Paper No. ____
`Filed: December 21, 2015
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`IBG LLC; INTERACTIVE BROKERS LLC;
`TRADESTATION GROUP, INC.; TRADESTATION SECURITIES, INC.;
`TRADESTATION TECHNOLOGIES, INC.;
`and IBFX, INC.
`
`Petitioners
`v.
`
`TRADING TECHNOLOGIES INTERNATIONAL, INC.
`Patent Owner
`_________________
`Case CBM2015-00182
`U.S. Patent 6,772,132
`_________________
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`0001
`
`IBG 1040
`CBM of U.S. Patent No. 7,693,768
`
`

`
`Table of Contents
`PRELIMINARY STATEMENT ..................................................................... 1
`
`THE CLAIMED INVENTION IS A GUI IMPROVEMENT ........................ 3
`
`I.
`
`II.
`
`III.
`
`THE ’132 PATENT IS NOT A CBM PATENT............................................. 6
`
`A.
`
`The Statutory Definition of CBM Requires More Than a
`Recitation of Financial Activity or a Financial Purpose....................... 7
`
`1.
`
`2.
`
`3.
`
`The Legislative History Should Not Be Ignored ......................10
`
`GUI Design Is a Technology, Not a Business Method.............12
`
`Because the Claims Are Directed to a Combination of
`GUI Features and Functionality Rather than a Method of
`Doing Business, They Do Not Qualify for CBM Review........13
`
`B.
`
`Even If the ’132 Patent Were a CBM, the Claimed GUI
`Improvements Fall within the Technological Invention
`Exception.............................................................................................14
`
`1.
`
`2.
`
`3.
`
`4.
`
`Purported Novel and Nonobvious Improvements to GUIs
`Necessarily Claim Novel and Nonobvious Technology...........14
`
`Each of Petitioners’ Arguments That the Claims Do Not
`Recite Novel and Nonobvious Technology Fails to
`Address the Technological Improvement—the Claimed
`Novel and Nonobvious Interaction between GUI
`Elements....................................................................................16
`
`Novel and Nonobvious Improvements to GUIs
`Necessarily Claim Technological Solutions to
`Technological Problems............................................................17
`
`None of Petitioners’ Arguments Explain Why the
`Claimed GUI Improvement is Not a Technological
`Solution to a Technological Problem........................................18
`
`IV.
`
`THE PETITION SHOULD BE DENIED BECAUSE IT
`REPRESENTS A MISUSE OF THE CBMR PROCESS.............................20
`
`A.
`
`The Board Has the Discretionary Power to Deny This Petition .........20
`
`i
`
`0002
`
`

`
`B.
`
`Petitioners Misuse CBMR by Purposefully Delaying Their
`Repetition of Arguments .....................................................................22
`
`1.
`
`2.
`
`Petitioners Present Substantially the Same CBM, § 101,
`and Prior Art Arguments as TDAmeritrade in CBM2014-
`00135.........................................................................................22
`
`Petitioners Purposefully Delayed This Petition As Part of
`a Coordinated Litigation Strategy.............................................25
`
`V.
`
`VI.
`
`THE PETITION SHOULD BE DENIED UNDER 35 U.S.C §
`322(A)(2) AND § 325(A)(1) BECAUSE PETITIONERS FAIL TO
`SHOW CQG IS NOT AN RPI, DESPITE ADMITTED
`COORDINATION.........................................................................................27
`
`PETITIONERS FAIL TO SHOW MORE LIKELY THAN NOT
`THAT THE '132 PATENT CLAIMS ARE INELIGIBLE UNDER §
`101 .................................................................................................................30
`
`A.
`
`Petitioners Improperly Dismiss a District Court Decision
`Finding the ’132 Claims Eligible under 35 U.S.C. § 101 ...................30
`
`1.
`
`2.
`
`3.
`
`Petitioners Make Similar Errors to CQG’s when
`Applying § 101 to Conclude they Claim an Abstract Idea.......33
`
`Petitioners Make Similar Errors to CQG’s when
`Applying § 101 to Conclude they Lack an Inventive
`Concept .....................................................................................35
`
`Petitioners Ignore the Claim Language—Just Like CQG ........36
`
`B.
`
`The Claims Are Not Directed to an Abstract Idea, Satisfying
`Alice Prong One...................................................................................38
`
`1.
`
`2.
`
`The Alleged Abstract Idea Has Been Improperly Crafted
`to Ignore Structural and Functional Elements of a GUI
`Tool ...........................................................................................38
`
`A User Cannot Perform the Claim with Pen and Paper or
`Mentally ....................................................................................39
`
`C.
`
`The Claims Recite an Inventive Concept, Satisfying Alice
`Prong Two ...........................................................................................41
`ii
`
`0003
`
`

