention):
`
`Claim Elements
`
`Graphical User Interface Elements
`
`[P] A method for
`
`repositioning a static
`
`price axis on a
`
`graphical user interface
`
`for displaying market
`
`information of a
`
`commodity being
`
`traded at an electronic
`exchange, the method
`comprising:
`
`Static
`
`Price axis
`grglhfilcal
`_ user
`interface
`
`

`
`Case CBM201 6—00009
`
`U.S. Patent No. 7,685,055
`
`First plurality of price levels along a static
`price axis ranging from a lowest value to
`a highest value
`
`Current
`lowest ask
`
`Price
`
`-
`.
`
`Current
`
`highest bid
`price
`
`123350
`123325
`mm
`123275
`
`123250
`
`123225
`123200
`1231714
`
`"' ’ ‘2°‘5°
`511
`123125
`1371 123100
`4118 123075
`1529 123050
`
`1169 123025
`875 123000
`122975
`122950
`
`122926
`
`122900
`
`[1] receiving market
`
`infomiation relating to
`
`a commodity from an
`
`electronic exchange via
`
`a computing device,
`_
`_
`the market information
`-
`-
`-
`-
`compnsmg an msrde
`
`market with a current
`_
`_
`_
`hlghest bld pnce and a
`
`current lowest ask
`
`price for the
`-
`commodi
`
`'
`ty’
`
`[2] displaying a first
`_
`_
`plurality of price levels
`
`along a static price axis
`
`on a graphical user
`
`interface of a display
`
`device associated with
`
`the computing device,
`
`where the first plurality
`
`of price levels range
`
`from a lowest value to
`
`a highest value along
`
`the static price axis;
`
`

`
`[3] in response to an
`
`Case CBM20 1 6—00009
`
`Ilwuw- OISE!“
`nu-.
`- »-mun
`54
`HI:
`
`I-1|:
`
`Wed
`
`U.S. Patent No. 7,685,055
`-nu-1:1:
`0191016
`LIO
`lfl L\§!.'.'L vnoooo g.
`
`
`
`LYO ea: Once Aux
`
`
`the computing device,
`
`
`
`P1“T31itY
`
`
`plurality
`'
`l d
`miirstes
`
`
`-
`
`-
`
`Staflc Prlce
`
`axis at T2
`
`Input device
`used to
`
`adjust Price
`levels (6-g-,
`
`from 19 (at
`T1) to 25 (at
`'12));
`
`nlenlav with 75 Print: I oval:
`
`
`.
`
`
`
`Display with 19 Price Levels
`
`_
`_
`Static price
`
`input command
`
`received via an input
`
`device associated with
`
`adjusting the first
`_
`_
`plurality [of] price
`
`levels among a range
`f
`.
`1
`1
`t
`o price eve s o an
`adjusted plurality of
`_
`1
`1
`_
`1 d_
`u
`S
`the first plurality of
`price levels;
`
`

`
`Case CBM20 1 6—00009
`
`U.S. Patent No. 7,685,055
`
`Static price axis
`
`
`
`along the static
`price axis
`
`123200
`
`
`
`Bid display
`123025
`region
`123000
`comprising
`122975
`a plurality
`12295“
`L
`1
`
`of locations
`122925
`owest Va ue
`
`122900
`along the static
`price axis
`
`
`comprising a
`1
`1.
`f
`ura 1
`0
`_ty
`P
`locations
`
`12315::
`123125
`123100
`
`123075
`
`123050
`
`
`
`The number of the plurality of
`locations of the bid and ask
`
`T1 and T2 figures above
`
`display regions changes
`according to adjusting the
`static price axis as seen in the
`
`
`
`123275
`
`123250
`
`123225
`
`123175
`
`-
`Ask display
`region
`.
`.
`
`[4] displaying a bid
`
`and ask display region
`
`on the graphical user
`
`interface, the bid and
`
`ask display region
`
`comprising a plurality
`
`of locations
`
`corresponding to the
`
`first plurality of price
`
`levels displayed along
`
`the static price axis,
`
`wherein each location
`
`corresponds to one of
`
`the first plurality of
`
`price levels, and
`
`wherein a number of
`
`the plurality of
`
`locations changes
`
`according to adjusting
`
`the first plurality of
`
`price levels;
`
`

