Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 29
`Entered: February 2, 2015
`
`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 ON REQUEST FOR REHEARING
`37 C.F.R. § 42.71
`
`0001
`
`IBG 1033
`CBM of U.S. Patent No. 7,693,768
`
`
`Tel: 571-272-7822
`
`Paper 29
`Entered: February 2, 2015
`
`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 ON REQUEST FOR REHEARING
`37 C.F.R. § 42.71
`
`0001
`
`IBG 1033
`CBM of U.S. Patent No. 7,693,768
`
`
`
`Case CBM2014-00135
`Patent No. 6,772,132 B1
`
`I. INTRODUCTION
`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 requested review under
`the 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. The Board instituted covered
`business method patent review of claims 1–56 of the ’132 patent under 35
`U.S.C. § 101, and denied institution of any claims under 35 U.S.C. §§ 102,
`103, and 112. Paper 19 (“Decision”). Petitioner and Patent Owner each
`filed a Request for Rehearing asking that the Board reconsider its Decision –
`Petitioner requesting that we institute based on grounds 3–5 of the Petition
`because claims 1–28, 30–48, and 50–56 are obvious based on at least
`Silverman, Gutterman, and Togher (Paper 21, “Petitioner’s Req. Reh’g”),
`and Patent Owner requesting that we deny institution because the ’132
`patent does not qualify for covered business method patent review (Paper
`22, “Patent Owner’s Req. Reh’g”).
`We have considered each Request for Rehearing, but decline to
`modify the Decision.
`
`II. ANALYSIS
`A. Petitioner’s Request for Rehearing
`When rehearing a decision on petition, the Board will review the
`decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of
`discretion may be determined if a decision is based on an erroneous
`
`2
`0002
`
`
`
`Case CBM2014-00135
`Patent No. 6,772,132 B1
`
`interpretation of law, if a factual finding is not supported by substantial
`evidence, or if the decision represents an unreasonable judgment in weighing
`relevant factors. See Arnold Partnership v. Dudas, 362 F.3d 1338, 1340
`(Fed. Cir. 2004). For the reasons that follow, Petitioner does not show that
`the Board abused its discretion.
`Petitioner contends that our Decision is based upon a misapprehension
`that the Petition did not rely on Togher to disclose the single action
`limitation. Petitioner’s Req. Reh’g, 2–3. According to Petitioner, had our
`Decision properly considered Petitioner’s remarks regarding Togher’s
`disclosure, we would have instituted review of claims 1–28, 30–48, and 50–
`56 as obvious based on at least Silverman, Gutterman, and Togher. Id.
`Although Petitioner cites to various portions of the Petition
`characterizing Togher’s disclosure, for the following reasons we find that
`Petitioner relied on Silverman and Gutterman to render obvious claim 1’s
`limitation “selecting a particular area in the order entry region
`[corresponding to a price of a static display of prices] through single action
`of the user input device . . . to set a plurality of parameters for the trade order
`and send the trade order to the electronic exchange.” Thus, Petitioner’s
`argument that Togher discloses “selecting a particular area in the order entry
`region [corresponding to a price of a static display of prices] through single
`action of the user input device . . . to set a plurality of additional parameters
`for the trade order and send the trade order to the electronic exchange” is not
`timely raised, and will not be a basis for instituting covered business method
`patent review.
`Section V., C. 4., e) of the Petition included Petitioner’s arguments
`regarding the obviousness of the limitation at issue. Here, Petitioner stated:
`
`3
`0003
`
`
`
`Case CBM2014-00135
`Patent No. 6,772,132 B1
`
`[I]n the GUI of Silverman and Gutterman, a
`user can select an order “by
`touching
`the
`corresponding order icon.” (Gutterman, 13:27-
`29.) The touching of the corresponding order icon
`is “a single action of the user input device with a
`pointer of the user input device positioned over the
`particular
`area.”
