Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`Paper 61
`Entered: October 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.
`_______________
`
`Case CBM2016-00054
`Patent 7,693,768 B2
`_______________
`
`
`Before SALLY C. MEDLEY, MEREDITH C. PETRAVICK, and
`JEREMY M. PLENZLER, Administrative Patent Judges.
`
`
`PETRAVICK, Administrative Patent Judge.
`
`
`
`
`
`
`
`FINAL WRITTEN DECISION
`Covered Business Method Patent Review
`35 U.S.C. § 328(a) and 37 C.F.R. § 42.73
`
`
`

`

`CBM2016-00054
`Patent 7,693,768 B2
`
`
`
`INTRODUCTION
`
`
`
`A. Background
`IBG LLC, Interactive Brokers, LLC, TradeStation Group, Inc., and
`TradeStation Securities, Inc. (collectively, “Petitioner”), filed a Petition
`requesting covered business method (“CBM”) patent review of claims 1–23
`(the “challenged claims”) of U.S. Patent No. 7,693,768 B2 (Ex. 1001, “the
`’768 patent”). Paper 4 (“Pet.”). Petitioner challenges the patentability of
`claims (“the challenged claims”) of the ’768 patent under 35 U.S.C. § 101
`and § 103.
`On October 18, 2016, we instituted a CBM patent review on the
`following grounds:
`References
`N/A
`
`Basis Claims Challenged
`§ 101
`1–23
`
`TSE1 and Belden2
`
`§ 103
`
`1–13, 15, 16, 18, and 21–23
`
`TSE, Belden, and Cooper3
`
`§ 103
`
`14, 17, 19, and 20
`
`Paper 10 (“Institution Decision” or “Inst. Dec.”).
`Thereafter, Trading Technologies International, Inc. (“Patent Owner”)
`filed a Patent Owner’s Response on January 1, 2017 (Paper 21, “PO. Resp.”)
`and Petitioner filed a Reply (Paper 40, “Pet. Reply”) to Patent Owner’s
`Response.
`
`
`1 Tokyo Stock Exchange Operation System Division, Futures/Option
`Purchasing System Trading Terminal Operation Guide (1998) (Ex. 1016).
`Citations to this reference refer to its English translation (Ex. 1017).
`2 PCT Pub. No. WO 90/11571, pub. Oct. 4, 1990 (Ex. 1012, “Belden”).
`3 Alan Cooper, About Face: The Essentials of User Interface Design (1995)
`(Ex. 1022).
`
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`
`Patent Owner filed a Motion for Observations (Paper 52, “PO Mot.
`for Observations”) and Petitioner filed a Response (Paper 54) to Patent
`Owner’s Motion for Observations.
`Petitioner filed a Motion to Exclude (Paper 44, “Pet. MTE”) and
`Patent Owner filed an Opposition (Paper 52) to Patent Owner’s Motion.
`Petitioner filed a Reply (Paper 53) in support of its Motion.
`Patent Owner filed a Motion to Exclude (Paper 48, “PO MTE”) and
`Petitioner filed an Opposition (Paper 50, “PO MTE Opp.”) to Patent
`Owner’s Motion. Patent Owner filed a Reply (Paper 54, “PO MTE Reply”)
`in support of its Motion.
`An oral hearing was held on June 23, 2017. Paper 58 (“Tr.”).
`We have jurisdiction under 35 U.S.C. § 6. This Final Written
`Decision is issued pursuant to 35 U.S.C. § 328(a) and 37 C.F.R. § 42.73.
`For the reasons that follow, we determine that Petitioner has shown by a
`preponderance of the evidence that claims 1–23 of the ’768 patent are
`unpatentable.
`
`B. Related Proceedings
`The parties indicate that the ’768 patent is the subject of numerous
`related U.S. district court proceedings. Pet. 2; Paper 6, 1–5.
`The application that issued as the ’768 patent ultimately claims, under
`35 U.S.C. § 320, the benefit of application 09/590,692, that issued as the
`’132 patent. The ’132 patent was the subject of Technologies International,
`Inc., v. CQG, Inc., 675 Fed. Appx. 1001 (Fed. Cir. 2017) (“CQG”). The
`Federal Circuit determined that the claims of the ’132 patent are patent
`eligible under 35 U.S.C. § 101.
