Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`Paper 56
`Entered: December 7, 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 CBM2016-00090
`Patent 7,725,382 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. § 382(a) and 37 C.F.R. § 42.73
`
`
`
`Tel: 571-272-7822
`
`
`
`Paper 56
`Entered: December 7, 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 CBM2016-00090
`Patent 7,725,382 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. § 382(a) and 37 C.F.R. § 42.73
`
`
`
`
`CBM2016-00090
`Patent 7,725,382 B2
`
`
`I.
`
`INTRODUCTION
`
`Background
`A.
`IBG LLC, Interactive Brokers, LLC, TradeStation Group, Inc., and
`TradeStation Securities, Inc. (collectively, “Petitioner”), filed a Petition
`requesting covered business method patent review of claims 1–32 of U.S.
`Patent No. 7,725,382 B2 (Ex. 1001, “the ’382 patent”). Paper 5 (“Pet.”).
`Trading Technologies International, Inc. (“Patent Owner”) did not file a
`Preliminary Response.
`On December 9, 2016, pursuant to 35 U.S.C. § 324, we instituted a
`covered business method patent review on the following grounds:
`Ground Prior Art
`Challenged Claims
`§ 101
`n/a
`1–32
`§ 103
`TSE1 and Belden2
`1–32
`
`Paper 11 (“Institution Decision” or “Inst. Dec.”).
`Thereafter, Trading Technologies International, Inc. (“Patent Owner”)
`filed a Patent Owner’s Response on February 27, 2017 (Paper 19, “PO.
`Resp.”) and Petitioner filed a Reply (Paper 38, “Pet. Reply”) to Patent
`Owner’s Response.
`Petitioner filed a Motion to Exclude (Paper 43) and Patent Owner
`filed an Opposition (Paper 49) to Patent Owner’s Motion. Petitioner filed a
`Reply (Paper 51) in support of its Motion.
`
`
`1 TOKYO STOCK EXCHANGE OPERATION SYSTEM DIVISION, FUTURES/OPTION
`PURCHASING SYSTEM TRADING TERMINAL OPERATION GUIDE (1998) (Ex.
`1004).Citations to this reference refer to its English translation (Ex. 1005).
`2 PCT Pub. No. WO 90/11571, pub. Oct. 4, 1990 (Ex. 1008).
`2
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`CBM2016-00090
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`Patent Owner filed a Motion to Exclude (Paper 46) and Petitioner
`filed an Opposition (Paper 48) to Patent Owner’s Motion. Patent Owner
`filed a Reply (Paper 52) in support of its Motion.
`We held a hearing of this case on August 10, 2017. Paper 55 (“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 1–32 are patent ineligible under
`35 U.S.C. § 101 and Petitioner has not shown by a preponderance of the
`evidence that claims 1–32 are unpatentable under 35 U.S.C. § 103 over TSE
`and Belden.
`
`Related Proceedings
`B.
`The ’382 patent is the subject of numerous related U.S. district court
`proceedings. Pet. 2; Paper 8, 1–5.
`The application that issued as the ’382 patent ultimately claims, under
`35 U.S.C. § 320, the benefit of application 09/590,692, that issued as U.S.
`Patent No. 6,772,132 (“the ’132 patent”). Ex. 1001, (63). The ’132 patent
`was the subject of Trading 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. The ’132 patent was also the subject of petitions for covered
`business method 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
`
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`(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.
`Numerous other patents are related to the ’382 patent and the related
`patents are or were the subject of numerous petitions for covered business
`method patent review and reexamination proceedings. See Pet. 2; Paper 8,
`1–7.
`
`
`
`The ’382 Patent
`C.
`The ’382 patent is titled “Click Based Trading with Intuitive Grid
`Display of Market Depth.” Ex. 1001, (54). The ’382 patent describes a
`display, named the “Mercury” display, and method of using the display to
`trade a commodity. Id. at Abstract, 3:12–16.
`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
`’382 patent is reproduced below.
