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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`IBG LLC, INTERACTIVE BROKERS LLC,
`TRADSTATION GROUP INC., and
`TRADESTATION SECURITIES, INC.
`Petitioners
`
`v.
`
`TRADING TECHNOLOGIES INTERNATIONAL, INC.,
`Patent Owner
`___________________
`
`Case CBM2016-00087
`Patent 7,412,416 B2
`___________________
`
`
`
`PETITIONERS’ REPLY TO PATENT OWNER’S RESPONSE
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-145
`
`
`
`CBM2016-00087
`U.S. Patent No. 7,412,416
`
`TABLE OF CONTENTS
`
`Introduction ...................................................................................................... 1
`
`The ’416 claims a patent-ineligible abstract idea. ........................................... 1
`
`I.
`
`II.
`
`A.
`B.
`
`The ’416 claims are broad. .................................................................... 1
`Alice step one: Graphing (or displaying) trading data to assist a
`trader to place an order is an abstract idea. ........................................... 4
`1.
`Recent CAFC decisions confirm that the ’416 claims are
`ineligible. ...................................................................................10
`
`2.
`
`Complete preemption doesn’t demonstrate eligibility. .............15
`
`Alice step two: The ’416 claims lack an inventive concept. ...............15
`C.
`III. CQG isn’t controlling. ...................................................................................18
`
`A.
`
`B.
`
`The ’416 claims were not at issue in CQG and cannot be affected
`by its holding. ......................................................................................19
`The PTO is not bound by the court’s denial of judgment as a
`matter of law based on a record lacking evidence. .............................20
`This CBM’s record differs from the district court’s. ..........................21
`CQG’s abstract idea is different than that advanced in this CBM. .....21
`The Board applies the preponderance of the evidence standard;
`Petitioners’ record satisfies this standard. ...........................................22
`IV. Claims 14-22 are not patent-eligible because they cover signals. .................22
`
`C.
`D.
`E.
`
`V.
`
`Claims 2 and 15 are unpatentable under §112, ¶4. ........................................23
`
`VI. The ’416 patent is CBM eligible. ..................................................................23
`
`
`
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`- i -
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`CBM2016-00087
`U.S. Patent No. 7,412,416
`TABLE OF AUTHORITIES
`
`Federal Cases
`
`Affinity Labs of Texas, LLC v. DIRECTV, LLC,
`2016 WL 5335501 (Fed. Cir. 2016) .............................................................. 13, 14
`
`
`Amdocs v. Openet Telecom, Inc.,
`Appeal No. 2015-1180 (Fed. Cir. Nov. 1, 2016)........................................... 17, 18
`
`
`Apple, Inc. v. Ameranth, Inc.,
`Appeal Nos. 2015-1703, 2015-1704 (Fed. Cir. Nov. 29, 2016) ......... 7, 10, 11, 24
`
`
`Ariosa Diags. v. Sequenom, Inc.,
`778 F.3d 1371 (Fed.Cir. 2015) .............................................................................15
`
`
`Ass’n for Molecular Pathology v. Myriad Genetics, Inc.,
`133 S.Ct. 2107 (2013) ..........................................................................................17
`
`
`Ballard Med. Prods. v. Wright,
`821 F.2d 642 (Fed. Cir. 1987) ..............................................................................20
`
`
`DDR Holdings, LLC v. Hotels.com, L.P.,
`773 F.3d 1245 (Fed.Cir. 2014) .............................................................................11
`
`
`Electric Power Group, LLC, v. Alstom S.A.,
`830 F.3d 1350 (Fed. Cir. 2016) .................................................................... passim
`
`
`Enfish, LLC v. Microsoft Corp.,
`822 F.3d 1327 (Fed.Cir. 2016) ................................................................ 11, 12, 13
`
`
`Ex Parte Mewherter,
`Appeal No. 2012-007692 (P.T.A.B. May 8, 2013) ..............................................22
`
`
`In re Trans Tex. Holdings Corp.,
`498 F.3d 1290 (Fed.Cir. 2007) .............................................................................19
`
`
`Intellectual Ventures I LLC v. Capital One Bank (USA),
`792 F.3d 1363 (Fed. Cir. 2015) ..................................................................... 14, 15
`
`
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`- ii -
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`CBM2016-00087
`U.S. Patent No. 7,412,416
`
`Interthinx, Inc. v. Corelogic Solutions, LLC,
`CBM2012-00007 (PTAB Jan. 30, 2014) ..............................................................19
`
`
`LendingTree LLC v. Zillow, Inc.,
`Appeal Nos. 2014-1435, 2014-1531, 2015-1186 (Fed. Cir. July 25, 2016) .......... 6
`
`
`McRO, Inc. v. Bandai Namco Games America, Inc.