`
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`
`U.S. Patent No. 6,772,132 (“the ’132 patent”) was also the subject of
`petitions for CBM patent review in TD Ameritrade Holding Corp. v.
`Trading Technologies International, Inc., CBM2014-00135 (PTAB), CQG,
`Inc. v. Trading Technologies International, Inc., CBM2015-00058 (PTAB),
`and IBG LLC v. Trading Technologies International, Inc., CBM2015-00182
`(PTAB). Trial was instituted, but later terminated due to settlement, for
`CBM2014-00135. Institution was denied for CBM2015-00058. Institution
`was granted for CBM2015-00182, and a final written decision issued on
`February 28, 2017.
`Numerous other patents are related to the ’768 patent and the related
`patents are or were the subject of numerous petitions for CBM patent review
`and reexamination proceedings. Pet. 2; Paper 6, 5–7; Paper 8, 1.
`
`
`C. The ’768 Patent
`The ’768 patent is titled “Click Based Trading with Intuitive Grid
`Display of Market Depth” and issued on April 6, 2010. Ex. 1001, (45), (54).
`The invention of the ’768 patent “is directed to the electronic trading of
`commodities.” Id. at 1:16–17. The ’768 patent discloses a graphical user
`interface (“GUI”), named the Mercury display, and a method of using the
`Mercury display to displaying market information and placing trade orders
`for a commodity on an electronic exchange. Id. at 1:17–22, 3:5.
`Before turning to a discussion of the Mercury display, a discussion of
`a conventional method of trading using a GUI is helpful. Figure 2 of the
`’768 patent is reproduced below.
`
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`Patent 7,693,768 B2
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`
`Figure 2 of the ’768 patent depicts a common GUI (“the Fig. 2 GUI”)
`that displays market information and is used to place trade orders for a
`commodity on an electronic exchange. Id. at 5:8–12, Fig. 2; see also PO
`Resp. 6–7 (describing the Fig. 2 GUI as “widely used”); Ex. 1018 ¶ 21
`(describing the Fig. 3 GUI as a common dynamic screen); Ex. 2169 ¶¶ 61–
`62, 69 (describing the Fig. 2 GUI as “ubiquitous by the time of the
`invention” and “prevalent”). As can be seen from the above, the Fig. 2
`GUI’s screen has a grid having columns and rows. Row 1 shows the inside
`market. Ex. 1001, 5:14–16. The inside market is the highest bid price and
`the lowest ask price. Id. at 4:56–58. Rows 2–5 show the market depth,
`which are other bids or asks in the market. Id. at 4:52–56, 5:16–20. The
`market information updates dynamically as the market updates. Id. at 5:23–
`25. The inside market, however, is always displayed in row 1, a fixed
`location. Ex. 2169 ¶ 54.
`Other prior art GUIs, similar to the Fig. 2 GUI, arrange the market
`information in the grid differently. Patent Owner’s declarant Christopher
`Thomas testifies that similar dynamic GUIs “displayed the locations for the
`
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`best bid and ask prices such that the prices were displayed vertically (e.g.,
`with the location for the best ask price being displayed above the location for
`the best bid price).” Ex. 2169 ¶ 60.
`
`In the Fig. 2 GUI, “the user could place an order by clicking on a
`location (e.g., a cell) in one of the price or quantity columns.” Ex. 2169
`¶¶ 58–59. Patent Owner’s declarant Christopher Thomas testifies that
`“[s]ome of such dynamic screens permitted single action order entry that
`consisted of a trader pre-setting a default quantity and then click (e.g., using
`a single-click or a double-click) on a dynamic screen to cause a trade order
`to be sent to the exchange at the pre-set quantity.” Ex. 1008 ¶ 20; see Ex.
`1031, 7.
`Other types of conventional trading GUIs used order entry tickets to
`send trade orders to an electronic exchange. Ex. 2169 ¶ 50. An order entry
`ticket is “in the form of a window, with areas for a trader to fill out order
`parameters for an order, such as the price, quantity, an identification of the
`item being traded, buy or sell, etc.” Id.; see also Ex. 1001, 2:21–23, 34–36
`(describing a trader manually entering trade order parameters).