`
`1.
`
`2.
`
`3.
`
`4.
`
`The District Court Properly Recognized “an Inventive
`Concept Necessarily Rooted in Computer Technology”
`in the Claims .............................................................................41
`
`That The Claimed Invention May Be Practiced On
`Conventional Computer Hardware Does Not Preclude
`Patent Eligibility .......................................................................44
`
`Petitioners Improperly Rely on Their Flawed Prior Art
`Analysis And Fail to Analyze the Claimed Combination ........45
`
`Petitioners Misconstrue Key Claim Elements As
`“Insignificant Post Solution Activity” or “Data
`Gathering”.................................................................................47
`
`D.
`
`E.
`
`Petitioners’ Arguments Fail to Consider the PTO’s Most Recent
`Examination Guidance ........................................................................49
`
`Claims 8-12 Are Not Outside the Four Permissible Statutory
`Classes of Patentable Subject Matter ..................................................51
`
`VII. TSE IS NOT PRIOR ART AND THE TRANSLATION OMITS A
`DISPOSITIVE TRANSLATOR’S NOTE ....................................................52
`
`A.
`
`The TSE Grounds Should Not Be Instituted Because Petitioners
`Fail to Establish That TSE Is Prior Art ...............................................52
`
`1.
`
`2.
`
`3.
`
`Petitioners Lack Evidence Establishing TSE’s “Public
`Accessibility”............................................................................52
`
`Mr. Kawashima’s Testimony—Petitioners’ Only
`“Evidence”—is Not Only Insufficient but Also Biased
`and Uncorroborated...................................................................55
`
`A Jury Reviewing the Same Evidence Already
`Concluded That TSE Is Not Prior Art—Petitioners
`Provide Nothing More ..............................................................57
`
`B.
`
`Petitioners’ TSE Translation Hides a Known Controversy
`Regarding the Disclosure of TSE That Demonstrates TSE Does
`Not Teach the Claimed “Dynamic Display”.......................................57
`
`iii
`
`0004
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`

