Paper No.
` Filed: November 15, 2016
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`IBG LLC; INTERACTIVE BROKERS LLC;
`TRADESTATION GROUP, INC.; AND
`TRADESTATION SECURITIES, INC.;
`
`Petitioners
`v.
`
` TRADING TECHNOLOGIES INTERNATIONAL, INC.
`
`Patent Owner
`_________________
`Case CBM2016-00032
`U.S. Patent 7,212,999
`_________________
`
`
`PATENT OWNER'S RESPONSE
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`

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`
`
`I.
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`II.
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`
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`CBM2016-00032
`U.S. Patent 7,212,999
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`Table of Contents
`
`INTRODUCTION ........................................................................................... 1
`
`RECENT § 101 CASES HAVE CLARIFIED THE TEST FOR
`PATENT ELIGIBILITY ................................................................................. 3
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`The patent’s specification is used to determine the nature of the
`invention ................................................................................................ 4
`
`Claims should not be overgeneralized or simplified into their
`“gist” or core principles when identifying what the claims are
`“directed to” under Alice prong I .......................................................... 7
`
`Claims are eligible under Alice prong I when the claims are
`directed to a particular solution to achieve a result ............................... 8
`
`Claims are eligible under Alice prong I if the claims are
`narrowly drawn to not preempt any and all generic
`enhancements ......................................................................................10
`
`Claims are eligible under Alice prong II if there is a “non-
`conventional and non-generic arrangement of known,
`conventional pieces”............................................................................11
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`III. TT’S CLAIMS ARE PATENT ELIGIBLE UNDER BOTH PRONGS
`OF THE ALICE TEST ...................................................................................12
`
`A.
`
`The nature of the claimed invention is confirmed by the
`specification .........................................................................................13
`
`B. Under Alice prong I, the claims are “directed to” a particular
`structure, makeup, and functionality of a GUI and cannot be
`overgeneralized to being “directed to” merely a fundamental
`economic activity, a generic GUI, or “graphing (or displaying)
`bids and offers” ...................................................................................17
`
`1.
`
`The claims require constructing a GUI with a particular
`structure, makeup, and functionality .........................................17
`
`C.
`
`The claims improve GUI technology ..................................................19
`i
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`

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`The ’999 claims are eligible under Alice prong I because the
`claims are directed to a particular solution to achieve a result ...........21
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`CBM2016-00032
`U.S. Patent 7,212,999
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`The ’999 claims are patent eligible because the combination of
`elements in the claims does not preempt the alleged abstract
`idea ......................................................................................................22
`
`The ’999 claims are eligible under Alice prong II because the
`claims set forth an inventive concept ..................................................24
`
`D.
`
`E.
`
`F.
`
`IV. TT’S CLAIMS ARE ELIGIBLE UNDER FEDERAL CIRCUIT
`CASE LAW REGARDING USER INTERFACE INVENTIONS...............26
`
`A.
`
`Case where the interface improvement was patent eligible ................28
`
`1.
`
`DDR: Claims to a particular way of solving a problem
`with interface functionality are patent eligible .........................28
`
`B.
`
`Cases where the invention was not related to the interface ................31
`
`1. Mortgage Grader: The purported invention was a process
`for anonymous loan shopping, not a specific interface ............31
`
`2.
`
`3.
`
`Electric Power: Claimed ancillary displaying of results,
`rather than a new technique or tool for how results are
`displayed ...................................................................................32
`
`Affinity Labs v. DirectTV: Merely claimed an interface
`that “allows” a step of the abstract idea to be performed .........34
`
`C.
`
`Cases where the claims preempted the result of applying an
`abstract idea to an interface rather than being limited to a
`particular solution to achieve the result ..............................................35
`
`1.
`
`2.
`
`3.
`
`Capital One: Attempted to preempt application of pre-
`Internet concepts on a website ..................................................35
`
`Affinity Labs v. Amazon: Results-focused claim covered
`any form of customizing an interface .......................................37
`
`Internet Patents: Claimed the result of maintaining state
`rather than how it was accomplished ........................................39
`
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`ii
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`PETITIONERS MISCONSTRUE THE CLAIMS AND THE LAW
`TO ASSERT THAT THE CLAIMS ARE NOT PATENT ELIGIBLE ........40
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`CBM2016-00032
`U.S. Patent 7,212,999
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`V.
