`Tel: 571-272-7822
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`Paper 129
`Entered: February 28, 2017
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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.,
`Petitioner,
`
`v.
`
`TRADING TECHNOLOGIES INTERNATIONAL, INC.,
`Patent Owner.
`_______________
`
`Case CBM2015-00182
`Patent 6,772,132 B1
`_______________
`
`
`Before SALLY C. MEDLEY, MEREDITH C. PETRAVICK, and
`JEREMY M. PLENZLER, Administrative Patent Judges.
`
`
`Opinion for the Board filed by PLENZLER, Administrative Patent Judge.
`
`Opinion dissenting-in-part filed by PETRAVICK, Administrative Patent
`Judge.
`
`PLENZLER, Administrative Patent Judge.
`
`
`FINAL WRITTEN DECISION
`Covered Business Method Patent Review
`37 U.S.C. § 328(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`IBG 1061
`IBG v. TT
`CBM2016-00054
`
`
`
`CBM2015-00182
`Patent 6,772,132 B1
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`
`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 requesting covered business
`method patent review of claims 1–56 (the “challenged claims”) of U.S.
`Patent No. 6,772,132 B1 (Ex. 1001, “the ’132 patent”). Paper 7 (“Pet.”).
`Trading Technologies International, Inc. (“Patent Owner”) filed a
`Preliminary Response. Paper 15 (“Prelim. Resp.”). On March 3, 2016, we
`instituted a covered business method patent review (Paper 19, “Institution
`Decision” or “Inst. Dec.”) based upon Petitioner’s assertion that claims 1–56
`are directed to patent ineligible subject matter under 35 U.S.C. § 101 and
`that those claims are unpatentable under 35 U.S.C. § 103. Inst. Dec. 39.
`Subsequent to institution, Patent Owner filed a Patent Owner Response
`(Paper 67, “PO Resp.”) and Petitioner filed a Reply (Paper 96, “Pet. Reply”)
`to Patent Owner’s Response.
`We held a joint hearing of this case and several other related cases on
`October 19, 2016. Paper 122 (“Tr.”).
`After oral hearing, the Federal Circuit issued a decision in Trading
`Technologies International, Inc., v. CQG, Inc., No. 2016-1616, 2017 WL
`192716 (Fed. Cir. Jan. 18, 2017), determining that the claimed subject
`matter of the ’132 patent is patent eligible under § 101. Petitioner and Patent
`Owner, with authorization (Paper 125), each filed supplemental briefing
`addressing the impact of that decision on this proceeding. Paper 128 (“Pet.
`Br.”); Paper 126 (“PO Br.”).
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`We have jurisdiction under 35 U.S.C. § 6. This Final Written
`Decision is issued pursuant to 35 U.S.C. § 328(a) and 37 C.F.R. § 42.73.
`For the reasons that follow, we determine that Petitioner has shown by a
`preponderance of the evidence that claims 1–28, 30–38, 40–48, and 50–56
`of the ’132 patent are unpatentable under 35 U.S.C. § 103. Petitioner has
`failed to show claims 29, 39, and 49 are unpatentable under § 103 and that
`claims 1–56 are directed to patent ineligible subject matter under 35 U.S.C.
`§ 101.
`B. Related Proceedings
`The parties indicate that the ’132 patent is the subject of numerous
`related U.S. district court proceedings, as well as the Federal Circuit
`Decision noted above. Pet. 2; Paper 10, 2–6; Paper 124, 1.
`The ’132 patent was the subject of petitions for covered business
`method patent review in TD Ameritrade Holding Corp. v. Trading
`Technologies International, Inc., CBM2014-00135 (PTAB) and CQG, Inc.
`v. Trading Technologies International, Inc., CBM2015-00058 (PTAB).
`Trial was instituted, but later terminated, for CBM2014-00135. Institution
`was denied for CBM2015-00058.
`Numerous patents are related to the ’132 patent and the related patents
`are or were the subject of numerous petitions for covered business method
`patent review and reexamination proceedings.