`837 F.3d 1299 (Fed. Cir. 2016) ............................................................................13
`
`
`Mortgage Grader, Inc. v. First Choice Loan Servs.,
`811 F.3d 1314 (Fed. Cir. 2016) ..................................................................... 13, 14
`
`
`Parker v. Flook,
`437 U.S. 584 (1978) .............................................................................................14
`
`
`Pfizer, Inc. v. Lee,
`811 F.3d 466 (Fed. Cir. 2016) ..............................................................................24
`
`
`Symbol Tech’s, Inc. v. Lemelson Medical,
`277 F.3d 1361 (Fed.Cir. 2002) .............................................................................19
`
`
`Ultramercial, Inc. v. Hulu LLC,
`772 F.3d 709 (Fed. Cir. 2014) ................................................................. 13, 17, 20
`
`
`Unwired Planet, LLC v. Google, Inc.,
`841 F.3d 1376 (Fed. Cir. 2016) ............................................................................23
`
`
`WildTangent, Inc. v. Ultramercial, LLC,
`573 U.S. ––––, 134 S.Ct. 2870 (2014) .................................................................20
`
`
`Statutes
`
`35 U.S.C. §101 ................................................................................................. passim
`
`35 U.S.C. § 112, ¶4 ..............................................................................................1, 23
`
`
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`- iii -
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`CBM2016-00087
`U.S. Patent No. 7,412,416
`
`Federal Regulations
`
`37 C.F.R. § 42.1(d) ..................................................................................................22
`
`37 C.F.R. 42.301(a) ..................................................................................................24
`
`Other Authorities
`
`77 Fed. Reg. 48,756 (Aug. 14, 2012).......................................................................23
`
`
`
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`- iv -
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`CBM2016-00087
`U.S. Patent No. 7,412,416
`
`I.
`
`Introduction
`
`The Board should issue a final written decision finding all ’416 claims
`
`(Ex.1001) patent ineligible under §101, and claims 2 and 15 unpatentable under
`
`§112, ¶4.
`
`II. The ’416 claims a patent-ineligible abstract idea.
`The Petition demonstrates that the ’416 claims fail under Alice Corp. Pty.
`
`Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014). (Paper 3 (“Petition”), 20-41; Paper
`
`11 (“Decision”), 11-14.) TT’s rebuttal focuses mainly on Alice step one (Paper 19
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`(“POR”), 12-39), giving short shrift to Alice step two (id., 39-43), which is
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`unsurprising because the ’416 claims lack an inventive concept. For its step-one
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`arguments, TT recycles from other CBMs its tired “structure, makeup, and
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`functionality” argument yet again, which ignores the claims’ broad scope and lack
`
`of specificity.
`
`A. The ’416 claims are broad.
`The breadth of the ’416 claims belie TT’s assertion that the “claims set forth
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`a specific way to construct a specific GUI with specific structure, makeup, and
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`functionality.” (POR, 12.) There is nothing specific about the ’416 claims, which
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`don’t recite how to construct a GUI. Rather, they broadly recite where to display a
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`very small set of data points relative to each other, and conventional GUI
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`functionality; nothing more.
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`- 1 -
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`CBM2016-00087
`U.S. Patent No. 7,412,416
`Claim 1 is illustrative. The preamble recites, “A method for facilitating
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`trading and displaying information regarding the buying and selling of a good.”
