UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
`
`IBG LLC, INTERACTIVE BROKERS LLC, TRADESTATION GROUP, INC.,
`and TRADESTATION SECURITIES, INC.,
`Petitioners,
`
`v.
`TRADING TECHNOLOGIES INTERNATIONAL, INC.,
`Patent Owner.
`___________________________________
`Case CBM2016-00087
`U.S. Patent 7,412,416
`___________________________________
`
`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
`
`
`
`
`________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
`
`IBG LLC, INTERACTIVE BROKERS LLC, TRADESTATION GROUP, INC.,
`and TRADESTATION SECURITIES, INC.,
`Petitioners,
`
`v.
`TRADING TECHNOLOGIES INTERNATIONAL, INC.,
`Patent Owner.
`___________________________________
`Case CBM2016-00087
`U.S. Patent 7,412,416
`___________________________________
`
`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
`
`
`
`
`
`Pursuant to 35 U.S.C. §§ 141 and 142, and 37 C.F.R. §§ 90.2 and 90.3,
`
`Case CBM2016-00087
`U.S. Patent 7,412,416
`
`
`
`Patent Owner, Trading Technologies International, Inc. (“TT”), hereby provides
`
`notice that it appeals to the United States Court of Appeals for the Federal Circuit
`
`from the Final Written Decision (Paper 37) entered on November 17, 2017, and
`
`from all underlying orders, decisions, rulings, institutions, and opinions regarding
`
`U.S. Patent No. 7,412,416 (“the ’416 patent”) at issue in Covered Business Method
`
`No. CBM2016-00087. This notice of appeal is timely filed.
`
`In accordance with 37 C.F.R. § 90.2(a)(3)(ii), the issues on appeal include,
`
`but may not be limited to:
`
`(1) the Board’s determination that it had jurisdiction to issue the Final
`
`Written Decision based on the Board’s view that the ’416 patent is a covered
`
`business method patent under § 18 of the American Invents Act;
`
` (2) the Board’s determination that claims 1-24 are ineligible under 35
`
`U.S.C. § 101;
`
`(3) the Board’s claim constructions, failure to construe terms, and/or
`
`determination of the level of ordinary skill in the art at the time of the invention;
`
` (4) the Board’s determination that claims 2 and 15 are unpatentable under
`
`35 U.S.C. § 112;
`
` (5) the Board’s dismissal of Patent Owner’s motion to exclude evidence;
`
`
`
`2
`
`
`
`(6) the unconstitutionality of the Transitional Program for Covered Business
`
`Case CBM2016-00087
`U.S. Patent 7,412,416
`
`
`
`Method Patents and Covered Business Method Review (AIA § 18) under Article
`
`III, the Seventh Amendment, and the Fifth Amendment of the United States
`
`Constitution; and
`
`(7) any other findings or determinations supporting or related to the
`
`aforementioned issues, as well as all other issues decided adversely to Patent
`
`Owner in any order, decision, ruling, or opinion.
`
`The remedy sought on appeal is vacatur, or in the alternative, reversal of the
`
`issues decided adversely to Patent Owner in the Final Written Decision, including,
`
`but not limited to, the Board’s conclusion that the ’416 patent is a CBM patent.
`
`See Secure Axcess, LLC v. PNC Bank Nat’l Ass’n, 848 F.3d 1370, 1382 (Fed. Cir.
`
`2017).
`
`Pursuant to 35 U.S.C. § 142 and 37 C.F.R. § 90.2(a), this Notice is being
`
`filed with the Director of the United States Patent and Trademark Office, and a
`
`copy of this Notice is being concurrently filed with the Patent Trial and Appeal
`
`Board. In addition, a copy of this Notice along with the required docketing fees is
`
`being filed with the Clerk’s Office for the United States Court of Appeals for the
`
`Federal Circuit via CM/ECF.
`
`
`
`
`
`
`
`3
`
`
`
`Dated: January 18, 2018
`
`
`
`
`Case CBM2016-00087
`U.S. Patent 7,412,416
`
`
`
`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
`
`4
`
`
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`Case CBM2016-00087
`U.S. Patent 7,412,416
`
`I hereby certify that on this 18th day of January, 2018, a true and correct
`
`copy of the foregoing “PATENT OWNER’S NOTICE OF APPEAL” was Hand
`
`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
`
`copy of the foregoing “PATENT OWNER’S NOTICE OF APPEAL,” and the
`
`filing fee, were filed with the Clerk’s Office of the United States Court of Appeals
`
`for the Federal Circuit, via CM/ECF.