`
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`Figure 2 of the ’382 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 5:15–20, Fig. 2; see also PO
`Resp. 2–3 (describing the Fig. 2 GUI as “widely used”); Ex. 1025 ¶ 21
`(describing the Fig. 3 GUI as a common dynamic screen); Ex. 2169 ¶¶ 61–
`62, 67, 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, 5:19–21. The inside market is the highest bid price and
`the lowest ask price. Id. at 4:21–23. Rows 2–5 show the market depth,
`which are other bids or asks in the market. Id. at 4:23–24. The market
`information updates dynamically as the market updates. Id. at 5:31–32. The
`inside market, however, is always displayed in row 1, a fixed location. Ex.
`2169 ¶¶ 54, 56.
`
`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. 1024 ¶ 7; Ex. 1025 ¶
`20.
`
`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 in which the trader could fill
`out parameters for an order, such as the price, quantity, an identification of
`
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`the item being traded, buy or sell, etc.” Id.; see also Ex. 1001, 2:23–27,
`2:39–43 (describing a trader manually entering trade order parameters).
`The Mercury display is depicted in Figure 3 of the ’382 patent, which
`is reproduced below.
`
`
` Figure 3 of the ’382 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. The Mercury
`display includes a plurality of columns. Column 1005 is a static price axis,
`which includes a plurality of price values for the commodity. See id. at
`6
`
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`CBM2016-00090
`Patent 7,725,382 B2
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`7:59–61. Columns 1003 and 1004 are aligned with the static price axis and
`dynamically display bid and ask quantities, respectively, for the
`corresponding price values of the static price axis. See id. at 7:58–59. The
`’382 patent explains that “[t]he exchange sends the price, order and fill
`information to each trader on the exchange” and that “[t]he physical
`mapping of such information to a screen grid can be done by any technique
`known to those skilled in the art.” Id. at 4:66–5:6. Column 1002 contains
`various parameters and information used to execute trades, such as the
`default quantity displayed in cell 1016. See id. at 8:41–66. A trader
`executes trades using the Mercury display by first setting the desired
`commodity and default parameters, such as default quantity. See id. at 9:41–
`44; Fig. 6, step 1302. Then, a trader can send a buy order or sell order to the
`market with a single action, such as clicking on the appropriate cell in
`column 1003 or 1004. See id. at 9:44–10:20; Fig. 6, steps 1306–1315.
`Column 1001 displays the trader’s orders and the order status. Id. at
`8:26–28. For example,
`in cells 1008, the number next to the B indicates the number of
`the trader’s ordered lots that have been bought at the price in the
`specific row. The number next to the W indicates the number of
`the trader’s ordered lots that are in the market, but have not been
`filled—i.e., the system is working on filling the order.
`Id. at 8:35–40. A trader can cancel an order by clicking on cell 1008.
`See id. at 11:19–32.
`
`
`
`Illustrative Claim
`D.
`Claims 1 and 17 are independent. Claim 1 is illustrative of the
`claimed subject matter and is reproduced below:
`7
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`1. A method of canceling an order entered for a commodity at
`an electronic exchange, the method comprising:
`
`receiving data relating to the commodity from the
`electronic exchange, the data comprising an inside market with a
`current highest bid price and a current lowest ask price currently
`available for the commodity;
`
`setting a trade order parameter;
`
`dynamically displaying by a computing device a first
`indicator at a first area corresponding to a first price level along
`a static price axis, the first indicator being associated with the
`current highest bid price for the commodity;
`
`dynamically displaying by the computing device a second
`indicator at a second area corresponding to a second price level
`along the static price axis, the second indicator being associated
`with the current lowest ask price for the commodity;
`
`updating the dynamic display of the first and second
`indicators such that at least one of the first and second indicators
`is moved relative to the static price axis to a different area
`corresponding to a different price level along the static price axis
`in response to the receipt of new data representing a new inside
`market;
`
`displaying by the computing device an order entry region
`comprising a plurality of areas, each area corresponding to a
`price level along the static price axis and each area being
`selectable by a user input device so as to receive a command to
`send an order message based on the trade order parameter and
`the price level that corresponds with the selected area to the
`electronic exchange;
`
`displaying by the computing device an entered order
`indicator at a location corresponding to a particular price level
`along the static price axis, the entered order indicator being
`associated with an order entered at the electronic exchange at the
`particular price level; and
`
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`receiving a single action command that selects the location
`
`associated with the entered order indicator so as to cancel the
`order at the electronic exchange.