`
`Case CBM201 6—00009
`
`U.S. Patent No. 7,685,055
`
`Static price axis
`
`
`
`First
`
`
`
`
`
`
`
`
`md1°3t9I
`representing
`a quantity
`aS5_°°1ated
`with the
`current
`
`
`
`
`
`FIGS. 3 and
`
`4 of the
`
`’055 patent
`show
`
`ascending
`and
`
`descending
`
`hlghest bld
`price
`
`
`
`
`
`
`[5] displaying a first
`
`indicator representing a
`
`quantity associated
`
`with the current highest
`
`bid price at a first
`
`location in the plurality
`
`of locations of the bid
`
`and ask display region,
`_
`wherein the first
`indicator ascends or
`_
`descends the static
`
`price axis as changes in
`_
`_
`the current highest bid
`
`price occur as a result
`
`of each of the plurality
`
`of price levels along
`
`the static price axis not
`
`changing positions on
`
`the graphical user
`
`interface unless a
`
`reposition command is
`
`received;
`
`

`
`Case CBM201 6—00009
`
`U.S. Patent No. 7,685,055
`
`_
`_
`_
`Static pnce axis
`
`
`
`Second indicator
`
`the ’055 patent
`show ascending
`and descending
`
`
`
`[6] displaying a second
`_
`_
`_
`1nd1cator representing a
`
`quantity associated
`
`with the current lowest
`
`ask price at a second
`
`location in the plurality
`
`of locations of the bid
`
`and ask display region,
`h
`'
`th
`d
`W “em 6 Sewn
`indicator ascends or
`
`descends the static
`
`price axis as changes in
`
`the current lowest ask
`
`price occur as a result
`
`of each of the plurality
`
`the static price axis not
`
`changing positions on
`
`the graphical user
`
`interface unless the
`
`reposition command is
`
`received;
`
`
`
`represenllng 3
`qllanmy -
`
`associated with
`
`the °“Uent_
`
`
`lowest ask pnce
`
`FIGS. 3 and 4 of
`
`
`
`
` of price levels along
`
`

`
`Case CBM20 1 6—00009
`
`U.S. Patent No. 7,685,055
`
`[TO
`
`[7] receiving the
`
`reposition command to
`
`reposition the static
`
`price axis when a
`
`designated price is
`
`within a designated
`
`number of price levels
`
`from the lowest value
`
`or the highest value
`
`along the static price
`
`axis; and
`
`+350
`Work
`
`
`
`
`
`
`
`reposition
`command when
`
` Receiving
`
`
`
`OIIHSI
`6-I‘7lHl M
`V$2IIO
`L 1599.25
`Asks
`Prim
`Bids
`
`2003.75 1245
`designated price
`2003.50 066
`(e.g., LTP) within
`2003.25 228
`3 2003 00
`designated number
`5 ‘ 2002.75
`7 -‘ 2002.50
`of price levels
`
`200226
`(e.g.. 3 levels)
`
`.f'« 2002 00
`‘O ‘ 2001.75
`from highest value
`
`9 2001.50
`(e_g_, 2003.75)
`2001.25
`2001 00
`2000.75
`20CX).50
`20(X).25
`20(I).00
`1399 75
`1999.50
`1999.25
`
`FIG. 16B of the
`
`’055 patent shows
`user setting
`predetermined price
`levels
`
`

`
`[8] responsive to
`
`receiving the reposition
`
`*’
`
`'
`
`-3
`
`v
`
`7‘? 0
`
`Case CBM201 6—00009
`
`U.S. Patent No. 7,685,055
`
`J.‘ .1
`
`2065 75
`moo
`2005 51]
`
`wowN05 00
`2004.75
`
`command,
`
`automatically
`
`repositioning the static
`
`price axis on the
`
`graphical user interface
`
`such that a current
`
`inside market price is
`
`displayed at a new
`
`desired location.
`
`Repositioning the
`static price axis
`from T1 to T2
`
`price at T1
`
`market price
`at new
`
`desired
`
`location at
`
`T2
`
`During prosecution, at least two features of the claimed combination, the
`
`“adjusting” and “repositioning” features, made the distinction over prior GUIs
`
`(including TSE (Ex. 1007)) clear. The “adjusting” feature in claim 11 is recited in
`
`elements [3] and [4] above. The “repositioning” feature2 is recited in elements [7]
`
`and [8] above. After Applicant amended the claims to recite these specific features,
`
`the Examiner allowed the claims, concluding that neither of these features was
`
`1 Claim 17 includes a similar feature. Ex.100l, 36:14-25.
`
`2 Claim 17 includes a similar feature. Ex.1001, 36:45-52.
`
`