`C. Asserted Grounds
`Trial was instituted based on the following grounds.
`References
`Basis Claims Challenged
`N/A
`§ 101
`1–56
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`References
`TSE1 and Belden2
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`TSE, Belden, and May3
`
`Basis Claims Challenged
`§ 103
`1–3, 7–10, 14–16, 20–28, 30–
`38, 40–48, and 50–56
`4, 11, and 17
`
`§ 103
`
`§ 103
`
`TSE, Belden, and Gutterman4
`
`5, 6, 12, 13, 18, 19, 29, 39,
`and 49
`Petitioner provides testimony from David Rho (Ex. 1006; “the Rho
`Declaration) and Kendyl A. Román (Ex. 1007; “the Román Declaration”) to
`support its challenges. Patent Owner provides testimony from Christopher
`H. Thomas. Ex. 2169 (“the Thomas Declaration”).
`D. The ’132 Patent
`The ’132 patent is titled “Click Based Trading with Intuitive Grid
`Display of Market Depth.” Ex. 1001, [54]. The ’132 patent describes a
`display, named the “Mercury” display, and method of using the display to
`trade a commodity. Id. at Abstract, 3:5–10. The ’132 patent explains that
`the Mercury display is a graphic user interface (“GUI”) that dynamically
`displays the market depth of a commodity traded in a market and allows a
`trader to place an order efficiently. Id. at 3:11–24. The Mercury display is
`depicted in Figure 3, which is reproduced below.
`
`
`1 Tokyo Stock Exchange Operation System Division, Futures/Option
`Purchasing System Trading Terminal Operation Guide (1998) (Ex. 1016).
`Citations to this reference refer to its English translation (Ex. 1017).
`2 PCT Pub. No. WO 90/11571, pub. Oct. 4, 1990 (Ex. 1012, “Belden”).
`3 CA 2 305 736 A1, pub. Apr. 22, 1999 (Ex. 1013, “May”).
`4 U.S. Pat. No. 5,297,031, iss. Mar. 22, 1994 (Ex. 1011, “Gutterman”).
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`Figure 3 of the ’132 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 7:36–48. The ’132 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 7:38–40. 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 7:35–51.
`The ’132 patent explains that “[t]he exchange sends the price, order and fill
`information to each trader on the exchange” and that “[t]he physical
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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 4:61–5:1.
`Column 1002 contains various parameters and information used to
`execute trades, such as the default quantity displayed in cell 1016. See id. at
`8:3–37. A trader executes trades using the Mercury display by first setting
`the desired commodity and default parameters, such as default quantity. See
`id. at 9:3–17; 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 appropriate
`cell in column 1003 or 1004. See id. at 9:7–10:3; Fig. 6, steps 1306–1315.
`E. Illustrative Claim
`As noted above, Petitioner challenges claims 1–56. Claims 1, 8, and
`14 are independent. Claim 1 is illustrative of the claimed subject matter 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
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`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.
`Ex. 1001, 12:2–27.
`
`
`ANALYSIS
`A. The Level of Ordinary Skill in the Art
`Notwithstanding the parties’ submissions of the level of ordinary skill
`in the art,5 we find that the level of ordinary skill in the art is reflected by the
`prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed.
`Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re
`Oelrich, 579 F.2d 86, 91 (CCPA 1978).
`B. 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); see Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct.
`2131, 2144 (2016) (concluding the broadest reasonable construction
`“regulation represents a reasonable exercise of the rulemaking authority that
`Congress delegated to the Patent Office”).
`Applying that standard, we interpret the claim terms of the ’132 patent
`according to their ordinary and customary meaning in the context of the
`
`
`5 The parties’ submissions focus primarily on the degrees, occupations, and
`experience, as opposed to what the hypothetical person of ordinary skill in
`the art would have known at the time of the invention. As such, and as the
`triers of fact, we do not find such information particularly helpful.
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`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 and Patent Owner propose
`constructions for several claim limitations. Pet. 13–14; PO Resp. 27–30;
`Pet. Reply 9. For purposes of this Decision, we determine that only the
`“single action” limitations require an express construction in order to
`conduct properly our analysis discussed below.