`
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`
`Figure 3 of the ’768 patent is reproduced below.
`
`
`Figure 3 of the ’768 patent illustrates an example of the Mercury display
`with example values for trading a commodity including prices, bid and ask
`quantities relative to price, and trade quantities. Ex. 1001, 3:41–42, 7:1–3.
`The Mercury display is similar to the Fig. 2 GUI in that both display
`market information in a grid having rows and column and both provide for
`single action order entry. See id. at 6:59–64, 7:32–33, 4:8–18, 9:1–54, Fig.
`6, steps 1306–1315. The Mercury display differs from the Fig. 2 GUI in the
`arrangement of the market information in the grid. In the Mercury display,
`price values for the commodity are displayed in a price column 1005 (i.e., a
`price axis). Id. The ’768 patent explains that the price column does not
`display whole prices but rather representative ticks. Id. at 7:33–36. The
`
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`values in the price column of the Mercury display “are static; that is, they do
`not normally change positions unless a re-centering command is received.”
`Id. at 7:42–44. Bid and ask quantities are displayed in columns 1003 and
`1004, respectively, and are aligned with the corresponding price value in
`price column 1005. See id. at 7:27–33. The bid quantities and ask quantities
`move up and down as the market changes, and, thus, the location of the
`inside market moves up and down. See id. at 8:33–43.
`Although Figure 3 of the ’768 patent displays the market depth, the
`’768 patent discloses that:
`How far into the market depth the present invention can
`display depends on how much of the market depth the exchange
`provides. Some exchanges supply an infinite market depth,
`while others provide no market depth or only a few orders away
`from the inside market. The user of the present invention can
`also cho[o]se how far into the market depth to display on his
`screen.
`Id. at 5:1–7. The ’768 patent, thus, indicates that in some instances the
`screen will display only the inside market (i.e., the highest bid price and the
`lowest ask price) and not the market depth.
`The Mercury display may also display other information. Column
`1002 contains various parameters and information used to execute trades,
`such as the default quantity displayed in cell 1016. See id. at 7:65–8:32.
`The number next to the W in cell 1007 indicates the trader’s orders that are
`in the market and not yet filled. Id. at 7:53–58.
`
`D. Illustrative Claim
`Claims 1 and 23 are independent. Claim 1 is illustrative of the
`claimed subject matter and is reproduced below:
`
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`
`1. A method of placing a trade order for a commodity on an
`electronic exchange using a graphical user interface and a user
`input device, said method comprising:
`
`receiving data relating to the commodity from the
`electronic exchange, the data comprising an inside market with a
`highest bid price and a lowest ask price currently available for
`the commodity;
`
`dynamically displaying via a computing device a first
`indicator in one of a plurality of areas in a bid display region,
`each area in the bid display region corresponding to a price level
`along a price axis, the first indicator representing a quantity
`associated with at least one order to buy the commodity at the
`highest bid price;
`
`dynamically displaying via the computing device a second
`indicator in one of a plurality of areas in an ask display region,
`each area in the ask display region corresponding to a price level
`along the price axis, the second indicator representing a quantity
`associated with at least one order to sell the commodity at the
`lowest ask price;
`
`displaying an order entry region comprising a plurality of
`locations for receiving single action commands to send trade
`orders, the plurality of location including:
`
`(a) at least one first fixed location corresponding to a first
`price level along the price axis associated with the highest bid
`price currently available in the market, wherein upon receipt of
`new data representing an updated highest bid price currently
`available for the commodity, the at least one first fixed location
`continues to correspond to the first price level even if the first
`price level is no longer associated with the highest bid price
`currently available in the market; and
`
`
`(b) at least one second fixed location corresponding to a
`second price level along the price axis associated with the lowest
`ask price currently available in the market, wherein upon receipt
`of new data representing an updated lowest ask price currently
`available for the commodity, the at least one second fixed
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`
`location continues to correspond to the second price level even if
`the second price level is no longer associated with the lowest ask
`price currently available in the market;
`
`
`updating the display of the first indicator such that the first
`indicator is moved relative to the price axis to a different area in
`the bid display region corresponding with a different price level
`along the price axis in response to receipt of new data
`representing an updated highest bid price currently available for
`the commodity;
`
`
`updating the display of the second indicator such that the
`second indicator is moved relative to the price axis to a different
`area in the ask display region corresponding with a different price
`level along the price axis in response to receipt of new data
`representing an updated lowest ask price currently available for
`the commodity; and
`
`setting a plurality of parameters for a trade order relating
`
`to the commodity and sending the trade order to the electronic
`exchange in response to a selection of a particular location of the
`order entry region by a single action of a user input device.
