Trials@uspto.gov
`Tel: 571-272-7822
`(cid:3)
`
`Paper 26
`Entered: March 7, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________(cid:3)
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________(cid:3)
`
`IBG LLC,
`INTERACTIVE BROKERS LLC, TRADESTATION GROUP, INC.
`TRADESTATION SECURITIES, INC.,
`TRADESTATION TECHNOLOGIES, INC., and IBFX, INC.,
`Petitioner,
`
`v.
`
`TRADING TECHNOLOGIES INTERNATIONAL, INC.,
`Patent Owner.
`__________________
`
`Case CBM2015-00181
`Patent 7,676,411 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
`
`(cid:3)
`
`0001
`
`IBG 1039
`CBM of U.S. Patent No. 7,693,768
`
`

`
`CBM2015-00181
`Patent 7,676,411 B2
`(cid:3)
`
`INTRODUCTION
`
`A. Background
`IBG LLC, Interactive Brokers LLC, TradeStation Group, Inc.,
`TradeStation Securities, Inc., TradeStation Technologies, Inc., and IBFX,
`INC. (collectively, “Petitioner”) filed a Petition on September 11, 2015
`requesting covered business method patent review of claims 1–28 (the
`“challenged claims”) of U.S. Patent No. 7,676,411 B2 (Ex. 1001, “the ’411
`patent”). Paper 7 (“Pet.”). On December 30, 2015, Trading Technologies
`International, Inc. (“Patent Owner”) filed a Preliminary Response. Paper 22
`(“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 1–28 of the ’411 patent.
`B. Expanded Panel Request
`Patent Owner suggests that the decision on institution be made by an
`expanded panel of administrative patent judges. Prelim. Resp. 80.
`Discretion to expand a panel rests with the Chief Judge, who, on behalf of
`the Director, may act to expand a panel on a suggestion from a judge or
`panel. AOL Inc. v. Coho Licensing LLC, Case IPR2014-00771, slip op. at 2
`(PTAB Mar. 24, 2015) (Paper 12) (informative). Patent Owner’s suggestion
`was considered by the Acting Chief Administrative Patent Judge, who
`declined to expand the panel.
`
`2
`0002
`
`

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`CBM2015-00181
`Patent 7,676,411 B2
`(cid:3)
`
`C. Related Proceedings
`The parties indicate that the ’411 patent is the subject of numerous
`related U.S. district court proceedings. Pet. 2; Paper 11, 2–6.
`The ’411 patent was the subject of a petition for covered business
`method patent review in TD Ameritrade Holding Corp. v. Trading
`Technologies International, Inc., CBM2014-00133 (PTAB), for which trial
`was instituted, but later terminated.
`Numerous patents are related to the ’411 patent and the related patents
`are or were the subject of numerous petitions for covered business method
`patent review and reexamination proceedings.
`D. Asserted Grounds
`Petitioner contends that the challenged claims are unpatentable under
`35 U.S.C. §§ 101 and 103 based on the following grounds (Pet. 14–80).
`References
`Basis Claims Challenged
`N/A
`§ 101
`1–28
`
`Silverman1, Gutterman2, Belden3,
`and Togher4
`Silverman, Gutterman, Belden,
`Togher, and Paal5
`TSE6, Belden, and Togher
`
`§ 103
`
`1–10 and 12–28
`
`§ 103
`
`11
`
`§ 103
`
`1–28
`
`(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)
`1 U.S. Pat. No. 5,077,665, iss. Dec. 31, 1991 (Ex. 1003, “Silverman”).
`2 U.S. Pat. No. 5,297,031, iss. Mar. 22, 1994 (Ex. 1004, “Gutterman”).
`3 PCT Pub. No. WO 90/11571, pub. Oct. 4, 1990 (Ex. 1009, “Belden”). The
`page numbers referenced herein are those at the bottom of each page.
`4 U.S. Pat. No. 5,375,055, iss. Dec. 20, 1994 (Ex. 1005, “Togher”).
`5 U.S. Pat. No. 5,263,134, iss. Nov. 16, 1993 (Ex. 1018, “Paal”).
`6 Tokyo Stock Exchange Operation System Division, Futures/Option
`Purchasing System Trading Terminal Operation Guide (1998) (Ex. 1006).
