Trials@uspto.gov
`Tel: 571-272-7822
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` Paper 16
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`Entered: August 16, 2016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`IBG LLC, INTERACTIVE BROKERS LLC,
`TRADESTATION GROUP, INC., and
` TRADESTATION SECURITIES, INC.,
`Petitioner,
`
`v.
`
`TRADING TECHNOLOGIES INTERNATIONAL, INC.,
`Patent Owner.
`____________
`
`CBM 2016-00032
`Patent 7,212,999 B2
`_______________
`
`
`Before SALLY C. MEDLEY, MEREDITH C. PETRAVICK, and
`JEREMY M. PLENZLER, Administrative Patent Judges.
`
`PETRAVICK, Administrative Patent Judge.
`
`
`
`
`DECISION
`Instituting Covered Business Method Patent Review
`37 C.F.R. § 42.208
`
`
`
`
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`
`
`Tel: 571-272-7822
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`
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` Paper 16
`
`Entered: August 16, 2016
`
`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 2016-00032
`Patent 7,212,999 B2
`_______________
`
`
`Before SALLY C. MEDLEY, MEREDITH C. PETRAVICK, and
`JEREMY M. PLENZLER, Administrative Patent Judges.
`
`PETRAVICK, Administrative Patent Judge.
`
`
`
`
`DECISION
`Instituting Covered Business Method Patent Review
`37 C.F.R. § 42.208
`
`
`
`
`
`
`
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`CBM2016-00032
`Patent 7,212,999 B2
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`
`I. INTRODUCTION
`IBG LLC, Interactive Brokers LLC, TradeStation Group, Inc., and
`TradeStation Securities, Inc. (collectively, “Petitioner”) filed a Petition
`requesting a covered business method patent review of claims 1–35 of
`U.S. Patent No. 7,212,999 B2 (Ex. 1001, “the ’999 patent”). Paper 1
`(“Pet.”). In response, Trading Technologies International, Inc. (“Patent
`Owner”) filed a Patent Owner Preliminary Response. Paper 12 (“Prelim.
`Resp.”).
`We have jurisdiction under 35 U.S.C. § 324, which provides that a
`post-grant review may not be instituted “unless . . . the information presented
`in the petition . . . would demonstrate that it is more likely than not that at
`least 1 of the claims challenged in the petition is unpatentable.”
`For the reasons that follow, we institute a covered business method
`patent review of claims 1–35 of the ’999 patent.
`
`
`A. Related Matters
`The ’999 patent is involved in the following lawsuits: TT v. IBG LLC,
`No. 1:10-cv-00721 (N.D. Ill.) and TT v. TradeStation Securities, Inc., 1:10-
`cv-884 (N.D. Ill.). Pet. 3. In compliance with 37 C.F.R. § 42.302(a),
`Petitioner certifies that it has been sued for infringement of the ’999 patent.
`Id. Patent Owner does not challenge Petitioner’s certification that it has been
`sued for infringement of the ’999 patent.
`Numerous patents are related to the ’999 patent and the related patents
`are or were the subject of numerous petitions for covered business method
`patent review and reexamination proceedings.
`2
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`Patent 7,212,999 B2
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`B. The ’999 Patent
`The ’999 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,
`2:3–6. Figure 3A of the ’999 patent is reproduced below.
`
`
`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 6:13–15. The
`offer icons and the bid icons represent orders in the marketplace. Id.
`
`A trader can place an order using the GUI in a variety of ways. Id. at
`8:26–27. The trader can use task bar 328 to enter the required information
`and submit the order using the “Place Order” button. Id. at 8:27–33.
`Alternatively, the trader can select offer token 324 or bid token 320 using a
`
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`pointing device, adjust the size of the token to match a desired quantity, and
`drag-and-drop the token to a location that corresponds to the desired value of
`the order. Id. at 8:38–58. Either a Buy pop-up window or a Sell pop-up
`window is displayed, which allows the trader to modify, cancel, or submit the
`order. Id. at 8:54–65; Figs. 3d, 3e.
`
`
`C. Illustrative Claim
`Claims 1 and 35 are independent claims. Claims 2–34 directly or
`indirectly depend from claim 1. Claim 1 of the ’999 patent is illustrative of
`the subject matter at issue.