`Ex. 1001, 11:46–12:36.
`
`
`ANALYSIS
`
`A. Claim Construction
`In a covered business method patent review, claim terms are given
`their broadest reasonable interpretation in light of the specification in which
`they appear and the understanding of others skilled in the relevant art. See
`37 C.F.R. § 42.300(b); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131,
`2144–46 (2016) (upholding the use of the broadest reasonable interpretation
`standard). Applying that standard, claim terms are presumed to have their
`ordinary and customary meaning as would be understood by one of ordinary
`
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`skill in the art in the context of the patent’s specification. See In re
`Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
`
`
`1. “single action”
`Claims 1 and 23 both recite “a selection of a particular location of the
`order entry region by a single action of a user input device.” Ex. 1001,
`12:34–36, 14:55–57.
`Petitioner contends that “single action” should be construed to be “any
`action by a user within a short period of time, whether comprising one or
`more clicks of a mouse button or other input device” as defined in the
`specification of the ’768 patent. Pet. 14 (quoting Ex. 1001, 4:14–18).
`Patent Owner states that Petitioner’s proposed construction “is
`sufficient for these proceedings so long as the construction is limited to ‘an
`action by a user . . .’ or ‘one action by a user . . .’ because the claim itself
`specifically identifies that the action be a ‘single’ action.” PO Resp. 10
`(emphasis omitted). Patent Owner argues that any other construction would
`not be reasonable because it would be contrary to the specification and the
`plain and ordinary meaning. Id.
`A patentee may rebut the presumption that claim terms have ordinary
`and customary meaning by providing a definition of the term in the
`specification with reasonable clarity, deliberateness, and precision. In re
`Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). As Petitioner points out, the
`’768 patent provides such a definition. Pet. 14. The specification of the
`’768 patent states:
`the specification refers to a single click of a mouse as a means
`for user input and interaction with the terminal display as an
`example of a single action of the user. While thus describes a
`
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`
`preferred mode of interaction, the scope of the present invention
`is not limited to the use of a mouse as the input device or to the
`click of a mouse button as the user’s single action. Rather, any
`action by a user within a short period of time, whether
`comprising one or more clicks of a mouse button or other input
`device, is considered a single action of the user for the purposes
`of the present invention.
`Ex. 1001, 4:8–18 (emphasis added). As can be seen from the above, the
`’768 patent defines “single action,” with reasonable clarity, deliberateness,
`and precision, as “any action by a user within a short period of time, whether
`comprising one or more click of a mouse button or other input device.” Id.
`We, thus, construe “single action” according to its definition in the ’768
`patent. In re Paulsen, 30 F.3d at 1480.
`Patent Owner’s proposed construction is inconsistent with the
`definition in the ’768 patent. The definition explicitly states that more than
`one click of a mouse button by a user is considered a “single action” for the
`purposes of the present invention. Ex. 1001, 4:8–18. Further, dependent
`claim 9 similarly shows that “single action” should not be limited to one
`action by a user, as it recites that the “single action . . . consists of a double
`click of the user input device” (Ex. 1001, 12:66–13:8).
`
`For the reasons given above, we construe “single action” to mean
`“any action by a user within a short period of time, whether comprising one
`or more clicks of a mouse button or other input device” (Ex. 1001, 4:14–18).
`
`
`2. Entered Order Indicator
`Claim 6 recites “an entered order indicator” and “the entered order
`indicator represents an order pending at the electronic exchange.” Ex. 1001,
`12:56–60. Patent Owner argues that “[a person of ordinary skill in the art]
`
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`would readily recognize that the entered order indicator must indicate to the
`user that the user has an order at a particular price level along the price axis”
`because the specification of the ’768 patent discloses “‘an entered/working’
`column (E/W) that ‘displays the current status of the trader’s order.’” PO
`Resp. 13 (citing Ex. 1001, 7:50–58, Figs. 3–4; Ex. 2169 ¶ 30).