`Citations to this reference refer to its English translation (Ex. 1007).(cid:3)
`
`3
`0003
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`

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`CBM2015-00181
`Patent 7,676,411 B2
`(cid:3)
`
`Petitioner provides testimony from David Rho (Ex. 1023; “the Rho
`Declaration) and Kendyl A. Román (Ex. 1019; “the Román Declaration”) to
`support its challenges.
`
`E. The ’411 Patent
`The ’411 patent is titled “Click Based Trading with Intuitive Grid
`Display of Market Depth.” Ex. 1001, (54). The ’411 patent describes a
`display, named the “Mercury” display, and method of using the display to
`trade a commodity. Id. at Abstract, 3:9–14. The ’411 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 3:15–28. The Mercury display is
`depicted in Figure 3, which is reproduced below.
`
`4
`0004
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`CBM2015-00181
`Patent 7,676,411 B2
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`
`Figure 3 of the ’411 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.
`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 7:55–66. The ’411 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 7:57–58. 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 7:54–
`8:16. The ’411 patent explains that “[t]he exchange sends the price, order
`and fill information to each trader on the exchange” and that “[t]he physical
`
`5
`0005
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`mapping of such information to a screen grid can be done by any technique
`known to those skilled in the art.” Id. at 4:63–5:3.
`Column 1002 contains various parameters and information used to
`execute trades, such as the default quantity displayed in cell 1016. See id. at
`8:35–9:3. A trader executes trades using the Mercury display by first setting
`the desired commodity and default parameters, such as default quantity. See
`id. at 9:35–49; 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 9:35–10:32; Fig. 6, steps 1306–
`1315.
`
`F. Illustrative Claim
`As noted above, Petitioner challenges claims 1–28. Claims 1 and 26
`are independent. Claim 1 is illustrative of the claimed subject matter and is
`reproduced below:
`1. A method of displaying market information relating to and
`facilitating trading of a commodity being traded on an electronic
`exchange, the method comprising:
`receiving, by a computing device, market information for a
`commodity from an electronic exchange,
`the market
`information comprising an inside market with a current
`highest bid price and a current lowest ask price;
`displaying, via the computing device, a bid display region
`comprising a plurality of graphical locations, each graphical
`location in the bid display region corresponding to a different
`price level of a plurality of price levels along a price axis;
`displaying, via the computing device, an ask display region
`comprising a plurality of graphical locations, each graphical
`location in the ask display region corresponding to a different
`price level of the plurality of price levels along the price axis;
`dynamically displaying, via the computing device, a first
`indicator representing quantity associated with at least one
`
`6
`0006
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`CBM2015-00181
`Patent 7,676,411 B2
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`
`trade order to buy the commodity at the current highest bid
`price in a first graphical location of the plurality of graphical
`locations in the bid display region, the first graphical location
`in the bid display region corresponding to a price level
`associated with the current highest bid price;
`upon receipt of market information comprising a new highest bid
`price, moving the first indicator relative to the price axis to a
`second graphical location of the plurality of graphical
`locations in the bid display region, the second graphical
`location corresponding to a price level of the plurality of price
`levels associated with the new highest bid price, wherein the
`second graphical location is different from the first graphical
`location in the bid display region;
`dynamically displaying, via the computing device, a second
`indicator representing quantity associated with at least one
`trade order to sell the commodity at the current lowest ask
`price in a first graphical location of the plurality of graphical
`locations in the ask display region, the first graphical location
`in the ask display region corresponding to a price level
`associated with the current lowest ask price;
`upon receipt of market information comprising a new lowest ask
`price, moving the second indicator relative to the price axis to
`a second graphical location of the plurality of graphical
`locations in the ask display region, the second graphical
`location corresponding to a price level of the plurality of price
`levels associated with the new lowest ask price, Wherein the
`second graphical location is different from the first graphical
`location in the ask display region;
`displaying, via the computing device, an order entry region
`comprising a plurality of graphical areas for receiving single
`action commands to set trade order prices and send trade
`orders, each graphical area corresponding to a different price
`level along the price axis; and
`selecting a particular graphical area in the order entry region
`through a single action of the user input device to both set a
`
`7
`0007
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`
`price for the trade order and send the trade order having a
`default quantity to the electronic exchange.
`Ex. 1001, 12:23–13:16.
