Paper No. ___
`Filed: February 25, 2016
`
`
`
`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 No. CBM2016-00040
`Patent No. 7,783,556
`
`_____________________________
`
`
`
`PETITION FOR COVERED BUSINESS METHOD PATENT REVIEW OF
`U.S. PATENT NO. 7,783,556
`
`

`
`TABLE OF CONTENTS
`
`Page
`INTRODUCTION ........................................................................................... 1
`
`I.
`
`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(b) ............................. 2
`
`A. Real-Parties-In-Interest .............................................................................. 2
`
`B. Related Matters .......................................................................................... 3
`
`C.
`
`Lead and Back-Up Counsel ....................................................................... 3
`
`III. PAYMENT OF FEES................................................................................... 4
`
`IV. SUMMARY OF THE ’556 PATENT ........................................................... 4
`
`A.
`
`B.
`
`C.
`
`Subject Matter Background ....................................................................... 4
`
`The ’556 Patent Specification .................................................................... 5
`
`The ’556 patent Claims .............................................................................. 9
`
`V. GROUNDS FOR STANDING ....................................................................13
`
`A. The ’556 Patent Is Directed to a Covered Business Method ......................14
`
`B.
`
`The ’556 Patent Is Not Directed to a Technological Inventi o n .................17
`
`VI. CLAIM CONSTRUCTION UNDER 37 C.F.R. § 42.304(b)(3) ...................21
`
`A. Broadest Reasonable Interpretation ..........................................................21
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`1. “Computer readable Medium” ..................................................................21
`
`VII. CHALLENGE AND RELIEF REQUESTED ...........................................22
`
`IT IS MORE LIKELY THAN NOT THAT AT LEAST ONE CLAIM OF
`VIII.
`THE ’556 PATENT IS UNPATENTABLE ..........................................................23
`
`A. GROUND 1: Claims 1-22 Are Patent-Ineligible Under 35 USC § 101......23
`
`1. The ’556 patent claims are directed to an abstract idea ............................25
`
`2. The ’556 patent claim elements – either separately or as an ordered
`combination – do not include “significantly more” than the abstract concept .27
`
`3. The ’556 patent claims are neither tied to a “particular machine” nor do
`they “transform a particular article into a different state or thing” ...................30
`
`4. The dependent claims also are patent ineligible ........................................31
`
`5. Finding the ’556 patent claims patent ineligible is consistent with post-
`Alice Federal Circuit case law .........................................................................33
`
`i
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`

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`B. GROUND 2: Claims 12-22 Are Outside the Four Permissible Statutory
`B.
`GROUND 2: Claims 12-22 Are Outside the Four Permissible Statutory
`Classes of Patentable Subject Matter .................................................................42
`Classes of Patentable Subject Matter ............................................................... ..42
`
`C. CONCLUSION ........................................................................................43
`C.
`CONCLUSION ...................................................................................... ..43
`
`IX. Appendix – List of Exhibits .........................................................................44
`IX. Appendix — List of Exhibits ....................................................................... ..44
`
`ii
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`