`
`I also hereby certify that a true and correct copy of the foregoing “PATENT
`
`OWNER’S NOTICE OF APPEAL,” was served by electronic mail on this 18th day
`
`of January, 2018, on counsel of record for the Petitioners as follows:
`
`Robert E. Sokohl
`Rsokohl-ptab@skgf.com
`
`Lori A. Gordon
`Lgordon-ptab@skgf.com
`
`Richard M. Bemben
`Rbemben-ptab@skgf.com
`PTAB@skgf.com
`
`John C. Phillips
`PTABINBOUND@fr.com
`
`1
`
`
`
`
`
`Case CBM2016-00087
`U.S. Patent 7,412,416
`
`
`
`Date: January 18, 2018
`
`
`Adam Kessel
`kessel@fr.com
`
`
`
`
`
`
`
`
`
`
`/Jennifer M. Kurcz/
`
`
`
`
`
`
`
`
`2
`
`
`
`
`
`
`
`Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`
`
`
`
`
`
` Paper 37
`
`
`
` Entered: November 17, 2017
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`IBG LLC, INTERACTIVE BROKERS LLC,
`TRADESTATION GROUP, INC., and
`TRADESTATION SECURITIES, INC.,
`Petitioner,
`
`v.
`
`TRADING TECHNOLOGIES INTERNATIONAL, INC.,
`Patent Owner.
`____________
`
`CBM 2016-00087
`Patent 7,412,416 B2
`_______________
`
`
`Before SALLY C. MEDLEY, MEREDITH C. PETRAVICK, and
`JEREMY M. PLENZLER, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 328(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`
`
`
`CBM2016-00087
`Patent 7,412,416 B2
`
`
`I. INTRODUCTION
`
`IBG LLC, Interactive Brokers LLC, Tradestation Group, Inc., and
`
`Tradestation Securities, Inc., (“Petitioner”)1 filed a Petition requesting a
`
`review of claims 1–24 of U.S. Patent No. 7,412,416 B2 (Ex. 1001, “the ’416
`
`patent”) under the transitional program for covered business method patents.2
`
` Paper 3 (“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–
`
`24 of the ’416 patent (Paper 11 (“Dec.”)).
`
`Subsequent to institution, Patent Owner filed a Patent Owner Response
`
`(Paper 19 (“PO Resp.”)) and Petitioner filed a Reply (Paper 23 (“Pet.
`
`Reply”)). Patent Owner filed a Motion to Exclude (Paper 29 (“PO Mot. to
`
`Exclude”)) Exhibits 1015, 1016, 1018, and portions of Exhibit 1060.
`
`Petitioner filed an Opposition to the Motion to Exclude (Paper 31 (“Pet.
`
`Exclude Opp.”)), and Patent Owner filed a Reply (Paper 33 (“PO Exclude
`
`Reply”)). An oral hearing was held on August 10, 2017, and a transcript of
`
`the hearing is included in the record (Paper 36 (“Tr.”)).
`
`For the reasons that follow, we determine that Petitioner has shown by
`
`a preponderance of the evidence that claims 1–24 of the ’416 patent are
`
`unpatentable.
`
`
`
`
`1 Petitioner indicates that IBG LLC, Interactive Brokers LLC, 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
`
`
`
`
`
`CBM2016-00087
`Patent 7,412,416 B2
`
`
`A. Related Matters
`
`The ’416 patent is involved in the following lawsuit: TradeStation
`
`Technologies v. Trading Technologies International, 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 ’416 patent. Id. at 3–4. On this record, we determine that Petitioner
`
`may petition for review of the ’416 patent pursuant to 37 C.F.R. § 42.302(a).
`
`B. The ’416 Patent
`
`The Specification of the ’416 patent describes a graphical user
`
`interface (“GUI”) for an electronic trading system that allows a remote trader
`
`to view trends for an item, which assists the trader to anticipate demand for
`
`an item. Ex. 1001, 1:14–16, 2:8–11. Figure 3A of the ’416 patent is
`
`reproduced below.