`
`ANALYSIS7
`
`A. Claim Construction
`In a covered business method patent review, claim terms are given
`their broadest reasonable interpretation in light of the specification in which
`they appear and the understanding of others skilled in the relevant art. See
`37 C.F.R. § 42.300(b); In re Cuozzo Speed Techs., LLC, 793 F.3d 1268,
`1278–79 (Fed. Cir. 2015), cert. granted sub nom. Cuozzo Speed Techs., LLC
`v. Lee, 84 U.S.L.W. 3218 (U.S. Jan. 15, 2016) (No. 15-446).
`Applying that standard, we interpret the claim terms of the ’411 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
`“single action” (Pet. 14), and Patent Owner offers no proposed claim
`
`(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)
`7 Both Petitioner and Patent Owner reference our prior decision denying
`institution in CBM2014-00133 and decisions of district courts in related
`proceedings. We do not give much, if any, deference to our prior decisions
`and the decisions of the district courts in determining whether to institute a
`covered business method patent review in this proceeding. Those prior
`decisions were based on different parties, different evidence, and in the case
`of the district court proceedings based on different standards of proof and
`claim construction standards. Additionally, we give no consideration to the
`arguments Patent Owner presents in letters sent to the Director of the United
`States Patent and Trademark Office.
`
`8
`0008
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`(cid:3)
`constructions. For purposes of this Decision, we determine that the only
`terms requiring an express construction in order to conduct properly our
`analysis are those discussed below.
`1. “single action” limitations
`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.”
`(’411 patent, 4:18-22; Román Decl., ¶ 78.)
`Pet. 14. Patent Owner does not dispute this construction. Upon review, we
`agree, and adopt that construction for purposes of this decision.
`Each of the independent claims recites the “single action.” Claim 1
`recites “a plurality of graphical areas for receiving single action commands
`to set trade order prices and send trade orders” and “selecting a particular
`graphical area in the order entry region through a single action of the user
`input device to both set a price for the trade order and send the trade order
`having a default quantity to the electronic exchange.” Claim 26 similarly
`recites “displaying . . . an order entry region comprising a plurality of
`graphical areas for receiving single action commands to set trade order
`prices and send trade orders” and “selecting a particular graphical area in the
`order entry region through a single action of the user input device to both set
`a price for the trade order and send the trade order having a default quantity
`to the electronic exchange.”
`The scope of “single action” limitations in the ’411 patent is different
`than the scope of the “single action” limitations found in claims 1, 14, and
`
`9
`0009
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`

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`CBM2015-00181
`Patent 7,676,411 B2
`(cid:3)
`28 of U.S. Patent No. 6,772,132 B1 (“the ’132 patent”)8, which is the subject
`of CBM2015-00182. Contrary to the language of the claims of the ’132
`patent, the plain language of claims 1 and 26 of the ’411 patent requires that
`a single action of the user input device sets a trade order price and sends the
`trade order (i.e., claims 1 and 26 of the ’411 patent require displaying
`graphical areas for receiving a single action command that sets a trade order
`price and sends the trade order and selecting a particular graphical area
`through a single action to both set a price for the trade order and send the
`trade order). This is consistent with the specification of the ’411 patent,
`which describes setting trade parameters and sending a trade order based on
`a single action. See Ex. 1001, 10:24–11:35.
`2. “computer readable medium having program code recorded
`thereon”
`Claims 26–28 recite a “computer readable medium having program
`code recorded thereon.” Petitioner contends that “[u]nder the broadest
`reasonable interpretation (‘BRI’), the scope of this term is broad enough to
`encompass a transitory, propagating signal that is encoded.” Pet. 17.
`Petitioner explains that the specification neither defines this term nor
`provides examples. Id. Patent Owner does not provide a proposed
`construction for this limitation, but implies that the word “recorded” limits
`the claim to non-transitory media. See Prelim. Resp. 53–54. Patent Owner
`does not dispute that the specification of the ’411 patent neither defines this
`term nor provides examples for a “computer readable medium,” and after
`
`(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)
`8 The ’411 patent is a continuation filing of the application that resulted in
`the ’132 patent (App. Serial No. 09/590,692). Ex. 1001, (63), 1:6–12.
`
`10
`0010
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`(cid:3)
`reviewing the specification we see no reference to “computer readable
`medium” other than that in the claims.