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`But claim 1 doesn’t limit the “good” to financial products, casting a wide net
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`around trading of any good. (See Ex.1058, 32:3-33:6; 44:21-45:6 (Thomas didn’t
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`consider whether the term “goods” extends beyond financial products).)
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`Claim 1’s first step is “displaying a chart on a graphical user interface
`
`comprising a vertical axis of price values and a horizontal axis of time.” Thomas
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`testified that neither the axes nor the price values need be displayed. (Id., 14:2-10;
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`26:19-27:13 (“It doesn’t specifically say that you display price values ….”).) Nor
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`is the “axis of price values” required to be static. (Id., 9:16-10:13.)
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`Claim 1’s second step is “displaying indicators representing historical
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`trading data for the good at locations along the vertical axis of price values and the
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`horizontal axis of time.” This step requires displaying only two “indicators” (id.,
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`15:9-16:3), and doesn’t specify what the indicators look like (id., 16:22-17:6).
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`Similarly, it doesn’t specify the type of “historical trading data” that is displayed.
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`(Id., 16:4-14.) Indeed, it provides no bounds for the term “historical.” Thomas
`
`testified that “historical” means “something that has occurred, something that
`
`could be anything behind real-time.” (Id., 78:8-79:6). Nor does this step require
`
`displaying real-time market data. (Id., 19:17-20:1.)
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`- 2 -
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`CBM2016-00087
`U.S. Patent No. 7,412,416
`Claim 1’s third step is “providing a plurality of locations on the graphical
`
`user interface to place an order icon with a pointer of a user input device, each
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`location corresponding to a particular price value along the vertical axis of price
`
`values.” This step requires only two locations (id., 62:19-63:10), which need not be
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`displayed (id., 17:11-18:18). Thomas testified that they “could be” invisible
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`locations on a screen. (Id.)
`
`Claim 1’s fourth step is “placing an order icon for a particular quantity of the
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`good at a specific location of the plurality of locations along the vertical axis of
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`price values with a pointer of an input device, wherein the specific location on
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`which the order icon is placed corresponds to a particular price value.” This step
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`does not require displaying an order icon. Nor does it specify, if displayed, what
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`the order icon would look like or any other physical attribute. Nor does it specify
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`how the order icon is placed, other than “with a pointer of an input device.”
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`Claim 1’s fifth step is “generating an order to buy or sell the particular
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`quantity of the good at the particular price value responsive to placing the order
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`icon at the specific location.” This step doesn’t specify how the order is generated.
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`Nor does it require generating the order by a computer. Nor does it prohibit other
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`events from occurring before the order is sent. (See, e.g., id., 50:18-51:15
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`(confirmation window may be used).)
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`- 3 -
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`CBM2016-00087
`U.S. Patent No. 7,412,416
`Claim 1’s final step is “sending the order to an electronic trading system,
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`wherein the order is for the particular quantity of the good and at the particular
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`price value determined based on the location where the order icon was placed.”
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`Again, this step doesn’t recite sending the order by a computer. Nor does it require
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`the system to match the order. (Id., 60:18-61:6.)
`
`This exercise confirms Róman’s testimony that “[o]ther than the
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`conventional steps of displaying a chart on a graphical user interface (GUI) and
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`providing locations on the GUI to place an order icon, claim 1 could be performed
`
`by a human using pen-and-paper or a white board.” (Ex.1012, ¶¶67-69.) By
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`contrast, the opinions in Thomas’s declaration (Ex.2169) are largely irrelevant
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`because, as demonstrated over-and-over during cross-examination, he
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`impermissibly reads limitations (often entire figures) into the claims from the
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`specification. (See, e.g., Ex.1058, 74:14-75:9; 87:2-88:17; 99:12-102:19.) Thomas
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`testified that he was not instructed against reading in limitations, which explains
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`why he repeatedly violates this fundamental cannon of claim construction. (Id.,
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`28:20-29:6.)
`
`B.