`
`I.
`
`INTRODUCTION
`
`Pursuant to the provisions of 35 U.S.C. § 321 and § 18 of the Leahy-Smith
`
`America Invents Act (“AIA”), and to 37 C.F.R. Part 42, IBG LLC and Interactive
`
`Brokers LLC, (collectively, “IBG” or “Petitioners”) hereby request review of
`
`United States Patent No. 7,783,556 to Singer et al. (hereinafter “the ’556 patent,”
`
`Ex. 1001) that issued on August 24, 2010, and is owned by Trading Technologies
`
`International, Inc. (“TT” or “Patent Owner”). This petition demonstrates, by a
`
`preponderance of the evidence, it is more likely than not that the claims of the ’556
`
`patent are unpatentable because they are directed to an abstract idea. Accordingly,
`
`CBM review of the ’556 patent should be granted and claims 1-22 should be found
`
`unpatentable.
`
`This petition is filed along with a motion for joinder with CBM2015-00172
`
`(“the ’172 CBM review”), in which petitioners TradeStation Group, Inc. and
`
`TradeStation Securities, Inc. (collectively, “TradeStation”) filed a petition on
`
`August 12, 2015 challenging claims 1-22 of the ’556 patent. The Board instituted
`
`trial in the ’172 CBM review on February 12, 2016. This petition proposes the
`
`same grounds of rejection instituted in the ’172 CBM review, and relies on the
`
`same analysis and evidence. If joinder is not granted, Petitioners respectfully
`
`request that a proceeding be instituted based on this petition alone.
`
`Generally speaking, the ’556 patent relates to a business method for
`
`displaying market information to a financial trader using a computing device. The
`
`’556 patent admits that the basic idea of using a computer having a graphical user
`
`interface (“GUI”) to display and update market information, and otherwise enable
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`-1-
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`

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`a trader to interact with an electronic financial exchange, was well known. (Ex.
`
`1001, ’556 patent at Figs. 1-2 and 1:52-2:17) The purported invention of the ’556
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`patent was simply to add another item of well-known financial information –
`
`namely, the profit or loss a trader would incur upon making a particular trade – to
`
`an electronic trading GUI that the patent admits is prior art. (Id.) Providing
`
`financial information to facilitate market trades – the basic idea of the ’556 patent
`
`claims – is “a fundamental economic practice long prevalent in our system of
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`commerce.” Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347, 2356 (2014).
`
`Adding profit/loss information to the display is a well-known and trivial
`
`modification that does not add anything of significance to that abstract idea—it is
`
`simple math that could be (and has been for years) performed mentally by a trader.
`
`The other claim limitations are similarly devoid of significance. Consequently, the
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`claims of the ’556 patent are invalid under 35 U.S.C. § 101 because they
`
`encompass an abstract idea without adding “significantly more.” Id. at 2355.
`
`Moreover, the ’556 patent claims fail the machine-or-transformation test in that
`
`they are neither “tied to a particular machine or apparatus” nor do they operate to
`
`change articles or materials into a “different state or thing.” Bilski v. Kappos, 130
`
`S. Ct. at 3218, 3230 (2010).
`
`Petitioners respectfully submit that CBM review should be instituted, and
`
`the challenged claims canceled.
`
`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(b)
`
`A. Real-Parties-In-Interest
`
`IBG LLC and Interactive Brokers LLC are the real parties-in-interest.
`
`-2-
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`

`
`B. Related Matters
`
`The ’556 patent is or has been involved in the following proceedings that
`
`may affect, or be affected by, a decision in this proceeding: TRADING
`
`TECHNOLOGIES INTERNATIONAL, INC. v. OPEN E CRY, LLC,
`
`OPTIONSXPRESS HOLDINGS, INC., ROSENTHAL COLLINS GROUP, LLC,
`
`TRADESTATION SECURITIES, INC., TRADESTATION GROUP, INC., IBG,
`
`LLC, TD AMERITRADE, INC., TD AMERITRADE HOLDING CORP.,
`
`THINKORSWIM GROUP, INC., INTERACTIVE BROKERS, LLC, CQG, INC.,
`
`CQGT, LLC, FUTUREPATH TRADING LLC, SUNGARD DATA SYSTEMS, INC.,
`
`SUNGARD INVESTMENT VENTURES LLC, GL TRADE AMERICAS, INC.,
`
`STELLAR TRADING SYSTEMS, LTD., STELLAR TRADING SYSTEMS, INC.,
`
`ESPEED MARKETS, LP, BGC CAPITAL MARKETS, LP, ECCOWARE LTD.,
`
`CUNNINGHAM TRADING SYSTEMS, LLC, CUNNINGHAM COMMODITIES,
`
`LLC, TRADEHELM, INC., Case No. 10-cv-0715, in the Northern District of
`
`Illinois before Judge Virginia M. Kendall.
`
`C. Lead and Back-Up Counsel
`
`Petitioners provide the following designation of counsel:
`
`Lead and Back-Up Counsel (37 C.F.R. § 42.8(b)(3))
`
`Lead Counsel: Michael T. Rosato (Reg. No. 52,182)
`
`Back-Up Counsel: Matthew A. Argenti (Reg. No. 61,836)
`
`Back-Up Counsel: Robert E. Sokohl (Reg. No. 36,013)
`
`Service Information – 37 C.F.R. § 42.8(b)(4). Petitioners hereby consent to
`
`electronic service.
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`-3-
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`