`
`Case CBM2016-00009
`U.S. Patent No. 7,685,055
`disclosed by TSE and that the combination of elements set forth in the claims was
`
`not obvious in light of the considered art. See Ex.1002, 463-73, 483, 486.
`
`This claimed combination of GUI features and functionality improves prior
`
`GUIs by solving problems created for some users from using a static price axis and
`
`dynamic indicators that ascend/descend the static price axis as changes in the
`
`market data they represent occur (“dynamic indicators”) (see, e.g., elements 5 and
`
`6 in table above) in the prior GUIs.3 Speed, efficiency, and usability problems were
`
`created for some users because, if the indicators were located off, or close to off,
`
`the displayed static price axis, the user would have to spend time taking an action
`
`such as scrolling or manually repositioning to find the state of the market, and the
`
`GUI tool did not convey the state of the market precisely or efficiently for these
`
`users. Ex.1001, 9:21-26; 26:33-37. The claimed invention addressed this problem
`
`for some users by automatically keeping the market indicators from moving off the
`
`screen while still providing many of the benefits of a GUI with a static price axis
`
`
`3 The ’055 patent is a continuation-in-part patent and improves upon the
`
`inventions embodied in the ’132, ’304, and ’411 patents (collectively “the ’132-
`
`family patents”). Ex.1001, 1:6-24. The ’132-family patents provided bid/ask
`
`indicators that move relative to a price axis in response to market changes. See,
`
`e.g., Ex.1001, 9:12-16.
`
`
`
`9
`
`

`
`Case CBM2016-00009
`U.S. Patent No. 7,685,055
`(e.g., providing better market visualization and improved accuracy as compared
`
`with Figure 2-style screens). An example scenario where a user may prefer the
`
`claimed invention as an improvement to the inventions of the ’132-family patents
`
`is one where a user has multiple static trading GUIs displayed for multiple tradable
`
`products. Ex.2169, ¶¶60-61, 111. While such a user may want complete control
`
`over the GUI in which he/she is actively trading, he/she may prefer the claimed
`
`invention of the ’055 patent with respect to other tradable objects that he/she may
`
`be trading less frequently or observing. The claimed invention saves the time and
`
`effort of having to manually reposition such other trading GUIs if the market
`
`moves out of view. Ex.2169, ¶111.
`
`The claimed solution lies in the combination of, inter alia, the “adjusting”
`
`and “repositioning” features with the static price axis and dynamic indicators. As
`
`discussed above, this combination of features overcame the TSE that allegedly
`
`disclosed a different type of repositioning based on a “center price” moving a very
`
`limited number of levels away from the center of a fixed-size price column
`
`(allegedly in TSE’s uncompressed Board mode), and which did not disclose or
`
`suggest either the claimed “adjusting” or “repositioning” features individually, let
`
`alone the combination of all of the claim elements. Infra Section VII. Moreover,
`
`the alleged functionality of TSE’s uncompressed Board mode does not provide the
`
`benefits of a static price axis that the claimed invention of the ’055 patent builds
`
`
`
`10
`
`

`
`Case CBM2016-00009
`U.S. Patent No. 7,685,055
`upon. For example, the very limited alleged movement based on a short distance
`
`from the center does not provide the visualization or improved accuracy benefits of
`
`a trading GUI with a static price axis.
`
`The combination of the “adjusting” and “repositioning” features allows the
`
`price level at which the claimed repositioning will occur to be changed when the
`
`static price axis and bid/ask display regions are adjusted while still providing
`
`benefits of the ’132-family patents. This changing of the price level for the
`
`automatic repositioning is a direct and necessary result of the claimed elements.
`
`The claimed combination addresses the speed, efficiency, and usability problems
`
`discussed above. The Federal Circuit recognized that that ’055 patent disclosed this
`
`solution. See Trading Techs. Int’l, Inc. v. Open E Cry, LLC, 728 F.3d 1309, 1316
`
`(Fed. Cir. 2013) (recognizing that the specification specifically sets forth that “[a]
`
`trader may use automatic positioning to always have a visual reference of where
`
`the market is trading” (citation omitted)).
`
`II. THE ’055 PATENT CLAIMS ARE ELIGIBLE UNDER 35 U.S.C. § 101
`TT’s claims are not directed to an “abstract idea” under Alice prong 1 but are
`
`instead directed to the structure, make-up, and functionality of a specialized,
`
`improved GUI tool with features that can be touched, viewed, and interacted with
`
`like a physical device. Specifically, the claimed GUI tool improves and builds
`
`upon trading GUI tools like those disclosed in the ’132-family patents. Because the
`
`
`
`11
`
`

