`571.272.7822
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`Paper No. 19
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`Entered: December 2, 2014
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`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 CBM2014-00135
`Patent No. 6,772,132 B1
`____________
`
`Before SALLY C. MEDLEY, MEREDITH C. PETRAVICK, and
`PHILIP J. HOFFMANN, Administrative Patent Judges.
`
`HOFFMANN, Administrative Patent Judge.
`
`DECISION
`Institution of Covered Business Method Patent Review
`37 C.F.R. § 42.208
`
`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 19, 2014, which requests review under the
`
`0001
`
`IBG 1032
`CBM of U.S. Patent No. 7,693,768
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`CBM2014-00135
`Patent 6,772,132 B1
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`transitional program for covered business method patents of U.S. Patent No.
`6,772,132 B1 (Ex. 1001, “the ’132 patent”). Trading Technologies
`International, Inc. (“Patent Owner”) filed a Preliminary Response (Paper 17,
`“Prelim. Resp.”) on September 3, 2014. We have jurisdiction under
`35 U.S.C. § 324, which provides that 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 1–56 (“the challenged
`claims”) of the ’132 patent under 35 U.S.C. §§ 101, 103, and 112. We
`determine that the Petition demonstrates it is more likely than not that the
`challenged claims are unpatentable under 35 U.S.C. § 101, and therefore we
`institute a covered business method patent review of claims 1–56 of the ’132
`patent.
`
`B. Related Matters
`Petitioner and Patent Owner identify numerous related U.S. District
`
`Court cases. See Pet. 2–3; see also 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. 6,766,304 is the subject of TD Ameritrade Holding Corp. v. Trading
`Technologies International, Inc., Case CBM2014-00136 (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 related U.S. Patent
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`Patent 6,772,132 B1
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`No. 6,766,304 was the subject of Reexamination, Control No. 90/008,577,
`and that the ’132 patent was the subject of Reexamination, Control No.
`90/008,576 and Reexamination, Control No. 90/011,250. Id.
`
`C. The ’132 Patent (Ex. 1001)
`The ’132 patent is titled “Click Based Trading with Intuitive Grid
`
`Display of Market Depth,” and issued August 3, 2004, from Application No.
`09/590,692, filed June 9, 2000. Ex. 1001, 1. Application No. 09/590,692
`claims priority to Provisional Application No. 60/186,322, filed March 2,
`2000. Id.
`
`The ’132 patent discloses a “Mercury” display and method of using
`the Mercury display to trade a commodity. Id. at Abstract; col. 3, ll. 5–6.
`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 in an efficient manner. See id. at col. 3, ll. 7–24.
`The Mercury display is depicted in Figure 3 of the ’132 patent, which
`is reproduced below.
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`3
`0003
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`Patent 6,772,132 B1
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`Fig. 3 depicts the Mercury display of the ’132 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. 36–48. 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, ll. 35–51. Column 1002 contains various parameters and
`information used to execute trades, such as the default quantity listed in cell
`1016. See id. at col. 8, ll. 3–37.
`
`A trader executes trades using the Mercury display by first setting the
`desired commodity and default parameters, such as default quantity. See id.
`at col. 9, ll. 3–17; 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
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`4
`0004
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`appropriate cell in column 1003 or 1004. See id. at col. 9, l. 7–col. 10, l. 3;
`Fig. 6, steps 1306–1315.
`
`Claim 1 of the ’132 patent is illustrative of the challenged claims and
`is reproduced below:
`1. A method of placing a trade order for a commodity on an
`electronic exchange having an inside market with a highest bid
`price and a lowest ask price, using a graphical user interface
`and a user input device, said method comprising:
`setting a preset parameter for the trade order
`displaying market depth of the commodity, through a dynamic
`display of a plurality of bids and a plurality of asks in the
`market for the commodity, including at least a portion of the
`bid and ask quantities of the commodity, the dynamic display
`being aligned with a static display of prices corresponding
`thereto, wherein the static display of prices does not move in
`response to a change in the inside market;
`displaying an order entry region aligned with the static display
`prices comprising a plurality of areas for receiving commands
`from the user input devices to send trade orders, each area
`corresponding to a price of the static display of prices; and
`selecting a particular area in the order entry region through
`single action of the user input device with a pointer of the user
`input device positioned over the particular area to set a plurality
`of additional parameters for the trade order and send the trade
`order to the electronic exchange.