`Petitioner contends that
`The ’132 patent 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.” (’132 patent, 4:15-20; Román Decl. ¶ 78.)
`Pet. 14. Patent Owner does not dispute this construction, which we adopted
`in our Institution Decision. Inst. Dec. 8. We are apprised of no reason to
`change that construction.
`
`Each of the independent claims recites the “single action.” The
`relation of the “single action” to the subsequent language in the claims
`merits discussion. Claim 1 recites “selecting a particular area in the order
`entry region 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.” Claim 8 similarly recites
`a fourth program code for receiving a command as a result of a
`selection of a particular area in the order entry region by a 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.
`Claim 14 recites
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`a trade order sending component for receiving a command as a
`result of a selection of the area in the order entry region by a
`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.
`In our Institution Decision, we made a preliminary determination that
`the “single action” recited in claims 1, 8, and 14 does not require setting the
`additional parameters or sending the trade order. Inst. Dec. 10. Rather, we
`determined that the claims require that the selection of the area in the order
`entry is accomplished by the “single action,” and that the “single action”
`allows for additional parameters to be set and the trade order to be sent. Id.
`Petitioner agrees with that construction. Pet. Reply 9. Patent Owner
`disagrees. PO Resp. 27–28.
`
`Patent Owner responds that
`A trader order is an electronic message that includes the
`parameters of a desired order. The plain language is understood
`to mean that the “single action of the user input device” refers to
`both “set[ting] a plurality of additional parameters” and
`“send[ing] the trade order to the electronic exchange” (claim 1,
`similarly claims 8 and 14). Ex.2169, ¶30. The BRI requires that
`the single user action both set the additional parameters for the
`trade order and also send the trade order to an electronic
`exchange by selecting a particular area of the order entry region.
`Id.
`Id. at 28. Patent Owner additionally points out that the claims require that
`the order entry region is “for receiving commands . . . to send trade orders.”
`PO Resp. 68. Upon further consideration, we agree with Patent Owner and
`determine that our initial construction was overly broad.
`Because the “order entry region” is “for receiving commands . . . to
`send trade orders,” it follows that the selection of the area in the order entry
`via the “single action” does not simply provide an opportunity for a user to
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`set the additional parameters and send the trade order, such as via a
`subsequent pop-up window. Rather, as plainly recited in the claims, the
`“order entry region,” itself, receives the commands to send trade orders.
`This is consistent with the only embodiment discussed in the specification of
`the ’132 patent, which includes setting trade parameters and sending a trade
`order based on a single action. See Ex. 1001, 9:61–11:11. Petitioner fails to
`apprise us of any contrary understanding, consistent with the Specification,
`where the “order entry region” would “receiv[e] commands . . . to send trade
`orders.”
`Accordingly, we determine that the “order entry region” recited in
`claims 1, 8, and 14 receives commands to send trade orders, including
`commands to “set a plurality of additional parameters for the trade order and
`send the trade order” as the result of a “single action of the user input device
`with a pointer of the user input device positioned over the particular area.”
`C. Covered Business Method Patent
`Section 18 of the AIA6 provides for the creation of a transitional
`program for reviewing covered business method patents. A “covered
`business method patent” is a patent that “claims a method or corresponding
`apparatus for performing data processing or other operations used in the
`practice, administration, or management of a financial product or service,
`except that the term does not include patents for technological inventions.”
`AIA § 18(d)(1); see 37 C.F.R. § 42.301(a). A patent need have only one
`claim directed to a covered business method to be eligible for review. See
`Transitional Program for Covered Business Method Patents—Definitions of
`
`
`6 Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284, 329
`(2011) (“AIA”).
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`Covered Business Method Patent and Technological Invention, 77 Fed. Reg.
`48,734, 48,736 (Aug. 14, 2012) (“CBM Rules”) (Response to Comment 8).
