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`UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
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`TRADESTATION TECHNOLOGIES, INC.,
`Petitioner,
`
`v.
`TRADING TECHNOLOGIES INTERNATIONAL, INC.,
`Patent Owner.
`___________________________________
`Case CBM2016-00086
`U.S. Patent 7,818,247
`___________________________________
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`PATENT OWNER’S NOTICE OF APPEAL
`
`
`
`via PTAB E2E
`Patent Trial and Appeal Board
`
`via Hand Delivery
`Director of the United States Patent and Trademark Office
`c/o Office of the General Counsel, 10B20
`Madison Building East
`600 Dulany Street
`Alexandria, VA 22313
`
`via CM/ECF
`United States Court of Appeals for the Federal Circuit
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`
`
`
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`
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`Pursuant to 35 U.S.C. §§ 141 and 142, and 37 C.F.R. §§ 90.2 and 90.3,
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`Case CBM2016-00086
`U.S. Patent 7,818,247
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`
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`Patent Owner, Trading Technologies International, Inc. (“TT”), hereby provides
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`notice that it appeals to the United States Court of Appeals for the Federal Circuit
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`from the Final Written Decision (Paper 28) entered on November 17, 2017, and
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`from all underlying orders, decisions, rulings, institutions, and opinions regarding
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`U.S. Patent No. 7,818,247 (“the ’247 patent”) at issue in Covered Business Method
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`No. CBM2016-00086. This notice of appeal is timely filed.
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`In accordance with 37 C.F.R. § 90.2(a)(3)(ii), the issues on appeal include,
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`but may not be limited to:
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`(1) the Board’s determination that it had jurisdiction to issue the Final
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`Written Decision based on the Board’s view that the ’247 patent is a covered
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`business method patent under § 18 of the American Invents Act;
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` (2) the Board’s determination that claims 1-21 are ineligible under 35
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`U.S.C. § 101;
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`(3) the Board’s claim constructions, failure to construe terms, and/or
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`determination of the level of ordinary skill in the art at the time of the invention;
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` (4) the unconstitutionality of the Transitional Program for Covered Business
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`Method Patents and Covered Business Method Review (AIA § 18) under Article
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`III, the Seventh Amendment, and the Fifth Amendment of the United States
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`Constitution; and
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`(5) any other findings or determinations supporting or related to the
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`Case CBM2016-00086
`U.S. Patent 7,818,247
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`
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`aforementioned issues, as well as all other issues decided adversely to Patent
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`Owner in any order, decision, ruling, or opinion.
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`The remedy sought on appeal is vacatur, or in the alternative, reversal of the
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`issues decided adversely to Patent Owner in the Final Written Decision, including,
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`but not limited to, the Board’s conclusion that the ’247 patent is a CBM patent.
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`See Secure Axcess, LLC v. PNC Bank Nat’l Ass’n, 848 F.3d 1370, 1382 (Fed. Cir.
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`2017).
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`Pursuant to 35 U.S.C. § 142 and 37 C.F.R. § 90.2(a), this Notice is being
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`filed with the Director of the United States Patent and Trademark Office, and a
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`copy of this Notice is being concurrently filed with the Patent Trial and Appeal
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`Board. In addition, a copy of this Notice along with the required docketing fees is
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`being filed with the Clerk’s Office for the United States Court of Appeals for the
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`Federal Circuit via CM/ECF.
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`Dated: January 18, 2018
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`
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`Case CBM2016-00086
`U.S. Patent 7,818,247
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`
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`Respectfully submitted,
`By: /Jennifer M. Kurcz/
`Jennifer M. Kurcz,
`Back-Up Counsel, Reg. No. 54,481
`Counsel for Patent Owner
`Trading Technologies International, Inc.