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`VIII. THE BOARD SHOULD DENY INSTITUTION BECAUSE ALL OF
`THE PROPOSED COMBINATIONS WERE PREVIOUSLY
`CONSIDERED AND THE PETITION FAILS TO EXPLAIN WHY
`THE PTO ERRED IN ALLOWING THE CLAIMS....................................59
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`Silverman and Gutterman Were Considered in Original
`Prosecution and Determined by the Examiner to Not Be the
`Closest Art...........................................................................................60
`
`Two Reexaminations Previously Considered TSE, Silverman,
`Gutterman, and Belden........................................................................62
`
`In CBM2014-00135, the Board Found the Claims Patentable
`Over Substantially the Same Combinations of Silverman,
`Gutterman, and TSE............................................................................65
`
`Petitioners Ask the Board to Consider the Same Previously-
`Considered, Second-Tier References Over Which the Claims
`Were Repeatedly Allowed and Confirmed and Should be
`Denied Under 35 U.S.C. § 325(d).......................................................65
`
`Petitioners Should Not Be Allowed to Gap Fill a Prior Denial
`That They Could Have Joined But Did Not........................................70
`
`IX.
`
`PETITIONERS’ PRIOR ART GROUNDS FAIL FOR MULTIPLE
`INDEPENDENT REASONS, EVEN IF THE BOARD CONSIDERS
`THE MERITS................................................................................................71
`
`A.
`
`B.
`
`C.
`
`Silverman and Gutterman Do Not Teach a Static Price Axis.............72
`
`TSE Fails to Show the Combined Static and Dynamic Displays .......73
`
`Belden Fails to Cure the Reasons for Patentability over TSE,
`Silverman, and Gutterman...................................................................74
`
`X.
`
`THE THRESHOLD JURISDICTIONAL CBM ISSUE IMPACTS
`MANY PATENTS—WARRANTING AN EXPANDED PANEL..............76
`
`A.
`
`B.
`
`The Jurisdictional Dispute Relates to All GUI Improvement
`Patents..................................................................................................76
`
`The CBM Issue Warrants Consideration by an Expanded Panel .......77
`
`iv
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`0005
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`

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`XI. ALL PETITIONS ON PATENTS IN THE RELATED
`
`XI. ALL PETITIONS ON PATENTS IN THE RELATED
`LITIGATIONS SHOULD BE DISMISSED.................................................78
`
`LITIGATIONS SHOULD BE DISMISSED ............................................... ..78
`
`XII. CONCLUSION..............................................................................................80
`
`XII. CONCLUSION ............................................................................................ ..8O
`
`v
`
`0006
`0006
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`

`
`I.
`
`PRELIMINARY STATEMENT
`
`Petitioners’ CBM and § 101 arguments are fundamentally flawed—the ’132
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`claims are not directed to a business method/process and practicing it using a
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`generic computer; a generic display or graphical user interface (“GUI”); or the
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`Internet. TT agrees that a claim merely directed to using a generic computer to
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`trade or display market information on a generic GUI would be a CBM and
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`possibly have § 101 issues. But that is not the case here. Petitioners ignore the
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`actual claim limitations and misapply the law. Here, the claims are directed to
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`technology—a combination of specific features and functions of a GUI tool that
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`cause a computer to function in a different way. The claimed invention allows a
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`user to interface with the computer in ways that the user cannot do without it. The
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`claims do not merely recite standard computing equipment or require that
`
`something be displayed with no further detail. The claimed tool may be used for
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`trading, but the claims are not directed to trading. The ’132 patent is, therefore, far
`
`different from patents that qualify as CBMs or have 101 issues (e.g., reciting a
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`business activity, such as selling music or advertising, and merely requiring the
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`activity be practiced with known computing elements). The ’132 claims, directed
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`to particular technological GUI features and functionality, are in eligible for CBM
`
`review (“CBMR”) and do not remotely pose a § 101 problem. Indeed, these are the
`
`same reasons the ’304 patent is neither eligible for CBMR nor unpatentable under
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`1
`
`0007
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`

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`§ 101. While the petition here contains some different wording than the ‘304
`
`petition, in the end the arguments are substantively the same.
`
`Petitioners have not shown that the claims are more likely than not
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`unpatentable based on the asserted prior art. First, Petitioners have not shown that
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`TSE is prior art. Second, Petitioners omit a material translator’s note demonstrating
`
`that their characterization of TSE does not disclose the static and dynamic axis of
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`the claims. Third, all of the prior art grounds are cumulative, and the Board should
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`deny them under § 325(d). Petitioners have not even attempted to meet their
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`burden to show that the asserted grounds present the previously-considered and
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`rejected references for a “substantially different purpose.” Nor have they explained
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`why the PTO erred in its four prior patentability determinations in original
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`prosecution, two prior reexaminations, and a prior CBM petition. Fourth, even if
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`the Board considers the merits, each of the asserted prior art grounds is deficient:
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`TSE fails to teach the claimed order entry region, Gutterman and Silverman fail to
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`teach the claimed static display of prices, and Belden fails to teach the claimed
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`“single action.” The Board should deny all prior art grounds.
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`The Board should also deny the Petition because Petitioners use it as a
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`litigation tactic rather than an alternative. The Joint Defense Group (“JDG”)
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`coordinated filings to cause delay, avoid estoppel, and get multiple chances to
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`respond to TT’s arguments. Moreover, because the CBM scope is (i) a threshold
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`2
`
`0008
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`