`
`D. Alleged Grounds of Unpatentability
`Petitioner sets forth grounds of unpatentability of the challenged
`
`claims as follows:
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`5
`0005
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`Ground Prior Art
`§ 101
`n/a
`§ 112
`n/a
`Silverman,1 Gutterman,2 and
`§ 103
`Togher3
`Silverman, Gutterman,
`Togher, and May4
`Silverman, Gutterman,
`Togher, and Paal5
`TSE6 and Togher
`
`§ 103
`
`§ 103
`
`§ 103
`
`§ 103
`
`TSE, Togher, and Gutterman
`
`§ 103
`
`TSE, Togher, and May
`
`Challenged Claims
`1–56
`1–56
`1–3, 5–10, 12–16, 18–23, 25–28,
`30–33, 35–43, 45–48, and 50–56
`4, 11, and 17
`
`24, 34, and 44
`
`1–3, 6–10, 13–16, 19–22, 24–28,
`30–32, 34– 38, 40–42, 44–48, 50–
`56
`5, 6, 12, 13, 16, 18, 19, 23, 26, 33,
`36, 39, 43, and 46
`4, 11, and 17
`
`
`1 Silverman et al., U.S. Patent No. 5,077,665 (issued Dec. 31, 1991) (Ex.
`1007).
`2 Gutterman et al., U.S. Patent No. 5,297,031 (issued Mar. 22, 1994) (Ex.
`1008).
`3 Togher et al., U.S. Patent No. 5,375,055 (issued Dec. 20, 1994) (Ex. 1009).
`4 May, CA 2 305 736 (published Apr. 6, 2000) (Ex. 1010).
`5 Paal et al., U.S. Patent No. 5,263,134 (issued Nov. 16, 1993) (Ex. 1011).
`6 TOKYO STOCK EXCHANGE OPERATION SYSTEM DIVISION, FUTURES/OPTION
`PURCHASING SYSTEM TRADING TERMINAL OPERATION GUIDE (1998) (Ex.
`1013). We note that this is an English translation of Ex. 1012, which is in
`Japanese. See Ex. 1014.
`
`6
`0006
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`II. ANALYSIS
`A. Requirements for Covered Business Method Patent Review
`Section 18 of the AIA7 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 ’132 patent. Pet. 4; Paper 7, 2. For reasons
`discussed below, we find that the ’132 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 the ’132 patent is a covered business method
`patent because the claims require 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, 8, and
`14 recite such a method because they require a GUI that displays
`
`
`7 Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284, 329
`(2011) (“AIA”).
`
`7
`0007
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`information, such as bids and asks, for a market, and creates and sends trade
`orders to an electronic exchange. See id.
`Patent Owner disputes that the ’132 patent is directed to a method for
`performing data processing in the practice, administration or management of
`a financial product or service (see Prelim. Resp. 2–3) because the claims of
`the ’132 patent are directed to “purely technological” tools (id. at 3). Patent
`Owner argues that, although used in the field of trading, the ’132 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
`(see id. at 27–28), and “not in any business method or practice” (id. at 27).
`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 ’132 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 of placing a trade order for a commodity on an electronic
`
`8
`0008
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`exchange having an inside market with a highest bid price and a lowest ask
`price, using a graphical user interface and a user input device.” The claim
`recites steps of displaying market information, including indicators of asks
`and bids in the market, and recites steps of setting trade order parameters
`and sending a trade order to an electronic exchange. Displaying market
`information and sending a trade order to an electronic exchange are activities
`that are financial in nature. Given this, we determine that at least claim 1 of
`the ’132 patent claims 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) and, therefore, we determine that the
`’132 patent is a covered business method patent in accordance with
`37 C.F.R. § 42.301(a).
`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 ’132
`patent is a covered business method patent because it is not for a
`technological invention inasmuch as 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. See Pet. 5–8. First, 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, Petitioner argues that the claims do not solve
`a technical problem using a technical solution because the claims are
`
`9
`0009
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`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 ’132 patent is for a
`technological invention and, therefore, is not a covered business method
`patent. See Prelim. Resp. 42–53. First, Patent Owner argues that the claims
`recite a technical feature because they combine structural and functional
`features of the claimed GUI tool in a novel and non-obvious way. See id. at
`51–53. Second, Patent Owner argues that the claims solve the technical
`problem of submitting orders to the exchange with speed and accuracy with
`the technical solution of the combined structural and functional features of
`the claimed GUI tool. See id. at 42–50.
`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).
`
`10
`0010
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`On this record, and taking into account Patent Owner’s argument, we
`are persuaded by Petitioner that the ’132 patent does not solve a technical
`problem with a technical solution. The ’132 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. 23–63. The ’132 patent solves this problem, as stated in claim 1, 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 written,
`claim 1 requires the use of a display, an input device, and a GUI (i.e.,
`software), which all were 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). Accordingly, we find that regardless of whether the ’132 patent
`does or does not recite novel and unobvious technical features, the ’132
`patent is eligible for covered business method patent review.
