throbber
Trials@uspto.gov
`Tel: 571-272-7822
`
`
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`
`
`
`
`
`
` Paper 37
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`
`
` Entered: November 17, 2017
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`IBG LLC, INTERACTIVE BROKERS LLC,
`TRADESTATION GROUP, INC., and
`TRADESTATION SECURITIES, INC.,
`Petitioner,
`
`v.
`
`TRADING TECHNOLOGIES INTERNATIONAL, INC.,
`Patent Owner.
`____________
`
`CBM 2016-00087
`Patent 7,412,416 B2
`_______________
`
`
`Before SALLY C. MEDLEY, MEREDITH C. PETRAVICK, and
`JEREMY M. PLENZLER, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 328(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`
`

`

`CBM2016-00087
`Patent 7,412,416 B2
`
`
`I. INTRODUCTION
`
`IBG LLC, Interactive Brokers LLC, Tradestation Group, Inc., and
`
`Tradestation Securities, Inc., (“Petitioner”)1 filed a Petition requesting a
`
`review of claims 1–24 of U.S. Patent No. 7,412,416 B2 (Ex. 1001, “the ’416
`
`patent”) under the transitional program for covered business method patents.2
`
` Paper 3 (“Pet.”). Trading Technologies International, Inc. (“Patent Owner”)
`
`did not file a Patent Owner Preliminary Response. Upon consideration of the
`
`Petition, we instituted a covered business method patent review of claims 1–
`
`24 of the ’416 patent (Paper 11 (“Dec.”)).
`
`Subsequent to institution, Patent Owner filed a Patent Owner Response
`
`(Paper 19 (“PO Resp.”)) and Petitioner filed a Reply (Paper 23 (“Pet.
`
`Reply”)). Patent Owner filed a Motion to Exclude (Paper 29 (“PO Mot. to
`
`Exclude”)) Exhibits 1015, 1016, 1018, and portions of Exhibit 1060.
`
`Petitioner filed an Opposition to the Motion to Exclude (Paper 31 (“Pet.
`
`Exclude Opp.”)), and Patent Owner filed a Reply (Paper 33 (“PO Exclude
`
`Reply”)). An oral hearing was held on August 10, 2017, and a transcript of
`
`the hearing is included in the record (Paper 36 (“Tr.”)).
`
`For the reasons that follow, we determine that Petitioner has shown by
`
`a preponderance of the evidence that claims 1–24 of the ’416 patent are
`
`unpatentable.
`
`
`
`
`1 Petitioner indicates that IBG LLC, Interactive Brokers LLC, TradeStation
`Group, Inc., TradeStation Securities, Inc., TradeStation Technologies, Inc.,
`and IBFX, Inc. are real parties-in-interest. Pet. 2.
`2 See § 18(a) of the Leahy-Smith America Invents Act, Pub. L. No. 112-29,
`2
`
`
`
`

`

`CBM2016-00087
`Patent 7,412,416 B2
`
`
`A. Related Matters
`
`The ’416 patent is involved in the following lawsuit: TradeStation
`
`Technologies v. Trading Technologies International, Inc., No. 0:16-cv-60296
`
`(S.D. Fl.). Pet. 2. In compliance with 37 C.F.R. § 42.302(a), Petitioner
`
`certifies, and it is not disputed, that Petitioner has been sued for infringement
`
`of the ’416 patent. Id. at 3–4. On this record, we determine that Petitioner
`
`may petition for review of the ’416 patent pursuant to 37 C.F.R. § 42.302(a).
`
`B. The ’416 Patent
`
`The Specification of the ’416 patent describes a graphical user
`
`interface (“GUI”) for an electronic trading system that allows a remote trader
`
`to view trends for an item, which assists the trader to anticipate demand for
`
`an item. Ex. 1001, 1:14–16, 2:8–11. Figure 3A of the ’416 patent is
`
`reproduced below.
`
`
`
`
`
`
`125 Stat. 284, 329 (2011) (“AIA”).
`
`
`
`3
`
`