`
`Alice step one: Graphing (or displaying) trading data to assist a
`trader to place an order is an abstract idea.
`Alice step one looks at the claims’ “focus.” Electric Power Group, LLC, v.
`
`Alstom S.A., 830 F.3d 1350, 1353 (Fed.Cir. 2016). The ’416 claims’ focus is
`
`graphing (or displaying) trading data to assist a trader to place an order. (Petition,
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`- 4 -
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`CBM2016-00087
`U.S. Patent No. 7,412,416
`20-27; Decision, 12-13.) TT agrees, characterizing the ’416 as an “an intuitive way
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`to display the information and an intuitive way to enter orders.”1 (POR, 25.)
`
`TT incorrectly contends that the claims are not abstract because they recite
`
`“a particular way to construct a [GUI]—that is, the specific features, make-up, and
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`functionality of a GUI tool.” (Id., 7.) First, the claims don’t recite how to construct
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`a GUI. TT admits as much: “the claims are to the functioning of [a] GUI tool, not
`
`to the underlying computer by itself or to how instructions in software to provide a
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`particular interface of an application are translated by the computer to control the
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`individual pixels of a screen.” (Id., 74 (emphasis added).) Thus, the claims are not
`
`directed to how data is displayed; they are directed to where data is displayed. And
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`as discussed above, the claims require displaying a very small set of data points.
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`Second, TT’s “structure, make-up, and functionality” argument is a façade.
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`The alleged “structure” is displayed data, such as claim 1’s chart and indicators;
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`the alleged “make-up” is “the relative position and arrangement” of that data; and
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`the alleged “functionality” is moving an order icon to place an order. (POR, 5.) So
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`
`1 Because the claims say so little, TT relies heavily on the specification to
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`arrive at this characterization. (See e.g., POR, 4; 7.) But Thomas admitted that the
`
`claims themselves do not require displaying data in an intuitive format (Ex.1058,
`
`116:13-20) or an intuitive way to enter orders (id., 118:4-10).
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`- 5 -
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`CBM2016-00087
`U.S. Patent No. 7,412,416
`the claims recite nothing more than arranging displayed data and basic operations,
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`which was admittedly well known and conventional. (Id., 74 (TT admits that the
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`inventors didn’t invent “gathering market information, displaying it to a trader, and
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`using the information to facilitate trading a commodity”).) And, even though the
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`“structure, make-up, and functionality” is allegedly “the core of the claimed
`
`invention” (POR, 20), Thomas admitted that he didn’t even identify “what is the
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`exact structure, makeup, and functionality.” (Ex.1058, 108:16-21.)
`
`TT accuses Petitioners of “overgeneralize[ing]” the claims. (POR, 15-21.)
`
`But again, TT itself generalizes the alleged invention as “an intuitive way to
`
`display the information and an intuitive way to enter orders.” (Id., 25.) And, the
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`CAFC routinely articulates a claim’s abstract idea in succinct terms without
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`explicitly giving effect to every limitation when evaluating patent eligibility. See,
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`e.g., LendingTree LLC v. Zillow, Inc., Appeal Nos. 2014-1435, 2014-1531, 2015-
`
`1186, slip op. at 9 (Fed.Cir. July 25, 2016) (reducing a method claim of 11 steps
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`(361 words) to a two-word abstract idea: “coordinating loans”).
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`- 6 -
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`CBM2016-00087
`U.S. Patent No. 7,412,416
`TT also argues that “GUIs are technology.”2 (POR, 28-31.) Even if true—a
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`broad proposition that Petitioners don’t challenge here—that doesn’t mean that the
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`’416 claims recite the critical, technological improvement that is required to save
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`them from abstraction. Indeed, claims directed to GUIs have been found ineligible.
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`See, e.g., Apple, Inc. v. Ameranth, Inc., Appeal Nos. 2015-1703, 2015-1704
`
`(Fed.Cir. Nov. 29, 2016). The §101 analysis focuses on the claims, not whether
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`GUIs are technology.