`
`A.
`
`B.
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`Improving a computer component confers patent eligibility ..............40
`
`Inventions do not fail the patent-eligibility test because they can
`be practiced on a general-purpose computer .......................................43
`
`1.
`
`2.
`
`3.
`
`Use of a general-purpose computer does not doom the
`claims ........................................................................................43
`
`Software inventions are patent eligible .....................................43
`
`TT’s claims are not directed to using a generic computer
`to perform an “undisputedly well-known” practice that
`“humans have always performed” ............................................44
`
`C.
`
`Inventions do not fail the patent-eligibility test because they
`benefit a human user............................................................................45
`
`a.
`
`DDR solved a problem realized by a website host .........45
`
`b. McRO solved a problem realized by human
`animators .........................................................................46
`
`D.
`
`E.
`
`Inventions do not fail the patent-eligibility test because a person
`could perform the functions manually ................................................46
`
`Ultramercial’s degree of particularity referred to extra-solution
`activity .................................................................................................47
`
`VI. THE PETITION FAILS TO ESTABLISH THAT THE CLAIMS
`COVER SIGNALS ........................................................................................48
`
`VII. THE ’999 PATENT IS NOT A CBM PATENT ...........................................50
`
`A.
`
`The ’999 patent does not claim “data processing” or “other
`operation” (e.g., a business method) ...................................................52
`
`1.
`
`The petition is completely silent as to whether the ’999
`patent is directed to “data processing” or “other
`operations” ................................................................................52
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`iii
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`CBM2016-00032
`U.S. Patent 7,212,999
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`The ’999 patent does not claim “data processing” ...................53
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`2.
`
`a.
`
`b.
`
`Under the USPTO’s own definition of “data
`processing, the ’999 patent is not directed to “data
`processing” .....................................................................53
`
`The PTAB relied upon incorrect interpretations of
`statements from the specification to conclude that
`the claim was directed to “data processing” ...................55
`
`B.
`
`C.
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`The ’999 patent falls under the technological exception ....................56
`
`Legislative history confirms that the claimed invention is not a
`CBM ....................................................................................................58
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`VIII. CONCLUSION ..............................................................................................61
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`iv
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`TABLE OF AUTHORITIES
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`CBM2016-00032
`U.S. Patent 7,212,999
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` Page(s)
`
`Federal Cases
`Affinity Labs of Texas, LLC v. Amazon.com Inc.,
`No. 2015-2080, 2016 WL 5335502 (Fed. Cir. Sept. 23, 2016) .................... 37, 38
`
`Affinity Labs of Texas, LLC v. DIRECTV, LLC,
`No. 2015-1845, 2016 WL 5335501 (Fed. Cir. Sept. 23, 2016) .................... 34, 35
`
`Alice Corp. v. CLS Bank Int’l,
`134 S. Ct. 2347 (2014) .................................................................................passim
`
`Amdocs (Israel) Ltd. v. Openet Telecom, Inc.,
`No. 2015-1180, 2016 WL 6440387 (Fed. Cir. Nov. 1, 2016) ........................ 7, 10
`
`Bascom Glob. Internet Servs., Inc. v. AT&T Mobility LLC,
`827 F.3d 1341 (Fed. Cir. 2016) ...................................................................passim
`
`Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat’l
`Ass’n,
`776 F.3d 1343 (Fed. Cir. 2014), cert. denied, 136 S. Ct. 119 (2015) ................ 44
`
`CyberSource Corp. v. Retail Decisions,
`654 F.3d 1366 (Fed. Cir. 2011) .............................................................. 46, 47, 53
`
`DDR Holdings, LLC v. Hotels.com, L.P.,
`773 F.3d 1245 (Fed. Cir. 2014) ...................................................................passim
`
`Elec. Power Grp., LLC v. Alstom S.A.,
`830 F.3d 1350 (Fed. Cir. 2016) .............................................................. 32, 33, 34
`
`Enfish, LLC v. Microsoft Corp.,
`822 F.3d 1327 (Fed. Cir. 2016) ...................................................................passim
`
`Gottschalk v. Benson,
`409 U.S. 63 (1972) .............................................................................................. 47
`
`Intellectual Ventures I LLC v. Capital One Bank (USA),
`792 F.3d 1363 (Fed. Cir. 2015) .............................................................. 35, 36, 37
`
`
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`v
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`Internet Patents Corp. v. Active Network, Inc.,
`790 F.3d 1343 (Fed. Cir. 2015) .................................................................... 28, 39