`

`CBM2016-00087
`Patent 7,412,416 B2
`
`
`Figure 3A depictes a GUI that includes: 1) value axis 332, which
`
`indicates the value at which an item is being traded, 2) multiple offer icons
`
`304(1)–304(8), and 3) multiple bid icons 300(1)–300(8). Id. at 6:3–10, 6:44–
`
`54. The offer icons and the bid icons represent orders in the marketplace. Id.
`
`A trader can place an order by dragging-and-dropping an order icon
`
`(e.g., bid order icon 320) to a desired location on the chart, triggering a pop-
`
`up window (e.g., Fig. 3D) that allows the trader to send the order. Id. at
`
`8:28–56, Fig. 3D.
`
`C. Illustrative Claims
`
`Claims 1 and 14 of the ’416 patent are the only independent claims and
`
`are reproduced below.
`
` A method for facilitating trading and displaying
`information regarding the buying and selling of a good, the
`method comprising:
`
`1.
`
`
`
`displaying a chart on a graphical user interface
`comprising a vertical axis of price values and a horizontal
`axis of time;
`
`displaying indicators representing historical trading data
`for the good at locations along the vertical axis of price
`values and the horizontal axis of time;
`
`providing a plurality of locations on the graphical user
`interface to place an order icon with a pointer of a user
`input device, each location corresponding to a particular
`price value along the vertical axis of price values;
`
`placing an order icon for a particular quantity of the good
`at a specific location of the plurality of locations along the
`vertical axis of price values with a pointer of an input
`
`
`
`4
`
`

`

`CBM2016-00087
`Patent 7,412,416 B2
`
`
`device, wherein the specific location on which the order
`icon is placed corresponds to a particular price value;
`
`generating an order to buy or sell the particular quantity
`of the good at the particular price value responsive to
`placing the order icon at the specific location; and
`
`sending the order to an electronic trading system, wherein
`the order is for the particular quantity of the good and at
`the particular price value determined based on the
`location where the order icon was placed.
`
`
`
`14. A computer readable medium, for an electronic exchange
`in which a good is bought and sold responsive to orders
`submitted by traders, each order specifying a value and
`quantity for the order, the computer readable medium
`containing a program containing instructions to cause a
`processor to perform the following steps:
`
`
`
`displaying a chart on a graphical user interface
`comprising a vertical axis of price values and a horizontal
`axis of time;
`
`displaying indicators representing historical trading data
`for the good at locations along the vertical axis of price
`values and the horizontal axis of time;
`
`providing a plurality of locations on the graphical user
`interface to place an order icon with a pointer of a user
`input device, each location corresponding to a particular
`price value along the vertical axis of price values;
`
`placing an order icon for a particular quantity of the good
`at a specific location of the plurality of locations along the
`vertical axis of price values with a pointer of an input
`device, wherein the specific location on which the order
`
`
`
`5
`
`

`

`CBM2016-00087
`Patent 7,412,416 B2
`
`
`icon is placed corresponds to a particular price value;
`
`generating an order to buy or sell the particular quantity
`of the good at the particular price value responsive to
`placing the order icon at the specific location; and
`
`sending the order to an electronic trading system, wherein
`the order is for the particular quantity of the good and at
`the particular price value determined based on the
`location where the order icon was placed.
`
`
`
`D. Grounds of Unpatentability
`
`We instituted review of claims 1–24 on the following grounds:
`
`References
`
`Basis
`
`Challenged Claims
`
`n/a
`
`n/a
`
`
`
`§ 101
`
`§ 112 ¶ 4
`
`1–24
`
`2 and 15
`
`E. Covered Business Method Patent
`
`A covered business method patent is “a patent that claims a method or
`
`corresponding apparatus for performing data processing or other operations
`
`used in the practice, administration, or management of a financial product or
`
`service, except that the term does not include patents for technological
`
`inventions.” Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125
`
`Stat. 284, 329 (2011) (“AIA”) § 18(d)(1); see 37 C.F.R. § 42.302. To
`
`determine whether a patent is for a technological invention, we consider
`
`“whether the claimed subject matter as a whole recites a technological feature
`
`that is novel and unobvious over the prior art; and solves a technical problem
`
`using a technical solution.” 37 C.F.R. § 42.301(b). For purposes of
`
`
`
`6
`
`