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`TT’s arguments that “this structure, make-up, and functionality … solves
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`problems with prior art [GUIs]” and “improves the speed, accuracy, and/or
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`usability” have no merit. (POR, 26-27; 31-34.) First, the ’416 doesn’t purport to
`
`solve the same problem with accuracy that the ’304 and ’132 patents allegedly
`
`solve. (See Ex.1058, 86:13-87:1 (didn’t consider whether ’416 addresses same
`
`problem).) Second, TT provides no test data comparing the speed, accuracy, or
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`usability of the ’416 claims to any known GUIs to substantiate its claim that the
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`’416 is an improvement. Regarding speed, Thomas can only speculate that the ’416
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`is faster “at least in some instances.” (Ex.2169, ¶52.) Third, Thomas’s testimony
`
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`2 Petitioners’ proposed POSITA considers the background technologies
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`disclosed in the ’416 specification as well as enablement of a GUI; it does not
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`support a conclusion that the claimed GUI is technology.
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`- 7 -
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`CBM2016-00087
`U.S. Patent No. 7,412,416
`disproves this claim. He testified that “GUI tools are mission critical for
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`professional electronic traders” (Id., ¶17), and that there was “a strong interest in
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`technology that provides even the slightest edge or advantage over others in the
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`industry” (id., ¶32). But he admits that there is no evidence that the inventors
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`“were able to successfully commercialize the invention” until they added
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`“additional features” (id., ¶55), demonstrating that the ’416 didn’t provide even the
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`slightest edge or advantage over other GUIs. Thomas also admits that displaying
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`historical trading data along with an order entry GUI (e.g., Figure 2-type GUI) was
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`known before the alleged invention. (Ex.1058, 109:6-110:13.) Thus, the claimed
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`data display isn’t an improvement because it was already available.
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`Importantly, the claimed display and order placement in no way make the
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`computer run faster, more efficiently, or operate in any other advantageous
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`manner. (See Ex.1059, 57:18-58:13; see also Ex.1060, 248, 263:21-269:13.)
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`TT further argues that its claims are not abstract because they are “not
`
`directed to a business method.” (POR, 38.) But the claims’ sole purpose is
`
`displaying trading data to facilitate order placement. (See POR, 25 (“an intuitive
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`way to display the information and an intuitive way to enter orders”).) It’s
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`disingenuous to suggest otherwise.
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`Finally, the record demonstrates that displaying trading data and exchange-
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`based trading are “fundamental economic practice[s] long prevalent in our system
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`- 8 -
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`CBM2016-00087
`U.S. Patent No. 7,412,416
`of commerce,” and are abstract ideas similar to those courts have repeatedly held
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`ineligible. Alice, 134 S. Ct. at 2356. Weiss, for example, describes a NYSE
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`specialist’s book, which is a pencil and paper approach to displaying bids and asks
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`along a price axis. (Ex.1027, 44-46.) Weiss also teaches that the NYSE displayed
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`this book on a CRT—demonstrating how conventional it was to put traders’ pencil
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`and paper plots on a display. (Id., 46; see also Ex.1061, 9 (describing the NYSE’s
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`“Electronic Display Book,” which was designed to replace “specialist’s
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`handwritten limit order book”).) Thomas testified that exchange-based
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`commodities trading began sometime in the 1600s (Ex.1059, 51:18-52:1) and is a
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`fundamental economic practice (id., 55:1-10). (See also Ex.1001, 1:21 (“Trading
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`pits are the lifeblood of a market economy.”).) The migration from floor-based
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`trading to electronic trading began by at least the early 1970s. (Ex.1062; Ex.1063.)
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`Thus, the claimed steps reflect abstract ideas about organizing information for use
`
`in fundamental economic practices.
