Trials@uspto.gov
`571.272.7822
`
` Paper No. 19
`Entered: December 2, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TD AMERITRADE HOLDING CORP.,
`TD AMERITRADE, INC., and
`TD AMERITRADE ONLINE HOLDINGS CORP.,
`Petitioner,
`
`v.
`
`TRADING TECHNOLOGIES INTERNATIONAL, INC.,
`Patent Owner.
`____________
`
`Case CBM2014-00136
`Patent No. 6,766,304 B2
`____________
`
`Before SALLY C. MEDLEY, MEREDITH C. PETRAVICK, and
`PHILIP J. HOFFMANN, Administrative Patent Judges.
`
`PETRAVICK, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Covered Business Method Patent Review
`37 C.F.R. § 42.208
`
`1
`
`IBG LLC ET AL. - EXHIBIT 1003
`
`
`571.272.7822
`
` Paper No. 19
`Entered: December 2, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TD AMERITRADE HOLDING CORP.,
`TD AMERITRADE, INC., and
`TD AMERITRADE ONLINE HOLDINGS CORP.,
`Petitioner,
`
`v.
`
`TRADING TECHNOLOGIES INTERNATIONAL, INC.,
`Patent Owner.
`____________
`
`Case CBM2014-00136
`Patent No. 6,766,304 B2
`____________
`
`Before SALLY C. MEDLEY, MEREDITH C. PETRAVICK, and
`PHILIP J. HOFFMANN, Administrative Patent Judges.
`
`PETRAVICK, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Covered Business Method Patent Review
`37 C.F.R. § 42.208
`
`1
`
`IBG LLC ET AL. - EXHIBIT 1003
`
`
`
`CBM2014-00136
`Patent 6,766,304 B2
`
`
`I. INTRODUCTION
`
`A. Background
`
`
`
`TD Ameritrade Holding Corp., TD Ameritrade, Inc., and TD
`
`Ameritrade Online Holdings Corp. (collectively, “Petitioner”) filed a
`
`Petition (Paper 4, “Pet.”) on May 20, 2014, that requests review under the
`
`transitional program for covered business method patents of U.S. Patent No.
`
`6,766,304 B2 (Ex. 1001, “the ’304 patent”). Trading Technologies
`
`International, Inc. (“Patent Owner”) filed a Preliminary Response on
`
`September 3, 2014. Paper 18 (“Prelim. Resp.”). We have jurisdiction under
`
`35 U.S.C. § 324, which provides that a post-grant review may not be
`
`instituted “unless . . . the information presented in the petition . . . would
`
`demonstrate that it is more likely than not that at least 1 of the claims
`
`challenged in the petition is unpatentable.”
`
`
`
`Petitioner challenges the patentability of claims 1–40 (“the challenged
`
`claims”) of the ’304 patent under 35 U.S.C. §§ 101, 102, 103. We determine
`
`that the Petition fails to demonstrate that it is more likely than not that the
`
`challenged claims are unpatentable, and we do not institute a covered
`
`business method patent review of claims 1–40 of the ’304 patent.
`
`
`
`
`
`B. Related Matters
`
`Petitioner and Patent Owner identify numerous related U.S. district
`
`court cases. Pet. 2–3; Paper 7, 2–5.
`
`Patent Owner also states that related U.S. Patent No. 7,676,411 is the
`
`subject of TD Ameritrade Holding Corp. v. Trading Technologies
`
`International, Inc., Case CBM2014-00133 (PTAB); that related U.S. Patent
`
`No. 6,772,132 is the subject of TD Ameritrade Holding Corp. v. Trading
`
`
`
`2
`
`
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`CBM2014-00136
`Patent 6,766,304 B2
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`Technologies International, Inc., Case CBM2014-00135 (PTAB); and that
`
`related U.S. Patent No. 7,685,055 is the subject of TD Ameritrade Holding
`
`Corp. v. Trading Technologies International, Inc., Case CBM2014-00137
`
`(PTAB). Paper 7, 5. Patent Owner further states that the ’304 patent was
`
`the subject of Reexamination, Control No. 90/008,577; and related U.S.
