Trials@uspto.gov
`Tel: 571-272-7822
`
`
`Paper 11
`Entered: August 17, 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.,
`Petitioner,
`
`v.
`
`TRADING TECHNOLOGIES INTERNATIONAL, INC.,
`Patent Owner.
`__________________
`
`Case CBM2016-00051
`Patent 7,904,374 B2
`_______________
`
`Before SALLY C. MEDLEY, MEREDITH C. PETRAVICK, and
`JEREMY M. PLENZLER, Administrative Patent Judges.
`
`
`PLENZLER, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Covered Business Method Patent Review
`37 C.F.R. § 42.208
`
`
`
`
`
`
`Tel: 571-272-7822
`
`
`Paper 11
`Entered: August 17, 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.,
`Petitioner,
`
`v.
`
`TRADING TECHNOLOGIES INTERNATIONAL, INC.,
`Patent Owner.
`__________________
`
`Case CBM2016-00051
`Patent 7,904,374 B2
`_______________
`
`Before SALLY C. MEDLEY, MEREDITH C. PETRAVICK, and
`JEREMY M. PLENZLER, Administrative Patent Judges.
`
`
`PLENZLER, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Covered Business Method Patent Review
`37 C.F.R. § 42.208
`
`
`
`
`
`
`
`CBM2016-00051
`Patent 7,904,374 B2
`
`
`A. Background
`
`INTRODUCTION
`
`IBG LLC, Interactive Brokers LLC, TradeStation Group, Inc., and
`
`TradeStation Securities, Inc. (collectively, “Petitioner”) filed a Petition on
`
`March 29, 2016 requesting covered business method patent review of claims
`
`1–36 (the “challenged claims”) of U.S. Patent No. 7,904,374 B2 (Ex. 1001,
`
`“the ’374 patent”). Paper 3 (“Pet.”). On July 5, 2016, Trading Technologies
`
`International, Inc. (“Patent Owner”) filed a Preliminary Response. Paper 8
`
`(“Prelim. Resp.”).
`
`We have jurisdiction under 35 U.S.C. § 324, which provides that a
`
`covered business method patent review may not be instituted “unless . . . it is
`
`more likely than not that at least 1 of the claims challenged in the petition is
`
`unpatentable.”
`
`Upon consideration of the Petition and Preliminary Response, we
`
`determine that Petitioner has demonstrated that it is more likely than not that
`
`the challenged claims are unpatentable. Accordingly, we institute a covered
`
`business method review of claims 1–36 of the ’374 patent.
`
`B. Related Proceedings
`
`The parties indicate numerous related U.S. district court proceedings,
`
`including at least one proceeding specifically directed to the ’374 patent.
`
`Pet. 2; Paper 6, 1–5.
`
`Numerous patents are related to the ’374 patent and the related patents
`
`are or were the subject of numerous petitions for covered business method
`
`patent review and reexamination proceedings.
`
`C. Asserted Grounds
`
`Petitioner contends that the challenged claims are unpatentable under
`
`35 U.S.C. § 101. Pet. 27–50.
`
`2
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`CBM2016-00051
`Patent 7,904,374 B2
`
`
`Petitioner provides testimony from Kendyl A. Román (Ex. 1011; “the
`
`Román Declaration”) to support its challenges.
`
`D. The ’374 Patent
`
`The ’374 patent is titled “Click Based Trading with Intuitive Grid
`
`Display of Market Depth.” Ex. 1001, (54). The ’374 patent describes a
`
`display, named the “Mercury” display, and method of using the display to
`
`trade a commodity. Id. at Abstract, 3:5–10. The ’374 patent explains that
`
`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 3:11–20. The Mercury display is
`
`depicted in Figure 3, which is reproduced below.
`
`Figure 3 of the ’374 patent illustrates an example of the Mercury display
`
`with example values for trading a commodity including prices, bid and ask
`
`quantities relative to price, and trade quantities.
`
`
`
`3
`
`
`
`CBM2016-00051
`Patent 7,904,374 B2
`
`
`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 7:23–25. The ’374 patent explains that “[t]he column
`
`does not list the whole prices (e.g. 95.89), but rather, just the last two digits
`
`(e.g. 89).” Id. at 7:25–26. 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 7:23–37.