`
`
`
`
`
`
`125 Stat. 284, 329 (2011) (“AIA”).
`
`
`
`3
`
`
`
`CBM2016-00087
`Patent 7,412,416 B2
`
`
`Figure 3A depictes a GUI that includes: 1) value axis 332, which
`
`indicates the value at which an item is being traded, 2) multiple offer icons
`
`304(1)–304(8), and 3) multiple bid icons 300(1)–300(8). Id. at 6:3–10, 6:44–
`
`54. The offer icons and the bid icons represent orders in the marketplace. Id.
`
`A trader can place an order by dragging-and-dropping an order icon
`
`(e.g., bid order icon 320) to a desired location on the chart, triggering a pop-
`
`up window (e.g., Fig. 3D) that allows the trader to send the order. Id. at
`
`8:28–56, Fig. 3D.
`
`C. Illustrative Claims
`
`Claims 1 and 14 of the ’416 patent are the only independent claims and
`
`are reproduced below.
`
` A method for facilitating trading and displaying
`information regarding the buying and selling of a good, the
`method comprising:
`
`1.
`
`
`
`displaying a chart on a graphical user interface
`comprising a vertical axis of price values and a horizontal
`axis of time;
`
`displaying indicators representing historical trading data
`for the good at locations along the vertical axis of price
`values and the horizontal axis of time;
`
`providing a plurality of locations on the graphical user
`interface to place an order icon with a pointer of a user
`input device, each location corresponding to a particular
`price value along the vertical axis of price values;
`
`placing an order icon for a particular quantity of the good
`at a specific location of the plurality of locations along the
`vertical axis of price values with a pointer of an input
`
`
`
`4
`
`
`
`CBM2016-00087
`Patent 7,412,416 B2
`
`
`device, wherein the specific location on which the order
`icon is placed corresponds to a particular price value;
`
`generating an order to buy or sell the particular quantity
`of the good at the particular price value responsive to
`placing the order icon at the specific location; and
`
`sending the order to an electronic trading system, wherein
`the order is for the particular quantity of the good and at
`the particular price value determined based on the
`location where the order icon was placed.
`
`
`
`14. A computer readable medium, for an electronic exchange
`in which a good is bought and sold responsive to orders
`submitted by traders, each order specifying a value and
`quantity for the order, the computer readable medium
`containing a program containing instructions to cause a
`processor to perform the following steps:
`
`
`
`displaying a chart on a graphical user interface
`comprising a vertical axis of price values and a horizontal
`axis of time;
`
`displaying indicators representing historical trading data
`for the good at locations along the vertical axis of price
`values and the horizontal axis of time;
`
`providing a plurality of locations on the graphical user
`interface to place an order icon with a pointer of a user
`input device, each location corresponding to a particular
`price value along the vertical axis of price values;
`
`placing an order icon for a particular quantity of the good
`at a specific location of the plurality of locations along the
`vertical axis of price values with a pointer of an input
`device, wherein the specific location on which the order
`
`
`
`5
`
`
`
`CBM2016-00087
`Patent 7,412,416 B2
`
`
`icon is placed corresponds to a particular price value;
`
`generating an order to buy or sell the particular quantity
`of the good at the particular price value responsive to
`placing the order icon at the specific location; and
`
`sending the order to an electronic trading system, wherein
`the order is for the particular quantity of the good and at
`the particular price value determined based on the
`location where the order icon was placed.
`
`
`
`D. Grounds of Unpatentability
`
`We instituted review of claims 1–24 on the following grounds:
`
`References
`
`Basis
`
`Challenged Claims
`
`n/a
`
`n/a
`
`
`
`§ 101
`
`§ 112 ¶ 4
`
`1–24
`
`2 and 15
`
`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
`
`
`
`6
`
`
`
`CBM2016-00087
`Patent 7,412,416 B2
`
`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 ’416 patent is a CBM patent. Dec. 6–9. Patent Owner urges us to
`
`reconsider our determination and find that the ’416 patent is not eligible for
`
`CBM patent review. See PO Resp. 68–76. 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.