`In this Petition, Petitioner contends that “while a patent need only one
`claim directed to a CBM to be eligible for CBM review . . . all the claims
`qualify,” and particularly cites claims 1, 4–8, and 14. Pet. 4.
`1. Data Processing or Other Operations used in a Financial
`Product or Service
`Petitioner asserts that claim 1 is directed to a covered business method
`because it recites a method of placing a trade order for a commodity on an
`electronic exchange including the steps of displaying market information
`and sending a trade order, which are financial in nature. 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 . . . a plurality of bids and a plurality of asks in the market for
`the commodity” and “selecting a particular area in the order entry region . . .
`to . . . send the trade order to the electronic exchange,” which are recited in
`the claim.
`Patent Owner does not dispute that the claims are directed to a
`financial product or service and, instead, contends that the claims are not
`directed to “data processing or other operations” of the financial product or
`service. Patent Owner’s contentions are unpersuasive. See PO Resp. 22–24.
`Claim 1 encompasses processing financial data associated with a
`commodity for display and processing financial data for sending a trade
`order for a commodity to an exchange. See Ex. 1001, 4:62–66 (“[t]he
`present invention processes this information and maps it . . . to a screen.”);
`11:12–14 (“[t]he process for placing trade orders using the Mercury
`display”), 12:2–27. This processing of financial data is used in the practice,
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`administration, or management of a commodity, which is a financial
`product, and in the practice, administration, or management of electronic
`trading with an exchange, which is a financial service or activity.
`Even if there is some disagreement as to whether claim 1 includes
`“data processing,” there appears to be no disagreement that the steps of
`claim 1 (displaying market information, setting trade order parameters, and
`sending a trade order to the electronic exchange) are operations used in the
`practice, administration, or management of a commodity or trading a
`commodity on an electronic exchange. See PO Resp. 23–24 (discussing
`only whether the ’132 patent claims “data processing”). The ’132 patent,
`thus, at least claims “other operations used in the practice, administration, or
`management of a financial product or financial service” (AIA § 18(d)(1)).
`For the reasons stated above, and based on the particular facts of this
`proceeding, we conclude that the ’132 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” and meets that requirement of § 18(d)(1) of the AIA.
`2. Exclusion for Technological Inventions
`To determine whether a patent is for a technological invention, we
`consider “whether the claimed subject matter as a whole recites a
`technological feature that is novel and unobvious over the prior art; and
`solves a technical problem using a technical solution.” 37 C.F.R.
`§ 42.301(b).
`The following claim drafting techniques, for example, typically do not
`render a patent a “technological invention”:
`(a) Mere recitation of known technologies, such as computer
`hardware, communication or computer networks, software,
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`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; Apple Inc. v.
`Ameranth, Inc., 842 F.3d 1229, 1240 (Fed. Cir. 2016) (not addressing
`arguments regarding whether the first prong was met when it was
`determined that the second prong—that the claimed subject matter as a
`whole does not solve a technical problem using a technical solution—was
`met).
`
`Patent Owner focuses on whether the claims “solve[] a technical
`problem using a technical solution.” PO Resp. 24–27. When addressing
`“whether the claimed subject matter as a whole recites a technological
`feature that is novel and unobvious over the prior art,” Patent Owner simply
`alleges that “Petitioners fail to address whether the claims recite a technical
`feature that is novel and unobvious.” PO Resp. 24. That is incorrect.
`Petitioner contends that rather than reciting a technical feature that is novel
`or unobvious over the prior art, the claims of the ’132 patent generally recite
`trading software that is implemented on a conventional computer. Pet. 5–7.
`That was specifically noted in our Institution Decision. Inst. Dec. 15.