` Additionally, Gutterman
`discloses that “the touch-sensitive screen functions
`can also be implemented by a conventional
`keyboard, mouse and other standard
`input
`devices.” (Gutterman, 7:33-36.) When a mouse is
`utilized, the pointer of the mouse (user input
`device) would be positioned over the order icon.
`(Román Decl. ¶ 110.) The single action of the user
`input device in this embodiment of Gutterman
`would be a single or double mouse click. (Id.)
`
`In Gutterman, when an order is selected,
`“the order’s quantity, price and time stamp appear
`in
`so-designated areas of
`the
`fill pane.”
`(Gutterman, 13:30-31.) The quantity, price and
`time stamp are “a plurality of additional
`parameters” that are set for the trade order.
`(Román Decl. ¶ 111.).
`
`Pet. 43–44 (original emphases omitted and square brackets changed to
`parentheses, our emphases added). Based on the above, Petitioner clearly
`relied on Silverman and Gutterman, and not Togher, to disclose the claimed
`single action that sets parameters for a particular price and sends the trade
`order. This is consistent with other portions of the Petition which relied on
`Gutterman to disclose a single action that sets parameters for a particular
`price and sends a trade order – e.g.:
`A trader may immediately transmit this
`electronic message to another party by pressing
`another “active” button – the “SEND FILL”
`
`4
`0004
`
`
`
`Case CBM2014-00135
`Patent No. 6,772,132 B1
`
`button. (Id. at 13:29-43.) (“In periods of heavy
`market activity . . . .”) As described in the
`specification of the ’132 patent, 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 qualifies as a “single action.”
`Thus, Gutterman’s disclosure of a user making two
`selections within a short period of time is a single
`action. (Román Decl. ¶ 77.)
`
`Id. at 20.
`Petitioner now points to other characterizations of Togher in the
`Petition in an attempt to establish that Petitioner relied on Togher to disclose
`the claimed single action that sets parameters for a particular price and sends
`the trade order. See Petitioner’s Req. Reh’g, 5–10. We are not persuaded.
`For example, Petitioner points to the statement, “the combination of
`Silverman and Gutterman fails to disclose selecting an area of the GUI
`through a single action to both set a price for the trade order and send the
`trade order having a default quantity to the electronic exchange. . . . Togher
`describes such a system and method.” Id. at 5, citing Petition 21–22
`(internal quotes and emphases omitted). This statement is not properly
`interpreted, however, as meaning that Petitioner relied on Togher to disclose
`a single action that does each of the following: 1) sets a price for a trade
`order; 2) provides a default quantity for the trade order; and 3) sends the
`trade order having the set price and provided default quantity, as Petitioner
`seems to allege. Petitioner’s characterization of Togher which followed this
`broad statement did not, for example, sufficiently explain how Togher sets a
`price – rather the quoted portion of Togher establishes only that a trader may
`“respond to . . . [an] offer price.” Petition 22, citing Togher 9:1–6. Further,
`
`5
`0005
`
`
`
`Case CBM2014-00135
`Patent No. 6,772,132 B1
`
`Petitioner stated in one of the next sentences of the Petition that “Togher
`discloses setting default values for trade orders,” and then quoted portions of
`Togher directed to setting a default trade value. Id. Importantly, in the
`Petition Petitioner did not discuss anything about what happens when a “Buy
`button” or a “Sell button” is activated in Togher (e.g., that the order is sent
`to an electronic exchange), or even how, specifically, either button is
`activated. Thus, we conclude that Petitioner was not concerned in
`describing in the Petition how Togher disclosed a single action that sets
`parameters for a particular price and sends a trade order because Petitioner
`was not relying on Togher to disclose such a limitation of claim 1.
`
`B.
`
`Patent Owner’s Request for Rehearing
`As stated above, when rehearing a decision on petition, the Board will
`review the decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An
`abuse of discretion may be determined if a decision is based on an erroneous
`interpretation of law, if a factual finding is not supported by substantial
`evidence, or if the decision represents an unreasonable judgment in weighing
`relevant factors. See Arnold Partnership v. Dudas, 362 F.3d at 1340. For
`the reasons that follow, Patent Owner does not show that the Board abused
`its discretion.