`
`Email: mrosato@wsgr.com; margenti@wsgr.com; RSOKOHL@skgf.com
`
`Post: WILSON SONSINI GOODRICH & ROSATI, 701 Fifth Avenue, Suite 5100,
`
`
`
`Seattle, WA 98104-7036
`
`Tel.: 206-883-2529
`
`Fax: 206-883-2699
`
`III. PAYMENT OF FEES
`
`The required fees are submitted herewith. If any additional fees are due at
`
`any time during this proceeding, the Office is authorized to charge such fees to
`
`Deposit Account No. 23-2415.
`
`IV. SUMMARY OF THE ’556 PATENT
`
`A.
`
`Subject Matter Background
`
`A financial market is a market in which people trade financial securities,
`
`commodities, and other fungible items of value at prices that reflect supply and
`
`demand. Financial markets have been around for a very long time. For example,
`
`over four hundred years ago, in 1602, the Amsterdam market for the Dutch East
`
`India Company effectively became a modern securities market. (Ex. 1003;
`
`Lodewijk Petram, “The World’s First Stock Exchange.”) Historically, financial
`
`markets were physical locations where buyers and sellers met and negotiated in
`
`person. Today, however, most financial trading is performed electronically, that is,
`
`a trader uses a personal computer connected by a network to an electronic
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`exchange to execute buy or sell transactions with other traders similarly connected
`
`to the electronic exchange.
`
`Electronic trading is many decades old, going back as far as 1971 when
`
`NASDAQ set up the first electronic stock market (Ex. 1004; “History of the Amer-
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`-4-
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`

`
`ican and NASDAQ Stock Exchanges” at p. 3), and has grown ubiquitous in current
`
`times. Electronic trading mimics traditional, manual trading practices in that sellers
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`post “ask” (or “offer”) prices for a specified quantity of items, and potential buyers
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`post “bid” prices, indicating how much they are willing to pay for a specified
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`quantity of items. These bid and ask prices, and their respective quantities, are
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`presented to all market participants – i.e., traders – in order to match up buyers
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`with sellers so that trades can be transacted.
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`The self-evident purpose of trading is, of course, to make a profit, e.g., by
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`buying a stock at a first, lower price and then subsequently selling it at a second,
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`higher price. Inevitably, however, traders also occasionally take losses when, e.g.,
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`circumstances force them to sell a stock at a price lower than the purchase price.
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`Given that making profits, and avoiding losses, are the raison d’être of trading,
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`common sense dictates that keeping track of such profits and losses is of
`
`paramount concern to traders. Indeed, the prior art expressly discloses keeping
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`track of, and displaying in a GUI, the profits or losses that would be incurred upon
`
`making a particular trade. (See, e.g., Ex. 1005; U.S. Patent 6,317,728 (Kane) at
`
`Fig. 19 (column labeled “Delta”) and 6:56-67.)
`
`B.
`
`The ’556 Patent Specification
`
`In general, the ’556 patent is directed to displaying, within a GUI, a “trading
`
`screen” that provides a user (also referred to as a “trader”) with information to help
`
`facilitate a trade on an electronic exchange. Fig. 2 of the patent, admitted by Patent
`
`Owner to be prior art, shows a conventional trading screen that lacks the additional
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`profit/loss information provided by Patent Owner’s purported invention.
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`-5-
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`