`
`The addition of the phrase “having program code recorded thereon” to
`“computer readable medium” does not limit the medium to non-transitory
`media. A definition of the verb “record” is “to set down in writing” or “to
`cause (as sound, visual images, or data) to be registered on something (as a
`disc or magnetic tape) in reproducible form).” Ex. 3001 (Merriam-
`Webster’s Collegiate Dictionary, 10th ed. definition of record). This
`definition does not preclude the program code from being recorded, albeit
`temporarily, on transitory media. See Ex parte Mewherter, 107 USPQ2d
`1857, 1859–60 (PTAB 2013) (precedential) (determining that a computer
`readable storage medium having a computer program stored thereon
`encompasses transitory propagating signals).
`On this record, we determine that the broadest reasonable
`interpretation of “computer readable medium having program code recorded
`thereon” is any medium that participates in providing instruction to a
`processor for execution and having program code recorded thereon.
`B. Covered Business Method Patent
`Section 18 of the AIA9 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.”
`
`(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)(cid:3)
`9 Leahy-Smith America Invents Act, Pub. L. No. 112–29, 125 Stat. 284, 329
`(2011) (“AIA”).
`
`11
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`Patent 7,676,411 B2
`(cid:3)
`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).
`In this Petition, Petitioner contends that “while a patent needs only
`one claim directed to a CBM to be eligible for CBM review, all the claims
`qualify,” and particularly cites claims 1, 7, 8, and 10. Pet. 4.
`1. Financial Product or Service
`With respect to claim 1, Petitioner asserts that it is directed to a
`covered business method because it recites activities that are financial in
`nature, including displaying market information and sending a trade order.
`Id. Based on this record, we agree with Petitioner that at least the subject
`matter recited by claim 1 is directed to activities that are financial in nature,
`namely displaying market information, including indicators of asks and bids
`in the market, setting trade order parameters, and sending a trade order to an
`electronic exchange. Patent Owner acknowledges that “the claims include
`financial terms [and] that the claimed GUI tool can be used to trade,” but
`contends that “improvements to software tools or GUIs, even if used to
`implement a trading strategy or other financial activity, are outside the scope
`of CBMR.” Prelim. Resp. 9–10. Patent Owner cites to various portions of
`the legislative history as support for its proposed interpretation. Id. at 10.
`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)).
`
`12
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`(cid:3)
`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 that the legislative
`history of the AIA establishes that novel user interfaces for commodities, as
`a category, were intended to be exempt from covered business method
`patent review. See Prelim. Resp. 10–13. As Petitioner argues, 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 Prelim. Resp. 10–
`13 (reproducing statements by Senator Durbin and Schumer)), the language
`of the AIA, as passed, does not include an exemption for all user interfaces
`for commodities from covered business method patent review. See Pet. 9–
`10. 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 ’411 patent includes at least one claim that
`meets the financial in nature 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
`
`13
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`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 ’411 patent generally
`recite trading software that is implemented on a conventional computer.
`Pet. 5–7. Patent Owner disagrees, arguing that GUI features in the claims
`provide novel and non-obvious technological features. Prelim. Resp. 16–18.
`We are persuaded by Petitioner’s contentions that at least claim 1 of
`the ’411 patent does not recite a novel and non-obvious technological
`feature. The specification of the ’411 patent treats as well-known all
`potentially technological aspects of the claims. For example, the ’411 patent
`
`14
`0014
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`Patent 7,676,411 B2
`(cid:3)
`discloses that its system can be implemented “on any existing or future
`terminal or device” (Ex. 1001, 4:8–11), each of which is known to include a
`display, and discloses that the input device can be a mouse (id. at 4:12–15),
`which is a known input device. The ’411 patent further discloses that “[t]he
`scope of the present invention is not limited by the type of terminal or device
`used.” Id. at 4:11–12. The ’411 patent also explains that the programming
`associated with the GUI is insignificant. See, e.g., Ex. 1001, 4:63–5:4
`(explaining that “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 ’411 patent do not
`fall within § 18(d)(1)’s exclusion for “technological inventions” because the
`’411 patent does not solve a technical problem using a technical solution.
`Pet. 7–9. Petitioner notes that “[a]ccording to the ’411 patent, the ‘problem’
`with prior art trading GUIs was that the market price could change before a
`trader entered a desired order, causing the trader to ‘miss his price.’” Id. at 8
`(citing Ex. 1001, 2:59–67). Petitioner contends that “the ’411 patent’s
`solution is not technical” because it simply “rearrange[d] how known and
`available market data is displayed on a GUI.” Id. at 8.