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`CBM2016-00032
`U.S. Patent 7,212,999
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`McRO, Inc. v. Bandai Namco Games Am. Inc.,
`No. 2015-1080, 2016 WL 4896481 (Fed. Cir. Sept. 13, 2016) ...................passim
`
`Ex parte Mewherter,
`Appeal 2012-007692, Slip op. (P.T.A.B. May 8, 2013) ............................... 49, 50
`
`Mortg. Grader, Inc. v. First Choice Loan Servs. Inc.,
`811 F.3d 1314 (Fed. Cir. 2016) ........................................................ 31, 32, 42, 48
`
`O’Reilly v. Morse,
`56 U.S. 62 (1853) ................................................................................................ 10
`
`Openwave Sys., Inc. v. Apple Inc.,
`808 F.3d 509 (Fed. Cir. 2015) .............................................................................. 5
`
`Synopsys, Inc. v. Mentor Graphics Corp.,
`No. 2015-1599, 2016 WL 6068920 (Fed. Cir. Oct. 17, 2016) ........................... 47
`
`Ultramercial, Inc. v. Hulu, LLC,
`772 F.3d 709 (Fed. Cir. 2014) ............................................................ 3, 18, 47, 48
`
`Versata Development Group, Inc. v. SAP America, Inc.,
`793 F.3d 1306 (Fed. Cir. 2015) .................................................................... 18, 57
`
`Federal Statutes
`35 U.S.C. § 101 .................................................................................................passim
`
`AIA, § 18 ................................................................................................ 51, 53, 59, 60
`
`AIA, § 18(d)(1) ........................................................................................................ 50
`
`Regulations
`
`35 C.F.R. § 42.301(a) ............................................................................................... 50
`
`Other Authorities
`
`McGraw-Hill Dictionary of Scientific and Technical Terms, 5th Ed.
`(1994) .................................................................................................................. 49
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`vi
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`CBM2016-00032
`U.S. Patent 7,212,999
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`I.
`
`INTRODUCTION
`
`The claims of the ’999 patent are patent eligible because they are not
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`directed to an “abstract idea,” but are instead directed to the specific features and
`
`functions of a technological graphical user interface (“GUI”) tool that can be used
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`for electronic order entry. The specification discloses the claimed invention as a
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`particular way of constructing the GUI to make the interface, among other things,
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`more intuitive. In other words, the claimed invention explains “how” to construct a
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`particular GUI.
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`Recent Federal Circuit cases confirm the patent eligibility under 35 U.S.C.
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`§ 101 of claims such as TT’s that are limited to a particular way of achieving a
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`result. This also holds true for cases involving user interfaces: claims limited to a
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`particular way of solving a specific problem with an interface are eligible, whereas
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`claims that cover any generic user interface added to an abstract idea are not. Here,
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`the claimed GUI construction provides a specific way (i.e., detailed structure,
`
`makeup, and functionality) to construct a GUI. This way of constructing a GUI
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`achieves the result. TT does not claim any of the bare results of displaying market
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`information and entering trade orders, graphing bids and offers to assist a trader, or
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`providing an intuitive interface.
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`While Petitioners request that this Board overgeneralize TT’s claims to
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`arrive at a purported “abstract idea” untethered to specific limitations in the claims,
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`1
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`

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`a review of those specific limitations reveals that the claims are narrowly drawn to
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`a specific implementation. To be sure, the ’999 patent does not simply claim its
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`invention to be the concept of “graphing (or displaying) bids and offers to assist a
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`trader in making an order,” Petitioners’ purported abstract idea (Pet. 25), or
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`“[c]ollecting information and displaying the information,” the PTAB’s purported
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`abstract idea (Inst. Dec. 18). The myriad of other implementations of these
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`purportedly abstract ideas not preempted by TT’s claims reveals the error in such
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`allegations.