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`
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`As shown in Fig. 2, the prior art trading screen 200 includes three relevant
`
`portions: a bid column 202, an offer column 204, and a column 206 listing prices
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`(referred to in the patent as a “price axis”) for the “tradeable object” under consid-
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`eration. The numbers in the bid 202 and offer 204 columns correspond to quantities
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`of the tradeable object sought or available, respectively, at the adjacent price in
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`column 206. The box containing the number “5” in the rightmost column
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`corresponds to the “Last Traded Quantity,” with its adjacent price level (230) being
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`the “Last Traded Price” (“LTP”).
`
`In the example shown in Fig. 2, the tradeable object has a number of bids
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`and offers available, any of which a trader can accept “by simply clicking, with a
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`mouse or some other input device, on specific areas of the screen associated with
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`the price values.” (Ex. 1001; ’556 patent at 2:15-17.) For example, the box
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`-6-
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`

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`containing the number “15” in the bid column 202 (annotated with a blue circle)
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`represents a bid (by another market participant) to buy 15 units at $230/unit.
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`Clicking on the box containing “15” would act as acceptance of the bid, meaning
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`that the trader commits to selling 15 units of the tradeable object at $230/unit.
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`Similarly, if the trader clicked on the box containing the number 10 in the offer
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`column 204 (annotated with a red circle) it would act as acceptance of the offer to
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`sell 10 units at $232/unit, meaning that the trader agrees to buy 10 units at that
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`price.
`
`Upon agreeing to buy a quantity of units of the tradeable object, the trader is
`
`said to have opened a “long” position in that tradeable object. (Ex. 1002; “Response
`
`Filed With Request For Continued Examination” dated Nov. 19, 2009, at p. 8.)
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`Conversely, upon agreeing to sell a quantity of units, the trader is said to have
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`opened a “short” position in that tradeable object. (Id.) A trader is said to “close a
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`position” by either buying or selling the same quantity of units as he currently owns
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`for a long position, or is obligated to sell for a short position, at which point the
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`trader has either made a profit, suffered a loss, or broken even, based on the initial
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`price at which the trader agreed to buy or sell the tradeable object in question. For
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`example, if a trader buys 10 units at $125/unit (thereby opening a long position)
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`and then subsequently sells 10 units at $230/unit (thereby closing the long
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`position), then the trader has made a profit on that position of $1050 (= 10 x
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`($230 - $125)).
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`The purported invention of the ’556 patent is simply to add another column
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`to the prior art trading screen 200 indicating “a derivative of price,” which is de-
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`-7-
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`

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`fined in the patent as “anything that has some dependence on or relationship to
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`price.” (Ex. 1001, ’556 patent at 3:33-34.) Although the patent specification
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`generally refers to the abstraction of “a derivative or price,” the patent’s claims in
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`fact are limited to one specific price derivative, namely, what the trader’s profit or
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`loss would be if the trader accepted either a bid or offer at the corresponding price.
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`The triviality of the claimed subject matter is appreciated by comparing the prior
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`art trading screen 200 of Fig. 2 with the allegedly inventive trading screen shown
`
`in annotated Fig. 8:
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`Best Ask Best
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`Bid; LTP
`
`
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`-8-
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`