`Baker & Hostetler LLP
`191 North Wacker Drive
`Suite 3100
`Chicago, IL 60606-1901
`T 312.416.6200
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`CERTIFICATE OF SERVICE
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`Case CBM2016-00086
`U.S. Patent 7,818,247
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`I hereby certify that on this 18th day of January, 2018, a true and correct
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`copy of the foregoing “PATENT OWNER’S NOTICE OF APPEAL” was Hand
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`Delivered to:
`
`Director of the United States Patent and Trademark Office
`c/o Office of the General Counsel, 10B20
`Madison Building East, 600 Dulany Street
`Alexandria, VA 22313-1450
`
`I also herby certify that on this 18th day of January, 2018, a true and correct
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`copy of the foregoing “PATENT OWNER’S NOTICE OF APPEAL,” and the
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`filing fee, were filed with the Clerk’s Office of the United States Court of Appeals
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`for the Federal Circuit, via CM/ECF.
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`I also hereby certify that a true and correct copy of the foregoing “PATENT
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`OWNER’S NOTICE OF APPEAL,” was served by electronic mail on this 18th
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`day of January, 2018, on counsel of record for the Petitioners as follows:
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`Kevin Su
`PTABInbound@fr.com
`
`John C. Phillips
`CBM41919-0018CP1@fr.com
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`Adam Kessel
`kessel@fr.com
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`Date: January 18, 2018
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`/Jennifer M. Kurcz/
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`1
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`Trials@uspto.gov
`Tel: 571-272-7822
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` Paper 28
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` Entered: November 17, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`
`
`TRADESTATION TECHNOLOGIES, INC.,
`Petitioner,
`
`v.
`
`TRADING TECHNOLOGIES INTERNATIONAL, INC.,
`Patent Owner.
`____________
`
`CBM2016-00086
`Patent 7,818,247 B2
`_______________
`
`
`Before SALLY C. MEDLEY, MEREDITH C. PETRAVICK, and
`JEREMY M. PLENZLER, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
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`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 328(a) and 37 C.F.R. § 42.73
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`
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`CBM2016-00086
`Patent 7,818,247 B2
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`I. INTRODUCTION
`TradeStation Technologies, Inc., (“Petitioner”)1 filed a Petition
`requesting a covered business method patent review of claims 1–21 of
`U.S. Patent No. 7,818,247 B2 (Ex. 1001, “the ’247 patent”) under the
`transitional program for covered business method patents.2 Paper 2 (“Pet.”).
`Trading Technologies International, Inc. (“Patent Owner”) did not file a
`Patent Owner Preliminary Response. Upon consideration of the Petition, we
`instituted a covered business method patent review of claims 1–21 of the
`’247 patent (Paper 8 (“Dec.”)).
`Subsequent to institution, Patent Owner filed a Patent Owner Response
`(Paper 14 (“PO Resp.”)) and Petitioner filed a Reply (Paper 18 (“Pet.
`Reply”)). An oral hearing was held on August 10, 2017, and a transcript of
`the hearing is included in the record (Paper 27 (“Tr.”)).
`For the reasons that follow, we determine that Petitioner has shown by
`a preponderance of the evidence that claims 1–21 of the ’247 patent are
`unpatentable.
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`A. Related Matters
`The ’247 patent is involved in the following lawsuit: TradeStation
`Technologies v. Trading Technologies Int’l, Inc., No. 0:16-cv-60296 (S.D.
`Fl.). Pet. 2. In compliance with 37 C.F.R. § 42.302(a), Petitioner certifies,
`and it is not disputed, that Petitioner has been sued for infringement of the
`
`
`1 Petitioner indicates that TradeStation Group, Inc., TradeStation Securities,
`Inc., TradeStation Technologies, Inc., and IBFX, Inc. are real parties-in-
`interest. Pet. 2.
`2 See § 18(a) of the Leahy-Smith America Invents Act, Pub. L. No. 112-29,
`2
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`CBM2016-00086
`Patent 7,818,247 B2
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`’247 patent. Id. at 15. On this record, we determine that Petitioner may
`petition for review of the ’247 patent pursuant to 37 C.F.R. § 42.302(a).