`
`Patent No. 6,772,132 was the subject of Reexamination, Control No.
`
`90/008,576 and Reexamination, Control No. 90/011,250. Id.
`
`Related U.S. Patent No. 7,533,056 is the subject of CBM2014-00131
`
`(PTAB).
`
`
`
`C. The ’304 Patent (Ex. 1001)
`
`
`
`The ’304 patent is titled “Click Based Trading with Intuitive Grid
`
`Display of Market Depth,” and issued July 20, 2004, from Application No.
`
`09/894,637, filed June 27, 2001. Ex. 1001, 1. Application No. 09/894,637
`
`is a divisional of Application No. 09/590,692, filed June 9, 2000, which
`
`claims priority to Provisional Application No. 60/186,322, filed March 2,
`
`2000. Id.
`
`
`
`The ’304 patent discloses a “Mercury” display and method of using
`
`the Mercury display to trade a commodity. Id. at Abstract, col. 3, ll. 9–10.
`
`The Mercury display is a graphic user interface (“GUI”) that dynamically
`
`displays the market depth of a commodity traded in a market and allows a
`
`trader to place an order efficiently. Id. at col. 3, ll. 15–28.
`
`The Mercury display is depicted in Figure 3, which is reproduced
`
`below.
`
`
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`3
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`CBM2014-00136
`Patent 6,766,304 B2
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`Fig. 3 depicts the Mercury display of the ’304 patent
`
`
`
`The Mercury display includes a plurality of columns. Column 1005 is
`
`a static price axis, which includes a plurality of price values for the
`
`commodity. See id. at col. 7, ll. 56–67. Columns 1003 and 1004 are aligned
`
`with the static price axis and dynamically display bid and ask quantities,
`
`respectively, for the corresponding price values of the static price axis. See
`
`id. at col. 7, l. 54–col. 8, l. 18. Column 1002 contains various parameters
`
`and information used to execute trades, such as the default quantity
`
`displayed in cell 1016. See id. at col. 8, l. 37–col. 9, l. 3.
`
`
`
`A trader executes trades using the Mercury display by first setting the
`
`desired commodity and default parameters, such as default quantity. Id. at
`
`col. 9, ll. 35–49; Fig. 6, step 1302. Then, a trader can send a buy order or
`
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`4
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`CBM2014-00136
`Patent 6,766,304 B2
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`sell order to the market with a single action, such as clicking on the
`
`appropriate cell in column 1003 or 1004. See id. at col. 9, l. 39–col. 11,
`
`l. 34; Fig. 6, steps 1306–1315. In the example shown in Figure 3, a left click
`
`on “20” in column 1004 will send an order to the market to buy 17 lots (i.e.,
`
`the default quantity set in cell 1016 of column 1002) at a price of 90. See id.
`
`at col. 10, ll. 39–41.
`
`
`
`Claim 1 of the ’304 patent is illustrative of the challenged claims and
`
`is reproduced below:
`
`1. A method for displaying market information relating to and
`facilitating trading of a commodity being traded in an electronic
`exchange having an inside market with a highest bid price and a
`lowest ask price on a graphic user interface, the method
`comprising:
`
`dynamically displaying a first indicator in one of a plurality of
`locations in a bid display region, each location in the bid
`display region corresponding to a price level along a common
`static price axis, the first indictor representing quantity
`associated with at least one order to buy the commodity at the
`highest bid price currently available in the market;
`
`dynamically displaying a second indicator in one of a plurality
`of locations in an ask display region, each location in the ask
`display region corresponding to a price level along the common
`static price axis, the second indicator representing quantity
`associated with at least one order to sell the commodity at the
`lowest ask price currently available in the market;
`
`displaying the bid and ask display regions in relation to fixed
`price levels positioned along the common static price axis such
`that when the inside market changes, the price levels along the
`common static price axis do not move and at least one of the
`first and second indicators moves in the bid or ask display
`regions relative to the common static price axis;
`
`displaying an order entry region comprising a plurality of
`locations for receiving commands to send trade orders, each
`
`
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`5
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`CBM2014-00136
`Patent 6,766,304 B2
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`
`location corresponding to a price level along the common static
`price axis; and
`
`in response to a selection of a particular location of 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.