`
`The ’374 patent explains that “[t]he exchange sends the price, order and fill
`
`information to each trader on the exchange” and that “[t]he physical
`
`mapping of such information to a screen grid can be done by any technique
`
`known to those skilled in the art.” Id. at 4:59–66.
`
`Column 1002 contains various parameters and information used to
`
`execute trades, such as the default quantity displayed in cell 1016. See id. at
`
`7:55–8:23. A trader executes trades using the Mercury display by first
`
`setting the desired commodity and default parameters, such as default
`
`quantity. See id. at 8:56–9:3; Fig. 6, step 1302. Then, a trader can send a
`
`buy order or sell order to the market with a single action, such as clicking on
`
`the appropriate cell in column 1003 or 1004. See id. at 8:60–9:48; Fig. 6,
`
`steps 1306–1315.
`
`E. Illustrative Claim
`
`As noted above, Petitioner challenges claims 1–36. Claims 1 and 36
`
`are independent, with claims 2–35 depending from claim 1. Claim 1 is
`
`representative, and is reproduced below:
`
`1. A method for facilitating trade order entry, the method
`comprising:
`
`receiving, by a computing device, market data for a
`commodity, the market data comprising a current highest
`
`4
`
`
`
`CBM2016-00051
`Patent 7,904,374 B2
`
`
`bid price and a current lowest ask price available for the
`commodity;
`
`identifying, by the computing device, a plurality of sequential
`price levels for the commodity based on the market data,
`where the plurality of sequential price levels includes the
`current highest bid price and the current lowest ask price;
`
`displaying, by the computing device, a plurality of graphical
`locations aligned along an axis, where each graphical
`location is configured to be selected by a single action of
`a user input device to send a trade order to the electronic
`exchange, where a price of the trade order is based on the
`selected graphical location;
`
`mapping, by the computing device, the plurality of sequential
`price levels to the plurality of graphical locations, where
`each graphical location corresponds to one of the plurality
`of sequential price levels, where each price level
`corresponds to at least one of the plurality of graphical
`locations, and where mapping of the plurality of sequential
`price levels does not change at a time when at least one of
`the current highest bid price and the current lowest ask
`price changes; and
`
`setting a price and sending the trade order to the electronic
`exchange in response to receiving by the computing
`device commands based on user actions consisting of:
`
`(l) placing a cursor associated with the user input device
`over a desired graphical location of the plurality of
`graphical locations and (2) selecting the desired graphical
`location through a single action of the user input device.
`
`Ex. 1001, 11:39–12:5.
`
`
`
`A. Claim Construction
`
`ANALYSIS
`
`In a covered business method patent review, claim terms are given
`
`their broadest reasonable interpretation in light of the specification in which
`
`5
`
`
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`CBM2016-00051
`Patent 7,904,374 B2
`
`they appear and the understanding of others skilled in the relevant art. See
`
`37 C.F.R. § 42.300(b).
`
`Applying that standard, we interpret the claim terms of the ’374 patent
`
`according to their ordinary and customary meaning in the context of the
`
`patent’s written description. See In re Translogic Tech., Inc., 504 F.3d 1249,
`
`1257 (Fed. Cir. 2007). Any special definitions for claim terms must be set
`
`forth with reasonable clarity, deliberateness, and precision. In re Paulsen,
`
`30 F.3d 1475, 1480 (Fed. Cir. 1994). Petitioner proposes a construction for
`
`“mapping, by the computing device, the plurality of sequential price levels
`
`to the plurality of graphical locations” (“the mapping limitation”),
`
`“computer readable medium,” and “single action.” Pet. 24–27. Patent
`
`Owner does not propose any explicit claim construction (Prelim Resp. 2
`
`n.1), but addresses Petitioner’s proposed construction of “computer readable
`
`medium” (id. at 36–38). We determine that the terms discussed below are
`
`the only terms requiring explicit construction in order to conduct properly
`
`our analysis of the asserted challenge.
`
`1. mapping limitation
`
`Claims 1 and 36 each include the mapping limitation. Petitioner
`
`proposes that the mapping limitation “includes creating a logical correlation
`
`between each of the sequential price levels and a location along an axis
`
`corresponding to an associated graphical location but also is broad enough to
`
`include displaying the plurality of sequential price levels at screen positions
`
`corresponding to the logical correlations.” Pet. 25 (emphases omitted).