`B. The ’247 Patent
`The Specification of the ’247 patent describes trading tools for trading
`and monitoring a commodity on an electronic exchange. The tools increase a
`user’s efficiency and reduce the time it takes to enter an order or quote. Ex.
`1001, Abstract, 2:63–67.
`
`C. Illustrative Claims
`Claim 1 and dependent claim 3 are representative:
` A method for displaying market information
`1.
`corresponding to a commodity being traded at an electronic
`exchange, comprising:
`
`
`
`receiving by a computer device market data relating to the
`commodity from the electronic exchange, the market data
`comprising a quantity of an order that is pending at a first
`price level;
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`displaying by the computer device a first graphical area
`corresponding to the first price level;
`
`displaying by the computer device a second graphical area
`corresponding to a second price level, the second price
`level corresponding to a price level for the commodity
`that is different than the first price level, wherein the first
`and second graphical areas are arranged in an axial
`direction;
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`color-coding the first graphical area using a first color to
`indicate that the order is pending at the first price level;
`
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`125 Stat. 284, 329 (2011) (“AIA”).
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`3
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`Patent 7,818,247 B2
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`determining by the computer device from the market data
`that there is no order pending at the second price level;
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`color-coding the second graphical area using a second
`color to indicate that there is no order pending at the
`second price level;
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`updating the first graphical area such that the first
`graphical area is color-coded using the second color in
`response to new market data indicating that there is no
`order pending at the first price level; and
`
`updating the second graphical area such that the second
`graphical area is color-coded using the first color in
`response to new market data indicating that there is an
`order pending at the second price level.
`Ex. 1001, 34:31–60.
`
`3. The method of claim 1, further comprising:
`displaying an order entry region comprising a plurality of
`graphical areas corresponding to a plurality of price
`levels, the plurality of graphical areas in the order entry
`region arranged in the axial direction, such that selection
`of one of the plurality of graphical areas of the order entry
`region sends a trade order to the electronic exchange for
`the commodity, the trade order comprising a price based
`on the selected graphical area and a default order
`quantity; and
`sending the trade order to the electronic exchange in
`response to the selection of one of the plurality of
`graphical areas of the order entry region by a single action
`of a user input device.
` Id. at 35:4–17.
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`D. Ground of Unpatentability
`We instituted review of claims 1–21 of the ’247 patent on the ground
`that the claims are unpatentable under 35 U.S.C. § 101.
`E. Covered Business Method Patent
`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.” Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125
`Stat. 284, 329 (2011) (“AIA”) § 18(d)(1); see 37 C.F.R. § 42.302. 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). For purposes of
`determining whether a patent is eligible for a covered business method patent
`review, the focus is on the claims. Secure Axcess, LLC v. PNC Bank N.A.,
`848 F.3d 1370, 1379 (Fed. Cir. 2017) (“It is the claims, in the traditional
`patent law sense, properly understood in light of the written description, that
`identifies a CBM patent.”). One claim directed to a CBM is sufficient to
`render the patent eligible for CBM patent review. See id. at 1381 (“[T]he
`statutory definition of a CBM patent requires that the patent have a claim that
`contains, however phrased, a financial activity element.”).
`In our Institution Decision, we determined that Petitioner had shown
`that the ’247 patent is a CBM patent. Dec. 4–7. Patent Owner urges us to
`reconsider our determination and find that the ’247 patent is not eligible for
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`Patent 7,818,247 B2
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`CBM patent review. See PO Resp. 63–76. We are not persuaded to change
`our original determination.
`
`1. Method or Corresponding Apparatus for Performing Data
`Processing or Other Operations Used in the Practice, Administration
`or Management of a Financial Product or Service
`
`The statute defines a “covered business method patent” as “[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.” AIA § 18(d)(1); see 37
`C.F.R. § 42.301(a). A covered business method patent can be broadly
`interpreted to encompass patents claiming activities that are financial in
`nature. Transitional Program for Covered Business Method Patents—
`Definitions of Covered Business Method Patent and Technological
`Invention, 77 Fed. Reg. 48734, 48735 (Aug. 14, 2012); Blue Calypso, LLC v.