`
`
`
`
`
`D. Alleged Grounds of Unpatentability
`
`Petitioner sets forth grounds of unpatentability of the challenged
`
`claims as follows:
`
`Ground Prior Art
`
`§ 101
`
`n/a
`
`§ 102
`
`TSE1
`
`§ 103
`
`TSE
`
`Challenged Claim(s)
`
`1–40
`
`1–3, 5–9, 11–15, 20–23, and 26–40
`
`4 and 10
`
`§ 103
`
`TSE and Gutterman2
`
`16–19, 24, and 25
`
`§ 103
`
`Silverman3 and Gutterman
`
`1–25 and 27–40
`
`§ 103
`
`Silverman, Gutterman, and
`
`26
`
`Paal4
`
`
`
`
`1 TOKYO STOCK EXCHANGE OPERATION SYSTEM DIVISION, FUTURES/OPTION
`PURCHASING SYSTEM TRADING TERMINAL OPERATION GUIDE (1998) (Ex.
`1003).
`2 Gutterman et al., U.S. Patent No. 5,297,031 (issued Mar. 22, 1994) (Ex.
`1007).
`3 Silverman et al., U.S. Patent No. 5,077,665 (issued Dec. 31, 1991) (Ex.
`1008).
`4 Paal et al., U.S. Patent No. 5,263,134 (issued Nov. 16, 1993) (Ex. 1009).
`
`
`
`6
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`Patent 6,766,304 B2
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`II. ANALYSIS
`
`A. Requirements for Covered Business Method Patent Review
`
`
`
`Section 18 of the AIA5 provides for the creation of a transitional
`
`program for reviewing covered business method patents. Section 18 limits
`
`review to persons or their privies who have been sued or charged with
`
`infringement of a “covered business method patent,” which does not include
`
`patents for “technological inventions.” AIA §§ 18(a)(1)(B), 18(d)(1); see
`
`37 C.F.R. § 42.302. Petitioner and Patent Owner indicate that the Petitioner
`
`was sued for infringement of the ’304 patent. Pet. 4; Paper 7, 2. For reasons
`
`discussed below, we find that the ’304 patent is eligible for covered business
`
`method patent review because at least one claim “claims a method or
`
`corresponding apparatus for performing data processing or other operations
`
`used in the practice, administration, or management of a financial product or
`
`service” (see 37 C.F.R. § 42.301(a)), and because the claimed subject matter
`
`as a whole either does not: 1) recite a technological feature that is novel and
`
`unobvious over the prior art or 2) solve a technical problem using a
`
`technological solution (see 37 C.F.R. § 42.301(b)).
`
`i. Covered Business Method Patent Under 37 C.F.R. § 42.301(a)
`
`Petitioner argues that claims 1 and 27 claim a method for performing
`
`data processing in the practice, administration, or management of a financial
`
`product or service. Pet. 5 (citing 37 C.F.R. § 42.301(a)). Petitioner argues
`
`that claims 1 and 27 claim such a method because they require a GUI that
`
`displays information, such as bids and asks, for a market and that creates and
`
`sends trade orders to an electronic exchange. Id.
`
`
`5 Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284, 329
`(2011) (“AIA”).
`
`
`
`7
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`Patent 6,766,304 B2
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`Patent Owner disputes that the ’304 patent is directed to a method for
`
`performing data processing in the practice, administration, or management
`
`of a financial product or service because the claims of the ’304 patent are
`
`directed to “purely technological tools.” Prelim. Resp. 39. Patent Owner
`
`argues that, although used in the field of trading, the ’304 patent is not a
`
`covered business method patent because the inventive aspects of the claims
`
`arise from structural and functional features embodied in a GUI tool, “and
`
`not in any business method or practice.” Id. at 28–29.
`
`A covered business method patent “claims a method or corresponding
`
`apparatus for performing data processing or other operations used in the
`
`practice, administration, or management of a financial product or service.”