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`Moreover, the ’999 claims do not recite a generic interface or display, and
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`thus Petitioners’ citations to cases that did so are inapposite. Indeed, even a cursory
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`review of the claims reveals that they are specifically directed to the very “how”
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`the Federal Circuit found lacking in those other cases. Further, following the
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`Federal Circuit’s guidance, the specification’s detailed disclosure of how the
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`claimed invention is constructed to provide an intuitive interface shows that the
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`claimed invention is patent eligible.
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`Finally, even if this Board were to find the claims directed to an abstract
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`idea, the evidence and testimony identified below shows that the claims include an
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`inventive concept. Namely, the specification details how the claims provide the
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`GUI to put information in both an intuitive format to help the user understand the
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`information provided by the computer and to place orders. Further, testimony
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`2
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`

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`submitted by TT’s witness shows that neither the claimed elements nor the
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`U.S. Patent 7,212,999
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`combination as a whole are directed to routine and conventional technology.
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`Instead, at a minimum, the overall ordered combination of the claims as a whole is
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`indisputably unconventional and provides a radical departure from the prior art.
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`Ex.2169, ¶¶22-52.
`
`II. RECENT § 101 CASES HAVE CLARIFIED THE TEST FOR
`PATENT ELIGIBILITY
`In Alice, the Court provided a two-prong test. Alice Corp. v. CLS Bank Int’l,
`
`134 S. Ct. 2347 (2014). In prong I, the focus of a § 101 analysis begins with
`
`examining the claims in light of the specification to determine whether the
`
`“ordered combination of steps recites an abstraction.” Ultramercial, Inc. v. Hulu,
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`LLC, 772 F.3d 709, 715 (Fed. Cir. 2014); McRO, Inc. v. Bandai Namco Games
`
`Am. Inc., No. 2015-1080, 2016 WL 4896481, at *7 (Fed. Cir. Sept. 13, 2016)
`
`(“[A] court must look to the claims as an ordered combination, without ignoring
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`the requirements of the individual [elements].”). Only if the claims are directed to
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`an abstract idea does a tribunal need to assess the next prong of Alice. In prong II, a
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`claim that is “directed to” an abstraction can still be patent eligible if it contains
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`elements or a combination of elements “sufficient to ensure that the patent in
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`practice amounts to significantly more than a patent upon the [abstract idea] itself.”
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`3
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`

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`Alice, 134 S. Ct. at 2355 (citation omitted). The concern undergirding § 101 is
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`U.S. Patent 7,212,999
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`preemption of fundamental concepts. See id. at 2354-55, 58.
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`The Federal Circuit has continued to clarify this test and the underlying
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`principles that should be considered when analyzing both prongs.
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`A. The patent’s specification is used to determine the nature of the
`invention
`Determining patent eligibility under either prong of Alice focuses not only
`
`on the claims but also the corresponding disclosure about what the invention is. In
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`both Enfish and McRO, the Court looked to the specification to determine the
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`nature of the invention the claims were “directed to.” Enfish, LLC v. Microsoft
`
`Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016); McRO, 2016 WL 4896481, at *7.
`
`In Enfish, the court reasoned as follows:
`
`Here, the claims are not simply directed to any form of
`storing tabular data, but instead are specifically directed
`to a self-referential table for a computer database. For
`claim 17, this is reflected in step three of the “means for
`. The
`configuring” algorithm described above.
`.
`.
`necessity of describing the claims in such a way is
`underscored by the specification’s emphasis that “the
`present invention comprises a flexible, self-referential
`table that stores data.” The specification also teaches
`that the self-referential table functions differently than
`conventional database structures. According to the
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`4
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`specification, traditional databases, such as “those that
`follow the relational model and those that follow the
`object oriented model” are inferior to the claimed
`invention. While “[t]he structural requirements of current
`databases require a programmer to predefine a structure
`and subsequent [data] entry must conform to that
`structure,” the “database of the present invention does not
`require a programmer to preconfigure a structure to
`which a user must adapt data entry.” Moreover, our
`conclusion
`that
`the claims are directed
`to an
`improvement of an existing technology is bolstered by
`the specification’s teachings that the claimed invention
`achieves other benefits over conventional databases,
`such as increased flexibility, faster search times, and
`smaller memory requirements.