`
`Petitioner cites column 4, lines 60–67 of the ’374 patent, as well as
`
`paragraph 75 of the Román Declaration in support of its proposed
`
`construction. Id. at 25–26. In particular, Petitioner notes that “in view of
`
`6
`
`
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`CBM2016-00051
`Patent 7,904,374 B2
`
`the claim language requiring that ‘the plurality of graphical locations [are]
`
`aligned along an axis,’ it follows that the price levels are displayed along the
`
`same axis as the graphical locations.” Id. at 26 (citing Ex. 1011 ¶ 75).
`
`Patent Owner does not provide an express construction for the
`
`mapping limitation, but discusses that limitation when it addresses the
`
`challenge under 35 U.S.C. § 101. See Prelim. Resp. 35–36. Patent Owner
`
`contends that “[t]he Petition confuses the mapping techniques discussed in
`
`the Specification at column 4, lines 60–67, with the ‘mapping’ recited in
`
`TT’s claims” and that “TT’s claims do not cover a new way of mapping data
`
`to a screen as that term is used in the specification.” Id. at 35. Patent Owner
`
`contends that “[t]he ‘mapping’ features of the claims, in contrast, specify the
`
`particular locations on the screen and their correlation” and that “the claims
`
`define the association of the plurality of sequential price levels to the
`
`graphical locations configured to be selected by a single action to send a
`
`trade order.” Id. at 35–36. Patent Owner does not cite any particular portion
`
`of the ’374 patent specification in support of its position.
`
`For purposes of this decision, we determine that the mapping
`
`limitation requires defining a correspondence between the sequential price
`
`levels and the graphical locations (i.e., a sequential price level is assigned to
`
`each graphical location), such that “each graphical location corresponds to
`
`one of the plurality of sequential price levels” and “each price level
`
`corresponds to at least one of the plurality of graphical locations.” This
`
`interpretation appears to be consistent with both that advanced by Petitioner
`
`and that advanced by Patent Owner. We do not read this limitation as
`
`requiring that any price level is displayed.
`
`7
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`CBM2016-00051
`Patent 7,904,374 B2
`
`
`2. “single action”
`
`Claim 1 recites that “each graphical location is configured to be
`
`selected by a single action of a user input device to send a trade order to the
`
`electronic exchange” and “(1) placing a cursor . . . over a desired graphical
`
`location . . . and (2) selecting the desired graphical location through a single
`
`action of the user input device.” Petitioner contends that
`
`The specification defines this term: “any action by a user within
`a short period of time, whether comprising one or more clicks of
`a mouse button or other input device, is considered a single
`action of the user for the purposes of the present invention.”
`(’374 patent, 4:7–9)
`
`Pet. 27. Patent Owner does not dispute this construction. Upon review, we
`
`agree, and adopt that construction for purposes of this decision.
`
`3. “a computer readable medium having stored therein
`instructions”
`
`Claim 36 is directed to a “computer readable medium having stored
`
`therein instructions.” The parties dispute whether the claim covers transitory
`
`media.
`
`Petitioner contends that “the BRI of ‘medium’ is ‘an intervening
`
`substance through which something else is transmitted or carried on.’” Pet.
`
`26 (emphases omitted). Petitioner further contends that “[t]his definition is
`
`consistent with the specification and file history, and with the dictionary
`
`definition submitted herewith” and that “[n]either the claims nor the
`
`specification limits the nature of the claimed computer readable medium.”
`
`Id. (citing Ex. 1016). Petitioner contends that “by reciting a ‘computer
`
`readable medium,’ without limiting the medium to being ‘non-transitory’ or
`
`the like, claim 36 encompass [patent-ineligible] subject matter (namely,
`
`8
`
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`CBM2016-00051
`Patent 7,904,374 B2
`
`transitory media).” Id. Petitioner does not address specifically how the term
`
`“stored” affects the claim.
`
`Patent Owner does not dispute that the specification of the ’374 patent
`
`neither defines this term nor provides examples for a “computer readable
`
`medium,” and after reviewing the specification we see no reference to
`
`“computer readable medium” other than that in the claims. Patent Owner
`
`contends, however, that “[l]ooking to technical dictionaries, ‘storage’
`
`connotes ‘a device in which data can be entered, in which it can be held, and
`
`from which it can be retrieved at a later time’ and ‘[a]ny medium in which
`
`data can be retained.’” Prelim. Resp. 37 (quoting Ex. 2182). Applying that
`
`definition, Patent Owner contends that the word “stored” limits the claims to
`
`non-transitory media because “[a] signal cannot hold or retain itself, and
`
`thus the claims cannot cover a signal per se.” Id.