`1. A computer based method for facilitating the placement of an
`order for an item and for displaying transactional information to
`a user regarding the buying and selling of items in a system
`where orders comprise a bid type or an offer type, and an order
`is generated for a quantity of the item at a specific value, the
`method comprising:
`
`
`displaying a plurality of bid indicators, each
`corresponding to at least one bid for a quantity of the
`item, each bid indicator at a location along a first scaled
`axis of prices corresponding to a price associated with the
`at least one bid;
`
`displaying a plurality of offer indicators, each
`corresponding to at least on offer for a quantity of the
`item, each offer indicator at a location along a first scaled
`axis of prices corresponding to a price associated with the
`at least one offer;
`
`
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`4
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`Patent 7,212,999 B2
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`
`receiving market information representing a new order to
`buy a quantity of the item for a specified price, and in
`response to the received market information, generating a
`bid indicator that corresponds to the quantity of the item
`bid for and placing the bid indicator along the first scaled
`axis of prices corresponding to the specified price of the
`bid;
`
`receiving market information representing a new order to
`sell a quantity of the item for a specified price, and in
`response to the received market information, generating
`an offer indicator that corresponds to the [q]uantity of the
`item for which the offer is made and placing the offer
`indicator along the first scaled axis of prices
`corresponding to the specified price of the offer;
`
`displaying an order icon associated with an order by the
`user for a particular quantity of the item;
`
`selecting the order icon and moving the order icon with a
`pointer of a user input device to a location associated with
`a price along the first scaled axis of prices; and
`
`sending an order associated with the order icon to an
`electronic trading exchange, wherein the order is of a bid
`type or an offer type and the order has a plurality of order
`parameters comprising the particular quantity of the item
`and the price corresponding to the location at which the
`order icon was moved.
`
`
`D. Asserted Grounds of Unpatentability
`Petitioner contends that claims 1–35 of the ’999 patent are
`unpatentable based on the following grounds:
`
`
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`5
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`Challenged Claims
`Basis
`References
`1–35
`§ 101
`n/a
`TSE1, Schott2, and Subler3
`1–23, 26–28, and 31–35
`§ 103
`TSE, Schott, Subler, and Jackson4
`24 and 25
`§ 103
`TSE, Schott, Subler, and Lozman5
`29 and 30
`§ 103
`Petitioner provides testimony from Kendyl A. Román (Ex. 1012) to
`support its challenges.
`
`
`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
`
`
`1 TOKYO STOCK EXCHANGE OPERATION SYSTEM DIVISION, FUTURES/OPTION
`PURCHASING SYSTEM TRADING TERMINAL OPERATION GUIDE (1998) (Ex.
`1016) (“TSE”).
`2 U.S. Patent No. 5,619, 631 (issued Apr. 8, 1997) (Ex. 1019) (“Schott”).
`3 U.S. Patent No. 5,646,992 (issued Jul. 8, 1997) (Ex. 1020) (“Subler”).
`4 U.S. Patent No. 5,689,651 (issued Nov. 18, 1997) (Ex. 1021) (“Lozman”).
`5 Int’l Patent Application No. WO 97/06492 (published on Feb. 20, 1997)
`(Ex. 1040) (“Jackson”).
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`determining whether a patent is eligible for a covered business method patent
`review, the focus is on the claims. A patent need have only one claim
`directed to a covered business method to be eligible for review.
`
`
`i. Financial Product or Service
`Petitioner has shown that the ’999 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. 3–5. Claim 1 recites a “method for facilitating the placement of an order
`for an item and for displaying transactional information to a user regarding
`the buying and selling of items,” and recites steps of: 1) displaying market
`information, including indicators of bids and offers in the market, 2 )
`receiving and displaying market information, including new bids and new
`offers in the market, 3) displaying, selecting, and moving an order icon to a
`location along an axis of prices, and 4) sending a trade order to an electronic
`trading exchange. Ex. 1001, 14:7–47. Buying and selling items and sending
`a trade order to an electronic exchange are activities that are financial in
`nature.