`
`Enfish, 822 F.3d at 1335 (emphases added) (citations omitted) (citing Openwave
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`Sys., Inc. v. Apple Inc., 808 F.3d 509, 513-14 (Fed. Cir. 2015) (finding that a
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`specification’s disparagement of the prior art is relevant to determine the scope of
`
`the invention)).
`
`Likewise, in McRO, the Court reasoned as follows:
`
`As the specification confirms, the claimed improvement
`here is allowing computers to produce “accurate and
`realistic lip synchronization and facial expressions in
`animated characters” that previously could only be
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`5
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`produced by human animators. As the district court
`correctly recognized,
`this computer automation
`is
`realized by improving the prior art through “the use of
`rules, rather than artists, to set the morph weights and
`transitions between phonemes.” The rules are limiting in
`that they define morph weight sets as a function of the
`timing of phoneme sub-sequences. . . . The claimed rules
`here . . . are limited to rules with certain common
`characteristics, i.e., a genus.
`
`McRO, 2016 WL 4896481, at *7 (emphasis added) (citations omitted).
`
`As discussed in more detail below, the present case is similar to Enfish and
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`McRo, in that (1) the claims are directed to a particular way of implementing a
`
`GUI and (2) the specification is explicit that the invention is directed to how the
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`GUI is constructed. Infra at III.A. Specifically, the specification explains the need
`
`for a user interface that combines both an intuitive way to display the information
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`and an intuitive way to enter orders. Ex.1001, 1:59-62, 2:39-65, 6:6-64, 8:26-51,
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`10:9-32. The claimed invention, which recites the particulars of “how” to construct
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`a GUI that improves the prior art construction, solves those problems. Infra at
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`III.C, D. Specifically, the specification explains that the “present invention relates
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`generally to the field of graphical user interfaces and more particularly to the field
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`of graphical user interfaces for electronic trading systems.” Ex.1001, 1:6-9.
`
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`6
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`

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`Similarly, in Bascom, the Court used the specification’s teachings to
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`determine what the inventive concept of the claims was. Bascom Glob. Internet
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`Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1348-50 (Fed. Cir. 2016). And,
`
`in Amdocs, the claims were found to be patent eligible based on the patent’s
`
`explanation of how the invention required conventional computer components to
`
`operate in a different manner than the distinguished prior art. Amdocs (Israel) Ltd.
`
`v. Openet Telecom, Inc., No. 2015-1180, 2016 WL 6440387, at *9-10 (Fed. Cir.
`
`Nov. 1, 2016). Based on that disclosure, the Court concluded that the “claim entails
`
`an unconventional technological solution (enhancing data in a distributed fashion)
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`to a technological problem (massive record flows which previously required
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`massive databases),” which made the claims patent eligible. Id. at *10.
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`Of course, this practice of looking to the specification to determine what the
`
`nature of the invention is not new. For example, in DDR, the Court formed its
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`opinion based on what the specification explained the nature of the invention to be.
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`DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1248-49 (Fed. Cir. 2014).
`
`B. Claims should not be overgeneralized or simplified into their
`“gist” or core principles when identifying what the claims are
`“directed to” under Alice prong I
`
`Recently, the Federal Circuit has criticized lower court decisions for
`
`oversimplification of the claimed invention. In McRO, the Court cautioned that
`
`courts “must be careful to avoid oversimplifying the claims” by looking at them
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`7
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`generally and failing to account for the specific requirements of the claims. McRO,
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`2016 WL 4896481, at *7 (citation omitted). In Enfish, the Court also made clear
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`that prong I should not focus on generalizing the claim language, but instead, “the
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`‘directed to’ inquiry applies a stage-one filter to claims, considered in light of the
`
`specification, based on whether ‘their character as a whole is directed to excluded
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`subject matter.’” Enfish, 822 F.3d at 1335 (citation omitted).