`
`AIA § 18(d)(1). The “legislative history explains that the definition of
`
`covered business method patent was drafted to encompass patents ‘claiming
`
`activities that are financial in nature.’” 77 Fed. Reg. 48,734, 48,735 (Aug.
`
`14, 2012) (quoting 157 Cong. Rec. S5432 (daily ed. Sept. 8, 2011)
`
`(statement of Sen. Schumer)). The legislative history indicates that
`
`“financial product or service” should be interpreted broadly. Id. A patent
`
`need have only one claim directed to a covered business method to be
`
`eligible for review. Id. at 48,736 (Response to Comment 8).
`
`
`
`Upon review of the record, and taking into account Patent Owner’s
`
`argument, we determine that the ’304 patent is directed to a method for
`
`performing data processing or other operations used in the practice,
`
`administration, or management of a financial product or service. Claim 1
`
`recites “[a] method for displaying market information relating to and
`
`facilitating trading of a commodity being traded in an electronic exchange.”
`
`It recites steps of displaying market information, including indicators of asks
`
`
`
`8
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`Patent 6,766,304 B2
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`and bids in the market, and recites steps of setting trade order parameters
`
`and sending trade orders to an electronic exchange. Displaying market
`
`information and sending trade orders to an electronic exchange are activities
`
`that are financial in nature. Given this, we determine that at least claim 1 of
`
`the ’304 patent recites a method for performing operations used in the
`
`practice, administration, or management of a financial product or service
`
`(i.e., trading on an electronic exchange).
`
`ii. Not a Technological Invention Under 37 C.F.R. § 42.301(b)
`
`As indicated above, even if a patent includes claims that would
`
`otherwise be eligible for treatment as a covered business method, review of
`
`the patent is precluded if the claims cover only “technological invention[s],”
`
`as defined by 37 C.F.R. § 42.301(b). Petitioner, further, argues that the
`
`’304 patent is a covered business method patent because it is not for a
`
`technological invention because the claims do not recite a technical feature
`
`that is novel and unobvious over the prior art and do not solve a technical
`
`problem with a technical solution. Pet. 5–8. First, the Petitioner argues that
`
`the claims do not recite a technical feature because they only recite software
`
`and general computer components, such as a display and input devices. Pet.
`
`6. Second, the Petitioner argues that the claims do not solve a technical
`
`problem using a technical solution because the claims are directed to the
`
`known problem of placing a trade order for a commodity on an electronic
`
`exchange. Pet. 7–8.
`
`Conversely, Patent Owner argues that the ’304 patent is for a
`
`technological invention and, therefore, is not a covered business method
`
`patent. Prelim. Resp. 42–54. First, Patent Owner argues that the claims
`
`recite a technical feature because they combine structural and functional
`
`
`
`9
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`CBM2014-00136
`Patent 6,766,304 B2
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`features of the claimed GUI tool in a novel and non-obvious way. Id. at 52–
`
`54. Second, Patent Owner argues that the claims solve the technical
`
`problem of submitting an order to the exchange with speed and accuracy
`
`with the technical solution of the combined structural and functional features
`
`of the claimed GUI tool. Id. at 42–52.
`
`
`
`The definition of “covered business method patent” in § 18(d)(1) of
`
`the AIA does not include patents for “technological inventions.” To
`
`determine whether a patent is for a technological invention, we consider
`
`“whether the claimed subject matter as a whole recites a technological
`
`feature that is novel and unobvious over the prior art; and solves a technical
`
`problem using a technical solution.” 37 C.F.R. § 42.301(b). Both prongs
`
`must be satisfied in order for the patent to be excluded as a technological
`
`invention. The following claim drafting techniques, for example, typically
`
`do not render a patent a “technological invention”:
`
`(a) Mere recitation of known technologies, such as computer
`hardware, communication or computer networks, software,
`memory, computer–readable storage medium, scanners, display
`devices or databases, or specialized machines, such as an ATM
`or point of sale device.
`
`(b) Reciting the use of known prior art technology to
`accomplish a process or method, even if that process or method
`is novel and non–obvious.
`
`77 Fed. Reg. 48,756, 48,763–64 (Aug. 14, 2012).