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`In sum, although the claims are lengthy, they don’t go beyond arranging
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`displayed data and the use of a conventional operation (e.g., drag-and-drop) to
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`perform order entry. The claims “stat[e] those functions in general terms, without
`
`limiting them to technical means for performing the functions that are arguably an
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`advance over conventional computer and network technology.” Electric Power,
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`830 F.3d at 1351. Reduced to their base, the claims merely define a “desirable
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`- 9 -
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`CBM2016-00087
`U.S. Patent No. 7,412,416
`information-based result” and are not “limited to inventive means of achieving the
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`result,” and thus fail under §101. Id.
`
`1.
`
`Recent CAFC decisions confirm that the ’416 claims are
`ineligible.
`The CAFC’s decisions in Apple and Electric Power compel the conclusion
`
`that the ’416 claims are ineligible.
`
`Apple dealt with a GUI that displayed a first menu having categories and
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`items, and software that generated a second menu from that first menu by allowing
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`categories and items to be selected. The Apple claims recited that the first menu
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`was “display[ed] in a window of said graphical user interface in a hierarchical tree
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`format.” Apple, slip op., 5. Thus, the Apple GUI recited a specific way (i.e.,
`
`detailed structure, makeup, and functionality) to construct a GUI. But the Court
`
`still found the claims ineligible. And, just like TT’s claims, the Court noted under
`
`its analysis of Alice step one that the claims did “not claim a particular way of
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`programming or designing the software to create menus that have these features,
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`but instead merely claim the resulting systems.” Id., 19. The Apple claims—again,
`
`just like TT’s claims—were “not directed to a specific improvement in the way
`
`computers operate.” Id.
`
`In Apple, the Court found under Alice step two that the “invention merely
`
`claims the addition of conventional components to well-known business practices.”
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`Id., 21. Again, the ’416 claims require sending an order to an electronic
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`- 10 -
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`CBM2016-00087
`U.S. Patent No. 7,412,416
`exchange—a well-known business practice. The cornerstone of such practices is
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`that a trader must be provided market data (also well known) to place such an
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`order. It isn’t enough to point to conventional applications and say “do it on a
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`computer.” Alice 134 S.Ct. at 2358. Thus, the ’416 claims are not eligible for the
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`reasons articulated in Apple.
`
`In Electric Power, the claims-at-issue failed §101 because they did “not go
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`beyond requiring the collection, analysis, and display of available information in a
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`particular field, stating those functions in general terms, without limiting them to
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`technical means for performing the functions that are arguably an advance over
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`conventional computer and network technology.” Electric Power, 830 F.3d at
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`1351. The ’416 claims also recite displaying information without limiting them to
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`any technical means. (Ex.1001, 4:34-36 (“The client terminals 104 are personal
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`computers, terminals as part of a network, or any other computing device.”).)
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`DDR and Enfish are inapposite. In both cases, the claimed methods sought to
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`solve problems concerning the inner workings of a computer or network. DDR
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`Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed.Cir. 2014) (“[T]he
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`claimed solution is necessarily rooted in computer technology in order to overcome
`
`a problem specifically arising in the realm of computer networks.”); Enfish, LLC v.
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`Microsoft Corp., 822 F.3d 1327, 1339 (Fed.Cir. 2016) (claims directed to “a
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`specific type of data structure designed to improve the way a computer stores and
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`CBM2016-00087
`U.S. Patent No. 7,412,416
`retrieves data in memory”). That isn’t the case with the ’416 patent, which
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`allegedly “presents [market] information in an intuitive format,” reducing the
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`mental processes required of a trader. (Ex.1001, 2:44-46; Ex.1011, ¶¶32-33.) See
`
`also Electric Power, 830 F.3d at 1355 (mental processes’ “implicit exclusion from
`
`§ 101 undergirds the information-based category of abstract ideas.”)
`
`The ’416 patent’s alleged solution isn’t rooted in technology and doesn’t
`
`impact the inner workings of a computer or network. TT’s claims don’t recite a
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`“GUI tool,” or even a “GUI,” but rather a “method for facilitating trading and
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`displaying information regarding the buying and selling of a good.” (Ex.1001,
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`claim 1.) Unlike Enfish, where the claim in question invoked “a data storage and
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`retrieval system,” TT’s claims are directed to displaying market information in a
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`particular format and order entry.