`

`CBM2016-00087
`Patent 7,412,416 B2
`
`determining whether a patent is eligible for a covered business method patent
`
`review, the focus is on the claims. Secure Axcess, LLC v. PNC Bank N.A.,
`
`848 F.3d 1370, 1379 (Fed. Cir. 2017) (“It is the claims, in the traditional
`
`patent law sense, properly understood in light of the written description, that
`
`identifies a CBM patent.”). One claim directed to a CBM is sufficient to
`
`render the patent eligible for CBM patent review. See id. at 1381 (“[T]he
`
`statutory definition of a CBM patent requires that the patent have a claim that
`
`contains, however phrased, a financial activity element.”).
`
`In our Institution Decision, we determined that Petitioner had shown
`
`that the ’416 patent is a CBM patent. Dec. 6–9. Patent Owner urges us to
`
`reconsider our determination and find that the ’416 patent is not eligible for
`
`CBM patent review. See PO Resp. 68–76. We are not persuaded to change
`
`our original determination.
`
`1. Method or Corresponding Apparatus for Performing Data
`Processing or Other Operations Used in the Practice,
`Administration or Management of a Financial Product or Service
`
`The statute defines a “covered business method patent” as “[a] patent
`
`that claims a method or corresponding apparatus for performing data
`
`processing or other operations used in the practice, administration, or
`
`management of a financial product or service.” AIA § 18(d)(1); see 37
`
`C.F.R. § 42.301(a). A covered business method patent can be broadly
`
`interpreted to encompass patents claiming activities that are financial in
`
`nature. Transitional Program for Covered Business Method Patents—
`
`Definitions of Covered Business Method Patent and Technological
`
`Invention, 77 Fed. Reg. 48734, 48735 (Aug. 14, 2012); Blue Calypso, LLC v.
`7
`
`
`
`

`

`CBM2016-00087
`Patent 7,412,416 B2
`
`Groupon, Inc., 815 F.3d 1331, 1338–41 (Fed. Cir. 2016) (determining that a
`
`patent was a covered business method patent because it claimed activities that
`
`are financial in nature); Unwired Planet, LLC v. Google, Inc., 841 F.3d 1376,
`
`n.5 (Fed. Cir. 2016) (stating that “we endorsed the ‘financial in nature’
`
`portion of the standard as consistent with the statutory definition of ‘covered
`
`business method patent’ in Blue Calypso”), Versata Dev. Grp., Inc. v. SAP
`
`America, Inc., 793 F.3d 1306, 1324–25 (Fed. Cir. 2015) (“[The statute] on its
`
`face covers a wide range of finance-related activities.”).
`
`A patent need have only one claim directed to a covered business
`
`method to be eligible for review. 77 Fed. Reg. at 48736 (Response to
`
`Comment 8). We take claim 1 as representative.
`
`Petitioner argues that the ’416 patent is a patent that claims a method
`
`for performing data processing or other operations used in the practice,
`
`administration, or management of a financial product or service. Pet. 4–6.
`
`Petitioner argues that claim 1 expressly requires the performance of a
`
`financial transaction by its recitation of facilitating trading and displaying
`
`information regarding the buying and selling of a good, including the steps
`
`of: (1) displaying a chart on a GUI comprising a vertical axis of price values
`
`and a horizontal axis of time; (2) displaying indicators representing historical
`
`trading data for the good on the chart; (3) providing a plurality of locations
`
`on the GUI to place an order icon; (4) placing an order icon for a particular
`
`quantity of the good at a specific location along the vertical axis; (5)
`
`generating an order to buy or sell the particular quantity of the good; and (6)
`
`sending the order to an electronic trading system. Id. at 5.
`
`
`
`8
`
`