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`issue on the Board’s underlying authority and (ii) a novel dispute pervading
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`multiple proceedings, TT suggests that an expanded panel would be appropriate.
`
`II.
`
`THE CLAIMED INVENTION IS A GUI IMPROVEMENT
`
`The ’132 patent claims specific features and functionality of a GUI tool used
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`for electronic order entry. See Ex. 1001, 1:12-18 (“Specifically, the invention
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`provides a trader with a versatile and efficient tool for executing trades. It
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`facilitates the display of and the rapid placement of trade orders . . . .”). Or, as
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`described by the Federal Circuit when discussing the ’132 patent:
`
`The patents claim software . . . . The software’s graphical user
`interface (“GUI”) includes a “dynamic display for a plurality of
`bids and for a plurality of asks in the market for the commodity
`and a static display of prices corresponding to the plurality of
`bids and asks.” The claimed invention facilitates more accurate
`and efficient orders in this trading environment.
`
`Trading Techs. Int’l, Inc. v. eSpeed, Inc., 595 F.3d 1340, 1345 (Fed. Cir.
`
`2010) (citations omitted). The claimed combination of a static display of prices, a
`
`dynamic display of bids and asks aligned with the static display, and an order entry
`
`region aligned with the static display with areas corresponding to prices of the
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`static display that can be selected via a single action of a user input device to set a
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`plurality of parameters and send an order message to the electronic exchange
`
`3
`
`0009
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`

`
`provides the advantages over prior order entry screens.1 See Ex. 1001, 2:66-3:20.
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`This claimed combination was also the reason for the claims’ repeated
`
`confirmation by both the PTO (in a quality-reviewed original examination and
`
`subsequent reexamination This claimed functionality is different from that of
`
`conventional order entry screens at the time of the invention and addressed a
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`specific problem created by prior order entry screens without sacrificing speed:
`
`[T]he claims are directed to solving a problem that existed with
`prior art GUIs, namely, that the best bid and best ask prices
`would change based on updates received from the market.
`There was a risk with the prior art GUIs that a trader would
`miss her intended price as a result of prices changing from
`under her pointer at the time she clicked on the price cell on the
`GUI. The patents-in-suit provide a system and method whereby
`traders may place orders at a particular, identified price level,
`not necessarily the highest bid or the lowest ask price because
`the invention keeps the prices static in position, and allows the
`quantities at each price to change.
`
`Ex. 1035, 6; see also Ex. 1001, 2:66-3:20. Or, as described by the Federal Circuit:
`
`The claimed invention . . . [has] numerous advantages over the
`prior art. First, a trader can visually follow the market
`movement as the inside market shifts up and down along the
`
`1 The combination is referred to herein as “single action order entry” for shorthand.
`
`4
`
`0010
`
`

`
`price column. Id. col. 5 ll. 58-65. Second, and perhaps most
`important, a trader has confidence in making an offer at the
`intended price. Id. col. 3. ll. 3-4.
`
`eSpeed, 595 F.3d at 1347 (citing Ex. 1001). Speed, accuracy, and usability are
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`classic engineering problems.
`
`While undisputed, the claims are clearly directed to this improvement to
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`prior trading screens. For example, Figs. 3 and 4 of the ’132 patent (annotated
`
`below) show an embodiment at a time just before (T1) and after (T2) receipt of an
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`update from the electronic exchange reflecting a change in the inside market (the
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`best bid and best ask price).
`
`Claim 1
`
`Fig. 3 (T1)
`
`Fig. 4 (T2)
`
`5
`
`0011
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`