`7
`
`
`
`
`
`CBM2016-00087
`Patent 7,412,416 B2
`
`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 1 as representative.
`
`Petitioner argues that the ’416 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. 4–6.
`
`Petitioner argues that claim 1 expressly requires the performance of a
`
`financial transaction by its recitation of facilitating trading and displaying
`
`information regarding the buying and selling of a good, including the steps
`
`of: (1) displaying a chart on a GUI comprising a vertical axis of price values
`
`and a horizontal axis of time; (2) displaying indicators representing historical
`
`trading data for the good on the chart; (3) providing a plurality of locations
`
`on the GUI to place an order icon; (4) placing an order icon for a particular
`
`quantity of the good at a specific location along the vertical axis; (5)
`
`generating an order to buy or sell the particular quantity of the good; and (6)
`
`sending the order to an electronic trading system. Id. at 5.
`
`
`
`8
`
`
`
`CBM2016-00087
`Patent 7,412,416 B2
`
`
`Notwithstanding Patent Owner’s arguments, which we address below,
`
`we are persuaded by Petitioner’s showing, and find that the ’416 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 the claim 1 method steps for displaying
`
`historical trading data, placing an order icon for a particular quantity of a
`
`good at a location along a price axis, and sending an order to an electronic
`
`trading system are each financial activities. Pet. 5.
`
`Patent Owner argues that the Petition is silent as to whether the ’416
`
`patent is directed to performing “data processing” or “other operations,” and
`
`that Petitioner’s showing focuses solely on whether the ’416 patent is
`
`financial in nature. PO Resp. 69–70. We disagree with Patent Owner.
`
`Petitioner does address whether the patent is directed to data processing or
`
`other operations. See, e.g., Pet. 6 (the ’416 patent claims are directed to a
`
`method “for facilitating trading in an electronic trading system”) (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, for example, in Petitioner’s showing that the
`
`preamble recites a method for facilitating trading and displaying information
`
`regarding the buying and selling of a good, which would be “other
`
`operations” used in the practice of a financial service (trading on an
`
`exchange).
`
`
`
`9
`
`
`
`CBM2016-00087
`Patent 7,412,416 B2
`
`
`Patent Owner also argues that the ’416 claims are not directed to “data
`
`processing.” PO Resp. 70–72. As explained immediately above, however,
`
`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
`
`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 71 (citing Ex. 2121, 4). Patent Owner
`
`does not sufficiently explain why this definition is controlling as opposed to
`
`the plain meaning of data processing, which includes a computer performing
`
`operations on data. See, e.g., Pet. Reply 24–25 (citing Ex. 1066; Ex. 1067).
`
`Claim 1 is directed to, for example, “displaying a chart on a graphical
`
`user interface,” which must be done with a computer performing operations
`
`on data in order to display the data as a chart on a graphical user interface.
`
`The ’416 patent discloses processing market information for display on a
`
`client terminal. See e.g., Ex. 1001, 5:6–15 (“[C]lient terminals 104 generate
`
`icons for bid and offer orders (called bid and offer icons), historical charts
`
`and trader icons, and determine the placement of bid and offer icons and
`
`trader icons responsive to the information received from the transaction
`
`server 200.”) For these reasons, we also determine that the ’416 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
`10
`
`
`
`
`
`CBM2016-00087
`Patent 7,412,416 B2
`
`“[T]he ’416 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. 76–79 (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
`
`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
`11
`
`
`
`
`
`CBM2016-00087
`Patent 7,412,416 B2
`
`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 ’416 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
`
`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
`12
`
`
`
`
`
`CBM2016-00087
`Patent 7,412,416 B2
`
`
`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). 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 ’416 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. 6–10. In
`
`particular, Petitioner contends that independent claims 1 and 14 recite trading
`
`software that is implemented using conventional computer hardware, such as
`
`personal computers, servers and networks, and do not include a technological
`
`feature or implement a technological solution. Id. at 7. Petitioner further
`
`argues that the ’416 patent itself describes that the computing device used to
`
`display the graphical user interface and that performs the claimed method and
`
`functions need not be any specific hardware, but can be “personal computers,
`
`terminals as part of a network, or any other computing device.” Id. at 8
`
`
`
`13
`
`
`
`CBM2016-00087
`Patent 7,412,416 B2
`
`(quoting Ex. 1001, 4:34–36). Petitioner also argues that electronic trading
`
`was well known as of the filing date, going back as far as 1971 when
`
`NASDAQ set up the first electronic stock exchange. Id. at 8 (citing Ex.