`
`On this record, and taking into account Patent Owner’s argument, we
`
`are persuaded by Petitioner that the ’304 patent is not for a technological
`
`invention. At least independent claim 1 does not recite a technological
`
`feature that is novel and unobvious over the prior art. Claim 1 recites a
`
`method that requires the display of certain information in a certain
`
`
`
`10
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`Patent 6,766,304 B2
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`arrangement on a GUI and, via a single action of a user input device on a
`
`particular location in the GUI, the setting of order parameters and sending of
`
`the order to the exchange. Claim 1 requires a display, an input device, and a
`
`GUI (i.e., software).
`
`The ’304 patent discloses that its system can be implemented “on any
`
`existing or future terminal or device” (Ex. 1001, col. 4, ll. 9–15), which are
`
`known to include displays, and discloses that the input device can be a
`
`mouse (id. at col. 4, ll. 13–19), which is a known input device. The
`
`’304 patent depicts a prior art GUI tool used for trading in Figure 2. Id. at
`
`col. 5, ll. 13–19. Patent Owner describes this prior art GUI tool as
`
`“conventional” (Prelim. Resp. 6) and states that “[s]ome of these types of
`
`tools permitted ‘single action’ order entry” (id. at 7). From this, we
`
`determine that the use of software to create GUI’s for displaying market
`
`information and entering orders via a “single action” was known. Further,
`
`the ’304 patent discloses that the physical mapping of information sent by
`
`the exchange to a screen grid (i.e., the GUI) “can be done by any technique
`
`known to those skilled in the art.” Ex. 1001, col. 4, l. 66–col. 5, l. 7.
`
`Given the above, we determine that claim 1 does not recite a
`
`technological feature that is novel and unobvious over the prior art. Because
`
`both prongs must be satisfied for a patent to be excluded from covered
`
`business method patent review for being a technological invention, we find
`
`that the ’304 patent is eligible for a covered business method patent review
`
`for at least the reason that claim 1 fails to recite a technological feature that
`
`is novel and unobvious.
`
`Notwithstanding our determination above, on this record, we also are
`
`persuaded by Petitioner that the ’304 patent does not solve a technical
`
`
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`11
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`Patent 6,766,304 B2
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`problem with a technical solution. The ’304 patent solves the problem of a
`
`trader having to read a display of prices for a commodity and enter a trade
`
`order before the price for the commodity changes. See Ex. 1001, col. 2, ll.
`
`29–67. The ’304 patent solves this problem by displaying market
`
`information in a certain arrangement on a GUI and, via a single action of a
`
`user input device on a particular location in the GUI, setting order
`
`parameters and sending the order to the exchange. As discussed above,
`
`claim 1’s use of a display, an input device, and a GUI (i.e., software) were
`
`all known technology. Given this, we determine that at least claim 1 does
`
`not solve a technical problem using a technical solution and at least claim 1
`
`does not satisfy the second prong. Accordingly, we find that the ’304 patent
`
`is eligible for covered business method patent review.
`
`
`
`B. Claim Construction
`
`Consistent with the statute and legislative history of the AIA, we
`
`interpret claims using the broadest reasonable construction in light of the
`
`specification of the patent in which they appear. 37 C.F.R. § 42.300(b). An
`
`inventor, however, may rebut that presumption by providing a definition of
`
`the term in the specification with reasonable clarity, deliberateness, and
`
`precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
`
`“single action”
`
`Petitioner argues, and Patent Owner does not dispute, that “single
`
`action” is defined in the ’304 patent. Pet. 10–11 (citing Ex. 1001, col. 4,
`
`ll. 19–23). Upon review, we determine that the ’304 patent defines “single
`
`action” to mean “[a]ny action by a user within a short period of time,
`
`whether comprising one or more clicks of a mouse button or other input
`
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`12
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`device, . . . for the purposes of the present invention.” Ex. 1001, col. 4, ll.
`
`19–23.
`
`
`
`C. Ground Under 35 U.S.C. § 101
`
`Petitioner argues that claims 1–40 are patent ineligible under
`
`35 U.S.C. § 101 because they encompass an abstract idea. Pet. 14–15.