`
`Case CBM2016-00009
`U.S. Patent No. 7,685,055
`claims require a specific structure and make-up, the claimed GUI tool is more
`
`patent eligible than the claimed invention in Enfish, where the Federal Circuit
`
`found eligible claims directed to improvements in non-tangible technology, i.e.,
`
`data processing. Enfish, LLC v. Microsoft Corp., No. 2015-1244, 2016 WL
`
`2756255, at *8 (Fed. Cir. May 12, 2016). Moreover, like Enfish, TT’s claims are
`
`directed to a specific implementation of a technical solution to a technical problem.
`
`Contrary to Petitioners’ mischaracterizations, the claims are not directed to a
`
`longstanding or fundamental economic practice, a business method, or a generic
`
`GUI merely recited to confer patentability on an ineligible economic practice. The
`
`claims are directed to the distinguishing structure, make-up, and functionality of
`
`the claimed GUI tool itself. TT’s invention arose in the realm of electronic trading,
`
`addressing problems in technology used for electronic trading.
`
`TT’s claims are also eligible under Alice prong 2 because, viewing the claim
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`elements individually and as an ordered combination, they contain an inventive
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`concept transforming the claimed invention into an inventive tool rooted in
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`technology.
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`U.S. Patent No. 7,685,055
`A. The Claims Are Not Directed to an “Abstract Idea” Under Alice
`Prong 1
`1.
`
`Petitioners Incorrectly Ignore and Overgeneralize the
`Claim Elements in Arguing the Claims Are Directed to an
`Abstract Idea
`
`Petitioners ignore most claim elements in arguing that the claims are
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`directed to an abstract idea. The Federal Circuit has recently rejected this practice
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`because “describing the claims at such a high level of abstraction and untethered
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`from the language of the claims all but ensures that the exceptions to § 101
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`swallow the rule.” Enfish, at *6; see Alice Corp. v. CLS Bank Int’l, 134 S. Ct.
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`2347, 2354 (2014).
`
`Petitioners allege that the claimed abstract idea is “repositioning market
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`information on a GUI.” Pet. 21. However, even assuming this is an abstract idea, it
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`is so overgeneralized and “untethered” from the claim elements that it ignores
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`almost all claim terms, particularly those reciting the specific structure and make-
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`up of the GUI tool. Petitioner’s assertion that those GUI elements can be ignored
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`(Pet. 22) is legally incorrect. See Enfish, at *6; see also Ex.2001, 6. This is not a
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`case where “[a]lthough certain additional limitations... add a degree of
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`particularity, the concept embodied by the majority of the limitations describes
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`only the abstract idea,” Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed.
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`Cir. 2014) (emphasis added), because the elements Petitioners would have the
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`Board ignore are central to the claimed invention, supra Section I.
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`In light of the claimed combination of elements, the invention is not directed
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`to an abstract idea.
`
`2.
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`TT’s Claims Are Eligible Under Prong 1 of Alice Because
`They Improve the Functioning of the Computer
`
`“[M]any computer-implemented claims are formally addressed to patent-
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`eligible subject matter.” Alice, 134 S. Ct. at 2358-59. For instance, claims that are
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`directed to eligible subject matter may include those that “improve the functioning
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`of the computer itself” or “improve[ ] an existing technological process.” Id.
`
`Here, the claimed GUI tool improves the functioning of a computer. Enfish,
`
`at *4 (“Software can make non-abstract improvements to computer technology just
`
`as hardware improvements can....”). Using GUIs on the iPhone, the computer can
`
`function as a phone, compass, calculator, etc. Without these GUIs, the iPhone and
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`most personal computers are useless. TT’s claims, which set forth a new GUI
`
`construction that causes the computer to function in new and inventive ways,
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`improve the computer.
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`Further, the claimed invention improves the functioning of the computer
