Trials@uspto.gov
`Tel: 571-272-7822
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` Paper 11
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` Entered: December 1, 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 2016-00087
`Patent 7,412,416 B2
`_______________
`
`
`Before SALLY C. MEDLEY, MEREDITH C. PETRAVICK, and
`JEREMY M. PLENZLER, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Covered Business Method Patent Review
`37 C.F.R. § 42.208
`
`
`
`
`
`
`
`Tel: 571-272-7822
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`
`
`
`
`
`
`
`
`
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` Paper 11
`
`
` Entered: December 1, 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 2016-00087
`Patent 7,412,416 B2
`_______________
`
`
`Before SALLY C. MEDLEY, MEREDITH C. PETRAVICK, and
`JEREMY M. PLENZLER, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Covered Business Method Patent Review
`37 C.F.R. § 42.208
`
`
`
`
`
`
`
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`CBM2016-00087
`Patent 7,412,416 B2
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`
`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. Under 35
`U.S.C. § 324(a), a covered business method patent review may not be
`instituted unless the information presented in the petition, if unrebutted,
`“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 1–24 of the ’416
`patent.
`
`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 that it has been sued for infringement of the ’416 patent.
`Id. at 3–4.
`
`
`
`
`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
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`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.
`
`
`
`
`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-
`
`125 Stat. 284, 329 (2011) (“AIA”).
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`up window (e.g., Fig. 3D) that allows the trader to send the order. Id. at
`8:28–56; Figs. 3D.
`
`C. Illustrative Claims
`Claims 1 and 14 of the ’416 patent are the only independent claims
`and are reproduced below.
`1.
` A method for facilitating trading and displaying
`information regarding the buying and selling of a good, the
`method comprising:
`
`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
`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
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`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
`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
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`on the location where the order icon was placed.
`
`
`
`D. Asserted Grounds of Unpatentability
`Petitioner contends that claims 1–24 of the ’416 patent are
`unpatentable based on the following grounds:
`Challenged Claims
`References
`Basis
`1–24
`n/a
`§ 101
`1–24
`TSE3, Bay4, and Subler5
`§ 103
`2 and 15
`n/a
`§ 112 ¶ 4
`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
`
`
`3 TOKYO STOCK EXCHANGE OPERATION SYSTEM DIVISION, FUTURES/OPTION
`PURCHASING SYSTEM TRADING TERMINAL OPERATION GUIDE (1998) (Ex.
`1016) (“TSE”).
`4 U.S. Patent No. 5,347,452 (issued Sept. 13, 1994) (Ex. 1042) (“Bay”).
`5 U.S. Patent No. 5,646,992 (issued July 8, 1997) (Ex. 1020) (“Subler”).
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`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
`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.
`
`1.
`
`Financial Product or Service
`
`Petitioner has shown 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.
`
`
`Based on the record before us, we determine that Petitioner has
`demonstrated sufficiently that at least claim 1 of the ’416 patent is directed
`to a method for performing data processing used in the practice,
`administration, or management of a financial product or service. In
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`particular, at least claim 1 is directed to facilitating trading in an electronic
`trading system, which is a financial service. Accordingly, the ’416 patent
`satisfies the “financial product or service” component of the definition for a
`covered business method patent under § 18(d)(1) of the AIA.
`
`2.
`
`Exclusion for Technological Inventions
`
`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). 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. 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 (quoting Ex. 1001, 4:34–
`36).
`
`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
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`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, 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
`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. However,
`informing a trader of certain stock market trends or events is more of a
`financial problem than a technical problem.
`For all of the foregoing reasons, the subject matter of at least claim 1
`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.
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`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).
`Independent claim 14 recites a “computer readable medium.”
`Petitioner explains that the Specification does not define “computer readable
`medium” or provide examples of a “computer readable medium.” Id. at 16.
`Petitioner contends 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.” Pet. 16–17.
`Claim 14 further recites the computer readable medium “containing a
`program containing instructions to cause a processor to perform the
`following steps.” Petitioner argues that the addition of such language does
`not limit the medium to non-transitory media. Id. at 17.
`
`Based on the record before us, we agree with Petitioner that the
`additional language of the computer readable medium containing a program
`does not limit the medium to non-transitory media. See Ex parte Mewherter,
`107 USPQ2d 1857, 1859–60 (PTAB 2013) (precedential) (determining that
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`a computer readable storage medium having a computer program stored
`thereon, encompasses transitory propagating signals).
`On this record, we determine that “computer readable medium”
`encompasses a transitory, propagating signal that is encoded. For purposes
`of this decision, we need not further interpret the language of any of the
`claims.