`Patent Owner argues that the Board abused its discretion when it
`failed to consider “statements by Congress confirming that a patent claiming
`a novel GUI (like the ’132 patent) would not be eligible for Section 18
`review.” Patent Owner’s Req. Reh’g, 2. We did not overlook Patent
`Owner’s arguments regarding the legislative history. See Dec. 8–9.
`
`6
`0006
`
`
`
`Case CBM2014-00135
`Patent No. 6,772,132 B1
`
`In the Decision, we explained that claim 11 is directed to a method of
`displaying market information, setting trade order parameters, and sending a
`trade order to an electronic exchange. As further explained, the only
`hardware recited in claim 1 is a display and an input device, which both
`were known technology. Dec. 11–12. Further recitations in claim 1 are
`directed to use and operation of the GUI – for example, displaying market
`information in a certain arrangement on the GUI, as well as setting order
`parameters and sending the order to the exchange with the GUI. Id. Thus,
`inasmuch as claim 1 recites only known hardware, Patent Owner does not
`persuade us that claim 1 recites a novel GUI tool.
`Patent Owner argues that the Board misapplied the technological
`invention test. Patent Owner’s Req. Reh’g, 8. In particular, Patent Owner
`argues that we overlooked the novel and unobvious technological features
`claimed. Id. at 8–11. In the Decision, we noted the following:
`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
`
`
`1 As explained in the Decision, a patent only need have one claim directed
`to a covered business method to be eligible for a covered business method
`patent review. In the Decision, we focused on claim 1. We focus on claim 1
`for purposes of the rehearing decision.
`
`7
`0007
`
`
`
`Case CBM2014-00135
`Patent No. 6,772,132 B1
`
`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).
`Dec. 10. As noted in the Decision, claim 1 requires the use of known
`technology – a display, an input device, and a GUI (i.e., software). Id. at 11.
`As indicated above, reciting the use of known prior art technology to
`accomplish a process or method, even if the process or method is novel and
`non-obvious, does not render a patent a “technological invention.” For these
`reasons, Patent Owner has not shown that the Board abused its discretion in
`determining that claim 1 does not recite a technological feature that is novel
`and unobvious over the prior art.
`Patent Owner also argues that the Decision improperly failed to
`address whether claim 1 solves a technical problem using a technical
`solution. Patent Owner’s Req. Reh’g 12. In particular, Patent Owner
`indicates “[t]he Decision failed to address either of the two technological
`problems solved by the invention claimed[;] . . . . the problem of speed and
`accuracy with prior graphical tools . . . . [and] the inadequate visualization of
`prior graphical tools.” Id. Inasmuch as Patent Owner does not demonstrate
`sufficiently how the language of claim 1 recites such limitations, we do not
`find the arguments persuasive.
`
`Conclusion
`C.
`Consequently, we are not persuaded of an abuse of discretion either
`
`by Petitioner or Patent Owner.
`
`8
`0008
`
`
`
`Case CBM2014-00135
`Patent No. 6,772,132 B1
`
`III. ORDER
`
`Accordingly, it is
`ORDERED that each Request for Rehearing is denied.
`
`FOR PETITIONER:
`
`Lori Gordon
`Robert E. Sokohl
`Jonathan Strang
`STERNE, KESSLER, GOLDSTEIN & FOX
`lgordon-ptab@skgf.com
`rsokohl-ptab@skgf.com
`jstrang-PTAB@skgf.com
`
`FOR PATENT OWNER:
`
`Erika H. Arner
`Joshua L. Goldberg
`FINNEGAN, HENDERSON, FARABOW, GARRETT, AND DUNNER,
`LLP
`erika.arner@finnegan.com
`joshua.goldberg@finnegan.com
`
`Steven F. Borsand
`TRADING TECHNOLOGIES INTERNATIONAL, INC.
`Steve.Borsand@tradingtechnologies.com
`
`9
`0009
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