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`III. THE ’132 PATENT IS NOT A CBM PATENT
`
`The CBMR test should start with whether the purpose of the claimed
`
`invention is an improvement to an operational method for conducting business. If
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`not—e.g., where the purpose of the claimed invention is to improve the technology
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`used—the claims are ineligible for CBMR.
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`Here, it is undisputed that the claims are purportedly novel/non-obvious over
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`the prior art based on a combination of technological claim features relating to GUI
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`structure/functionality—not based on improvements to a business method/process
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`or on merely implementing such a business method/process on computers. Indeed,
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`the claims are not even directed to a business method or process. This is
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`dispositive. Petitioners propose a legally flawed approach—arguing that the
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`indisputably claimed technological features that distinguished the prior art are
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`obvious. It is legal error to conduct a 102/103 inquiry in the CBM inquiry. The
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`proper test looks at what makes the claims purportedly novel and non-obvious. If it
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`is the steps of a business method/process, then such claims may qualify as a CBM.
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`However, if it is improvements to technology, as is the case here, it cannot qualify
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`as a CBM. This is why a claim to stapler, even if used in a bank, cannot qualify as
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`a CBM. The claims here—directed to a GUI tool for order entry—are no different.
`
`As discussed above, the ’132 patent claims a new GUI tool that improves the
`
`functioning of a computer rather than a purportedly new business method. The
`
`6
`
`0012
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`

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`’132 patent is, therefore, ineligible for covered business method review.
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`Moreover, the ’132 patent is ineligible for CBMR because the claimed GUI
`
`features are technology—making the claimed GUI improvement a technological
`
`invention. The ’132 patent stands in stark contrast to claims directed to a business
`
`method/process and merely reciting implementation on a generic “display” or
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`“GUI.” The alleged point of novelty here lies in the specific combination of
`
`particular GUI features, not in a business method/process. Supra, II.
`
`A.
`
`The Statutory Definition of CBM Requires More Than a Recitation of
`Financial Activity or a Financial Purpose
`
`Petitioners’ conclusory CBM paragraph rests on the claimed GUI being used
`
`to trade and the Board’s prior finding that the claims recite financial terms. Pet. 4.
`
`TT does not dispute that the claims include financial terms or that the claimed GUI
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`tool can be used to trade. But, this is not determinative. The statute does not define
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`a CBM patent as any patent including claims with a financial term. Instead, the
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`statute limits its jurisdiction to patents with claims directed to certain methods for
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`performing business operations—hence, the name “covered business method.”
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`Indeed, in addition to the technological invention exception, the statute includes
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`three express limitations, with only one relating to being “financial in nature:” The
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`statute (1) limits its scope to claims for a “method or corresponding apparatus,” (2)
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`limits those methods or corresponding apparatuses to only ones directed to “data
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`processing or other operations,” and (3) limits the data processing or other
`
`7
`
`0013
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`

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`operations to only those “used in the practice, administration, or management of a
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`financial product or service.” AIA, § 18.2
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`Moreover, Petitioners’ reliance on Versata is misplaced. In Versata, the
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`Court held that financial product or service in the third limitation should be
`
`interpreted broadly. Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1325
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`(Fed. Cir. 2015). However, the financial requirement is not in dispute here. Indeed,
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`the PTO admitted that not all patents “touching on a ‘commercial transaction[]’ or
`
`an ‘activity in today’s economy’ will constitute a covered business method patent.”
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`Ex. 2002, 37-38. The PTO stated that “[i]t implies only that patents directed to the
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`processing of data for providing a financial service—[t]here, pricing—are covered
`
`business method patents, as the text of the AIA plainly suggests.” Id., 38.
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`This is consistent with the legislative history that makes clear that
`
`improvements to software tools or GUIs, even if used to implement a trading
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`strategy or other financial activity, are outside the scope of CBMR. 157 Cong. Rec.
`
`S5428, S5433 (daily ed. Sept. 8, 2011) (Sens. Schumer, Durbin).
`
`2 Petitioners paraphrase the CBM definition to omit the words “or other
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`operations.” Pet. 3. Reading the phrase as written—“a method. . . for performing
`
`data processing or other operations used”—makes clear that CBM’s include only
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`claims to certain methods for performing business operations.
`
`8
`
`0014
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`