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`As can be seen, the only difference between the prior art and allegedly inventive
`
`trading screens is the addition of a “value axis” (indicated by the red box in Fig. 8,
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`above), which indicates the profit or loss a trader would incur, relative to a
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`reference point (e.g., the prior day’s closing value), if the trader were to accept a
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`bid or offer at the corresponding price. For example, assuming a reference point of
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`$125 for a particular tradeable object (corresponding to a long position previously
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`opened by the trader), if the trader accepted the “best bid” of 15 units at $230/unit
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`(thereby closing the position), then the trader would realize a profit of $105/unit (=
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`230 – 125). In other words, the supposedly inventive “value axis” does
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`nothingmore than perform simple arithmetic, which could be and traditionally was
`
`performed mentally,1 or using a pen and paper, and display the result on the trading
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`screen.
`
`Although the ’556 patent ostensibly is directed to displaying “order
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`information in relation to a derivative of price,” the patent’s claims are limited to
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`displaying one type of “price derivative” information, namely profit or loss (“P/L”)
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`information, which is displayed in the “value axis” in the manner described above.
`
`(Ex. 1001; ’556 patent at 3:33-14, claim 1, claim 12.)
`
`C. The ’556 patent Claims
`
`The ’556 patent has 22 claims of which 1 and 12 are independent. Claims 1–
`
`11 are directed to a “method for displaying market information on a graphical user
`
`
`
`1 Indeed, the ’556 patent specification itself recognizes that such “quick mental
`
`calculations” were traditionally performed by traders. See ’556 patent at 2:22-25.
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`-9-
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`

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`interface,” while claims 12-22 are directed to a “computer readable medium.” Of
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`the two independent claims, claim 1 is representative, and as described above,
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`recites nothing more than displaying well-known financial information on a well-
`
`known graphical user interface used in financial trading:
`
`1. A method for displaying market information on a graphical
`
`user interface, the method comprising:
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`[a] receiving by a computing device a current highest bid price
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`and a current lowest ask price for a tradeable object from an electronic
`
`exchange;
`[b]
`position taken by a user with respect to the tradeable object, wherein
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`identifying by the computing device a long or short
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`the long position is associated with a quantity of the tradeable object
`
`that has been bought by the user at a price, and wherein the short
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`position is associated with a quantity of the tradeable object that has
`
`been sold by the user at a price;
`[c]
`based on the long or short position, wherein each of the plurality of
`
`computing by the computing device a plurality of values
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`values represents a profit or loss if the long or short position is closed
`
`displaying via the computing device the plurality of
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`at a price level among a range of price levels for the tradeable object;
`[d]
`values along a value axis;
`[e]
`first location corresponding to a first value along the value axis,
`
`displaying via the computing device a first indicator at a
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`wherein the first indicator represents a particular price based on any of
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`the following prices: current best bid, current best ask, and a last
`
`traded price, and wherein the first value represents a profit or loss in-
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`curred by the user if the long or short position is closed at the particu-
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`lar price; and
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`-10-
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`

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`[f] moving the first indicator relative to the value axis to a
`second location corresponding to a second value along the value
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`axis responsive to receipt of an update to the particular price,
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`wherein the second value represents a profit or loss incurred by the
`
`user if the position is closed at the update to the particular price.
`
`Claim 1 tracks the detailed description closely. First, in step [a], a computing
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`device receives from an electronic exchange a current highest bid price and a
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`current lowest ask (offer) price for a particular tradeable object (e.g., a stock).
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`Next, in step [b], the computing device receives from an electronic exchange
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`information relating to a long position (i.e., a quantity of units of the tradeable
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`object bought by the user) or to a short position (i.e., a quantity of units of the
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`tradeable object sold by the user).
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`Next, at steps [c] and [d], the computing device computes and displays a
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`Profit or Loss value for each of multiple price levels for the tradeable object. These
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`P/L values correspond to the above-described “value axis” shown in Fig. 8.
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`Next, at step [e], the computing device displays a “first indicator” at a
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`location corresponding to particular value along the value axis. The first indicator
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`is recited to be one of the “current best bid,” “current best ask” or a “last traded
`
`price” (“LTP”). Annotated Fig. 8 above illustrates all three, with the value 232
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`corresponding to the “current best ask” and the value 230 corresponding both to the
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`“current best bid,” and coincidentally, the “last traded price.”
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`Lastly, at step [f], upon receipt of updated market information from the elec-
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`tronic exchange, the computing device updates the display by “moving the first
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`indicator” (i.e., either the current best bid value, the current best ask value, or the
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`-11-
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`