`As Petitioner points out, Patent Owner’s argument is inconsistent with
`the plain language of claim 6, which explicitly states that an “entered order
`indicator represents an order pending at the electronic exchange.” Pet.
`Reply 2. The plain language does not require the entered order indicator to
`indicate to the user that the user has an order at a particular price level along
`the price axis. Patent Owner’s construction is an attempt to read a limitation
`from the specification of the ’768 patent into the claims. If a feature is not
`necessary to give meaning to what the inventor means by a claim term, it
`would be “extraneous” and should not be read into the claim. Renishaw
`PLC v. Marposs Societa’ Per Azioni, 158 F.3d 1243, 1249; E.I. du Pont de
`Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1433
`(Fed.Cir.1988).
`The plain language of claim 6 state that an “entered order indicator
`represents an order pending at the electronic exchange.” No further
`construction is required.
`
`
`3. Other Terms
`Patent Owner proposes explicit constructions for other claim terms.
`See PO Resp. 1–4. We do not need to explicitly construe these other claim
`terms in order to resolve the issues before us. Vivid Techs., Inc. v. Am. Sci.
`& Eng’g, Inc., 200 F.3d 795, 803 (Fed.Cir.1999) (Only terms which are in
`
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`controversy need to be construed, and then only to the extent necessary to
`resolve the controversy.)
`
`B. Covered Business Method Patent
`1. Standing
`Section 18 of the AIA4 provides for the creation of a transitional
`program for reviewing covered business method patents. Section 18 limits
`review to persons or their privies who have been sued or charged with
`infringement of a “covered business method patent,” which does not include
`patents for “technological inventions.” AIA § 18(a)(1)(B), (d)(1); see
`37 C.F.R. § 42.302. Petitioner certifies that it was sued for infringement of
`the ’768 patent. Pet. 3 (citing Exs. 1003, 1004). Patent Owner does not
`dispute this. See generally PO Resp.
`
`
`2. Whether the ’768 Patent is a CBM Patent
`Under § 18(a)(1)(E) of the AIA, we may institute a transitional review
`proceeding only for a CBM patent. A CBM 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 also 37 C.F.R. § 42.301
`(defining “[c]overed business method patent” and “[t]echnological
`invention”). To determine whether a patent is eligible for a covered business
`method patent review, the focus is on the claims. Secure Axcess, LLC v.
`
`
`4 Leahy-Smith America Invents Act, Pub. L. No. 112–29, 125 Stat. 284, 329
`(2011) (“AIA”).
`
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`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 the Petitioner had
`shown that the ’768 patent is a CBM patent. Inst. Dec. 9–12. Patent Owner
`urges us to reconsider our determination and find that the ’768 patent is not
`eligible for CBM review. See PO Resp. 63–65. We, however, are not
`apprised of any sufficient reason to change our original determination.
`
`
`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”
`The statute defines a “covered business method patent” as “[a] patent
`that claims a method or corresponding apparatus for performing data
`processing or other operations used in the practice, administration, or
`management of a financial product or service.” AIA § 18(d)(1); see 37
`C.F.R. § 42.301(a). A covered business method patent can be broadly
`interpreted to encompass patents claiming activities that are financial in
`nature. Transitional Program for Covered Business Method Patents—
`Definitions of Covered Business Method Patent and Technological
`Invention, 77 Fed. Reg. 48734, 48735 (Aug. 14, 2012); Blue Calypso, LLC
`v. Groupon, Inc., 815 F.3d 1331, 1338–41 (Fed. Cir. 2016) (determining that
`a patent was a covered business method patent because it claimed activities
`
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`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 Development
`Group, 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 48,736 (Response to
`Comment 8). We take claim 1 as representative.
`Petitioner asserts that claim 1 is directed to a covered business method
`because it recites a method of placing a trade order for a commodity on an
`electronic exchange including the steps of displaying market information
`and sending a trade order, which are financial in nature. Pet. 4–5. As
`Petitioner points out, claim 1 recites displaying market information,
`including indicators of a highest bid and a lowest ask in the market, and
`sending a trade order to an electronic trading exchange. Pet. 4; Ex. 1001,
`11:46–12:34.