`
`B. 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. 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)). As indicated above, we determine that “computer
`readable medium” as claimed in claims 14–22 encompasses transitory,
`propagating signals. Transitory, propagating signals are not covered by the
`four statutory classes of subject matter of 35 U.S.C. § 101. In re Nuijten,
`500 F.3d at 1352.
`There is no dispute that the remaining claims fit within one of the four
`statutorily provided categories of patent-eligibility. Even if claims 14–22
`were to fit within one of the categories of patent-eligibility, we are
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`persuaded that they do not recite patent-eligible subject matter for the
`reasons that follow.
`1. Abstract Idea
`Section 101 “contains an important implicit exception: Laws of
`nature, natural phenomena, and abstract ideas are not patentable.” Alice
`Corp. Pty. Ltd. v. CLS Bank Int’l., 134 S. Ct. 2347, 2354 (2014) (citing
`Assoc. for Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107,
`2116 (2013) (internal quotation marks and brackets omitted)). In Alice, the
`Supreme Court reiterated the framework set forth previously in Mayo
`Collaborative Services v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1293
`(2012) “for distinguishing patents that claim laws of nature, natural
`phenomena, and abstract ideas from those that claim patent-eligible
`applications of those concepts.” Alice, 134 S. Ct. at 2355. The first step in
`the analysis is to “determine whether the claims at issue are directed to one
`of those patent-ineligible concepts.” Id.
`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
`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. In support of its contentions that the
`claims are directed to an abstract idea, Petitioner further contends that the
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`claims can be performed using pen and paper, or using only human mental
`steps. Id. at 25–27. We are persuaded by Petitioner’s showing that the
`challenged claims encompass an abstract idea.
`2. Inventive Concept
`Next we turn to “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.” Alice,
`134 S. Ct. at 2355; Mayo, 132 S. Ct. at 1297–98. The additional elements
`must be more than “well-understood, routine, conventional activity.” Mayo,
`132 S. Ct. at 1298.
`Petitioner argues that the claims do not recite an inventive concept.
`Pet. 27–35. Petitioner argues that the claims recite insignificant and
`conventional extra-solution activities of data gathering, drag-and-drop,
`sending orders, and arranging data and locations to place a trade on a display
`using conventional well known components (a computer device and input
`device). Id. Petitioner also argues that the claims are not rooted in computer
`technology. Id. at 35–40.
`The Specification of the ’416 patent does not disclose a particular way
`for data gathering, drag-and-drop, sending orders, and arranging data and
`locations to place a trade on a display, nor does the Specification provide or
`disclose any particular algorithms or rules for performing the recited
`functions of claims 1 and 14. All of the method steps of claims 1 and 14 are
`performed on a generic computer using known algorithms, as the ’416 patent
`itself acknowledges that the computing device used to display the graphical
`user interface and that performs the claimed method and functions need not
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`be any specific hardware, but can be “personal computers, terminals as part
`of a network, or any other computing device.” Ex. 1001, 4:34–36. Based on
`the record before us, the functional steps of data gathering, drag-and-drop,
`sending orders, and arranging data and locations to place a trade on a
`display, were not novel or non-obvious, but rather known in the art at the
`time of the invention. See, e.g., Pet. 29.
`Unlike the claimed combination of elements in DDR Holdings, LLC v.
`Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014), but more like the claimed
`combination of elements in Electric Power Group, LLC v.
`Alstom S.A., No. 2015-1778, 2016 WL 4073318, at *3 (Fed. Cir. Aug. 1,
`2016), claims 1 and 14 do not require an inventive device or technique for
`data gathering, drag-and-drop, sending orders, and arranging data and
`locations to place a trade on a display. On this record, we are not persuaded
`that the combination of the claimed elements transforms the nature of the
`claims into a patent-eligible application.
`Petitioner contends that the additional elements recited by dependent
`claims 2–13 and 15–24 do not add significantly more to the abstract idea so
`as to render the claims patent-eligible. Pet. 32–35. On this record, we
`determine that Petitioner demonstrates sufficiently that dependent claims 2–
`13 and 15–24 are more likely than not patent ineligible under
`35 U.S.C. § 101.
`Based on the record before us, we determine that Petitioner has
`demonstrated that claims 1–24 are more likely than not patent ineligible
`under 35 U.S.C. § 101.
`
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`C. Obviousness of Claims 1–24 over TSE, Bay, and Subler
`
`Petitioner contends that claims 1–24 are unpatentable under 35 U.S.C.
`§ 103 over TSE, Bay, and Subler. To support its contentions, Petitioner
`provides explanations as to how the prior art meets each claim limitation.
`Pet. 42–85. Petitioner also cites Mr. Román’s declaration for support. See
`Ex. 1012 ¶¶ 71–168.