`
`Patent Owner argues that Petitioner fails to demonstrate that the claims are
`
`patent ineligible because the Petition simply recites case law without any
`
`proper analysis as to why the “claims preempt the idea of placing an order in
`
`response to observing market data.” Prelim. Resp. 64–65.
`
`We are persuaded by Patent Owner that the Petition fails to
`
`demonstrate that claims 1–40 are more likely than not patent ineligible
`
`because the Petition fails to provide sufficient analysis as to why the claims
`
`merely recite an abstract idea without significantly more. Patent-eligible
`
`subject matter is defined in § 101 of the Patent Act, which recites:
`
`Whoever invents or discovers any new and useful
`
`process, machine, manufacture, or composition of matter, or
`any new and useful improvement thereof, may obtain a patent
`therefor, subject to the conditions and requirements of this title.
`
`
`
`There are, however, three judicially created exceptions to the broad
`
`categories of patent-eligible subject matter in § 101: laws of nature, natural
`
`phenomena, and abstract ideas. Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134
`
`S. Ct. 2347, 2354 (2014); Mayo Collaborative Servs. v. Prometheus Labs.,
`
`Inc., 132 S. Ct. 1289, 1293 (2012). Although an abstract idea, itself, is
`
`patent-ineligible, an application of the abstract idea may be patent-eligible.
`
`Alice, 132 S. Ct. at 2355. Thus, we must consider “the elements of each
`
`claim both individually and ‘as an ordered combination’ to determine
`
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`13
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`whether the additional elements ‘transform the nature of the claim’ into a
`
`patent-eligible application.” Id. (citing Mayo, 132 S. Ct. at 1297–98). The
`
`claim must contain elements or a combination of elements that are
`
`“sufficient to ensure that the patent in practice amounts to significantly more
`
`than a patent upon the [abstract idea] itself.” Id. (citing Mayo, 132 S. Ct. at
`
`1294).
`
`Other than a paragraph that only quotes case law (Pet. 14), the entirety
`
`of Petitioner’s argument is reproduced below:
`
`The claims of the ’304 patent recite just such an abstract
`
`idea, namely placing a trade order in response to observing
`market data. Here, this abstract idea is merely recited in the
`independent claims along with well-known and insignificant
`extra-solution activity. Importantly, this abstract idea is central
`to the trading of commodities all over the world. Patentee
`cannot be allowed to preempt this fundamental economic tool.
`Moreover, abstract ideas “cannot be circumvented by
`attempting to limit the use . . . to a particular technological
`environment.” Bilski, supra at 3230 (quoting Diamond v.
`Diehr, 450 U.S.175, 191–92). Thus, limiting the claims to the
`field of trading commodities is insufficient to save them.
`
`Pet. 14–15. Petitioner provides insufficient analysis as to why each of the 40
`
`challenged claims merely recites the alleged abstract idea without requiring
`
`significantly more. Id.; see also 35 U.S.C. § 322(a)(3); 37 C.F.R.
`
`§ 42.304(b)(4) (“the petition must identify the specific part of the claim that
`
`fails to comply with the statutory grounds raised and state how the identified
`
`subject matter fails to comply with the statute”). We, thus, determine that
`
`Petitioner fails to demonstrate that claims 1–40 are more likely than not
`
`patent ineligible under 35 U.S.C. § 101 for encompassing an abstract idea.
`
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`14
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`D. Grounds Under 35 U.S.C. §§ 102, 103
`
`“A claim is anticipated only if each and every element as set forth in
`
`the claim is found, either expressly or inherently described, in a single prior
`
`art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628,
`
`631 (Fed. Cir. 1987). With respect to obviousness,
`
`Section 103(a) forbids issuance of a patent when “the
`differences between the subject matter sought to be patented
`and the prior art are such that the subject matter as a whole
`would have been obvious at the time the invention was made to
`a person having ordinary skill in the art to which said subject
`matter pertains.”