`Groupon, Inc., 815 F.3d 1331, 1338–41 (Fed. Cir. 2016) (determining that a
`patent was a covered business method patent because it claimed activities that
`are financial in nature); Unwired Planet, LLC v. Google, Inc., 841 F.3d 1376,
`n.5 (Fed. Cir. 2016) (stating that “we endorsed the ‘financial in nature’
`portion of the standard as consistent with the statutory definition of ‘covered
`business method patent’ in Blue Calypso”), Versata Dev. Grp., Inc. v. SAP
`America, Inc., 793 F.3d 1306, 1324–25 (Fed. Cir. 2015) (“[The statute] on its
`face covers a wide range of finance-related activities.”).
`A patent need have only one claim directed to a covered business
`method to be eligible for review. 77 Fed. Reg. at 48736 (Response to
`Comment 8). We take claim 3 as representative.
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`Petitioner argues that the ’247 patent is a patent that claims a method
`for performing data processing or other operations used in the practice,
`administration, or management of a financial product or service. Pet. 15–18.
` In particular, Petitioner argues that at least claim 3, which depends directly
`from claim 1, expressly requires the performance of a financial transaction
`by, for example, the recitation of receiving market data relating to the
`commodity [being traded at an electronic exchange] (claim 1), and further
`sending a trade order to the electronic exchange for the commodity. Pet. 17
`(citing Ex. 1001, 34:31–37, 35:4–133). Petitioner asserts that the claims are
`financial in nature, such as receiving market data relating to a commodity and
`comprising a quantity of an order that is pending at a first price level,
`displaying an indicator corresponding to a current highest bid price level or a
`current lowest ask price level provided in the market data, sending the trade
`order to the electronic exchange for the commodity, and displaying the price
`level, etc. Id. at 16–17.
`Notwithstanding Patent Owner’s arguments, which we address below,
`we are persuaded by Petitioner’s showing, and find that the ’247 patent is
`directed to a method for performing data processing or other operations used
`in the practice, administration, or management of a financial service. Here,
`Petitioner asserts, and we agree, that claim 3 is directed to a method for
`displaying market information, which is a financial activity. Petitioner
`further asserts, and we agree, that claim 3 also is directed to receiving trader
`inputs for a trade and sending a trade order to an exchange, which is a
`
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`3 We understand this citation to be a typographical error, and instead should
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`Patent 7,818,247 B2
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`financial activity.
`Patent Owner argues that the Petition is silent as to whether the ’247
`patent is directed to performing “data processing” or “other operations,” and
`that Petitioner’s showing focuses solely on whether the ’247 patent is
`financial in nature. PO Resp. 65–66. We disagree with Patent Owner.
`Petitioner does address whether the patent is directed to data processing or
`other operations. Pet. 17 (the ’247 patent claims expressly require “the
`performance of a financial transaction.”) (emphasis added). The definition
`for 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 . . . .” 37 C.F.R. § 42.301(a) (emphasis added). Petitioner relies on
`the “other operations” part of the definition to make its case. This is
`exemplified in showing that it is the method step of sending a trade order to
`the electronic exchange that Petitioner relies on as showing “other
`operations” which are used in the practice of a financial service (trading on
`an exchange).
`Patent Owner also argues that the ’247 claims are not directed to “data
`processing.” PO Resp. 66–68. As explained immediately above, the
`definition for a covered business method patent is not limited to a patent that
`claims a method for performing data processing. In any event, we are not
`persuaded by Patent Owner’s arguments, because such arguments are
`premised on the assumption that “data processing” should be interpreted
`
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`be 35:4–17.
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`Patent 7,818,247 B2
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`according to the definition of “data processing” found in the glossary for
`class 705 of the United States Patent Classification System, which is a
`“systematic operation on data in accordance with a set of rules which results
`in a significant change in data.” Id. at 66 (citing Ex. 2121, 4). Patent Owner
`does not sufficiently explain why this definition is controlling as opposed to
`the plain meaning of data processing.