`
`TSE
`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. Ex. 1016, 6–13, 35. A
`trading terminal displays a GUI for depicting market information on a
`Board/Quotation Screen (see id. at 107). The Figure on page 107 of TSE is
`reproduced below.
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`Figure depicting the Board/Quotation Screen
`
`
`
`The Board/Quotation Screen includes a central order price at
`column 11—a price axis. Id. at 111. To the left and right of order price
`column 11, at a location corresponding to price, are bid and offer indicators
`consisting of numbers representing the quantity of orders in respective
`columns 12, 13, and 14. Id. at 112. The Board/Quotation screen is
`automatically updated with new bid and offer information from a central
`system every three seconds. Id. at 91. Column 18 depicts an “O” next to the
`opening price and opening price time, an “H” next to the high price and high
`price time, an “L” next to the low price and low price time, a “P” next to the
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`current price and current price time, a “C” next to the day-to-day change,
`and a “V” next to the current day’s transaction volume. Id. at 113.
`TSE describes a user entering an order by double-clicking at a
`location along the price axis, which automatically displays a pop-up window
`displaying the selected price. Id. at 134, 137. The figure on page 137 of
`TSE is reproduced below.
`
`
`The figure depicts the New Order Input Window Display pop-up
`
`window. Certain information, such as price, is automatically set based upon
`the double click position. Id. at 137, 146. Order volume or quantity can be
`set by entering a number in the corresponding field on the New Order Input
`Window Display. Id. at 142. Clicking the send button sends an order to the
`exchange. Id. at 143. The Board/Quotation Screen will be updated to
`display the new order information. See id. at 91.
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`Bay
`Bay describes a method for displaying current trading volume and
`cumulative average trading volume for preselected time intervals in
`conjunction with trading price for each of a plurality of stocks, bonds, and
`commodities. Ex. 1042, 1:10–13. Figure 1, annotated by Petitioner, is
`reproduced below.
`
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`
`Figure 1 of Bay, annotated by Petitioner (Pet. 50)
`Figure 1 shows price and volume information for TBonds over a
`
`period of three days with each volume indicia or marker 12 corresponding to
`a thirty minute time interval. Id. at 2:67–3:2. Each of the time intervals is
`associated with a letter code A-Z in which A indicates the time period from
`8:20 a.m. to 8:50 a.m. at the Chicago Bond of Trade. Id. at 3:2–6. The
`height or amplitude of each of the markers 12 represents an historical
`average volume of trade for the selected commodity during the selected time
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`interval. Id. at 3:6–9. Price information is displayed with volume
`information for each time interval. The price information is preferably
`displayed with opening and closing values along with the range of
`excursion. Id. at 4:26–29, Figs. 1 and 2.
`Subler
`Subler describes a GUI for generating and sending purchase orders for
`
`items to an order taking system. Ex. 1020, 1:31–52. Figure 10 of Subler is
`reproduced below.
`
`
`Figure 10 depicts a GUI having an Order Pad window 344. Id. at
`
`13:23–24. A user can place an order by dragging and dropping one of the
`graphic illustration of orderable items 336 from Viewer window 334 to
`Order Pad window 344. Id. at 13:31–32.
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`CBM2016-00087
`Patent 7,412,416 B2
`
`
`Analysis
`Petitioner contends that TSE teaches or suggests several of the
`
`limitations of claims 1 and 14. Petitioner, however, relies on Bay to teach or
`suggest “displaying a chart on a graphical user interface comprising a
`vertical axis of price values and a horizontal axis of time” and “displaying
`indicators representing historical trading data for the good at locations along
`the vertical axis of price values and the horizontal axis of time.” See, e.g.,
`Pet. 48, 53. Finally, Petitioner relies on Subler for the “placing an order
`icon” limitation found in both claims 1 and 14. See, e.g., Pet. 56.
`For the reasons that follow, Petitioner has not demonstrated that it is
`more likely than not that either claim 1 or claim 14 would have been obvious
`over TSE, Bay, and Subler. We focus our analysis on Petitioner’s proposed
`combination of TSE and Bay for allegedly meeting the “displaying a chart
`on a graphical user interface comprising a vertical axis of price values and a
`horizontal axis of time” limitation recited in both claims 1 and 14. In
`particular, Petitioner relies on TSE for its description of displaying a chart
`on a graphical user interface comprising a vertical axis of price values. Pet.
`48. As acknowledged by Petitioner, TSE also describes displaying price
`with respect to time, but TSE does not display time along a horizontal axis.
`Id.