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`because it solves problems caused by the structure, make-up, and functionality of
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`prior art GUIs. Id. at *5. The ’055 claims solve problems of prior GUIs that
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`included a static price axis and dynamic indicators. Supra Section I. These
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`problems were created because the indicators could move off or close to off the
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`displayed static price axis, causing some users to spend time manually adjusting
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`U.S. Patent No. 7,685,055
`the price axis, causing the prior art GUI not to convey the state of the market
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`precisely or efficiently. Id. Accordingly, the claimed invention improves the
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`functioning of the computer by addressing problems with previous GUI tools. See
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`DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014);
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`see also Research Corp. Techs., Inc. v. Microsoft Corp., 627 F.3d 859, 869 (Fed.
`
`Cir. 2010).
`
`In Enfish, the Federal Circuit upheld claims directed to an innovative
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`database program that purportedly improved on the prior art. Enfish, at *8. Enfish
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`acknowledged that the Supreme Court has “[found] it relevant to ask whether the
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`claims are directed to an improvement to computer functionality versus being
`
`directed to an abstract idea, even at the first step of the Alice analysis.” Id. at *4.
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`Further, the Court explained that the first step of Alice is “a meaningful one, i.e.
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`that a substantial class of claims are not directed to a patent-ineligible concept.” Id.
`
`Indeed, the Enfish claims were upheld under Alice step one because the
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`specification revealed they were directed to a purported improvement in computer
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`technology. Id. at *7.
`
`The ’055 patent claims are also directed to an improvement in computer
`
`technology and are therefore patent eligible.
`
`3.
`
`TT’s Claims Are Eligible Under Prong 1 of Alice Because
`the Claimed Invention Is Rooted in Technology
`
`Improvements to GUI construction, such as the claimed invention, are
`
`
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`rooted in technology. Not only is an entire scientific field devoted to the study of
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`GUIs, but this field falls within a broader scientific classification that studies
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`interaction between man and machine. Numerous universities offer technical
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`degrees devoted to studying the interaction with GUIs. See, e.g., Exs.2006-2012.
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`The Association for Computing Machinery recognizes the importance of the HCI
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`technology field. “Research in human-computer interaction (HCI)… has
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`fundamentally changed computing.” Ex.2003, 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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`this explosive growth.” Id.
`
`For example, the advent of computers ushered in a shift from providing
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`physical controllers (e.g., knobs, buttons, levers, sliders, etc.) using physical
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`material (e.g., wood, metal, etc.) to electronic controllers (e.g., GUIs with
`
`graphical knobs, buttons, indicators, etc.). As such, the structure and make-up of a
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`GUI (e.g., placement of buttons, indicators, and other elements that allow
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`interaction with the computer) is analogous to prior mechanical devices.
`
`Leading scientific research centers also recognize the importance of GUIs.
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`For example, NASA has an entire HCI Group focused on interface functionality
`
`and design. Exs.2004-2005. Many colleges and universities offer courses on GUI
`
`
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`U.S. Patent No. 7,685,055
`design/development for engineers and programmers. See, e.g., Exs.2006-2012.
`
`Petitioners’ definition of the person of ordinary skill in the art (“POSA”)
`
`confirms that GUIs are technology by requiring a technical background ((1) “a
`
`bachelor’s degree in computer science or computer engineering,” and (2) “at least
`
`two years working experience designing and/or programming graphical user
`
`interfaces”). Pet. 16. This contradicts Petitioner’s position that the claimed GUI
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`tools are not technology.