`Claim 1 is directed to, for example, “displaying by a computer device
`market data relating to the commodity.” The ’247 patent discloses
`processing market information for display on a client terminal and for
`sending an order to an exchange. See, e.g., Ex. 1001, 6:42–45 (“The trading
`application, . . . , processes this information and maps it to positions in a
`theoretical grid program or any other comparable mapping technique for
`mapping data to a screen.”). For these reasons, we also determine that the
`’247 patent claims a method for performing data processing.
`In addition, Patent Owner argues that the legislative history of the AIA
`confirms that the claimed invention is not a covered business method because
`“the ’247 patent, which claims the structure, makeup, and functionality of a
`GUI tool (i.e., not remotely close to a business method) is not that type of
`patent.” PO Resp. 73–76 (citing Ex. 2126; Ex. 2127).
`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
`Ex. 2126, S5428, S5433), the language of the AIA, as passed, does not
`include an exemption for user interfaces for commodities trading from
`covered business method patent review. Indeed, “the legislative debate
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`Patent 7,818,247 B2
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`concerning the scope of a CBM review includes statements from more than a
`single senator. It includes inconsistent views . . . .” Unwired Planet, 841
`F.3d at 1381. For example, in contrast to the statements cited by Patent
`Owner, the legislative history also indicates that “selling and trading financial
`instruments and other securities” is intended to be within the scope of
`covered business method patent review. See Ex. 2126, S5432 (statements of
`Sen. Schumer); see also id. at S5436–37 (statements of Sen. Schumer
`expressing concern about patents claiming “double click”), Ex. 2127, S1364
`(Mar. 8, 2011) (statements of Sen. Schumer explaining that “method or
`corresponding apparatus” encompasses “graphical user interface claims” and
`“sets of instructions on storage media claims”). “[T]he legislative history
`cannot supplant the statutory definition actually adopted. . . . The
`authoritative statement of the Board’s authority to conduct a CBM review is
`the text of the statute.” Unwired Planet, 841 F.3d at 1381. Each claimed
`invention has to be evaluated individually to determine if it is eligible for a
`CBM patent review. A determination of whether a patent is eligible for a
`CBM patent review under the statute is made on a case-by-case basis. 37
`C.F.R. § 42.301(b).
`For the reasons stated above, we are persuaded that the ’247 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.
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`2.
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`Exclusion for Technological Inventions
`
`Even if a patent includes claims that would otherwise be eligible for
`treatment as a covered business method, review of the patent is precluded if
`the claims cover only “technological invention[s],” as defined by 37 C.F.R.
`§42.301(b). The definition of “covered business method patent” in
`§ 18(d)(1) of the AIA does not include patents for “technological
`inventions.” To determine whether a patent is for a technological invention,
`we consider the following: “whether the claimed subject matter as a whole
`[(1)] recites a technological feature that is novel and unobvious over the prior
`art; and [(2)] solves a technical problem using a technical solution.” 37
`C.F.R. § 42.301(b). Both prongs must be satisfied in order for the patent to
`fall within the exception for a technological invention. See Versata, 793 F.3d
`at 1326–27; Apple Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240 (Fed. Cir.
`2016). 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.
`
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`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,763–64 (Aug.
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`14, 2012). The Federal Circuit has held that a claim does not include a
`“technological feature” if its “elements are nothing more than general
`computer system components used to carry out the claimed process.” Blue
`Calypso, 815 F.3d at 1341; see also Versata, 793 F.3d at 1327 (“the presence
`of a general purpose computer to facilitate operations through uninventive
`steps does not change the fundamental character of an invention”).
`Petitioner asserts that the ’247 patent claims fail to recite any
`technological feature that is novel and unobvious over the prior art, and do
`not solve a technical problem with a technical solution. Pet. 18–28.