`
`1026).
`
`We agree with Petitioner that at least claim 1 is directed to well-
`
`understood, routine, and conventional steps of facilitating trading and
`
`displaying information regarding the buying and selling of a good to a trader,
`
`who uses the information to facilitate trading a commodity. For example, the
`
`“BACKGROUND OF THE INVENTION” section of the ’416 patent
`
`explains that it was well known for an electronic exchange to record all
`
`transactions for a particular item and to replay or post to the individual
`
`traders outstanding bids with the highest values and outstanding offers with
`
`the lowest value, along with a quantity specified for each order, to facilitate
`
`trading a commodity. Ex. 1001, 1:34–41. There is no indication in the ’416
`
`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 (see, e.g., Ex. 1026), and the ’416 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
`
`business, financial, or trader problem and the solution is functional, such as
`
`rearranging available market data and providing locations to place a trade on
`
`a GUI. Pet. 9–10. We agree with Petitioner that the problem noted in the
`
`Specification of the ’416 patent is not a technical one. The ’416 patent
`14
`
`
`
`
`
`CBM2016-00087
`Patent 7,412,416 B2
`
`Specification highlights the problem and importance of informing a trader of
`
`certain stock market events so that the trader may use such information to
`
`facilitate trading a commodity. Ex. 1001, 1:27–33, 2:8–11. Informing a
`
`trader of certain stock market trends or events is an activity that is financial
`
`in nature.
`
`Patent Owner argues that the ’416 patent claims a technological GUI
`
`tool that improves upon prior GUIs using a particular combination of GUI
`
`features and functionality (the particular makeup, structure and features of a
`
`GUI tool), and, thus, falls under the technological exception. Id. at 72–74.
`
`Patent Owner, however, does not tie its arguments to the actual claim
`
`language to explain which of the steps of the broad method claim 1, for
`
`example, recite an improved technological GUI tool or how the claimed steps
`
`solve a technical problem. We do not find that claim 1 solves a technical
`
`problem. Rather, claim 1 recites method steps of receiving, displaying, and
`
`updating market data, and generating an order to buy or sell a good based on
`
`that information.
`
`Patent Owner argues that Technologies International, Inc. v. CQG,
`
`Inc., 675 Fed. Appx. 1001 (Fed. Cir. 2017) (“CQG”) dictates that the ’416
`
`patent claims cover technological inventions (PO Resp. 75–76). 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 broader than the claims
`
`involved in CQG. The Specification of the ’416 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
`15
`
`
`
`
`
`CBM2016-00087
`Patent 7,412,416 B2
`
`CQG decision relied upon a feature not required by claim 1 of the ’416
`
`patent— a static price axis. Although claim 1 of the ’416 patent requires a
`
`vertical axis of price and a horizontal axis of time, the claim does not require
`
`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 ’416 patent
`
`is eligible for a covered business method patent review.
`
`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).
`
`
`
`16
`
`
`
`CBM2016-00087
`Patent 7,412,416 B2
`
`
`C. 35 U.S.C. § 101 Asserted Ground of Unpatentability
`
`Petitioner contends that claims 1–24 of the ’416 patent are not patent
`
`eligible under 35 U.S.C. § 101. Pet. 20–41. Patent Owner opposes. PO
`
`Resp. 6–68.
`
`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 14–22 are “broad
`
`enough to encompass a transitory, propagating signal that is encoded, which
`
`is not eligible for patenting.” Pet. at 42 (citing In re Nuijten, 500 F.3d 1346,
`
`1357 (Fed. Cir. 2007)). Independent claim 14 recites a “computer readable
`
`medium containing a program containing instructions to cause a processor to
`
`perform the following steps.” Petitioner contends that the Specification does
`
`not define “computer readable medium” or provide examples of a “computer
`
`readable medium.” Id. at 16. Petitioner further ar
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