`
`Petitioner, however, does not rely on Bay solely for its description of
`displaying time along a horizontal axis, e.g., the alleged missing feature
`from TSE. Rather, Petitioner relies on Bay as allegedly describing
`“displaying a chart on a graphical user interface comprising a vertical axis of
`price values and a horizontal axis of time.” Id. Petitioner has not
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`CBM2016-00087
`Patent 7,412,416 B2
`
`demonstrated, however, that Bay describes or teaches displaying a chart on a
`graphical user interface as Petitioner asserts. Importantly, Petitioner fails to
`direct attention to where in Bay there is a description of a graphical user
`interface.6 Bay appears to be directed to displaying a graph on a computer,
`but that graph has not been shown to be a graphical user interface as
`asserted.
`Moreover, it is unclear what from Bay and what from TSE are
`proposed to be combined. In particular, Petitioner asserts that it would have
`been obvious to a person of ordinary skill in the art to combine Bay’s chart
`having a vertical axis of price values and a horizontal axis of time with
`TSE’s GUI. Pet. 52. Facially, this would lead one to believe that the graphs
`and displays of TSE are not proposed as being maintained within the
`combination, but rather that Bay’s chart would substitute for the TSE
`display. We understand from other parts of the Petition, however, that
`Petitioner is relying on TSE for its description of having a vertical axis of
`price values, e.g., retaining TSE’s price axis. See, e.g., Pet. 51, 56, 62.
`Thus, the proposed combination is not clear.
`In any event, even if Petitioner intended to propose adding Bay’s
`entire display to TSE’s display, which already has a vertical price axis,
`Petitioner has not explained sufficiently why it would have been obvious to
`include yet another vertical axis of price values (and a horizontal time axis)
`from Bay. Adding Bay’s entire chart, thereby duplicating data already
`
`
`6 37 C.F.R. § 42.304(b)(4) requires that the petition must specify where each
`element of the claim is found in the prior art. .
`
`
`
`
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`CBM2016-00087
`Patent 7,412,416 B2
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`presented by TSE’s GUI would appear to go against the stated objective of
`the ’416 patent of providing “trading information in an easy to see and
`interpret graphical format.” Ex. 1001, 2:10–11.
`We have reviewed paragraph 87 of Mr. Román’s declaration in
`support of Petitioner’s assertions, but we do not give his testimony much
`weight. In particular, Mr. Román opines that combining TSE and Bay
`would yield a display of trading price and volume information over time and
`that the combination would have been nothing more than combining prior art
`elements according to known methods to yield the predictable and desirable
`result of displaying market data over a period of time in an easy to read and
`interpret fashion. Ex. 1012 ¶ 87. Mr. Román, however, does not explain
`how combining Bay’s vertical and horizontal graph to TSE’s GUI, that
`already has a vertical display of prices and a display of trading information
`over time (albeit not along a horizontal axis), would result in an easy to read
`and interpret fashion, especially for the user of a GUI interface that must
`interact with the GUI in a readily easy manner to facilitate trading. We also
`do not give much weight to Mr. Román’s testimony that Bay provides
`additional motivation to combine, because Bay describes monitoring current
`market conditions and compares those against historical market data in order
`to better anticipate market trends. Id. ¶ 88. TSE, however, also appears to
`us to do the same, and we are left to wonder why a person of ordinary skill
`in the art would have wanted to combine Bay to TSE for the reasons
`provided. The addition of Subler does not make up for the deficiencies of
`Petitioner’s position with respect to the combination of TSE and Bay for
`
`
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`CBM2016-00087
`Patent 7,412,416 B2
`
`“displaying a chart on a graphical user interface comprising a vertical axis of
`price values and a horizontal axis of time.”
`Because Petitioner has failed to account sufficiently for the recitation
`of “displaying a chart on a graphical user interface comprising a vertical axis
`of price values and a horizontal axis of time” required by all of the
`challenged claims, we determine the challenge to be insufficient to
`demonstrate that independent claims 1 and 14, and claims 2–13 and 15–24,
`dependent thereon, are more likely than not unpatentable under 35 U.S.C.
`§ 103 over TSE, Bay, and Subler.
`
`D. 35 U.S.C. § 112 ¶ 4 Asserted Ground of Unpatentability
`
`Petitioner contends that claims 2 and 15 are unpatentable under § 112
`¶ 4 as failing to further limit their respective base claims 1 and 14. Pet. 85.
`The fourth paragraph of § 112 states, “a claim in dependent form shall
`contain a reference to a claim previously set forth and then specify a further
`limitation of the subject matter claimed.” 35 U.S.C. § 112 ¶ 4.
`Each of claims 1 and 14 recites “displaying indicators representing
`historical trading data for the good.” Each of claims 2 and 15 depends from
`claims 1 and 14 respectively and recites “wherein the historical trading data
`is of the good,
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