`Petitioner contends that the only arguably technical feature in the claims
`(e.g., claim 1 and all claims depending therefrom) is a “computer device” that
`performs standard computing functions such as “receiving,” “displaying,”
`and “updating.” Id. at 20. Petitioner argues that such terms, however, are
`merely generic technical terms referring to conventional technology that
`cannot qualify as novel and unobvious technological features. Id. Petitioner
`also argues that the ’247 patent itself acknowledges that “the trading tools
`may be implemented on any existing or future terminal or device.” Id.
`(quoting Ex. 1001, 5:20–21). Petitioner contends that the various
`technologies mentioned in the ’247 patent (computer, terminal, mouse,
`gateway server, workstation, router, etc.) all were standard, off-the-shelf
`products commonly used at the time. Id. Petitioner argues that the alleged
`novel feature—color-coding graphical areas based on market data—does not
`solve a technical problem, but rather a business problem, and further, such
`color-coding was not novel or non-obvious, but rather known in the art at the
`time of the invention. Id. at 21–22 (citing Ex. 1009, 189; Ex. 1010, 3).
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`We agree with Petitioner that the claims are directed to well-
`understood, routine, and conventional steps of receiving market information,
`color-coding and displaying such information to a trader, who uses the
`information to facilitate trading a commodity. For example, the
`“BACKGROUND OF THE INVENTION” section of the ’247 patent
`explains that it was well known for an electronic exchange to connect to
`participant computers, allowing traders to participate in the market, by using
`software that creates specialized interactive trading screens in the traders’
`desktops to facilitate trading a commodity. Ex. 1001, 1:60–67. There is no
`indication in the ’247 patent that the inventors invented gathering market
`information, displaying it to a trader, and using the information to facilitate
`trading a commodity. The use of a computer to perform these functions also
`was known in the art at the time of the invention, and the ’247 patent does
`not claim any improvement of a computing device.
`Petitioner argues that the claimed subject matter does not solve a
`technical problem using a technical solution, because the problem is a
`financial one and the solution is functional, such as rearranging and color-
`coding available market data on a display. Pet. 22–23. We agree with
`Petitioner that the problem noted in the Specification of the ’247 patent is not
`a technical one. The ’247 patent Specification highlights the problem and
`importance of reducing the time it takes to evaluate market data and enter an
`order. Ex. 1001, 2:64–67. Informing a trader of certain stock market trends
`or events is an activity that is financial in nature.
`Patent Owner argues that the ’247 patent claims a technological GUI
`tool that improves upon prior GUIs using a particular combination of GUI
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`features and functionality (the particular makeup, structure and features of a
`GUI tool), and, thus, falls under the technological exception, because the
`claims solve a technical problem. Id. at 69–70. Patent Owner, however,
`does not tie its arguments to the actual claim language to explain which of the
`steps of the broad method claims 1 or 3, for example, recite an improved
`technological GUI tool or how the claimed steps solve a technical problem.
`We do not find, for example, that either claim 1 or claim 3 recites an
`improved technological GUI tool or solves a technical problem.
`Patent Owner argues that Trading Technologies International, Inc., v.
`CQG, Inc., 675 Fed. Appx. 1001 (Fed. Cir. 2017) (“CQG”) dictates that the
`’247 patent claims cover technological inventions (PO Resp. at 71–73).
`CQG involved U.S. Patent Nos. 6,772,132 and 6,677,340. The Federal
`Circuit determined that the claims of those patents are patent eligible under
`35 U.S.C. § 101. The claims before us, however, are much broader than the
`claims involved in CQG. The Specification of the ’247 patent is different
`from the specification of the patents involved in CQG. Thus, comparing the
`claims of the patents involved in CQG is not particularly helpful here.
`Moreover, the CQG decision relied upon a feature not required by claim 1 of
`the ’247 patent— a static price axis. Although claim 1 of the ’247 patent
`requires first and second geographical areas arranged in an axial direction,
`the claim does not require an axis, let alone a static price axis.