`

`CBM2016-00087
`Patent 7,412,416 B2
`
`
`Notwithstanding Patent Owner’s arguments, which we address below,
`
`we are persuaded by Petitioner’s showing, and find that the ’416 patent is
`
`directed to a method for performing data processing or other operations used
`
`in the practice, administration, or management of a financial service. Here,
`
`Petitioner asserts, and we agree, that the claim 1 method steps for displaying
`
`historical trading data, placing an order icon for a particular quantity of a
`
`good at a location along a price axis, and sending an order to an electronic
`
`trading system are each financial activities. Pet. 5.
`
`Patent Owner argues that the Petition is silent as to whether the ’416
`
`patent is directed to performing “data processing” or “other operations,” and
`
`that Petitioner’s showing focuses solely on whether the ’416 patent is
`
`financial in nature. PO Resp. 69–70. We disagree with Patent Owner.
`
`Petitioner does address whether the patent is directed to data processing or
`
`other operations. See, e.g., Pet. 6 (the ’416 patent claims are directed to a
`
`method “for facilitating trading in an electronic trading system”) (emphasis
`
`added). The definition for a covered business method patent is “a patent that
`
`claims a method or corresponding apparatus for performing data processing
`
`or other operations used in the practice, administration, or management of a
`
`financial product or service . . . .” 37 C.F.R. § 42.301(a) (emphasis added).
`
`Petitioner relies on the “other operations” part of the definition to make its
`
`case. This is exemplified, for example, in Petitioner’s showing that the
`
`preamble recites a method for facilitating trading and displaying information
`
`regarding the buying and selling of a good, which would be “other
`
`operations” used in the practice of a financial service (trading on an
`
`exchange).
`
`
`
`9
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`

`

`CBM2016-00087
`Patent 7,412,416 B2
`
`
`Patent Owner also argues that the ’416 claims are not directed to “data
`
`processing.” PO Resp. 70–72. As explained immediately above, however,
`
`the definition for a covered business method patent is not limited to a patent
`
`that claims a method for performing data processing. In any event, we are
`
`not persuaded by Patent Owner’s arguments, because such arguments are
`
`premised on the assumption that “data processing” should be interpreted
`
`according to the definition of “data processing” found in the glossary for
`
`class 705 of the United States Patent Classification System, which is a
`
`“systematic operation on data in accordance with a set of rules which results
`
`in a significant change in data.” Id. at 71 (citing Ex. 2121, 4). Patent Owner
`
`does not sufficiently explain why this definition is controlling as opposed to
`
`the plain meaning of data processing, which includes a computer performing
`
`operations on data. See, e.g., Pet. Reply 24–25 (citing Ex. 1066; Ex. 1067).
`
`Claim 1 is directed to, for example, “displaying a chart on a graphical
`
`user interface,” which must be done with a computer performing operations
`
`on data in order to display the data as a chart on a graphical user interface.
`
`The ’416 patent discloses processing market information for display on a
`
`client terminal. See e.g., Ex. 1001, 5:6–15 (“[C]lient terminals 104 generate
`
`icons for bid and offer orders (called bid and offer icons), historical charts
`
`and trader icons, and determine the placement of bid and offer icons and
`
`trader icons responsive to the information received from the transaction
`
`server 200.”) For these reasons, we also determine that the ’416 patent
`
`claims a method for performing data processing.
`
`In addition, Patent Owner argues that the legislative history of the AIA
`
`confirms that the claimed invention is not a covered business method because
`10
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`
`
`