`Patent Owner does not dispute that the claims are directed to a
`financial product or service and, instead, contends that the claims are not
`directed to “data processing or other operations” of the financial product or
`service. Prelim. Resp. 45–53. Patent Owner implies that “other operations”
`are limited to business operations. Id. at 53 (‘“other operations’ (e.g., a
`business method)”). Patent Owner’s contentions are unpersuasive.
`
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`As pointed out above, a covered business method patent is “a patent
`that claims a method or corresponding apparatus for performing data
`processing or other operations used in the practice, administration, or
`management of a financial product or service, except that the term does not
`include patents for technological inventions.” AIA § 18(d)(1); see 37 C.F.R.
`§ 42.302. The plain language of the statute does not limit “other operations”
`to business method operations and, in any event, we are not persuaded that
`buying and selling items is not a business practice. Claim 1 claims a method
`for performing data processing or other operations used in the practice,
`administration, or management of a financial product or service. Trading
`items on an electronic exchange is a financial service. Receiving and
`displaying market information (i.e., market data) is data processing used in
`the practice, administration, or management of a financial service. See Ex.
`1001, 11:41–43 (“the process”). Sending a trade order to an exchange is an
`operation used in the practice, administration, or management of a financial
`product or service.
`Patent Owner additionally contends that “the Legislative History is
`clear that business method patents are the types of patents that are meant to
`be within the jurisdictional scope of a CBMR” and that “the ’999 Patent,
`which claims the structure and makeup of a GUI tool . . . is not that type of
`patent.” Prelim. Resp. 59–60. Patent Owner cites to various portions of the
`legislative history as support for its proposed interpretation. Id. at 58–59.
`The “legislative history explains that the definition of covered business
`method patent was drafted to encompass patents ‘claiming activities that are
`financial in nature.’” Office Patent Trial Practice Guide, 77 Fed. Reg. 48,735
`8
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`(Aug. 14, 2012) (quoting 157 Cong. Rec. S5432 (daily ed. Sept. 8, 2011)
`(statement of Sen. Schumer)). The legislative history indicates that “financial
`product or service” should be interpreted broadly to “encompass patents
`‘claiming activities that are financial in nature, incidental to a financial
`activity or complementary to a financial activity.’” Id.; see Versata Dev.
`Grp., Inc. v. SAP America, Inc., 793 F.3d 1306, 1323–26 (Fed. Cir. 2015).
`We are not persuaded by Patent Owner’s argument that the legislative
`history of the AIA establishes that novel user interfaces for commodities
`were intended to be exempt from covered business method patent review.
`See Prelim. Resp. 57–60. 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 Prelim. Resp. 58–59 (reproducing statements by Senators
`Durbin and Schumer)), the language of the AIA, as passed, does not include
`an exemption for all user interfaces for commodities from covered business
`method patent review. Each patent has to be evaluated individually to
`determine if it is eligible for a covered business method patent review. A
`determination of whether a patent is eligible for a covered business method
`patent review under the statute is made on a case-by-case basis on the facts of
`each case. 37 C.F.R. § 42.301(b).
`For the reasons stated above, and based on the particular facts of this
`proceeding, we conclude that the ’999 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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`ii. Technological Invention
`As indicated above, 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). 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.” Id.
`Both prongs must be satisfied in order for the patent to be excluded as a
`technological invention. See Versata, 793 F.3d at 1326–27.
`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.
`77 Fed. Reg. at 48,756, 48,763–64.
`Petitioner asserts that the ’999 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. 3–9. In
`particular, Petitioner argues that the claims recite trading software that is
`
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`implemented using conventional computer hardware, servers, and networks,
`directing attention to a description in the ’056 patent that generically refers to
`“personal computers, terminals as part of a network, or any other computing
`device” and no specific hardware to carry out the invention. Id. at 6–7 (citing
`Ex. 1001, 4:34–36). Petitioner also argues that electronic trading was well
`known as of the filing date. Id. at 7.
`We agree with Petitioner that the claims are directed to well-
`understood, routine, and conventional steps of receiving market information,
`displaying it graphically to a trader, who uses the information to facilitate
`trading a commodity.
`For example, the “BACKGROUND OF THE INVENTION” section
`of the ’999 patent explains that it was well known for an 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, 1:31–41. There is no indication in the ’999
`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 ’999 patent does not claim any improvement of
`a computing device.