`For all of the foregoing reasons, the subject matter of the claims is not
`a “technological invention” under 37 C.F.R. § 42.301(b), and the ’247 patent
`is eligible for a covered business method patent review.
`
`
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`CBM2016-00086
`Patent 7,818,247 B2
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`
`II. ANALYSIS
`
`A. Claim Interpretation
`In a covered business method patent review, claim terms in an
`unexpired patent are given their broadest reasonable construction in light of
`the specification of the patent in which they appear. 37 C.F.R. § 42.300(b).
`Under the broadest reasonable construction standard, claim terms are given
`their ordinary and customary meaning, as would be understood by one of
`ordinary skill in the art in the context of the entire disclosure. In re
`Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
`For purposes of this decision, we need not interpret any limitations of
`the claims expressly.
`B. The Level of Ordinary Skill in the Art
`Notwithstanding the parties’ submissions of the level of ordinary skill
`in the art, 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).
`
`C. 35 U.S.C. § 101 Asserted Ground of Unpatentability
`Petitioner contends that claims 1–21 of the ’247 patent are not patent
`eligible under 35 U.S.C. § 101. Pet. 29–54. Patent Owner opposes. PO
`Resp. 6–63.
`Section 101 of Title 35, United States Code, provides:
`Whoever invents or discovers any new and useful process,
`machine, manufacture, or composition of matter, or any new and
`
`
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`CBM2016-00086
`Patent 7,818,247 B2
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`
`useful improvement thereof, may obtain a patent therefor,
`subject to the conditions and requirements of this title.
`
`The Supreme Court recognizes three exceptions to these statutory
`classes: laws of nature, natural phenomena, and abstract ideas. Alice Corp.
`Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347, 2354 (2014); Mayo
`Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1293
`(2012). Although an abstract idea by itself is not patentable, a practical
`application of an abstract idea may be deserving of patent protection. Alice,
`134 S. Ct. at 2355. We must “consider the elements of each claim both
`individually and ‘as an ordered combination’ to determine whether the
`additional elements ‘transform the nature of the claim’ into a patent-eligible
`application.” Id. (citing Mayo, 132 S. Ct. at 1298, 1297). The claim must
`contain elements or a combination of elements that are “‘sufficient to ensure
`that the patent in practice amounts to significantly more than a patent upon
`the [abstract idea] itself.’” Id. (citing Mayo, 132 S. Ct. at 1294).
`Abstract Idea
`1.
`Petitioner argues that the claims encompass an abstract idea because
`they are directed to a fundamental economic practice. Pet. 31–34. In
`particular, Petitioner argues that the claims recite receiving market
`information, color-coding graphical areas based on market information, and
`then updating the display based on newly received market information.
`Petitioner further asserts that the ’247 patent explains that display of trading
`data was intended to assist a trader in digesting market data and to reduce the
`time it takes to enter an order. Id. at 31 (citing Ex. 1001, 2:64–67). As such,
`Petitioner contends, the claims are directed to the abstract, fundamental
`16
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`CBM2016-00086
`Patent 7,818,247 B2
`
`economic practice of displaying financial information in a manner that makes
`it easier to understand and thereby, facilitate trades on an exchange. Id. at
`31. Petitioner further argues that the abstract idea is old, well-known, and
`prevalent. Id. at 32–34 (citing Ex. 1003 ¶ 69; Ex. 1021; Ex. 1017, 12).
`Additionally, Petitioner contends that the claims can be performed using pen
`and paper, or using only human mental steps, further indicating that the
`claims are directed to an abstract concept. Id. at 34–38 (citing Ex. 1003 ¶ 69;
`Ex. 1017, 12).
`“The ‘abstract idea’ step of the inquiry calls upon us to look at the
`‘focus of the claimed advance over the prior art’ to determine if the claim’s
`‘character as a whole’ is directed to excluded subject matter.” Affinity Labs
`of Texas v. DirectTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (quoting
`Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir.
`2016)); see also Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed.
`Cir. 2016). There is no definitive rule to determine what constitutes an
`“a
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