`

`CBM2016-00087
`Patent 7,412,416 B2
`
`“[T]he ’416 patent, which claims the structure, makeup, and functionality of
`
`a GUI tool (i.e., not remotely close to a business method) is not that type of
`
`patent.” PO Resp. 76–79 (citing Ex. 2126; Ex. 2127).
`
`Although the legislative history includes certain statements that certain
`
`novel software tools and graphical user interfaces that are used by the
`
`electronic trading industry worker are not the target of § 18 of the AIA (see
`
`Ex. 2126, S5428, S5433), the language of the AIA, as passed, does not
`
`include an exemption for user interfaces for commodities trading from
`
`covered business method patent review. Indeed, “the legislative debate
`
`concerning the scope of a CBM review includes statements from more than a
`
`single senator. It includes inconsistent views . . . .” Unwired Planet, 841
`
`F.3d at 1381. For example, in contrast to the statements cited by Patent
`
`Owner, the legislative history also indicates that “selling and trading financial
`
`instruments and other securities” is intended to be within the scope of
`
`covered business method patent review. See Ex. 2126, S5432 (statements of
`
`Sen. Schumer); see also id. at S5436–37 (statements of Sen. Schumer
`
`expressing concern about patents claiming “double click”), Ex. 2127, S1364
`
`(Mar. 8, 2011) (statements of Sen. Schumer explaining that “method or
`
`corresponding apparatus” encompasses “graphical user interface claims” and
`
`“sets of instructions on storage media claims”). “[T]he legislative history
`
`cannot supplant the statutory definition actually adopted. . . . The
`
`authoritative statement of the Board’s authority to conduct a CBM review is
`
`the text of the statute.” Unwired Planet, 841 F.3d at 1381. Each claimed
`
`invention has to be evaluated individually to determine if it is eligible for a
`
`CBM patent review. A determination of whether a patent is eligible for a
`11
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`
`
`

`

`CBM2016-00087
`Patent 7,412,416 B2
`
`CBM patent review under the statute is made on a case-by-case basis. 37
`
`C.F.R. § 42.301(b).
`
`For the reasons stated above, we are persuaded that the ’416 patent
`
`“claims a method or corresponding apparatus for performing data processing
`
`or other operations used in the practice, administration, or management of a
`
`financial product or service” and meets that requirement of § 18(d)(1) of the
`
`AIA.
`
`2.
`
`Exclusion for Technological Inventions
`
`Even if a patent includes claims that would otherwise be eligible for
`
`treatment as a covered business method, review of the patent is precluded if
`
`the claims cover only “technological invention[s],” as defined by 37 C.F.R.
`
`§42.301(b). The definition of “covered business method patent” in
`
`§ 18(d)(1) of the AIA does not include patents for “technological
`
`inventions.” To determine whether a patent is for a technological invention,
`
`we consider the following: “whether the claimed subject matter as a whole
`
`[(1)] recites a technological feature that is novel and unobvious over the prior
`
`art; and [(2)] solves a technical problem using a technical solution.” 37
`
`C.F.R. § 42.301(b). Both prongs must be satisfied in order for the patent to
`
`fall within the exception for a technological invention. See Versata, 793 F.3d
`
`at 1326–27; Apple Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240 (Fed. Cir.
`
`2016). The following claim drafting techniques, for example, typically do
`
`not render a patent a “technological invention”:
`
`(a) Mere recitation of known technologies, such as computer
`hardware, communication or computer networks, software,
`memory, computer-readable storage medium, scanners, display
`12
`
`
`
`