`Notwithstanding our determination above, on this record, we also are
`persuaded by Petitioner that the ’132 patent does not solve a technical
`problem with a technical solution. As stated above, the ’132 patent solves
`the problem of 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. 11–37. The ’132 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
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`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 ’132 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 ’132 patent. Pet. 11 (citing Ex. 1001, col. 4, ll. 15–
`20). Upon review, we determine that the ’132 patent defines “single action”
`to mean “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, . . .
`for the purposes of the present invention.” Ex. 1001, col. 4, ll. 15–19.
`
`C. Ground Under 35 U.S.C. § 101
`Petitioner argues that claims 1–56 are patent ineligible under
`35 U.S.C. § 101 because they encompass an abstract idea. See Pet. 12–15.
`Patent Owner argues that Petitioner fails to demonstrate that the claims are
`patent ineligible (see Prelim. Response 63–64), because the Petition simply
`recites case law without any proper analysis as to why the “claims preempt
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`the idea of placing an order based on observed market information” (id. at
`63).
`
`We are persuaded by Petitioner that claims 1–56 are more likely than
`not patent ineligible, inasmuch as the Petition provides 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, 134 S. Ct. at 2355. Thus, we must consider “the elements of each
`claim both individually and ‘as an ordered combination’ to determine
`whether the additional elements ‘transform the nature of the claim’ into a
`patent-eligible application.” Id. (citing Mayo, 132 S. Ct. at 1297–1298).
`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).
`In this case, Petitioner argues that the claims 1–56 are patent ineligible
`because they recite just the abstract idea of “placing a trade order in response
`
`13
`0013
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`to observing market data” along with well-known and insignificant extra-
`solution activity. Pet. 12–15. Patent Owner argues, generally, that
`Petitioner’s argument is unsupported and, therefore, cannot be a basis for
`instituting review. Prelim. Resp. 63–64.
`Independent claim 1 recites a method which falls, nominally, into the
`process category of patent-eligible subject matter recited in § 101.
`Specifically, claim 1 recites a method that requires the display of certain
`information in a certain arrangement on a GUI and allows for the placing of
`an order based on the information. On this record, we are persuaded by
`Petitioner that claim 1 is directed to the abstract idea of placing an order
`based on observed market information, as well as updating the market
`information.
`The method of claim 1 requires a display, an input device, and a GUI
`(i.e., software) for performing the recited steps of receiving market
`information; displaying the information as indicators in bid and ask regions
`along a price axis; updating the market information in response to changes in
`the market; and placing an order by clicking on some portion of the
`information. Each of these steps individually or in combination, requires
`nothing more than a conventional, generic computer.
`The ’132 patent discloses that its system can be implemented “on any
`existing or future terminal or device” (Ex. 1001, col. 4, ll. 4–7), each of
`which is known to include a display, and discloses that the input device can
`be a mouse (id. at col. 4, ll. 9–11), which is a known input device. The ’132
`patent further discloses that “[t]he scope of the present invention is not
`limited by the type of terminal or device used” (id. at col. 4, ll. 7–9). Still
`further, the ’132 patent discloses that the physical mapping of information
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`14
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`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” and that “[t]he present invention
`is not limited by the method used to map the data to the screen display” (id.
`at col. 4, l. 66–col. 5, l. 3).
`Thus, claim 1 does no more than simply instruct the practitioner to
`implement the abstract idea on a GUI. To be patent-eligible, a claim cannot
`simply state the abstract idea and add the words “apply it.” Mayo, 132 S. Ct.
`at 1294. On this record, we agree with Petitioner that claim 1 does not recite
`additional elements or combinations of elements that add significantly more
`to the abstract idea so as to claim patent-eligible subject matter.
`Independent claim 8 recites a computer readable medium having
`computer-readable instruction that, when executed, causes the computer to
`perform the method of claim 1. Independent claim 14 recites a client system
`that causes the computer to perform the method of claim 1. Further, none of
`dependent claims 2–7, 9–13, or 15–56 appears to recite additional elements
`or combinations of elements that add significantly more to the abstract idea
`so as to claim patent-eligible subject matter.
`Accordingly, on this record, we determine that Petitioner has
`demonstrated that claims 1–56 are more likely than not patent ineligible
`under 35 U.S.C. § 101.