`
`The broadest reasonable interpretation, in light of the specification, of
`
`“stored” is an issue that requires further development of the record. In
`
`related covered business method patent review proceedings, we will address
`
`similar issues on a more fully developed record.1 For the purposes of the
`
`present preliminary proceeding, we determine that the broadest reasonable
`
`interpretation of “computer readable medium having program code stored
`
`thereon” encompasses transitory media. That construction is not required to
`
`reach our decision to institute trial as to patent eligibility under 35 U.S.C.
`
`§ 101.2
`
`
`1 The construction of “recorded” in a similar context is at issue in
`CBM2015-00181, CBM2015–00182, and CBM2016-00031.
`2 If claim 36 encompasses transitory, propagating signals, they are not
`covered by the four statutory classes of subject matter of 35 U.S.C. § 101.
`In re Nuijten, 500 F.3d 1346, 1352 (Fed. Cir. 2007). As explained below,
`
`9
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`CBM2016-00051
`Patent 7,904,374 B2
`
`
`4. Claim Scope
`
`Before analyzing whether the ’374 patent qualifies as a “covered
`
`business method patent” or whether it is directed to patent-ineligible subject
`
`matter under 35 U.S.C. § 101, it is worth discussing the scope of the claims
`
`at issue in the ’374 patent. This discussion is relevant because Patent Owner
`
`repeatedly makes assertions regarding the scope of these claims relative to
`
`those in related patents, such as U.S. Patent No. 6,766,304 B2 (“the ’304
`
`patent”) and U.S. Patent No. 6,772,132 B1 (“the ’132 patent”), which are the
`
`subject of co-pending proceedings (CBM2015-00161 and CBM2015-00182,
`
`respectively). See, e.g., Prelim. Resp. 26–27 (Patent Owner notes that “[t]he
`
`Federal Circuit . . . summarized the claimed invention of the ’132 and ’304
`
`patents as a GUI that . . . provides ‘numerous advantages over the prior art’
`
`. . . by allowing users to ‘visually follow the market movement as the inside
`
`market shifts up and down along the price column’” and that “[t]he same
`
`analysis applies equally to the ’374 patent.”).
`
`It is worth noting what claims 1 and 36 of the ’374 patent, for
`
`example, do not require. For example, we see no requirement in claim 1 or
`
`claim 36 that any price information is displayed. Unlike the claims at issue
`
`in the related proceedings (see, e.g., CBM2015-00181 and 182), these claims
`
`do not recite a “static price” axis or even a “price” axis. Claims 1 and 36,
`
`for example, simply require “displaying . . . graphical locations . . . along an
`
`axis.” Those claims do not require that the graphical locations display the
`
`price levels that are mapped to them, any other information, or even any
`
`
`however, even if claim 36 were to fit within one of the categories of patent-
`eligibility, we are persuaded on the current record that it does not recite
`patent-eligible subject matter.
`
`10
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`CBM2016-00051
`Patent 7,904,374 B2
`
`indication as to which of those graphical locations correspond to bids and
`
`which correspond to asks. Accordingly, we are not apprised as to how those
`
`claims provide any indication to a user of market information, such as price,
`
`order quantity, or order type. Based on the claim limitations, the graphical
`
`locations simply could be “black boxes” with price values associated with
`
`them, and no information provided to the user indicating that price value, the
`
`order quantity, or the order type.
`
`Indeed, these claims are drafted at such a high level of abstraction that
`
`it is difficult to imagine the bounds of their application.
`
`B. Covered Business Method Patent
`
`Section 18 of the AIA3 provides for the creation of a transitional
`
`program for reviewing covered business method patents. A “covered
`
`business method patent” is a patent that “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,
`
`except that the term does not include patents for technological inventions.”
`
`AIA § 18(d)(1); see 37 C.F.R. § 42.301(a). A patent need have only one
`
`claim directed to a covered business method to be eligible for review. See
`
`Transitional Program for Covered Business Method Patents—Definitions of
`
`Covered Business Method Patent and Technological Invention, 77 Fed. Reg.