`

`CBM2016-00087
`Patent 7,412,416 B2
`
`
`devices or databases, or specialized machines, such as an ATM or
`point of sale device.
`
`(b) Reciting the use of known prior art technology to accomplish a
`process or method, even if that process or method is novel and
`non-obvious.
`
`(c) Combining prior art structures to achieve the normal, expected, or
`predictable result of that combination.
`
`
`
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,763–64
`
`(Aug. 14, 2012). The Federal Circuit has held that a claim does not include a
`
`“technological feature” if its “elements are nothing more than general
`
`computer system components used to carry out the claimed process.” Blue
`
`Calypso, 815 F.3d at 1341; see also Versata, 793 F.3d at 1327 (“the presence
`
`of a general purpose computer to facilitate operations through uninventive
`
`steps does not change the fundamental character of an invention”).
`
`Petitioner asserts that the ’416 patent claims fail to recite any
`
`technological feature that is novel and unobvious over the prior art, and do
`
`not solve a technical problem with a technical solution. Pet. 6–10. In
`
`particular, Petitioner contends that independent claims 1 and 14 recite trading
`
`software that is implemented using conventional computer hardware, such as
`
`personal computers, servers and networks, and do not include a technological
`
`feature or implement a technological solution. Id. at 7. Petitioner further
`
`argues that the ’416 patent itself describes that the computing device used to
`
`display the graphical user interface and that performs the claimed method and
`
`functions need not be any specific hardware, but can be “personal computers,
`
`terminals as part of a network, or any other computing device.” Id. at 8
`
`
`
`13
`
`

`

`CBM2016-00087
`Patent 7,412,416 B2
`
`(quoting Ex. 1001, 4:34–36). Petitioner also argues that electronic trading
`
`was well known as of the filing date, going back as far as 1971 when
`
`NASDAQ set up the first electronic stock exchange. Id. at 8 (citing Ex.
`
`1026).
`
`We agree with Petitioner that at least claim 1 is directed to well-
`
`understood, routine, and conventional steps of facilitating trading and
`
`displaying information regarding the buying and selling of a good to a trader,
`
`who uses the information to facilitate trading a commodity. For example, the
`
`“BACKGROUND OF THE INVENTION” section of the ’416 patent
`
`explains that it was well known for an electronic exchange to record all
`
`transactions for a particular item and to replay or post to the individual
`
`traders outstanding bids with the highest values and outstanding offers with
`
`the lowest value, along with a quantity specified for each order, to facilitate
`
`trading a commodity. Ex. 1001, 1:34–41. There is no indication in the ’416
`
`patent that the inventors invented gathering market information, displaying it
`
`to a trader, and using the information to facilitate trading a commodity. The
`
`use of a computer to perform these functions also was known in the art at the
`
`time of the invention (see, e.g., Ex. 1026), and the ’416 patent does not claim
`
`any improvement of a computing device.
`
`Petitioner argues that the claimed subject matter does not solve a
`
`technical problem using a technical solution, because the problem is a
`
`business, financial, or trader problem and the solution is functional, such as
`
`rearranging available market data and providing locations to place a trade on
`
`a GUI. Pet. 9–10. We agree with Petitioner that the problem noted in the
`
`Specification of the ’416 patent is not a technical one. The ’416 patent
`14
`
`
`
`

`

`CBM2016-00087
`Patent 7,412,416 B2
`
`Specification highlights the problem and importance of informing a trader of
`
`certain stock market events so that the trader may use such information to
`
`facilitate trading a commodity. Ex. 1001, 1:27–33, 2:8–11. Informing a
`
`trader of certain stock market trends or events is an activity that is financial
`
`in nature.
`
`Patent Owner argues that the ’416 patent claims a technological GUI
`
`tool that improves upon prior GUIs using a particular combination of GUI
`
`features and functionality (the particular makeup, structure and features of a
`
`GUI tool), and, thus, falls under the technological exception. Id. at 72–74.
`
`Patent Owner, however, does not tie its arguments to the actual claim
`
`language to explain which of the steps of the broad method claim 1, for
`
`example, recite an improved technological GUI tool or how the claimed steps
`
`solve a technical problem. We do not find that claim 1 solves a technical
`
`problem. Rather, claim 1 recites method steps of receiving, displaying, and
`
`updating market data, and generating an order to buy or sell a good based on
`
`that information.
`
`Patent Owner argues that Technologies International, Inc. v. CQG,
`
`Inc., 675 Fed. Appx. 1001 (Fed. Cir. 2017) (“CQG”) dictates that the ’416
`
`patent claims cover technological inventions (PO Resp. 75–76). CQG
`
`involved U.S. Patent Nos. 6,772,132 and 6,677,340. The Federal Circuit
`
`determined that the claims of those patents are patent eligible under 35
`
`U.S.C. § 101. The claims before us, however, are broader than the claims
`
`involved in CQG. The Specification of the ’416 patent is different from the
`
`specification of the patents involved in CQG. Thus, comparing the claims of
`
`the patents involved in CQG is not particularly helpful here. Moreover, the
`15
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`
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`