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`last traded price) either up or down relative to the value axis to reflect the updated
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`market information.
`
`Independent claim 12, which is directed to a “computer readable medium,”
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`although directed to a different statutory class of subject matter, recites the same
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`method steps as claim 1, and therefore is invalid for the same reasons as claim 1, as
`
`described herein.
`
`The dependent claims – 2–11 and 13–22 – add nothing of significance to
`
`their respective independent claims. For example, claims 2-3 and 13-14 relate to
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`displaying “an order entry region” that allows a user to place an order “by a single
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`action of a user input device.” But the ’556 patent admits that single action
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`ordering was available in the prior art, e.g., in the prior art trading screen of Fig. 2:
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`“[T]raders may enter orders quickly through trading screen 200 by simply clicking,
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`with a mouse or some other input device, on specific areas on the screen associated
`
`with the price values.” (Ex. 1001, ’556 patent at 2:14-17.)
`
`Claims 4–7 and 15–18 merely specify that a “range of values” is displayed
`
`along the value axis, and whether those values represent a profit or a loss is
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`graphically indicated, e.g., by a plus or minus sign in front of a number.
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`Claims 8 and 19 each curiously recites that the “user represents a single
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`trader,” although the significance of that language is unclear.
`
`Claims 9 and 20 each recites “receiving a re-positioning command,”
`
`although the term “re-positioning” does not appear elsewhere in the patent and
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`nothing in the specification explains what is being repositioned or otherwise what
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`it means.
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`-12-
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`

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`Claims 10 and 21 each essentially recites performing another iteration of the
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`method recited in claim 1 by “identifying a new long or short position taken by the
`
`user,” computing a second plurality of values based on the new long or short posi-
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`tion,” and then displaying the second plurality of values along the value axis.
`
`Claims 11 and 22 each essentially recites a “second indicator” selected from
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`among the “current best bid,” “current best ask” or a “last traded price,” and then
`
`performing another iteration of the method of claim 1 using the second indicator.
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`In short, nothing in the dependent claims adds significantly more than well-
`
`known conventional subject matter to the basic concept of providing financial in-
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`formation to facilitate market trades.
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`V. GROUNDS FOR STANDING
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`Petitioners certify that the ’556 patent is available for CBM because TT sued
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`IBG for infringement of the ’556 patent. See TRADING TECHNOLOGIES
`
`INTERNATIONAL, INC. v. OPEN E CRY, LLC, OPTIONSXPRESS
`
`HOLDINGS, INC., ROSENTHAL COLLINS GROUP, LLC, TRADESTATION
`
`SECURITIES, INC., TRADESTATION GROUP, INC., IBG, LLC, TD
`
`AMERITRADE, INC., TD AMERITRADE HOLDING CORP., THINKORSWIM
`
`GROUP, INC., INTERACTIVE BROKERS, LLC, CQG, INC., CQGT, LLC,
`
`FUTUREPATH TRADING LLC, SUNGARD DATA SYSTEMS, INC.,
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`SUNGARD INVESTMENT VENTURES LLC, GL TRADE AMERICAS, INC.,
`
`STELLAR TRADING SYSTEMS, LTD., STELLAR TRADING SYSTEMS,
`
`INC., ESPEED MARKETS, LP, BGC CAPITAL MARKETS, LP, ECCOWARE
`
`LTD., CUNNINGHAM TRADING SYSTEMS, LLC, CUNNINGHAM
`
`-13-
`
`