`
`As discussed in more detail below, Petitioners are overgeneralizing TT’s
`
`claims because Petitioners ignore nearly the entire claim and the inventive
`
`combination of elements. To arrive at the Petitioner’s alleged abstract idea, the
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`specifics of the claims and the disclosure of the specification need to be ignored.
`
`Infra at III.F. Indeed, the Petition erroneously attempts to dismiss the claimed way
`
`of constructing the GUI (i.e., the entire combination of elements claimed) as extra-
`
`solution activity despite the specification disclosing its solution as a particular way
`
`of constructing a GUI. Compare Pet. 25-26 with Ex.1001, 1:5-3:60.
`
`C. Claims are eligible under Alice prong I when the claims are
`directed to a particular solution to achieve a result
`
`The Federal Circuit has emphasized that it is “sufficient to compare claims
`
`at issue to those claims already found to be directed to an abstract idea in previous
`
`cases.” Enfish, 822 F.3d at 1334.
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`8
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`To determine whether the claims recite an abstraction, the Court has looked
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`at what the claims “purport to improve.” See Alice, 134 S. Ct. at 2358-59
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`(emphasis added). The Court performed this analysis by looking to “the
`
`specification’s teachings that the claimed invention achieves other benefits over
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`conventional” ways of performing the asserted abstract idea, see Enfish, 822 F.3d
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`at 1337, and whether, based on the specification’s disclosure, the claims were
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`directed to any form of the abstract idea or to a specific solution, see id. at 1335-
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`36.
`
`In McRO, the Court continued to “look to whether the claims in these
`
`patents focus on a specific means or method that improves the relevant technology
`
`or are instead directed to a result or effect that itself is the abstract idea and merely
`
`invoke generic processes and machinery.” McRO, 2016 WL 4896481, at *8. This
`
`is because the preemption concern that underlies § 101 jurisprudence only arises
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`when the claims are not directed to a specific invention and instead improperly
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`monopolize “the basic tools of scientific and technological work.” Id. (citation
`
`omitted). Accordingly, the result-focused claims were found to preempt too much
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`because such claims “would prohibit all other persons from making the same thing
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`by any means whatsoever.” Id. (citation omitted). Thus, the abstract-idea exception
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`prevents patenting a result where “it matters not by what process or machinery the
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`result is accomplished.” Id. (citation omitted). In contrast, a “patent may issue ‘for
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`9
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`the means or method of producing a certain result, or effect, and not for the result
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`or effect produced.’” Id. (citation omitted). This is not new, but is instead rooted in
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`a holding from the beginning of patent-eligibility jurisprudence—O’Reilly v.
`
`Morse, 56 U.S. 62, 113 (1853).
`
`As explained in more detail below, TT’s claims are directed to a specific
`
`implementation—that is, a specific GUI. They are not directed to a generic result
`
`or effect. Infra at III.B, D. The claim elements in the ’999 patent provide for a very
`
`specific implementation and avoid the Court’s concern of making the same thing
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`by any means whatsoever.
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`D. Claims are eligible under Alice prong I if the claims are narrowly
`drawn to not preempt any and all generic enhancements
`
`Petitioners bear the burden to prove that the claims attempt to preempt any
`
`and all generic ways of accomplishing an abstract idea. For example, in Amdocs,
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`the claims were patent eligible because the claims were “narrowly drawn to not
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`preempt any and all generic enhancement of data in a similar system.” Amdocs,
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`2016 WL 6440387, at *10. As evidence of this fact, the Court pointed to the
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`patents’ disclosure of how the claimed arrangement improved upon prior art
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`systems. Id. Similarly, in McRO, the attorney argument asserting that the claims
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`preempted too much failed because:
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`1. “Defendants provided no evidence that the process previously used by
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`animators is the same as the process required by the claims.” McRO, 2016
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`WL 4896481, at *8.
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`2. “Defendants’ attorney’s argument that any rules-based lip-synchronization
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`process must use the claimed type of rules has appeal, but no record
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`evidence supports this conclusion.” Id. at *9.
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`Accordingly, particularly when the specification provides an express disclosure of
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`how the claimed invention differs from the conventional method or means of
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`achieving the result, Petitioners must provide evidence that the claims preempt too
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`much. Bald attorney argument is insufficient.