`
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
`
`obviousness is resolved on the basis of underlying factual determinations,
`
`including: (1) the scope and content of the prior art, (2) any differences
`
`between the claimed subject matter and the prior art, and (3) the level of skill
`
`in the art. Graham v. John Deere Co., 383 U.S. 1, 17 (1966); see KSR, 550
`
`U.S. at 407 (“While the sequence of these questions might be reordered in
`
`any particular case, the [Graham] factors continue to define the inquiry that
`
`controls.”).
`
`i. Anticipation of Claims 1–3, 5–9, 11–15, 20–23, and 26–40 by TSE
`
`
`
`Petitioner argues that claims 1–3, 5–9, 11–15, 20–23, and 26–40 are
`
`anticipated under 35 U.S.C. § 102(a) by TSE. Pet. 15–39. Independent
`
`claim 1 recites:
`
`in response to a selection of a particular location of 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.
`
`
`
`15
`
`
`
`CBM2014-00136
`Patent 6,766,304 B2
`
`Independent claim 27 recites a similar limitation. Petitioner argues that this
`
`limitation is met by TSE’s description of placing an order by, first, double-
`
`clicking a specific area on the Board/Quotation Screen to open a new order
`
`entry window, and then selecting a send button on the new order entry
`
`window. See Pet. 15–16, 26–29 (citing Ex. 1003, 137; Ex. 1017 ¶¶ 97–99,
`
`“Roman Decl.”).
`
`
`
`Patent Owner argues that the above relied-upon description of TSE
`
`does not meet the limitation because double-clicking the area of the
`
`Board/Quotation Screen and clicking a send button on the new order entry
`
`window is not a selection of a particular location of the order entry region by
`
`a single action, but is a selection of two different locations by two actions.
`
`Prelim. Resp. 59–62.
`
`TSE is a guide for operating a trading terminal of the Tokyo Stock
`
`Exchange. Ex. 1003, 1.6 The trading terminal displays a GUI for depicting
`
`market information on a Board/Quotation Screen (see id. at 107), and for
`
`allowing a trader to enter an order (see id. at 137). A figure that appears on
`
`page 137 of TSE is reproduced below.
`
`
`6 We refer to the English translation of TSE (Ex. 1003) and to the pagination
`inserted into Ex. 1003 and not the original pagination.
`
`
`
`16
`
`
`
`CBM2014-00136
`Patent 6,766,304 B2
`
`
`Figure depicting the displaying of the new order entry window
`
`
`
`The Figure depicts that double-clicking on a specific area of the
`
`Board/Quotation Screen displays a new order entry window, which is
`
`automatically set with the information from the double-clicked area. Id. at
`
`133, 139. The new order entry window includes a send button for sending
`
`the order to a central system. Id. at 137, 143.
`
`Given the above and taking into account Petitioner’s argument, we are
`
`persuaded by Patent Owner that TSE does not meet the above-quoted
`
`limitation of claim 1 as well as the corresponding limitation of claim 27.
`
`The limitation requires that both the setting of the parameters and the
`
`sending of the order occur in response to a selection of a particular location
`
`of the order entry region by a single action of a user input device. Even
`
`giving “single action” the interpretation discussed above, TSE’s system does
`
`not meet this limitation. Although TSE describes setting the parameters in
`
`response to double-clicking an area on the Board/Quotation Screen (i.e., the
`
`
`
`17
`
`
`
`CBM2014-00136
`Patent 6,766,304 B2
`
`claimed particular location of the order entry region) (id. at 133, 139), TSE
`
`does not describe that the order is sent in response to the selection of the area
`
`on the Board/Quotation Screen. In TSE, the order is sent if or when the send
`
`button on the new order entry window is selected. Id. at 137, 143.
`
`
`
`Accordingly, we determine that Petitioner fails to establish that it is
`
`more likely than not that claims 1 and 27, and claims 2, 3, 5–9, 11–15, 20–
`
`23, 26, and 28–40, dependent thereon, are anticipated by TSE.
`
`ii. Obviousness of Claims 4 and 10 over TSE and Obviousness of Claims
`16–19, 24, and 25 over TSE and Gutterman
`
`
`
`Claims 4, 10, 16–19, 24, and 25 directly or indirectly depend from
`
`claim 1, and, as discussed above, we determine that TSE does not meet the
`
`single action limitation of claim 1. Petitioner does not rely upon Gutterman
`
`or any other reasoning or evidence to cure this deficiency of TSE.