`
`COMMODITIES, LLC, TRADEHELM, INC., Case No. 10-cv-0715 (N.D. Ill.).
`
`(Ex. 1006; Complaint for Patent Infringement). Petitioners are not barred or
`
`estopped from requesting CBM review. As explained below, it is more likely than
`
`not that at least one claim of the ’556 patent is invalid under 35 U.S.C. § 101.
`
`Moreover, CBM review is available for the ’556 patent for the reasons set forth
`
`below.
`
`A. The ’556 Patent Is Directed to a Covered Business Method
`
`The AIA defines a covered business method patent as “a patent that claims a
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`method or corresponding apparatus for performing data processing or other
`
`operations used in the practice, administration, or management of a financial
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`product or service, except that the term does not include patents for technological
`
`inventions.” AIA § 18(d)(1); see also 37 C.F.R. § 42.301. With regard to the
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`“financial product or service” requirement, the Board has interpreted this language
`
`broadly “to encompass patents claiming activities that are financial in nature,
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`incidental to financial activity, or complementary to financial activity.” (Ex. 1007,
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`CRS Advanced Technologies, Inc. v. Frontline Technologies, Inc., CBM2012-
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`00005, Paper No. 17 (Jan. 23, 2013).) The legislative history of § 18 provides clear
`
`support for that broad interpretation, and goes further. In that regard, Senator
`
`Schumer, co-sponsor of the AIA, put the following remarks in the legislative
`
`record:
`
`The plain meaning of “financial product or service” demonstrates that
`
`section 18 is not limited to the financial services industry. At its most
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`basic, a financial product is an agreement between two parties
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`-14-
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`stipulating movements of money or other consideration now or in the
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`future.
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`(Ex. 1008; 157 Cong. Rec. S5402 (daily ed. Sept. 8, 2011) (emphasis added).)
`
`Consistent with Senator Schumer’s comments, the Board has made clear that
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`the term “financial” or equivalent need not appear in the claims or the specification
`
`for the patent to qualify for CBM review. Rather, “[t]he term financial is an
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`adjective that simply means relating to monetary matters.” (Ex. 1009, SAP v.
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`Versata, CBM2012-00001, Paper No. 36 (Jan. 9, 2013) at 23. Therefore, the PTO
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`has broadly defined the term “covered business method patent” to encompass
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`patents claiming activities that are financial in nature, incidental to a financial
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`activity or complementary to a financial activity. See id. at 48735; see also SAP
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`Am., Inc. v. Versata Dev. Grp., Inc., CBM2012-00001, Decision to Institute (Paper
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`No. 36), at p. 23 (P.T.A.B. Jan. 9, 2013), aff’d Versata Dev. Group, Inc. v. SAP
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`Am., Inc., slip op. at 35-36 (Fed. Cir. July 9, 2015).
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`The ’556 patent, the underlying purpose of which is to facilitate financial
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`trades in an electronic market, falls squarely within the category of CBM-eligible
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`patents directed to financial activity. Indeed, the patent’s title includes the word
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`“price,” the common definition of which is “[t]he amount as of money or goods,
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`asked for or given in exchange for something else,” (Ex. 1010; The American
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`Heritage Dictionary of the English Language (4th Ed.)) leaving no doubt that the
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`’556 patent “relat[es] to monetary matters.” Moreover, each of independent claims
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`1 and 12 recites a method for receiving market information from an electronic
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`exchange, including bid prices, ask prices, and last traded prices, and calculating
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`monetary profits or losses that would be incurred by engaging in particular trading
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`transactions. As such, the claims clearly are directed to financial activity.
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`And the ’556 patent specification is rife with references demonstrating that
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`its claims can be applied to “activities that are financial in nature, incidental to
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`financial activity, or complementary to financial activity.” For example, the
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`following are only two of several such references:
`• “In one embodiment, electronic exchanges 302, 304, 306 represent
`electronic trading platforms that preferably support electronic
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`transactions of various kinds of tradeable objects. Examples of
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`more sophisticated electronic trading platforms include the London
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`International Financial Futures and Options Exchange (LIFFE), the
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`Chicago Board of Trade (CBOT), the Chicago Mercantile
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`Exchange (CME), the Exchange Electronic Trading (‘Xetra,’ a
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`German stock exchange), and the European Exchange (‘Eurex’).”
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`(Ex. 1001, ’556 patent at 4:13-21.)
`• “Each of the electronic exchanges 302, 304, 306 may host one or
`more computer-based electronic markets. Traders may connect to