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`As set forth below, TT has provided substantial evidence that there are many
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`ways to practice the alleged abstract idea that are not covered by the claimed
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`invention. Infra at III.E.There is no concern of the ’999 claims preempting too
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`much.
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`E. Claims are eligible under Alice prong II if there is a “non-
`conventional and non-generic arrangement of known,
`conventional pieces”
`In Bascom, the Court found that, unlike Enfish, the case presented a “close
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`call[] about how to characterize what the claims are directed to.” Bascom, 827 F.3d
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`at 1349 (alteration in original) (quoting Enfish, 822 F.3d at 1339). Accordingly, the
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`Court deferred its “consideration of the specific claim limitations’ narrowing effect
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`for step two.” Id. Ultimately, the Court confirmed the claims under prong II
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`because BASCOM had alleged an inventive concept “in the ordered combination
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`of claim limitations that transform the abstract idea of filtering content into a
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`particular, practical application of that abstract idea.” Id. at 1352 (emphasis
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`added). Importantly, “the limitations of [BASCOM’s] claims, taken individually,
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`recite generic computer, network and Internet components, none of which is
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`inventive by itself.” Id. at 1349. Indeed, BASCOM did not assert that it invented
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`any of those individual components or the basic concept of filtering. Id. But the
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`Court still found an inventive concept in the nonconventional and nongeneric
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`arrangement of known, conventional pieces. Id. at 1350.
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`III. TT’S CLAIMS ARE PATENT ELIGIBLE UNDER BOTH PRONGS
`OF THE ALICE TEST
`As the recent case law further confirms, the ’999 patent claims are patent
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`eligible because they claim the construction of a specific GUI that provides an
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`improvement over the construction of prior GUI tools. For example, as disclosed in
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`the specification, the claimed way of constructing a GUI provides one way to
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`implement and intuitive interface for displaying market information and placing
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`trades. The claimed invention is narrowly drawn to a specific implementation of a
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`GUI, and while the claimed GUI may be used for order entry by a user to send
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`electronic order messages to an electronic exchange, it does not tie up most, much
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`less all, ways of performing that task. Nor does the claim preempt all ways of
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`“graphing (or displaying) bids and offers to assist a trader in making an order,”
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`Petitioners’ purported abstract idea (Pet. 25) or “[c]ollecting information and
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`displaying the information,” the PTAB’s purported abstract idea (Inst. Dec. 18).
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`A. The nature of the claimed invention is confirmed by the
`specification
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`The ’999 patent claims specific features and functionality of a GUI tool for
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`electronic trading. Specifically, the patent discloses that “present invention relates
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`generally to the field of graphical user interfaces and more particularly to the field
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`of graphical user interfaces for electronic trading systems.” Ex.1001, 1:6-9. The
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`claimed features improve the functioning of a computer because the claimed
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`invention improves the display of information to a user and facilitates improved
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`order entry using the GUI tool. Ex.1001, Abstract; 2:1-21. In contrast to prior art
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`GUIs, the claimed GUI displays all outstanding offers and bids in an intuitive
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`format in relation to a price axis and also displays order icons that each represent a
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`particular user’s own order for a quantity of an item, also in relation to the price
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`axis, alongside all outstanding offers and bids for that item. Id. at 10:44-11:4. The
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`claimed GUI further permits a user to select and move the order icon to a location
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`that corresponds to a value along the price axis and send an order message
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`associated with the order icon at the price corresponding to the location to which
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`the order icon was moved. Id. This GUI differs from prior art GUIs for various
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`reasons, including that prior GUI tools did not display indicators of a user’s
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`particular order alongside bid and offer data relative to the same price levels, and
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`prior GUI tools did not provide order icons, which could be selected and moved
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`along a price axis to cause an order to be sent at a particular price value associated
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`with the price axis.
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`Independent claim 1 is illustrative of the claimed invention:
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`A computer based method for facilitating the placement
`of an order for an item and for displaying transactional
`information to a user regarding the buying and selling of
`items in a system where orders comprise a bid type or an
`offer type, and an order is generated for a quantity of the
`item at a specific value, the method comprising:
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`display