`
`that possess patents
`[Mr. DURBIN]…[S]ome companies
`categorized by the PTO as class 705 business method patents
`have used the patents to develop novel software tools and
`graphical user
`interfaces
`that have
`been widely
`commercialized and used within
`the electronic trading
`industry to implement trading and asset allocation strategies. .
`.Are these the types of patents that are the target of Section
`18?
`Mr. SCHUMER. No. . . . [G]enerally speaking, it is not the
`understanding of Congress that such patents would be reviewed
`and invalidated under Section 18.
`Id., S5428 (emphasis added).
`[Mr. DURBIN.] Examples of such patent-protected products
`include machinery that counts, sorts or authenticates currency
`and paper instruments, and novel software tools and graphical
`user interfaces that are used by electronic trading industry
`workers to implement trading or asset allocation strategies.
`Vibrant industries have developed around the production and
`sale of these tangible inventions, and I appreciate that patents
`protecting such job-creating products are not understood to be
`the target of section 18.
`Id., S5433 (emphasis added).
`[Mr. DURBIN.] I also expect the PTO to keep in mind as it
`regulations Congress’s understanding
`that
`crafts
`these
`legitimate and job-creating technological patents such as
`those protecting the novel electronic trading software tools
`and graphical user interfaces discussed above are not the
`9
`
`0015
`
`

`
`target of section 18.
`Id. (emphasis added).
`
`1.
`
`The Legislative History Should Not Be Ignored
`
`Petitioners make two meritless arguments: (1) Senator Durbin’s remarks
`
`regarding Section 18’s scope should be ignored, and alternatively (2) the
`
`legislative history somehow explains that the statute’s “CBM definition covers
`
`‘GUI’ claims.” Pet. 8-10. That the statute explicitly “lacks any such GUI
`
`exception,” as Petitioners argue (Pet. 4), is not relevant to whether the Board
`
`should examine the legislative history (nor is it relevant to what TT actually
`
`argues—that novel/nonobvious improvements to GUI tools used in financial
`
`applications were not intended to be within the purview of Section 18 (see supra)).
`
`Petitioners argue “Senator Durbin was merely expressing his own opinion over the
`
`statute’s reach.” Pet. 9. But the legislative history TT cited includes a dialogue of
`
`agreement between Senator Durbin and the bill’s sponsor Senator Schumer, and
`
`thus is not simply one senator’s “opinion.”
`
`The cited statements are completely consistent with the language of the
`
`statute and are not contradicted anywhere in the legislative history. Petitioners mis-
`
`cite Senator Schumer’s remarks at 157 Cong. Rec. at S5432 as explicitly listing the
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`type of GUI claims at issue here. Pet. 10. First, in those statements, Senator
`
`Schumer simply clarified that the statute applies to a “business method patent
`
`regardless of the type or structure of claims contained in the patent,” because
`10
`
`0016
`
`