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`We are persuaded by Petitioner’s contentions that at least claim 1 of
`the ’132 patent does not recite a novel and non-obvious technological
`feature. The specification of the ’132 patent treats as well-known all
`potentially technological aspects of the claims. For example, the ’132 patent
`discloses that its system can be implemented “on any existing or future
`terminal or device” (Ex. 1001, 4:4–7), each of which is known to include a
`display, and discloses that the input device can be a mouse (id. at 4:9–11),
`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 4:7–9. The ’132 patent also describes the programming
`associated with the GUI as insignificant. See, e.g., Ex. 1001, 4:62–5:1
`(explaining that “[t]he 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”). That at least claim 1 of the ’132 patent does not recite a
`novel and non-obvious technological feature is further illustrated below in
`our discussion of that claim being unpatentable under § 103.
`Accordingly, we determine that at least claim 1 does not satisfy the
`first prong of 37 C.F.R. § 42.301(b).
`3. Conclusion
`In view of the foregoing, we conclude that the ’132 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.
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`D. Section 101 Patent-Eligible Subject Matter
`Petitioner challenges claims 1–56 as directed to patent-ineligible
`subject matter under 35 U.S.C. § 101. Pet. 14–26; Pet. Reply 1–8. Patent
`Owner disagrees. PO Resp. 5–22. Our reviewing court also disagrees.
`Trading Techs., 2017 WL 192716 at *4.
`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 8–13, 30–39, and
`51 are “broad enough to encompass a transitory, propagating signal that is
`encoded, which is not eligible for patenting.” Pet. 18 (citing In re Nuijten,
`550 F.3d 1346, 1357 (Fed. Cir. 2007)); Pet. Reply 8. Claims 8–13, 30–39,
`and 51 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. 18. Petitioner explains
`that the specification neither defines this term nor provides examples. In our
`Institution Decision, we made an initial determination 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.” Inst. Dec. 11. Patent Owner responds that there is no evidence to
`support Petitioner’s contention that one skilled in the art would have
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`understood “computer readable medium having program code recorded
`thereon” to encompass a signal at the time of the invention. PO Resp. 22.
`Petitioner responds to Patent Owner’s contentions by simply asserting
`that “TT’s narrow construction of computer readable medium isn’t based on
`the specification since that term is not used therein,” and concluding that
`“the Board should apply the same BRI of computer readable medium that it
`has applied in thousands of matters.” Pet. Reply 8 (citing MPEP § 2106).
`
`Petitioner’s response is unhelpful. For example, in its Reply,
`Petitioner cites no evidence to rebut Patent Owner’s contentions regarding
`how one skilled in the art would have understood “computer readable
`medium having program code recorded thereon,” at the time of the
`invention. In fact, Petitioner does not even acknowledge those contentions.
`Accordingly, on this record, which is absent any further evidence or
`meaningful argument from Petitioner, we are not persuaded that at the time
`of the invention one skilled in the art would have understood “computer
`readable medium having program code recorded thereon” as encompassing
`transitory, propagating signals.
`There is no dispute that the remaining claims fit within one of the four
`statutorily provided categories of patent-eligibility.
`Section 101 “contains an important implicit exception: Laws of
`nature, natural phenomena, and abstract ideas are not patentable.” Alice
`Corp. Pty. Ltd. v. CLS Bank. Int’l., 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
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`(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
`the analysis is to “determine whether the claims at issue are directed to one
`of those patent-ineligible concepts.” Id.
`There is no definitive rule to determine what constitutes an “abstract
`idea.” Rather, the Federal Circuit has explained that “both [it] and the
`Supreme Court have found it sufficient to compare claims at issue to those
`claims already found to be directed to an abstract idea in previous cases.”
`Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1334 (Fed. Cir. 2016); see
`also Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1294
`(Fed. Cir. 2016) (explaining that, in determining whether claims are patent-
`eligible under § 101, “the decisional mechanism courts now apply is to
`examine earlier cases in which a similar or parallel descriptive nature can be
`seen—what prior cases were about, and which way they were decided”).