`Displaying market information and sending a trade order to an
`electronic exchange are activities that are financial in nature. A method for
`placing a trade order for a commodity on an electronic exchange is a method
`for performing data processing or other operations used in the practice,
`administration, or management of a financial product or service.
`Patent Owner does not dispute that the ’768 patent claims a method
`used for a financial product or service, but does dispute that the ’768 patent
`claims data processing. PO Resp. 90–91. Patent Owner’s argument is based
`
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`upon the assumption that “data processing” in the statute is interpreted
`according to the definition of “data processing” found in the glossary for
`class 705 of the United States Patent Classification System. See id. Patent
`Owner, however, does not sufficiently explain why this definition is
`controlling, as opposed to the plain meaning of “data processing.” We, thus,
`are not persuaded that “data processing” as recited by the statute precludes
`data processing for the purpose of displaying the data. The ’768 patent
`discloses processing market information for display on a client terminal and
`for sending an order to an exchange. See e.g., Ex. 1001, 4:60–61 (“The
`present invention processes this information and maps it through simple
`algorithms and mapping tables to positions in a theoretical grid program
`. . .). We, thus, are not persuaded that the ’768 patent does not claim
`“performing data processing . . . used in the practice, administration, or
`management of a financial product or service” (AIA § 18(d)(1)).
`In any event, the statute does not limit CBM patents to only those that
`claim methods for performing data processing used in the practice,
`administration, or management of a financial product or service. It includes
`methods for performing “other operations” used in the practice,
`administration, or management of a financial product or service. The statute
`states that the “other operations” are those that are “used in the practice,
`administration, or management of a financial product or financial service.”
`AIA § 18(d)(1). There appears to be no disagreement that the claimed
`method steps are operations used in the practice, administration, or
`management of a commodity or trading a commodity on an electronic
`exchange, e.g., a financial service. See generally PO Resp. 90–91. The ’768
`patent, therefore, at least claims “other operations used in the practice,
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`administration, or management of a financial product or financial service”
`(AIA § 18(d)(1)).
`Patent Owner contends that the Legislative History confirms that the
`claimed invention is not a covered business method because “it specifically
`states that GUI tools for trading are not the types of inventions that fall
`within CBM jurisdiction.” PO Resp. 92 (citing Ex. 2126, S5428, S5433).
`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 S54636–37 (statements of Sen. Schumer
`expressing concern about patents claiming “double click”), 157 Cong. Rec.
`S1360 at S1364 (Mar. 8, 2011) (statements of Sen. Schumer explain 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
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`Patent 7,693,768 B2
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`claimed invention has to be evaluated individually to determine if it is
`eligible for a CBM patent review. A determination of whether a patent is
`eligible for a CBM patent review under the statute is made on a case-by-case
`basis. 37 C.F.R. § 42.301(b).
`For the reasons stated above, we are persuaded by Petitioner that the
`’768 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.
`
`
`3. 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 be
`excluded as a technological invention. See Versata, 793 F.3d at 1326–7;
`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,
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`memory, computer-readable storage medium, scanners, display
`devices or databases, or specialized machines, such as an ATM
`or point of sale device.
`(b) Reciting the use of known prior art technology to accomplish
`a process or method, even if that process or method is novel and
`non-obvious.
`(c) Combining prior art structures to achieve the normal,
`expected, or predictable result of that combination.
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,763–64 (Aug.
`14, 2012). 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”).
`With respect to the first prong, Petitioner contends that rather than
`reciting a technical feature that is novel or unobvious over the prior art, the
`claims of the ’768 patent generally recite trading software that is
`implemented on a conventional computer. Pet. 5–7. When addressing
`“whether the claimed subject matter as a whole recites a technological
`feature that is novel and unobvious over the prior art,” Patent Owner alleges
`that “Petitioners fail to address whether the claims recite a technical feature
`that is novel and unobvious.” PO Resp. 91. That is incorrect. See Pet. 5–7;
`Inst. Dec. 11 (discussing Petitioner’s contention).
`We are persuaded by Petitioner’s contentions that at least claim 1 of
`the ’768 patent does not recite a novel and non-obvious technological
`feature. Pet. 5–7 (citing Ex. 1007 ¶¶ 73–74). The specification of th