`
`And Petitioners don’t distinguish Enfish based simply on physicality. Rather,
`
`the Enfish claims were found statutory because they were “directed to a specific
`
`improvement to the way computers operate.” Enfish, 822 F.3d at 1336. That isn’t
`
`the case here. The ’416 claims don’t recite how to display data (other than in a
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`chart). Nor do they require a new source of data or type of information, or new
`
`techniques for analyzing the data. Nor is there any type of inventive programming.
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`Merely displaying market information that is allegedly more comprehensible to a
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`CBM2016-00087
`U.S. Patent No. 7,412,416
`trader doesn’t transform the abstract idea into a statutory process. There is no
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`technological advance.
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`Electronic trading requires collecting and displaying data—these are
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`fundamental aspects of all electronic trading. Merely displaying data to allow this
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`fundamental economic process is insufficient to confer eligibility. Here, the
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`claims’ focus is graphing (or displaying) trading data to assist a trader to place an
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`order, which is an abstract idea that invokes a computer as a tool. This case isn’t
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`about whether improvements to software are patentable, as in Enfish and McRO. It
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`is about whether simply displaying data on a screen in a well-known format to
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`facilitate trading is patentable. The answer is no.
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`TT also attempts to distinguish Mortgage Grader, Electric Power, and the
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`Affinity Labs cases, arguing that those claimed GUIs were “result focused”—i.e.,
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`not directed to a specific interface implementation. (POR, 48-52.) But as explained
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`above, the ’416 claims utterly lack specificity, merely requiring displaying two
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`indicators, providing two locations on a screen (which may be invisible), and
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`generic functionality to place an order. Even if the claims “add a degree of
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`particularity”—reciting what data is displayed where—that doesn’t save them. See
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`Ultramercial, Inc. v. Hulu LLC, 772 F.3d 709, 715 (Fed.Cir. 2014) (“Although
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`certain additional limitations … add a degree of particularity, the concept
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`embodied by the majority of the limitations describes only the abstract idea ….”).
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`- 13 -
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`CBM2016-00087
`U.S. Patent No. 7,412,416
`TT’s argument that the claims are about constructing a GUI misses the point.
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`The GUIs in Mortgage Grader, Electric Power, and the Affinity Labs cases could
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`have been claimed in manner similar to TT’s claims—reciting what data is
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`displayed where. But the outcomes wouldn’t have changed, otherwise patent
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`eligibility would “depend simply on the draftsman’s art.” Parker v. Flook, 437
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`U.S. 584, 593 (1978).
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`TT also attempts to distinguish its GUI from Capital One’s ineligible GUI.
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`(POR, 52-54.) In Capital One, the relevant claim recited “an interactive interface”
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`configured to dynamically display certain information (e.g., navigation data) to a
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`user. Intellectual Ventures I LLC, et al. v. Capital One Bank (USA), et al., 792 F.3d
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`1363, 1367 (Fed.Cir. 2015). Similarly, the ’416 patent claims a method for
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`“displaying” information (historical trading data) to the user. Just like the ’416
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`patent, Capital One claimed a GUI that identified the information the interface was
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`to display or functionality to include, but did not specify how the computer was to
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`create the interface.
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`Finally, providing trading data to facilitate order placement has long been a
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`practice in the context of trading of goods, including in the context of electronic
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`trading. (Ex.1058, 73:2-8 (historical trading data was known); 82:10-84:17
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`(displaying historical trading data on a GUI was known); 109:6-110:13 (traders
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`used historical data along with Figure 2-style GUIs).) The ’416 claims merely
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`- 14 -
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`CBM2016-00087
`U.S. Patent No. 7,412,416
`“spell out what it means to ‘apply it on a computer’ [which] cannot confer patent
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`eligibility.” Capital One, 792 F.3d at 1370-71. In other words, the ’416 claims
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`recitation of where data is displayed on a screen is insufficient to confer
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`patentability. They still recite a generic interface for electronic trading.