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`the one or more electronic markets to trade tradeable objects. As
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`used herein, the term ‘tradeable objects,’ refers simply to anything
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`that can be traded with a quantity and/or price. It includes, but is not
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`limited to, all types of tradeable objects such events, goods and
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`financial products, which can include, for example, stocks, options,
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`bonds, futures, currency, and warrants, as well as funds, derivatives
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`and collections of the foregoing, and all types of commodities, such
`as grains, energy, and metals.” (Id. at 4:29-38; emphasis added.)
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`The above-noted references all are inherently financial, and thus necessarily are
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`“activities that are financial in nature, incidental to financial activity, or com-
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`plementary to financial activity.”
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`In short, no reasonable person could dispute that the ’556 patent satisfies the
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`“financial product or service” requirement for CBM review standing. Indeed, in
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`four other CBM review proceedings involving commonly assigned patents relating
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`to essentially the same trading screen GUI, the Board found that the patents in
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`questions satisfied the “financial” prong of the CBM eligibility inquiry.
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`2
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`B.
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`The ’556 Patent Is Not Directed to a Technological Inventi o n
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`The claims of the ’556 patent also meet Section 18’s threshold requirement
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`that a CBM patent must have at least one claim that is not directed to a
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`“technological invention.” See AIA § 18(d)(2). To qualify as a technological
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`invention, a patent must (i) have a novel, unobvious technological feature and (ii)
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`solve a technical problem using a technological solution. 37 C.F.R. § 42.301. The
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`legislative history of Section 18 indicates that the regulations for this determination
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`should exclude only “those patents whose novelty turns on a technological
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`innovation over the prior art and are concerned with a technical problem which is
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`solved with a technical solution and which requires the claims to state the technical
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`features which the inventor desires to protect” (see Ex. 1013, p. 48735 (citing
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`legislative history)).
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`
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`2 See CBM2014-00131, CBM2014-00133, CBM2014-00135 and CBM2014-
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`00137.
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`The Office has provided guidance regarding claim language that typically
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`would not render a patent a technological invention under 37 C.F.R. § 42.301(b):
`(a) Mere recitation of known technologies, such as computer
`hardware, communication or computer networks, software, memory,
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`computer readable storage medium, scanners, display devices or
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`databases, or specialized machines, such as an ATM or point of sale
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`device.
`(b) Reciting the use of known prior art technology to
`accomplish a process or method, even if that process or method is
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`novel and non-obvious.
`(c) Combining prior art structures to achieve the normal,
`expected, or predictable result of that combination.
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`(Ex. 1013, Patent Trial Practice Guide, pp. 48763-64.)
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`Claims 1-22 of the ’556 patent are not directed to a novel, unobvious techno-
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`logical feature or to a technical problem solved by a technical solution – a
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`conclusion compelled by several reasons.
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`First, the ’556 patent is not a “technological innovation over the prior art,”
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`among other reasons, because its claims do not recite a technological feature that is
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`novel and unobvious. Indeed, the claims make scant mention of any technology at
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`all, much less novel and unobvious technology. In independent claim 1, for exam-
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`ple, the only arguably technical features in the claim are “a graphical user
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`interface” and a “computing device” that performs standard computing functions
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`such as “receiving,” “identifying,” “computing,” and “displaying.” These terms
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`are, of course, merely generic technical terms referring to conventional technology.
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`As such, they necessarily cannot qualify as novel and unobvious technological
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`-18-
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`features. Similarly, the “machine readable medium” and “program code” of claim
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`12 are merely recitations of known technology,