`Patent Owner argues that the ’411 patent solves a technical problem
`using a technical solution. Prelim. Resp. 15–16, 18–20. According to Patent
`Owner, the ’411 patent “claims a specific combination of features of a GUI
`that purportedly was lacking in the prior art and that solved problems
`relating to speed, accuracy and usability—all technical problems.” Id. at 18.
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`We are persuaded that the ’411 patent does not solve a technical
`problem with a technical solution. The ’411 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, 2:29–67. 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 ’411 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 1–28 as directed to patent-ineligible
`subject matter under 35 U.S.C. § 101. Pet. 14–25. Patent Owner disagrees.
`Prelim. Resp. 30–54.
`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.
`2014).
`Initially, we note that Petitioner asserts that claims 26–28 are “broad
`enough to encompass a transitory, propagating signal that is encoded, which
`is not eligible for patenting.” Pet. at 17 (citing In re Nuijten, 550 F.3d 1346,
`1357 (Fed. Cir. 2007)). Patent Owner argues that “Petitioners misapply In
`re Nuijten” and “also have not addressed the recitation of ‘recorded’ in the
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`claims, and fail to explain why this would not restrict the claim to non-
`transitory media.” Prelim. Resp. 53.
`As indicated above, however, we determine that the broadest
`reasonable interpretation of “computer readable medium having program
`code recorded thereon” is any medium that participates in providing
`instruction to a processor for execution and having program code recorded
`thereon. Given this interpretation, claims 26–28 encompass transitory,
`propagating signals. Transitory, propagating signals are not covered by the
`four statutory classes of subject matter of 35 U.S.C. § 101. In re Nuijten,
`500 F.3d at 1352.
`There is no dispute that the remaining claims fit within one of the four
`statutorily provided categories of patent-eligibility. Even if claims 26–28
`were to fit within one of the categories of patent-eligibility, we are
`persuaded that they 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. Intern., 134 S. Ct. 2347,
`2354 (2014) (citing Assoc. for Molecular Pathology v. Myriad Genetics,
`Inc., 133 S. Ct. 2107, 2116 (2013) (internal quotation marks and brackets
`omitted)). 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 patents that claim laws of nature,
`natural phenomena, and abstract ideas from those that claim patent-eligible
`applications of those concepts.” Alice, 134 S. Ct. at 2355. The first step in
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`the analysis is to “determine whether the claims at issue are directed to one
`of those patent-ineligible concepts.” Id.
`Petitioner argues that the challenged claims are directed to the abstract
`idea of “placing an order based on observed (plotted) market information, as
`well as updating market information.” Pet. 16. Patent Owner does not
`address any particular limitation or combination of limitations in the claims
`that removes them from being directed to an abstract idea. See Prelim. Resp.
`33–42.
`Independent claims 1 and 26 recite similar limitations, with claim 1
`being directed to a “method” and claim 26 being 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 ’411 patent
`purports to solve the problem of reducing the amount of time to place a trade
`order. See Ex. 1001, 3:3–6. Claims 1 and 26 are directed to displaying
`market information in a particular manner (e.g., along a price axis), updating
`that information, and setting trade parameters and sending a trade order with
`a single action. The concept embodied by the majority of the limitations
`describes only the abstract idea of displaying and updating market
`information and placing a trade order.
`2. Inventive Concept
`Next we turn to “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.”
`Mayo, 132 S. Ct. at 1297–98. The additional elements must be more than
`“well-understood, routine, conventional activity.” Id. at 1298. On this
`record, Petitioner has established that the challenged claims of the ’411
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`patent do not add an inventive concept sufficient to ensure that the patent in
`practice amounts to significantly more than a patent on the abstract idea
`itself. Alice, 134 S. Ct. at 2355.
`Patent Owner argues that “the claims require particular technological
`features of a GUI tool that solve problems with prior art GUI tools.” Prelim.
`Resp. 43. Patent Owner contends that the claims “recite specific structural
`and functional features of a GUI tool that purport to solve, inter alia, the
`problem of a user missing her intended price because a price level changed
`as the user tried to click to send an order at an intended price level in the
`GUI tool” (id. at 45) and that “[t]he claimed invention changes the
`computer’s function to achieve a result that cannot be achieved w