`
`“[c]lever drafting of patent applications should not allow a patent holder to avoid
`
`PTO review,” and “[a]ny other result would elevate form over substance.” 157
`
`Cong. Rec. at S5432. This does not contradict TT’s argument above or Senator
`
`Schumer’s agreement in the legislative history, that the statutory definition of
`
`CBM requires more than a recitation of financial activity or a financial use, and
`
`that certain trading GUIs (like those claimed here) are outside the statute’s scope.
`
`TT does not argue for a wholesale GUI exception to CBM review, as
`
`Petitioners’ second argument suggests. Just as a generic “apparatus” claim could
`
`meet the definition, so could claims that merely recite a generic “GUI” or
`
`“display” when that GUI or display is not the purported invention. The
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`Congressional record clarifies the distinction between claims to purportedly novel
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`GUIs (not CBMs) and using a generic GUI as a claim drafting technique (a CBM).
`
`See id., S5409, S5436-37. The claims here are not CBMs because they claim a
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`purportedly novel GUI, not a generic GUI as a claim drafting technique to tie up a
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`business method. Indeed, the Petition’s reference to the discussion of “methods for
`
`‘selling and trading financial instruments and other securities’” highlights this
`
`distinction. Pet. 9-10. Sen. Schumer was simply saying claims directed trading
`
`strategies are in, but he also agreed that claims directed to GUI tools used by
`
`traders to implement trading strategies are out.
`
`11
`
`0017
`
`

`
`2.
`
`GUI Design Is a Technology, Not a Business Method
`
`There is no disputing that GUI design is a technology. The field of GUI or
`
`human-computer interaction (“HCI”) design has long been recognized as
`
`technological. To be clear, TT claims specific features that define how a
`
`specialized GUI functions, as opposed to generically claiming a “GUI” or a
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`“display” of information without any functional details.
`
`The Association for Computing Machinery, a leading computing
`
`organization, recognizes the importance of this technology field. “Research in
`
`human-computer interaction (HCI) has been spectacularly successful, and has
`
`fundamentally changed computing.” Ex. 2003, 2. “Even the remarkable growth of
`
`the World Wide Web is a direct result of HCI research: applying hypertext
`
`technology to browsers allows one to traverse a link across the world with a click
`
`of the mouse. More than anything else, improvements to interfaces have triggered
`
`this explosive growth.” Id.
`
`Our government’s leading scientific research centers also recognize the
`
`importance of user interface design. For example, NASA’s Ames Research Center
`
`contains an entire HCI Group. Ex. 2004. They describe their mission as:
`
`The Ames HCI Group contributes to the development of
`measurably better NASA software through careful application
`of HCI methods. We follow an iterative process that consists of
`user research, interaction design, and usability evaluation. It is
`
`12
`
`0018
`
`

`
`commonly assumed that HCI is exclusively focused on the
`interface. We are focused on the users and their goals in order
`to build the right tool which means that we are focused on
`functionality as well as interface.
`
`Ex. 2005. And many colleges and universities offer courses and programs centered
`
`on interface design to train engineers and programmers. Exs. 2006-2012.
`
`Petitioners do not disagree. For example, they admit that a person of
`
`ordinary skill in the art would need technical experience. Pet. 13. And Petitioners’
`
`declarant admits that GUIs are technology. Ex. 1006, ¶ 7; Ex. 1007, ¶ 8.
`
`3.
`
`Because the Claims Are Directed to a Combination of GUI Features
`and Functionality Rather than a Method of Doing Business, They Do
`Not Qualify for CBM Review
`
`The specification discloses that the invention is an improvement to existing
`
`trading GUIs, not a method of trading. Supra, II. Despite Petitioners’ assertions
`
`that the claims are directed to a method of doing business, the PTO allowed the
`
`claims because of the claimed combination of GUI features/functionality. See
`
`supra, II. Indeed, Petitioners give no reason to reverse the prior analysis conducted
`
`by the PTO. See infra, VIII. Accordingly, the Board should deny institution
`
`because the invention improves prior art GUI technology. See Ex. 2036, 6
`
`(allowing claims based on the combination of a “‘dynamic display’ of a plurality of
`
`the quantity of bids and asks aligned with a ‘static display’ of corresponding
`
`prices . . . aligned with a ‘static display of corresponding prices” and where “a
`
`13
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`0019
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`