`
`4.
`
`TT’s Claims Are Eligible under Prong 1 of Alice Because
`They Are Not Directed to a Fundamental Economic or
`Longstanding Commercial Practice, a Business Method, or
`a Generic GUI
`
`TT’s claims do not claim a business method or a fundamental economic
`
`practice (e.g., hedging or intermediated risk settlement). Nor do the claims merely
`
`move an economic practice to a new technological environment, as was the case in
`
`Ultramercial. 772 F.3d at 722. The claims do not merely add conventional
`
`computer components to longstanding business or economic practices, as was the
`
`case in Alice and Versata Development Group, Inc. v. SAP America, Inc., 793 F.3d
`
`1306 (Fed. Cir. 2015). Enfish, at *7. Rather, the claims are “directed to a specific
`
`implementation of a solution to a problem in the software arts,” so they “are not
`
`directed to an abstract idea.” Id. at *8.
`
`While the claimed invention may be used to trade, the claims are not merely
`
`directed to “data gathering” as was the case in CyberSource, where the claims
`
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`merely took known data-gathering steps and applied them to the Internet.
`
`CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1376 (Fed. Cir. 2011).
`
`Indeed, analogizing the claims to CyberSource reflects an overgeneralization and
`
`misunderstanding of TT’s claims, which provide a new structure, make-up, and
`
`functionality for a GUI.
`
`The claims similarly do not recite data processing by a computer like in
`
`Bancorp Services, L.L.C. v. Sun Life Assurance Co. of Canada (U.S.), 687 F.3d
`
`1266, 1277-78 (Fed. Cir. 2012).
`
`The claimed GUI tool is unlike the generic GUIs mentioned in other cases,
`
`such as Mortgage Grader or Capital One. In Mortgage Grader, the Federal Circuit
`
`held that the claim to a “computer-implemented system” comprising a “first
`
`interface” and a “second interface” was directed to generic computer components.
`
`Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1318, 1324
`
`(Fed. Cir. 2016). In Capital One, the claims were ineligible because they merely
`
`recited a generic webpage via which information was displayed or customized.
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`Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1370
`
`(Fed. Cir. 2015). The patentee in Capital One agreed that its claims were directed
`
`to the practice of customizing information, a “fundamental… practice long
`
`prevalent in our system.” Id. at 1369. Accordingly, such recitations were merely
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`“generic” GUIs. Id. at 1368.
`
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`In contrast, the claims here are directed to the specific structure, make-up,
`
`and functionality of a particular GUI tool. Rather than taking a business practice
`
`and reciting “displaying with a GUI” or “allowing a change with the GUI,” the
`
`claims set forth how information is displayed via the GUI and how the interface
`
`responds to the user interaction to improve the operation of the user interface and,
`
`therefore, the computer.
`
`B.
`
`The Claims Are Eligible Under Prong 2 of Alice Because They
`Recite an Inventive Concept
`
`The claims are eligible even if they are improperly deemed as being directed
`
`to an abstract idea. While the inventive concept analysis “is facilitated by
`
`considerations analogous to those of §§ 102 and 103,” it is not a substitute for
`
`those statutory requirements. See Internet Patents Corp. v. Active Network, Inc.,
`
`790 F.3d 1343, 1347 (Fed. Cir. 2015). This is because, rather than requiring
`
`novelty or nonobviousness, the concern undergirding § 101 is preemption of
`
`fundamental concepts. See Alice, 134 S. Ct. at 2358. Thus, to pass Alice prong 2, a
`
`claim need only contain elements or a combination of elements “sufficient to
`
`ensure that the patent in practice amounts to significantly more than a patent upon
`
`the [abstract idea] itself.” Id. at 2355. The Federal Circuit also made clear that “an
`
`inventive concept can be found in the non-conventional and non-generic
`
`arrangement of known, conventional pieces.” Bascom Glob. Internet Servs., Inc. v.
`
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`U.S. Patent No. 7,685,055
`AT&T Mobility LLC, No. 2015-1763, 2016 WL 3514158, at *6 (Fed. Cir. June 27,
`
`2016).
`
`Although TT’s claim elements are specialized and not routine, TT’s claimed
`
`combination also meets this test, as the evidence supports the unconventional
`
`nature of the claimed combination. Ex.2169, § VIII.
`
`While § 101 and §§ 102/103 spawn different analyses, claims that surpass
`
`§§ 102/103 challenges certainly meet § 101. See Bascom, at *10 (Newman, J.,
`
`concurring).
`
`Lack of novelty, however, is irrelevant to a § 101 analysis. The fact that one
`
`or more of the steps in TT’s invention “may not, in isolation, be novel or
`
`independently eligible for patent protection is irrelevant to the question of whether
`
`the claims as a whole recite subject matter eligible for patent protection under
`
`§ 101.” Diamond v. Diehr, 450 U.S. 175, 192-93 n.15 (1981). Indeed, “[t]he
`
`inventive concept inquiry requires more than recognizing that each claim element,
`
`by itself, was known in the art.” Bascom, at *6. That being said, the obviousness
`
`sections below show that Petitioners’ assertions that ce