`
`D. Ground Under 35 U.S.C. § 112
`Petitioner argues “[c]laims 1-56 are indefinite under 35 U.S.C. § 112,
`second paragraph, because [the claim limitation] ‘the market’ lacks proper
`antecedent basis.” Pet. 15. Specifically, Petitioner argues that because each
`of independent claims 1, 8 and 14 recites “the market” without reciting “a
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`market,” but instead recites “an inside market” and “a market depth,” it is
`unclear to what “the market” refers. Id. at 16.
`A patent must “conclude with one or more claims particularly
`pointing out and distinctly claiming the subject matter which the applicant
`regards as [the] invention.” 35 U.S.C. § 112, ¶ 2 (2006). In this case, with
`respect to the term at issue, each of the independent claims recites “the
`market for the commodity” that is being traded. Thus, it is clear that “the
`market” as claimed refers to neither “an inside market” nor “a market
`depth,” but instead refers to an overall market in which the commodity is
`traded. Further, it is understood by those skilled in the art that trading of
`commodities inherently takes place in a market, and, thus, the reference to
`“the market” instead of “a market” in the claims does not render the claims
`indefinite. For these reasons, the claim term “the market” particularly points
`out and distinctly claims Patent Owner’s invention.
`Therefore, based on the foregoing, we determine that Petitioner does
`not demonstrate that claims 1–56 are indefinite under 35 U.S.C. § 112.
`
`E. Grounds Under 35 U.S.C. § 103
`As stated by the Supreme Court:
`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
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`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. Obviousness of Claims 1–28, 30–48, and 50–56 based on Gutterman
`Petitioner argues that claims 1–28, 30–48, and 50–56 are unpatentable
`
`under 35 U.S.C. § 103(a) based on Silverman in combination with
`Gutterman and Togher, with or without May or Paal. See Pet. 16–53.
`Independent claim 1 requires:
`displaying an order entry region aligned with the static display
`prices comprising a plurality of areas for receiving commands
`from the user input devices to send trade orders, each area
`corresponding to a price of the static display of prices; and
`selecting a particular area in the order entry region through
`single action of the user input device with a pointer of the user
`input device positioned over the particular area to set a plurality
`of additional parameters for the trade order and [to] send the
`trade order to the electronic exchange.
`Independent claims 8 and 14 each require similar limitations.
`Petitioner relies upon Gutterman’s disclosure of a trader selecting an
`order icon, which causes the system to populate an electronic message with
`the trade information, and, then, selecting a “SEND FILL” button to transmit
`the message, to meet the claim limitation of selecting a particular area
`through a single action to set parameters and to send the trade order. Pet. 20
`(citing Ex. 1008, col. 13, ll. 29–43; Ex. 1005 ¶ 77, “Roman Decl.”).
`Patent Owner argues that the disclosures of Gutterman on which
`Petitioner relies do not meet the “single action” limitation because selecting
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`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. See Prelim. Resp. 55, 60–61.
`Gutterman discloses a broker workstation for managing orders in a
`market. Ex. 1008, 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 a 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:
`[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
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`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. Thus, instead of teaching selecting a particular graphical
`area in the order entry region through a “single action” that both sets a price
`for a trade order and transmits the trade order, Gutterman describes two
`actions that occur in two different graphical areas. We note that Petitioner
`does not rely upon Silverman to meet the “single action” limitation. See Pet.
`19 (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 independent claims 1, 8, and 14, as well as claims
`2–7, 9–13, 15–28, 30–48, and 50–56, dependent thereon, would have been
`obvious based on Gutterman.
`ii. Obviousness of Claims 1–28, 30–48, and 50–56 based on TSE
`Petitioner argues that claims 1–28, 30–48, and 50–56 are unpatentable
`under 35 U.S.C. § 103(a) based on TSE in combination with Togher, with or
`without Gutterman or May. See Pet. 53–79. Again, the issue of obviousness
`relates to the requirements in independent claim 1 of:
`displaying an order entry region aligned with the static display
`prices comprising a plurality of areas for receiving commands
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`from the user input devices to send trade orders, each area
`corresponding to a price of the static display of prices; and
`selecting a particular area in the order entry region through
`single action of the user input device with a pointer of the user
`input device positioned over the particular area to set a plurality
`of additional parameters for the trade order and [to] send the
`trade order to the electronic exchange.
`Independent claims 8 and 14 each require similar limitations. Petitioner
`argues that the limitation of selecting a particular area through a single
`action that sets parameters and sends the trade order 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. 66–67
`(citing Ex. 1013, 137; Roman Decl. ¶¶ 171–173).
`
`Patent Owner argues that the above relied-upon description of TSE
`does not met the “single action” 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. 55–58.
`TSE is a guide for operating a trading terminal of the Tokyo Stock
`Exchange. Ex. 1013, 1. 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