`The Federal Circuit has already decided that the claims at issue before
`us are not directed to an abstract idea. Trading Techs., 2017 WL 192716 at
`*4. Petitioner provides no persuasive reason for us to ignore that guidance,
`particularly with respect to whether the claims are directed to an abstract
`idea. See, e.g., Pet. Br. 3–5. For example, Petitioner offers no persuasive
`explanation as to why its characterization of the alleged abstract idea would
`affect the Federal Circuit’s determination that the claims are not directed to
`an abstract idea. See id. at 5. We also are not apprised of a persuasive
`reason to arrive at a different outcome with respect to whether the claims are
`directed to an abstract idea based on the differences between the record
`
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`before us and that before the Federal Circuit alleged by Petitioner. See id. at
`3–5.
`
`Accordingly, we follow the Federal Circuit’s guidance and, in
`accordance with that guidance, determine the claims before us to be patent
`eligible.
`E. TSE Challenges
`Petitioner challenges claims 1–3, 7–10, 14–16, 20–28, 30–38, 40–48,
`and 50–56 as having been obvious over TSE and Belden, claims 4, 11, and
`17 as having been obvious over TSE, Belden, and May, and claims 5, 6, 12,
`13, 18, 19, 29, 39, and 49 as having been obvious over TSE, Belden, and
`Gutterman (“the TSE challenges”).
`1. TSE Printed Publication Status
` Petitioner argues that TSE is prior art under 35 U.S.C. § 102(a).
`Pet. 11. In support of its showing that TSE qualifies as prior art, Petitioner
`relies on the November 21, 2005 deposition testimony of Atsushi
`Kawashima taken during litigation between Patent Owner and a third party,
`eSpeed, Inc. Id.; Ex. 1019.
`Whether a document qualifies as a printed publication under 35
`U.S.C. § 102(a) is a question of law based on underlying findings of fact. In
`re Enhanced Sec. Research, LLC, 739 F.3d 1347, 1354 (Fed. Cir. 2014)
`(citing In re Hall, 781 F.2d 897, 899 (Fed. Cir. 1986)). The Federal Circuit
`“has interpreted § 102 broadly, explaining that even relatively obscure
`documents qualify as prior art so long as the public has a means of accessing
`them.” Id. (citing Hall, 781 F.2d at 899).
`Our leading case on public accessibility is In re Hall, 781 F.2d
`897 (Fed. Cir. 1986). In Hall we concluded that “a single
`cataloged thesis in one university library” constitutes “sufficient
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`accessibility to those interested in the art exercising reasonable
`diligence.” Id. at 900. Thereafter, in Constant v. Advanced
`Micro–Devices, Inc., we explained that “[a]ccessibility goes to
`the issue of whether interested members of the relevant public
`could obtain the information if they wanted to.” 848 F.2d 1560,
`1569 (Fed. Cir. 1988). Therefore, “[i]f accessibility is proved,
`there is no requirement to show that particular members of the
`public actually received the information.” Id.
`Enhanced Sec. Research, LLC, 739 F.3d at 1354. The determination of
`whether a document is a “printed publication” under 35 U.S.C. § 102
`involves a case-by-case inquiry into the facts and circumstances surrounding
`its disclosure to members of the public. In re Klopfenstein, 380 F.3d 1345,
`1350 (Fed. Cir. 2004).
`TSE is entitled “Futures/Option Purchasing System Trading Terminal
`Operation Guide” of the “Tokyo Stock Exchange Operation System
`Division.” Ex. 1017, 1.7 In the middle of page 5 is the annotation “August,
`1998” above the words “Tokyo Stock Exchange Operation System
`Division.” Id. at 5. Petitioner argues that TSE is prior art under 35 U.S.C.
`§ 102(a) because it was published in August of 1998 by giving two copies to
`each of the about 200 participants in the Tokyo Stock Exchange, who were
`free to do whatever they wanted with their copies of the publication. Pet. 11
`(citing Ex. 1019, 12–33).
`In support of its arguments regarding TSE as prior art, Petitioner
`directs us to portions of Mr. Kawashima’s testimony. At the time of his
`testimony, Mr. Kawashima testified that he was employed by the Tokyo
`Stock Exchange and was so at the time of the TSE manual, August 1998.
`
`
`7 References are to pages located at center bottom of the English translation
`of TSE (Ex. 1017).
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