`
`48,734, 48,736 (Aug. 14, 2012) (“CBM Rules”) (Comment 8).
`
`
`3 Leahy-Smith America Invents Act, Pub. L. No. 112–29, 125 Stat. 284, 329
`(2011) (“AIA”).
`
`11
`
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`CBM2016-00051
`Patent 7,904,374 B2
`
`
`1. Data Processing or Other Operations used in a Financial
`Product or Service
`
`Petitioner contends that “the ’374 patent claims expressly require the
`
`performance of a financial transaction, e.g., by ‘facilitating trade order entry’
`
`through steps including ‘receiving market data for a commodity,’ and
`
`‘setting a price and sending the trade order to the electronic exchange.’” Pet.
`
`17 (citing claim 1 of the ’374 patent). Based on this record, we agree with
`
`Petitioner that these activities are financial in nature.
`
`Patent Owner does not dispute that the claims are directed to a
`
`financial product or service and, instead, contends that the claims are not
`
`directed to “data processing or other operations” of the financial product or
`
`service. Prelim. Resp. 38–48. Patent Owner’s contentions are unpersuasive.
`
`Claim 1 encompasses processing financial data associated with a
`
`commodity and processing financial data for sending a trade order for a
`
`commodity to an exchange. See Ex. 1001, 4:60–64 (“[t]he present invention
`
`processes this information and maps it . . . to a screen.”); 10:52–54 (“[t]he
`
`process for placing trade orders using the Mercury display”). This
`
`processing of financial data is used in the practice, administration, or
`
`management of a commodity, which is a financial product, and in the
`
`practice, administration, or management of electronic trading with an
`
`exchange, which is a financial service or activity.
`
`Patent Owner additionally contends that “the Legislative History is
`
`clear that business method patents are the types of patents that are meant to
`
`be within the jurisdictional scope of a CBMR” and that “the ’374 patent,
`
`which claims the structure, make-up, and functionality of a GUI tool . . . is
`
`not that type of patent.” Prelim. Resp. 54–55. Patent Owner cites to various
`
`12
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`CBM2016-00051
`Patent 7,904,374 B2
`
`portions of the legislative history as support for its proposed interpretation.
`
`Id. at 52–54.
`
`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. at 48,735 (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 to “encompass patents ‘claiming activities that are
`
`financial in nature, incidental to a financial activity or complementary to a
`
`financial activity.’” Id.; see Versata Dev. Grp., Inc. v. SAP America, Inc.,
`
`793 F.3d 1306, 1323–26 (Fed. Cir. 2015).
`
`We are not persuaded by Patent Owner’s argument regarding the
`
`legislative history of the AIA. See Prelim. Resp. 52–55. Although the
`
`legislative history includes certain statements that certain novel software
`
`tools and graphical user interfaces that are used by the electronic trading
`
`industry worker are not the target of § 18 of the AIA (see id. at 53–54
`
`(reproducing statements by Senator Durbin and Schumer)), the language of
`
`the AIA, as passed, does not include an exemption for all user interfaces for
`
`trading commodities from covered business method patent review. Each
`
`patent has to be evaluated individually to determine if it is eligible for a
`
`covered business method patent review. A determination of whether a
`
`patent is eligible for a covered business method patent review under the
`
`statute is made on a case-by-case basis on the facts of each case. 37 C.F.R.
`
`§ 42.301(b).
`
`For the reasons stated above, and based on the particular facts of this
`
`proceeding, we conclude that the ’374 patent “claims a method or
`
`13
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`corresponding apparatus for performing data processing or other operations
`
`used in the practice, administration, or management of a financial product or
`
`service” and meets that requirement of § 18(d)(1) of the AIA.
`
`2. Exclusion 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).
`
`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.
`
`(c) Combining prior art structures to achieve the normal,
`expected, or predictable result of that combination.
`
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,763–64 (Aug.
`
`14, 2012).
`
`Both prongs must be satisfied in order for the patent to be excluded as
`
`a technological invention. See Versata, 793 F.3d at 1326–27.
`
`Petitioner contends that rather than reciting a technical feature that is
`
`novel or unobvious over the prior art, the claims of the ’374 patent generally
`
`recite trading software that is implemented on a conventional computer.