`

`CBM2016-00087
`Patent 7,412,416 B2
`
`CQG decision relied upon a feature not required by claim 1 of the ’416
`
`patent— a static price axis. Although claim 1 of the ’416 patent requires a
`
`vertical axis of price and a horizontal axis of time, the claim does not require
`
`a static price axis.
`
`For all of the foregoing reasons, the subject matter of the claims is not
`
`a “technological invention” under 37 C.F.R. § 42.301(b), and the ’416 patent
`
`is eligible for a covered business method patent review.
`
`II. ANALYSIS
`
`A. Claim Interpretation
`
`In a covered business method patent review, claim terms in an
`
`unexpired patent are given their broadest reasonable construction in light of
`
`the specification of the patent in which they appear. 37 C.F.R. § 42.300(b).
`
`Under the broadest reasonable construction standard, claim terms are given
`
`their ordinary and customary meaning, as would be understood by one of
`
`ordinary skill in the art in the context of the entire disclosure. In re
`
`Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
`
`For purposes of this decision, we need not interpret any limitations of
`
`the claims expressly.
`
`B. The Level of Ordinary Skill in the Art
`
`Notwithstanding the parties’ submissions of the level of ordinary skill
`
`in the art, we find that the level of ordinary skill in the art is reflected by the
`
`prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir.
`
`2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich,
`
`579 F.2d 86, 91 (CCPA 1978).
`
`
`
`16
`
`

`

`CBM2016-00087
`Patent 7,412,416 B2
`
`
`C. 35 U.S.C. § 101 Asserted Ground of Unpatentability
`
`Petitioner contends that claims 1–24 of the ’416 patent are not patent
`
`eligible under 35 U.S.C. § 101. Pet. 20–41. Patent Owner opposes. PO
`
`Resp. 6–68.
`
`Under 35 U.S.C. § 101, we must first identify whether an invention fits
`
`within one of the four statutorily provided categories of patent-eligibility:
`
`“processes, machines, manufactures, and compositions of matter.”
`
`Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 713–14 (Fed. Cir. 2014).
`
`Initially, we note that Petitioner asserts that claims 14–22 are “broad
`
`enough to encompass a transitory, propagating signal that is encoded, which
`
`is not eligible for patenting.” Pet. at 42 (citing In re Nuijten, 500 F.3d 1346,
`
`1357 (Fed. Cir. 2007)). Independent claim 14 recites a “computer readable
`
`medium containing a program containing instructions to cause a processor to
`
`perform the following steps.” Petitioner contends that the Specification does
`
`not define “computer readable medium” or provide examples of a “computer
`
`readable medium.” Id. at 16. Petitioner further argues that “[u]nder the
`
`broadest reasonable interpretation (‘BRI’), the scope of this term is broad
`
`enough to encompass a transitory, propagating signal that is encoded” and
`
`that the additional language of “containing a program containing instructions
`
`to cause a processor to perform the following steps” does not limit the
`
`medium to non-transitory media. Pet. 16–17 (citing In re Nuijten, 550 F.3d
`
`1346, 1357 (Fed. Cir. 2007)); Pet. Reply 22–23.
`
`In our Institution Decision, we made an initial determination, based on
`
`the limited record before us at that time, that the broadest reasonable
`
`interpretation of “computer readable medium” in the context of claim 14
`
`
`
`17
`
`