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`Thus, TT’s claims don’t recite a technological solution to a technological
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`problem, and thus are abstract and patent-ineligible.
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`Complete preemption doesn’t demonstrate eligibility.
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`2.
`TT fails to appreciate that adding conventional activity (such as drag-and-
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`drop) to an abstract idea can avoid complete preemption. (POR, 23-24 (comparing
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`’416 to conventional trading GUIs).) This is precisely why preemption, while a
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`concern undergirding eligibility, is not the test for eligibility. Ariosa Diags. v.
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`Sequenom, Inc., 778 F.3d 1371, 1379 (Fed.Cir. 2015) (“questions on preemption
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`are inherent in and resolved by the § 101 analysis” set forth in Alice). Alice sets
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`forth the Supreme Court’s test, which Petitioners applied in this proceeding.
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`C. Alice step two: The ’416 claims lack an inventive concept.
`Step two looks more precisely at what the claim elements add; specifically,
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`whether the claims recite an “inventive concept.” Electric Power, 830 F.3d at
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`1353. TT’s step two analysis is muddled, but as best understood it asserts that
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`- 15 -
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`
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`CBM2016-00087
`U.S. Patent No. 7,412,416
`placing an order icon at a location along a price axis to generate an order is an
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`inventive concept.3 (POR, 42.) It’s not.
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`Selecting and moving an icon to perform a function was well known and
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`conventional by the time of the ’416 patent. Cooper teaches that dragging an icon
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`“to a gizmo that represents a function … is arguably the most famous expression
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`of direct manipulation” of a GUI. (Ex.1029, 0262 (emphasis added); see also id.,
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`0259-79 (providing an entire chapter on drag-and-drop); Ex.1058, 80:15-81:1
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`(drag-and-drop was known).) The ’416 patent’s alleged inventive concept is
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`nothing more than applying this “most famous,” well-known, and conventional
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`GUI operation in the field of electronic trading (i.e., a field of use). That isn’t
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`enough to survive Alice step two.
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`Additionally, the claims are far from specific in their recitation of features,
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`as discussed above. They lack any description how the claimed steps are
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`performed. Merely displaying and organizing data on a computer screen isn’t
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`sufficient under Alice step two. Electric Power, 830 F.3d at 1355 (“displaying
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`concurrent visualization” of two or more types of information is “insufficient to
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`3 TT also asserts that displaying data in “an intuitive format” and providing
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`“an intuitive way to enter orders” is inventive. (POR, 7.) But Thomas admitted that
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`neither feature is actually claimed. (Ex.1058, 116:13-20; 118:4-10.)
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`- 16 -
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`CBM2016-00087
`U.S. Patent No. 7,412,416
`pass the test of an inventive concept.”). And “[m]erely selecting information, by
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`content or source, for collection, analysis, and display” doesn’t render a claim
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`patent eligible. Id. Likewise, “organizing information through mathematical
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`correlations” and “manipulat[ing] existing information to generate additional
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`information” that isn’t tied to any specific processor isn’t patent-eligible. Digitech
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`Image Tech. LLC v. Elec. for Imaging, Inc., 758 F.3d 1344, 1350-51 (Fed.Cir.
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`2014).
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`And even if the claims recited a novel, groundbreaking, or brilliant
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`arrangement of elements (which they don’t), this may be insufficient to impart
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`patent eligibility. Ultramercial, 772 F.3d at 715 (“[T]he addition of merely novel
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`or non-routine components to the claimed idea [doesn’t] necessarily turn[] an
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`abstraction into something concrete.”); Ass’n for Molecular Pathology v. Myriad
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`Genetics, Inc., 133 S.Ct. 2107, 2117 (2013) (“groundbreaking, innovative, or even
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`brilliant discovery does not by itself satisfy the § 101 inquiry”).
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`The recent decision in Amdocs v. Openet Telecom, Inc., Appeal No. 2015-
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`1180 (Fed.Cir. Nov. 1, 2016), doesn’t alter this conclusion. There, claims (from
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`multiple patents) were directed to “parts of a
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