`
`trader places a trade order with the pointer in the area of the order entry region of
`
`the dynamic market depth region, through a single computer implemented
`
`action.”); Ex. 2037. Such patents are not directed to operational business processes
`
`and lack CBM jurisdiction—to find otherwise would be legal error.
`
`B.
`
`Even If the ’132 Patent Were a CBM, the Claimed GUI Improvements
`Fall within the Technological Invention Exception
`
`The AIA explicitly excludes patents directed to technological inventions
`
`from CBMR. § 18. The Board considers two things “[i]n determining whether a
`
`patent is for a technological invention”: “whether the claimed subject matter as a
`
`whole recites a technological feature that is novel and unobvious over the prior art”
`
`and whether the claimed subject matter “solves a technical problem using a
`
`technical solution.” 37 C.F.R. § 42.301(b).3 The claimed interaction between
`
`elements of a GUI does both, rendering ’132 patent ineligible for CBMR. This test
`
`cannot subsume the merits because that would be legal error. Instead, the test
`
`should focus on whether the claimed combination that is purportedly novel/non-
`
`obvious relates to technology, not whether it is in fact novel/non-obvious.
`
`1.
`
`Purported Novel and Nonobvious Improvements to GUIs Necessarily
`Claim Novel and Nonobvious Technology
`
`The first part of the technological invention test—whether the claimed
`
`subject matter as a whole recites a technological feature that is novel and
`
`3 The definition requires consideration of both prongs.
`
`14
`
`0020
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`

`
`unobvious over the prior art—should not focus on the ultimate issue of novelty or
`
`non-obviousness. See Versata, 793 F.3d at 1326 (“At this early stage of the
`
`process, when the PTO is first determining whether the patent at issue is even a
`
`CBM, there would seem to be little cause to determine what will be one of the
`
`ultimate questions if review is granted—did the PTO err in the first instance when
`
`it originally determined that the invention was novel and nonobvious?”).
`
`Accordingly, because GUIs are technology, a patent that describes its invention as
`
`an improvement to prior GUIs and which was allowed based on a combination of
`
`GUI features satisfies this part of the test. C.f. SightSound Techs. v, Apple, Inc.,
`
`Nos. 2015–1159, 2015–1160, 2015 WL 8770164 at *5 (Fed. Cir. Dec. 15, 2015)
`
`(“[c]laiming a computer without ‘specific, unconventional software, computer
`
`equipment, tools or processing capabilities’ is insufficient.”) Id. In the CBM
`
`determination, looking further at Petitioners’ arguments that the claimed
`
`combination of technological GUI elements are obvious is legal error.
`
`Here, the Examiner’s prior analysis found that the claimed combination of
`
`GUI features rendered the claims novel and nonobvious over the prior art. See
`
`supra at II. The specification also confirms that the invention was an improvement
`
`to the available GUI technology. Id. Accordingly, the Board should stop here and
`
`find that the claims are directed to a technological invention.
`
`15
`
`0021
`
`

`
`2.
`
`Each of Petitioners’ Arguments That the Claims Do Not Recite Novel
`and Nonobvious Technology Fails to Address the Technological
`Improvement—the Claimed Novel and Nonobvious Interaction
`between GUI Elements
`
`Petitioners’ argument that the claimed invention can be implemented on a
`
`conventional computer lacks any merit. The known technologies recited in the
`
`’132 patent are merely the technological foundation upon which the claimed
`
`invention was built. Petitioners ignore the claimed technology—GUI features that
`
`improve upon prior GUIs. Of course the claimed invention can be implemented on
`
`a conventional computer—almost all innovative software can be. That is the point
`
`of software. The relevant inquiry relates to the claimed software solution (in this
`
`case an improved GUI tool) not the platform it runs on. The claims here are not
`
`directed to that platform. As explained above, a new GUI tool of the sort claimed
`
`here is technolog