`

`CBM2016-00087
`Patent 7,412,416 B2
`
`“encompasses a transitory, propagating signal that is encoded.” Inst. Dec.
`
`11. Patent Owner argues, among other things, that Petitioner fails to
`
`establish that the claims cover signals, because there is nothing in the
`
`Specification of the ’416 patent that allows the computer readable medium to
`
`be read as being a signal or other transitory medium, and that a person having
`
`ordinary skill in the art would have understood that a computer readable
`
`medium containing a program would not be a signal or other transitory
`
`medium. PO Resp. 66–67 (citing Ex. 2168 ¶ 45; Ex. 2169 ¶ 64). Petitioner
`
`responds to Patent Owner’s contentions by asserting that “[t]he Board should
`
`follow the precedential decision in Ex Parte Mewherter and hold that claims
`
`14–22, which recite a term of art in patent law, encompass transitory signals
`
`and are thus non-statutory.” Pet. Reply 22. Petitioner further argues that
`
`Patent Owner’s expert, Christopher Thomas, admitted that “computer
`
`readable medium” is “a patent term.” Id. at 22–23.
`
`Petitioner’s response is unhelpful. For example, in its Reply,
`
`Petitioner fails to direct us to evidence to rebut Patent Owner’s contentions
`
`regarding how one skilled in the art would have understood the disputed
`
`phrase at the time of the invention.
`
`Accordingly, on this record, which is absent any further evidence or
`
`meaningful argument from Petitioner, we are not persuaded that at the time
`
`of the invention one skilled in the art would have understood “computer
`
`readable medium containing a program containing instructions to cause a
`
`processor to perform the following steps,” as encompassing transitory,
`
`propagating signals.
`
`
`
`18
`
`

`

`CBM2016-00087
`Patent 7,412,416 B2
`
`
`There is no dispute that the remaining claims fit within one of the four
`
`statutorily provided categories of patent-eligibility. Claim 1, for example, is
`
`directed to a process.
`
`1. Eligibility
`
`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.
`
`The Supreme Court recognizes three exceptions to these statutory
`
`classes: laws of nature, natural phenomena, and abstract ideas. Alice Corp.
`
`Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347, 2354 (2014); Mayo
`
`Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1293
`
`(2012). Although an abstract idea by itself is not patentable, a practical
`
`application of an abstract idea may be deserving of patent protection. Alice,
`
`134 S. Ct. at 2355. We must “consider the elements of each claim both
`
`individually and ‘as an ordered combination’ to determine whether the
`
`additional elements ‘transform the nature of the claim’ into a patent-eligible
`
`application.” Id. (citing Mayo, 132 S. Ct. at 1298, 1297). The claim must
`
`contain elements or a combination of elements that are “‘sufficient to ensure
`
`that the patent in practice amounts to significantly more than a patent upon
`
`the [abstract idea] itself.’” Id. (citing Mayo, 132 S. Ct. at 1294).
`
`2. Abstract Idea
`
`Petitioner argues that the claims encompass an abstract idea because
`
`they are directed to a fundamental economic practice. Pet. 22–25. In
`
`particular, Petitioner argues that the claims’ recitation of displaying a chart
`19
`
`
`
`

`

`CBM2016-00087
`Patent 7,412,416 B2
`
`with vertical price axis and a horizontal time axis, displaying indicators
`
`representing historical trading data along those axes, placing an order icon at
`
`a particular location of a plurality of locations, and generating and sending
`
`the order to an electronic trading system, is nothing more than the abstract,
`
`fundamental economic practice of graphing (or displaying) trading data to
`
`assist a trader to place an order. Id. Petitioner further argues that the abstract
`
`idea is old, well-known, and prevalent. Id. at 23–24 (citing Ex. 1033, 8–15).
`
` Additionally, Petitioner contends that the claims are directed to solving a
`
`business problem (anticipating market movement) and can be performed
`
`using pen and paper, or using only human mental steps, further indicating
`
`that

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