`
`14
`
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`CBM2016-00051
`Patent 7,904,374 B2
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`Pet. 19–22. Patent Owner disagrees, arguing that GUI features in the claims
`
`provide novel and non-obvious technological features. Prelim. Resp. 48–52.
`
`We are persuaded by Petitioner’s contentions that at least claim 1 of
`
`the ’374 patent does not recite a novel and non-obvious technological
`
`feature. The specification of the ’374 patent treats as well-known all
`
`potentially technological aspects of the claims. For example, the ’374 patent
`
`discloses that its system can be implemented “on any existing or future
`
`terminal or device” (Ex. 1001, 4:4–7), each of which is known to include a
`
`display, and discloses that the input device can be a mouse (id. at 4:8–11),
`
`which is a known input device. The ’374 patent further discloses that “[t]he
`
`scope of the present invention is not limited by the type of terminal or device
`
`used.” Id. at 4:7–8.
`
`Although Patent Owner contends that it is “irrelevant . . . that the
`
`claimed GUI tool can be run on conventional computer equipment” (Prelim.
`
`Resp. 44), we are not apprised of anything else that imparts a novel and non-
`
`obvious technological feature into the claims. For example, the ’374 patent
`
`explains that the programming associated with the GUI is insignificant. See,
`
`e.g., Ex. 1001, 4:60–67 (explaining that the “present invention processes
`
`[price, order, and fill] information and maps it through simple algorithms
`
`and mapping tables to positions in a theoretical grid program” and “[t]he
`
`physical mapping of such information to a screen grid can be done by any
`
`technique known to those skilled in the art”).
`
`Petitioner additionally asserts that the claims of the ’374 patent do not
`
`fall within § 18(d)(1)’s exclusion for “technological inventions” because the
`
`’374 patent does not solve a technical problem using a technical solution.
`
`Pet. 22–24. Petitioner notes that the ’374 patent “purports to minimize the
`
`15
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`CBM2016-00051
`Patent 7,904,374 B2
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`risk of the market price changing before the trade is executed, such that the
`
`trader ‘misses the price.’” Id. at 22 (citing Ex. 1001, 2:57–59; 3:2–4).
`
`Petitioner argues that “contending with price fluctuations in a market is not a
`
`technological problem.” Id. Petitioner contends that “the ’374 patent does
`
`not offer a technical solution” because “[i]t does not claim a more accurate
`
`mouse or a computer that responds faster.” Id. at 23.
`
`We are persuaded that the ’374 patent does not solve a technical
`
`problem with a technical solution. The ’374 patent purports to solve the
`
`problem of a user missing an intended price because a price level changed as
`
`the user tried to click to send an order at an intended price level in a GUI
`
`tool. See Ex. 1001, 2:25–62. As written, claim 1 requires the use of only
`
`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 of 37 C.F.R. § 42.301(b).
`
`3. Conclusion
`
`In view of the foregoing, we conclude that the ’374 patent is a covered
`
`business method patent under AIA § 18(d)(1) and is eligible for review
`
`using the transitional covered business method patent program.
`
`C. Section 101 Patent-Eligible Subject Matter
`
`Petitioner challenges claims 1–36 as directed to patent-ineligible
`
`subject matter under 35 U.S.C. § 101. Pet. 28–50. Patent Owner disagrees.
`
`Prelim. Resp. 18–38.
`
`Under 35 U.S.C. § 101, we must first identify whether an invention
`
`fits within one of the four statutorily provided categories of patent-
`
`eligibility: “processes, machines, manufactures, and compositions of
`
`matter.” Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 713–14 (Fed. Cir.
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`16
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`CBM2016-00051
`Patent 7,904,374 B2
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`2014). There is no dispute that claims 1–35 fit within one of the categories
`
`of patent-eligibility. Even if claim 36 were to fit within one of the categories
`
`of patent-eligibility, we are persuaded that claims 1–36 do not recite patent-
`
`eligible subject matter for the reasons that follow.
`
`1. Abstract Idea
`
`Section 101 “contains an important implicit exception to subject
`
`matter eligibility: Laws of nature, natural phenomena, and abstract ideas are
`
`not patentable.” Alice Corp. Pty. Ltd. V. CLS Bank. Int’l, 134 S. Ct. 2347,
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`2354 (2014) (citing Assoc. for Molecular Pathology v. Myriad Genetics,
`
`Inc., 133 S. Ct. 2107, 2116 (2013)). In Alice, the Supreme Court reiterated
`
`the framework set forth previously in Mayo Collaborative Services v.