`Patent Owner argues that the ’999 patent is for a technological
`invention because the claims are directed to a novel and nonobvious GUI tool
`that improves, and transforms, a computer so it can perform functions it
`previously could not. Prelim. Resp. 53–57. We disagree that claim 1, for
`11
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`example, is directed to a novel and nonobvious GUI tool that improves, and
`transforms, a computer so it can perform functions it previously could not.
`Patent Owner’s arguments in that regard are conclusory, and not directed to
`any specific language from the claims themselves. As explained above,
`claim 1 is directed to a method for facilitating the placement of an order for
`an item and for displaying transactional information to a user regarding the
`buying and selling of items, that requires receiving and displaying market
`information, including indicators of bids and offers in the market and
`displaying, selecting, and moving an order icon to a location along an axis of
`prices, and sending a trade order to an electronic trading exchange. Ex.
`1001, 14:7–47. Moreover, there is no specific computer, program, or
`processing described in the ’999 patent beyond what was known in the art at
`the time of the invention.
`Petitioner also 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 to rearrange available market data on a
`display. Pet. 8–9. In contrast, Patent Owner argues that the claimed subject
`matter recites a new GUI design (a new technology) that addressed the
`problem with the old GUI design, and, thus, is directed to solving a technical
`problem using a technical solution. Prelim. Resp. 54.
`We agree with Petitioner that the problem noted in the Specification of
`the ’999 patent is not a technical one. The ’999 patent’s 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, 2:19–26. However, informing a trader of certain
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`stock market trends or events is more of a financial problem than a technical
`problem. We also are not persuaded by Patent Owner’s arguments that the
`claims are directed to solving a technical problem using a technical solution
`because Patent Owner’s arguments, in that regard, are not directed to what is
`claimed.
`For all of the foregoing reasons, the subject matter of claim 1 is not a
`“technological invention” under 37 C.F.R. § 42.301(b), and the ’056 patent is
`eligible for a covered business method patent review.
`
`II. ANALYSIS
`A. Claim Construction
`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);
`Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016)
`(upholding the use of the broadest reasonable interpretation approach).
`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). Any special
`definition for a claim term must be set forth with reasonable clarity,
`deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir.
`1994).
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`i. “axis of prices” and “indicators, icons, and tokens”
`Petitioner proposes constructions for the following claim terms: “axis
`of prices” and “indicators, icons, and tokens,” which are recited at least in
`claims 1, 9, and 35. Pet. 13–17. At this juncture, Patent Owner does not
`challenge Petitioner’s proposed claim constructions.
`We have reviewed Petitioner’s proposed constructions and determine,
`on this record, that they are consistent with the broadest reasonable
`construction. For purposes of this Decision, we adopt the following claim
`constructions:
`Claim Term
`axis of prices
`
`Construction
`a reference line for plotting prices,
`including labeled, unlabeled, visible,
`and invisible reference lines
`a symbol such as an alphanumeric
`character or a graphic representation
`of an item
`
`indicators, icons, and tokens
`
`
`
`
`ii. “computer readable medium having
`program code recorded thereon”
`Claim 35 is directed to a “computer readable medium having program
`code recorded thereon.” The parties dispute whether the claims cover
`transitory media.
`Petitioner contends that under the broadest reasonable interpretation,
`claim 35 encompasses a transitory, propagating signal that is encoded. Pet.
`25. In a related case, Petitioner contends that “the BRI of ‘medium’ is ‘an
`intervening substance through which something else is transmitted or carried
`on.’” Interactive Brokers, LLC v. Trading Technologies International, Inc.,
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`CBM2016-00031, slip. op. 22 (PTAB, Feb. 9, 2016) (Paper 2) (emphases
`omitted). Petitioner argues that transitory, propagating signals are not patent
`eligible. Id. (citing In re Nuijten, 550 F.3d 1336, 1357 (Fed. Cir. 2007)).
`Patent Owner argues that “[l]ooking to technical dictionaries,
`recording connotes ‘any process for preserving signals, sounds, data, or other
`information for future reference or reproduction, such as disk recording,
`facsimile recording, ink-vapor recording, magnetic tape or wire recording,
`and photographic recording.’” Prelim. Resp. 44 (quoting Ex. 2133).