`Ex. 1001, 12:20–58.
`
`
`II. ANALYSIS
`Claim Construction
`A.
`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, we interpret the claim terms of the ’382
`patent according to their ordinary and customary meaning in the context of
`the patent’s written description. See In re Translogic Tech., Inc., 504 F.3d
`1249, 1257 (Fed. Cir. 2007). Any special definitions for claim terms must
`be set forth with reasonable clarity, deliberateness, and precision. In re
`Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
`
` “single action”
`Claims 1 and 17 both recite “receiving a single action command that
`selects the location associated with the entered order indicator.” Ex. 1001,
`12:56–58, 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 ’382 patent. Pet. 17–18 (quoting Ex. 1001, 4:21–25).
`
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`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. 8
`(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
`’382 patent provides such a definition. Pet. 17–18. The specification of the
`’382 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
`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, 4:15–25 (emphasis added). As can be seen from the above, the
`’382 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 ’382
`patent. In re Paulsen, 30 F.3d at 1480.
`
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`
`Patent Owner’s proposed construction is inconsistent with the
`definition in the ’382 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, 4:15–21.
`
`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, 4:21–25).
`
`
`Other Terms
`We do not need to construe explicitly any other claim terms in order
`to resolve the issue before us. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc.,
`200 F.3d 795, 803 (Fed.Cir.1999) (Only terms which are in controversy need
`to be construed, and then only to the extent necessary to resolve the
`controversy.)
`
`Covered Business Method Patent
`B.
`Section 18 of the AIA3 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), 18(d)(1); see
`37 C.F.R. § 42.302.
`
`
`3 Leahy-Smith America Invents Act, Pub. L. No. 112–29, 125 Stat. 284, 329
`(2011) (“AIA”).
`
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`11
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`In compliance with 37 C.F.R. § 42.302(a), Petitioner certifies that it
`has been sued for infringement of the ’382 patent. Pet. 3. Patent Owner
`does not dispute this. See generally PO Resp.
`
`
`Whether the ’382 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.
`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 ’382 patent is a CBM patent. Inst. Dec. 9–12. Patent Owner
`urges us to reconsider our determination and find that the ’382 patent is not
`eligible for CBM review. See PO Resp. 88–89. We, however, are not
`apprised of any sufficient reason to change our original determination.
`
`
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`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
`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 canceling an order entered for a commodity
`at an electronic exchange,” which is financial in nature. Pet. 4–5. As
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`Petitioner points out, claim 1 recites steps displaying market information,
`including indicators of bids and asks in the market and sending a
`cancellation order to an electronic trading exchange. Pet. 4–5; Ex. 1001,
`12:20–58.
`Displaying market information and cancelling a trade order to an
`electronic exchange are activities that are financial in nature. A method for
`cancelling an 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 ’382 patent claims a method
`used for a financial product or service, but does dispute that the ’382 patent
`claims data processing. See PO Resp. 88–89. Patent Owner’s argument is
`based 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. at 88.
`Patent Owner, however, does not sufficiently explain why this definition is
`controlling, as opposed to the plain meaning of “data processing.” See Pet.
`10–11 (quoting definitions 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 ’382 patent discloses
`processing market information for display on a client terminal and for
`sending an order to an exchange. See e.g., Ex. 1001, 4:66–5:5 (“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 ’382 patent does not claim “performing data
`
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`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. 88–89. The ’382
`patent, therefore, at least claims “other operations used in the practice,
`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 [] states that
`GUI tools for trading are not the types of inventions that fall within CBM
`jurisdiction.” PO Resp. 90 (citing Ex. 2126, S5428, S5433).
`Although the legislative history includes 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
`
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`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 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
`’382 patent “claims a method or corresponding apparatus for performing
`data processing or other operations used in the practice, administration, or
`management of a financial product or service” and meets that requirement of
`§ 18(d)(1) of the AIA.
`
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`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 1326–27;
`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
`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
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`CBM2016-00090
`Patent 7,725,382 B2
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`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 ’382 patent generally recite trading software that is
`implemented on a conventional computer. Pet. 6–8. 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. 89. That is incorrect. See Pet.6–8;
`Inst. Dec. 11 (discussing Petitioner’s contention).