`
`Prometheus Labs., Inc., 132 S. Ct. 1289, 1293 (2012) “for distinguishing
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`patents that claim laws of nature, natural phenomena, and abstract ideas
`
`from those that claim patent-eligible applications of those concepts.” Alice,
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`134 S. Ct. at 2355. The first step in the analysis is to “determine whether the
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`claims at issue are directed to one of those patent-ineligible concepts.” Id.
`
`Petitioner argues that the challenged claims “are directed to the
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`abstract, fundamental economic practice of trading based on displayed
`
`market information and user input.” Pet. 29. Patent Owner contends that
`
`“Petitioners . . . omit the core features of the claims and instead depict an
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`over-generalized and “untethered” characterization that cannot be tied to the
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`claims” (Prelim. Resp. 20), but does not identify anything in the claims that
`
`removes them from being directed to an abstract idea (see id. at 19–21).
`
`Indeed, throughout its discussion of whether the claims are directed to an
`
`abstract idea, Patent Owner does not reference any specific claim limitation
`
`or combination of limitations.
`
`17
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`CBM2016-00051
`Patent 7,904,374 B2
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`Patent Owner alleges that “the specific improvement to the structure,
`
`make-up, and functionality of the GUI itself, as recited in the claims,
`
`inherently improves the functioning of the computer by allowing the
`
`computer to be used in a new and inventive way.” Id. at 22 (citing Enfish,
`
`LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016)). Patent
`
`Owner contends that “the claimed invention improves the functioning of the
`
`computer because it solves problems that were caused by the computer” and
`
`“the claimed invention improves the functioning of the computer because it
`
`sets forth a construction of a GUI tool that improves the speed, accuracy and
`
`usability of a GUI,” but offers no explanation as to how the claimed
`
`arrangement solves these alleged problems or improves the speed, accuracy,
`
`and usability of a GUI. Prelim. Resp. 23. In view of our discussion of claim
`
`scope above, it is difficult to imagine how the claimed arrangement
`
`improves the usability of a GUI. Furthermore, it is unclear how the GUI of
`
`the ’374 patent improves the functionality of the computer.
`
`Patent Owner contends that “[a] GUI is an integral component of a
`
`computer, just as the processor, memory, and network interface are” and that
`
`“[t]he structure, make-up, and functionality of a GUI is as much a physical
`
`and integral part of a computer as a processor or memory, and improvements
`
`to GUIs are just as eligible for patent protection as any other computer-
`
`related technology.” Id. at 22, 24 (citing Mortg. Grader, Inc. v. First Choice
`
`Loan Servs., Inc., 811 F.3d 1314, 1324 (Fed. Cir. 2016); Intellectual
`
`Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1370 (Fed. Cir.
`
`2015)). We are not persuaded that the authority cited by Patent Owner
`
`supports the position that a claim directed to a GUI cannot be directed to an
`
`abstract idea.
`
`18
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`CBM2016-00051
`Patent 7,904,374 B2
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`Patent Owner presents additional contentions based on statements
`
`from courts in related proceedings addressing different patents (i.e., the ’132
`
`patent and the ’304 patent). Prelim. Resp. 26. Those statements are of little
`
`use to us in this proceeding, as the claim scope is different in the ’374 patent
`
`and Patent Owner offers no explanation as to how those contentions apply to
`
`the claims at issue in this proceeding.
`
`Claim 1 is directed to a “method” and claim 36 is directed to a
`
`“computer readable medium.” We are persuaded that the challenged claims
`
`are more likely than not drawn to a patent-ineligible abstract idea. The ’374
`
`patent purports to solve the problem of reducing the amount of time to place
`
`a trade order. See Ex. 1001, 2:66–3:2. Claims 1 and 36 are directed to
`
`setting trade parameters and sending a trade order with a single action. As
`
`explained above, claims 1 and 36, for example, do not appear to require
`
`displaying any type of market information, such as price level, order
`
`quantity, or even order type. Accordingly, the concept embodied by the
`
`majority of the limitations appears to be even broader than that suggested by
`
`Petitioner. Claims 1 and 36 describe only the abstract idea of receiving user
`
`input and placing a trade order.
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