`
`Accordingly, for the same reasons as discussed above, we determine that
`
`Petitioner fails to demonstrate that claims 4 and 10 would have been obvious
`
`over TSE and fails to demonstrate that claims 16–19, 24, and 25 would have
`
`been obvious over TSE and Gutterman.
`
`iii. Obviousness of Claims 1–25 and 27–40 over Gutterman and Silverman
`
`
`
`Petitioner argues that claims 1–25 and 27–40 are unpatentable under
`
`35 U.S.C. § 103 as obvious over Gutterman and Silverman. Pet. 43–78. At
`
`issue again, is the limitation of independent claims 1 and 27 that:
`
`in response to a selection of a particular location of 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.
`
`Ex. 1001, col. 12, l. 66–col. 13, l. 3. Petitioner relies upon Gutterman’s
`
`disclosure of a trader selecting an order icon, which causes the system to
`
`
`
`18
`
`
`
`CBM2014-00136
`Patent 6,766,304 B2
`
`populate an electronic message with the trade information, and, then,
`
`selecting a “SEND FILL” button to transmit the message to meet the
`
`limitation of selecting a particular area through a single action to set
`
`parameters and to send the trade order. Pet. 47, 62–64 (citing Ex. 1007, col.
`
`13, ll. 29–43; Roman Decl. ¶ 133).
`
`Patent Owner argues that Gutterman’s relied-upon disclosures do not
`
`meet the limitation because selecting an order icon in the deck pane and then
`
`selecting a send button in the fill pane is not a selection of a particular
`
`location of the order entry region by a single action, but is instead a selection
`
`of two different locations by two different actions. Prelim. Resp. 62–64.
`
`Gutterman discloses a broker workstation for managing orders in a
`
`market. Ex. 1007, Abstract. Gutterman’s Figure 2d is reproduced below.
`
`Fig. 2d depicts a screen of the broker workstation
`
`
`
`Figure 2d depicts a broker’s workstation screen that includes deck pane 135,
`
`which displays a buy side and a sell side divided by column 136. Id. at col.
`
`12, ll. 1–6. Deck pane 135 also includes touch-sensitive order icons 139,
`
`such as buy order icon 139-1 and sell order icon 139-9. Id. at col. 12, ll. 25–
`
`44. Figure 2d also depicts fill pane 140. Gutterman states:
`
`
`
`19
`
`
`
`CBM2014-00136
`Patent 6,766,304 B2
`
`
`[T]he broker selects the order by touching the corresponding
`order icon in the deck pane 135. When the order is selected, the
`icon is highlighted, and the order’s quantity, price and time
`stamp appear in so-designated areas of the fill pane 140 which
`“pops up” into the lower left portion of the screen 12 by the
`operation of Fill Pane object 454. The broker enters the
`identification code of his counterpart broker and firm by means
`of the keyboard 14 or other suitable data entry device and
`presses the SEND FILL “button” on the screen 12. The
`workstation 10 then communicates the filled order information
`to the customer and clearing house via the electronic order entry
`system.
`
`Id. at col. 13, ll. 27–40.
`
`Given the above, and taking into account Petitioner’s argument, we
`
`are persuaded by Patent Owner that Gutterman does not meet the “single
`
`action” limitation. Gutterman does not send the order in response to the
`
`selection of the order icon in deck pane 135 (i.e., the claimed particular
`
`location of the order entry region). Instead, the order is sent to the fill
`
`pane 140 and then when the “SEND FILL” button is selected, the order is
`
`transmitted. Id. We note that Petitioner does not rely upon Silverman to
`
`meet this limitation. See Pet. 46 (explaining that Silverman does not provide
`
`any details on order entry, other than through conventional data entry tools).
`
`
`
`Accordingly, we determine that Petitioner fails to establish that
`
`it is more likely than not that claims 1 and 27, and claims 2–25 and
`
`28–40, dependent thereon, would have been obvious over Gutterman
`
`and Silverman.
`
`iv
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