`We are persuaded by Petitioner’s contentions that at least claim 1 of
`the ’382 patent does not recite a novel and non-obvious technological
`feature. Pet. 6–8. The specification of the ’382 patent treats as well-known
`all potentially technological aspects of the claims. For example, the ’382
`patent discloses that its system can be implemented “on any existing or
`future terminal or device” (Ex. 1001, 4:11–14), each of which is known to
`include a display, and discloses that the input device can be a mouse (id. at
`4:18–21), which is a known input device. The ’382 patent further discloses
`that “[t]he scope of the present invention is not limited by the type of
`terminal or device used.” Id. at 4:14–15. The ’382 patent also describes the
`programming associated with the GUI as insignificant. See, e.g., id. at 4:67–
`5:7 (explaining that the “present invention processes [price, order, and fill]
`information and maps it through simple algorithms and mapping tables to
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`CBM2016-00090
`Patent 7,725,382 B2
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`positions in a theoretical grid program” and “[t]he physical mapping of such
`information to a screen grid can be done by any technique known to those
`skilled in the art”). That at least claim 1 of the ’382 patent does not recite a
`novel and non-obvious technological feature is further illustrated by our
`discussion of the prior art and Fig. 2 GUI above. Accordingly, we are
`persuaded that at least claim 1 does not recite a technological feature that is
`novel and unobvious over the prior art.
`With respect to the second prong, Petitioner asserts that the claims of
`the ’382 patent do not fall within § 18(d)(1)’s exclusion for “technological
`inventions” because the ’382 patent does not solve a technical problem using
`a technical solution. Pet. 8–9. Petitioner notes that “[a]ccording to the ’382
`patent, the ‘problem’ with prior art trading GUIs was that the market price
`could change before a trader entered a desired order, causing the trader to
`‘miss his price.’” Id. at 8 (citing Ex. 1001, 2:61–3:2). Petitioner contends
`that the ’382 patent’s solution is not technical because Patent Owner “merely
`[] rearrange[d] the way that the market date is displayed” and “did not
`design a more accurate mouse or a computer that responded faster.” Id. at
`8–9. Patent Owner disagrees and asserts that the ’382 patent solves the
`technical problems of “a user missing their intended price, along with the
`problems of visualizing information in multiple windows, and managing
`entered orders.” PO Resp. 89–90. Patent Owner points to CQG for support.
`Id.
`
`We are persuaded that the ’382 patent does not solve a technical
`problem with a technical solution. Pet. 8–9. The ’382 patent purports to
`solve the problem of a user missing an intended price because a price
`changed as the user tried to enter a desired order. See Ex. 1001, 2:2–62. As
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`CBM2016-00090
`Patent 7,725,382 B2
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`written, claim 1 requires the use of only known technology. Given this, we
`determine that at least claim 1 does not solve a technical problem using a
`technical solution and at least claim 1 does not satisfy the second prong of
`37 C.F.R. § 42.301(b).
`The ’382 patent describes the problem it solves as follows:
`[A]pproximately 80% [of the total time it takes to place an
`order] is attributable to the time required for the trader to read the
`prices displayed and to enter a trade order. The present invention
`provides a significant advantage during the slowest portion of the
`trading cycle—while the trader manually enters his order. . . .
`In existing systems, multiple elements of an order must be
`entered prior to an order being sent to market, which is time
`consuming for the trader. Such elements include the commodity
`symbol, the desired price, the quantity and whether a buy or sell
`order is desired. The more time a trader takes entering an order,
`the more likely the price on which he wanted to bid or offer will
`change or not be available in the market. . . . In such liquid
`markets, the prices of the commodities fluctuate rapidly. On a
`trading screen, this results in rapid changes in the price and
`quantity fields within the market grid. If a trader intend to enter
`an order at a particular price, but misses the price because the
`market prices moved before he could enter the order, he may lose
`hundreds, thousands, even millions of dollars. The faster a trader
`can trade, the less likely it will be that he will miss his price and
`the more likely he will make money.
`Ex. 1001, 2:40–3:2 (emphasis added). “The inventors have developed the
`present invention which overcomes the drawbacks o
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