`Applying that definition, Patent Owner contends that the word “recorded”
`limits the claims to non-transitory media because “[a] signal cannot preserve
`itself, and thus the claims cannot cover a signal per se.” Id.
`The specification of the ’999 patent neither defines this term nor
`provides examples for a “computer readable medium,” and after reviewing
`the specification we see no reference to “computer readable medium” other
`than that in claim 35. The broadest reasonable interpretation, in light of the
`specification, of “recorded” is an issue that requires further development of
`the record. In related covered business method patent review proceedings,
`we will address this issue on a more fully developed record.6 For the
`purposes of the present preliminary proceeding, we determine that the
`broadest reasonable interpretation of “computer readable medium having
`program code recorded thereon” encompasses transitory media.
`
`
`
`6 The construction of “recorded” is at issue in CBM2015-00172, CBM2015-
`00181, CBM2015–00182, and CBM2016-00031.
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`B. 35 U.S.C. § 101 Asserted Ground of Unpatentability
`i. Claims 1–35 for Encompassing an Abstract Idea
`Petitioner contends that claims 1–35 of the ’999 patent are directed to
`non-statutory subject matter under 35 U.S.C. § 101. Pet. 24–38. Patent
`Owner disagrees. Prelim. Resp. 31–57. Upon reviewing the claims before
`us, Petitioner’s analysis, and Patent Owner’s arguments, we determine that
`Petitioner has established that claims 1–35 more likely than not are directed
`to non-statutory subject matter under § 101.
`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 useful improvement thereof, may
`obtain a patent therefor, subject to the conditions and requirements of this
`title.” Claims 1–34 recite a method and, thus, nominally fall into the process
`category of statutory subject matter. Claim 35 is similar to claim 1, but differ
`in that it recites a computer readable medium having program code recorded
`thereon.
`The Supreme Court recognizes three exceptions to the 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, itself, is patent-ineligible, an application
`of the abstract idea may be patent-eligible. Alice, 134 S. Ct. at 2355. Thus,
`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.
`16
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`(citing Mayo, 132 S. Ct. at 1297–98). 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).
`Petitioner argues that the claims encompass the abstract idea of
`graphing (or displaying) bids and offers to assist a trader to make an order.
`Pet. 19–20. According to Petitioner, this is a fundamental economic practice
`long prevalent in our system of commerce. Id. at 19. Petitioner also argues
`that the claims do not recite an inventive concept and merely recites
`insignificant and conventional extra solution activity. Id. at 25–32.
`Patent Owner disputes that the claims are directed to an abstract idea
`and argues that the “heart” of the claimed invention is an improvement to an
`order entry GUI. Prelim. Resp. 38–41. Patent Owner alleges that the claims
`specify the improved GUI features at a high level of detail rather than at a
`high level of generality. Id. at 42–43.
`On this record, we are persuaded that the claims of the ’999 patent are
`directed to a patent-ineligible concept and do not recite an inventive concept.
`Claim 1 is representative of independent claims 1 and 35. Claim 1 recites a
`“method for facilitating the placement of an order for an item and for
`displaying transactional information to a user regarding the buying and
`selling of items.” Claim 1 recites multiple steps of receiving and displaying
`market information, including indicators of bids and offers in the market, of
`new bids and offers in the market, and of an order by the user. Claim 1 also
`recites steps that require sending an order to an electronic trading exchange.
`The focus of the claim is on collecting and displaying market order
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`information so that a user (i.e., a trader) can place an order. The disclosure
`of the purported problem solved by the ’999 patent is consistent with this
`focus. The ’999 patent discloses that the difference between its system and
`“conventional systems” is that its system displays all of the outstanding bid
`and offer orders and not just the highest bid and lowest offer to a trader. Ex.
`1001, 2:15–19, 2:28–38. A trader having such information is at an advantage
`because the trader can better anticipate the market and future demand for an
`item when placing an order. Id. at 1:26–58. Collecting information and
`displaying the information, without more, is within the realm of abstract
`ideas. Electric Power Group, LLC v. Alstom S.A., No. 2015-1778 (Fed. Cir.
`Aug. 1, 2016).
`Claim 1 does not recite 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.” Alice, 134 S. Ct. at 2355 (citing
`Mayo, 132 S. Ct. at 1294). Receiving market information is nothing more
`than a routine data gathering step. Routine data gathering does not transform
`the abstract idea into a patent-eligible invention. See CyberSource Corp. v.
`Retail Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir. 2011). Displaying
`information as indicators along a price axis is a well-understood, routine,
`conventional activity that does not add significantly more to the abstract idea.
`See Mayo, 132 S. Ct. at 1298. Likewise, selecting and moving an icon to
`place an order is a well-understood, routine, conventional activity and also
`does not add significantly more to the abstract idea. See Ex. 1029, 259.
`Conventional post-solution activity is not sufficient to transform the abstract
`idea into patent-eligible subject matter. See Parker v. Flook, 437 U.S. 584,
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`590–92 (1978). The claim requires nothing more than a generic computer to
`perform the method of claim 1.
`On this record, Petitioner has shown that it is more likely than not that
`claims 1 and 35 are directed to the abstract idea of graphing (or displaying)
`bids and offers to assist a trader to make an order, and that the remaining
`elements, individually or in combination, recite no additional substantive
`limitations so that the claim does not preempt the abstract idea itself.
`Petitioner demonstrates that independent claims 1 and 35 are more likely than
`not patent ineligible under 35 U.S.C. § 101.
`Petitioner contends that the additional elements recited by dependent
`claims 2–34 do not add significantly more to the abstract idea so as to render
`the claims patent-eligible. Pet. 33–35. Patent Owner makes no arguments
`specifically directed to the additional elements of the dependent claims. On
`this record, we determine that Petitioner demonstrates that dependent claims
`2–34 are more likely than not patent-ineligible under 35 U.S.C. § 101.
`
`ii. Claim 35 for Encompassing a Signal
`Petitioner contends that claim 35 is also patent-ineligible under 35
`U.S.C. § 101 because it encompasses a signal. Pet. 25. As discussed above,
`for the purposes of the present preliminary proceeding, we determine that the
`broadest reasonable interpretation of “computer readable medium having
`program code recorded thereon” encompasses transitory media. Claims that
`encompass transitory, propagating signals are not covered by the four
`statutory classes of subject matter of 35 U.S.C. § 101. In re Nuijten, 550
`F.3d 1346, 1352 (Fed. Cir. 2007). We, thus, determine that Petitioner
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`Patent 7,212,999 B2
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`demonstrates that claim 35 is more likely than not patent-ineligible under 35
`U.S.C. § 101 for encompassing a signal.
`
`
`C. Obviousness of Claims 1–23, 26–28, and 31–35 over
`TSE, Schott, and Subler
`Petitioner contends that claims 1–23, 26–28, and 31–35 are
`unpatentable under 35 U.S.C. § 103 over TSE, Schott, and Subler. Pet. 35–
`76. To support its contentions, Petitioner provides explanations as to how
`the prior art meets each claim limitation. Id. Petitioner also cites the
`Declaration of Kendyl A. Román for support. See Ex. 1012 ¶¶ 85–186.
`
`i. Overview of Prior Art
`a. TSE
`TSE is a guide for operating a trading terminal of the Tokyo Stock
`Exchange. Ex. 1016, 1.7 TSE describes a trading system that facilitates
`trading with an electronic exchange by receiving bid and offer information,
`displaying it to a user, and accepting and sending bid and offer orders. A
`trading terminal displays a GUI for depicting market information on a
`Board/Quotation Screen. The Figure on page 107 of TSE is reproduced
`below.
`
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`7 We refer to the pagination inserted by Petitioner and not to the original
`pagination.
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`The figure depicts the Board/Quotation Screen. The Board/Quotation
`
`Screen includes central column 11, which displays order prices. Id. at 111.
`To the left and right of column 11 are columns 12, which display numbers
`representing offer and bid quantity for the corresponding price. To the left
`and right of columns 12 are columns 13, which display numbers representing
`an order count. Id. at 112. For example, the number 17 represents the
`aggregate quantity of bids from the 3 b
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