Trials@uspto.gov
`Tel: 571–272–7822
`
`
`Paper 78
`Entered: November 13, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`MIAMI INTERNATIONAL HOLDINGS, INC., MIAMI INTERNATIONAL
`SECURITIES EXCHANGE, LLC, MIAX PEARL, LLC, and MIAMI
`INTERNATIONAL TECHNOLOGIES, LLC,
`Petitioner,
`
`v.
`
`NASDAQ, INC.,
`Patent Owner.
`____________
`
` Case CBM2018-00032
`Patent 7,933,827 B2
`____________
`
`
`
`Before TONI R. SCHEINER, MEREDITH C. PETRAVICK, and
`KRISTI L. R. SAWERT, Administrative Patent Judges.
`
`PETRAVICK, Administrative Patent Judge.
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 328(a)
`ORDER
`Denying Patent Owner’s Motion to Strike
`37 C.F.R. § 42.5
`
`
`
`
`

`

`CBM2018-00032
`Patent 7,933,827 B2
`
`35
`U.S.C.
`§ 101
`
`I. INTRODUCTION
`Miami International Holdings, Inc., Miami International Securities
`Exchange, LLC, MIAX PEARL, LLC, and Miami International Technologies,
`LLC (collectively, “Petitioner”) filed a Petition (Paper 1, “Pet.”) requesting a
`covered business method (“CBM”) patent review of claims 1–3, 5–8, 20–24,
`33–36, 38–43, 53–55, 57, and 67–70 (“the challenged claims”) of U.S. Patent No.
`7,933,827 B2 (Ex. 1001, “the ’827 patent”) under § 18 of the Leahy-Smith
`America Invents Act (“AIA”).
`Petitioner contends that the challenged claims are unpatentable based on the
`following ground:
`Claim(s)
`Challenged
`1–3, 5–8, 20–24,
`33–36, 38–43,
`53–55, 57,67–70
`Pet. 1.
`Nasdaq, Inc. (“Patent Owner”) filed a Preliminary Response. Paper 6
`(“Prelim. Resp.”). On November 14, 2018, we instituted trial. Paper 10 (“Inst.
`Dec.”).
`After institution,1 Patent Owner filed a Response (Paper 33; “PO Resp.”),
`Petitioner filed a Reply to Patent Owner’s Response (Paper 45; “Pet. Reply”), and
`Patent Owner filed a Sur-reply (Paper 56; “PO Sur-reply”).
`Patent Owner also filed a Motion to Strike (Paper 59) to which Petitioner
`filed an Opposition to Patent Owner’s Motion to Strike (Paper 62).
`
`References/ Basis
`
`for being directed to patent ineligible
`subject matter
`
`
`1 After institution, Patent Owner filed a Contingent Motion to Amend. Paper 32.
`Patent Owner subsequently withdrew its Contingent Motion to Amend. Paper 77.
`
` 2
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`CBM2018-00032
`Patent 7,933,827 B2
`Oral argument was held on July 17, 2019. Paper 73 (“Tr.”).
`Based on the complete record, we determine that Petitioner has met its
`burden of showing, by a preponderance of the evidence, that the ’827 patent is
`eligible for covered business method patent review, and that claims 1–3, 5–8, 20–
`24, 33–36, 38–43, 53–55, 57, and 67–70 are unpatentable under 35 U.S.C. § 101 as
`patent ineligible subject matter.
`
`
`II. RELATED MATTERS
`Petitioner and Patent Owner inform us that the ’827 patent is the subject of
`Nasdaq, Inc. v. Miami International Holdings, Inc., Case No. 3:17-cv-0664, in the
`District of New Jersey. Pet. 1–2; Paper 4, 1.
`The ’827 patent is the subject of another CBM patent review, Investors
`Exchange LLC v. Nasdaq, Inc., CBM2019-00039 (PTAB).
`Additionally, a number of related patents are the subject of CBM patent
`review petitions. See Paper 4, 2. Particularly, the ’827 patent and U.S. Patent No.
`7,921,051 (CBM2018-00030) both claim priority to the same provisional patent
`applications, have substantially identical specifications, and contain claims
`directed to similar subject matter. See id.
`
`
`III. THE ’827 PATENT
`The ’827 patent is titled “Multi-parallel Architecture and Method of Using
`the Same,” and issued on April 26, 2011. Ex. 1001, codes (45), (54). The ’827
`patent issued from Application No. 10/206,892, which claims priority to
`Provisional Application No. 60/385,979 and Provisional Application No.
`60/385,988, both filed on June 5, 2002. Id. at codes (21), (60).
`
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`CBM2018-00032
`Patent 7,933,827 B2
`The ’827 patent relates to “electronic-based securities trading, and more
`particularly to processing and displaying of information relating to electronic
`securities trading” and discloses computerized trading system 16 that includes
`order routing system 14 and multiple security processors 10. Id. at 1:14–16, 5:48–
`55. Figure 2 of the ’827 patent is reproduced below.
`
`
`Figure 2 depicts “a block diagram of the order routing system.” Id. at 5:36–37.
`Order routing system 14 includes security look-up process 56, look-up table 50,
`and messaging process 58. Upon receipt of order 12, security look-up process 56
`determines the ordered security, using the ticker symbol (e.g., XYZ) or some other
`identifier. Id. at 6:59–7:4. Security look-up process 56 then determines the
`assigned security processor 10 (e.g., SP1 for XYZ) by scanning or querying look-
`up table 50. Id. at 7:5–13. Messaging process 58 then populates the header of
`order 12 to identify the assigned security processor 10 or appends order 12 to
`include a header that identifies the assigned processor 10. Id. at 7:13–19.
`
`In one embodiment, look-up table 50 includes specific-entry table 150 and
`rule entry table 154. Id. at 12:14–15. Figure 4 of the ’827 patent is reproduced
`below.
`
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`CBM2018-00032
`Patent 7,933,827 B2
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`
`
`Figure 4 depicts “a block diagram of a configurable look-up table” having specific-
`entry table 150 and rule entry table 154. Id. at 5:40–41. “Specific entry table 170
`includes security-specific assignment entries (e.g., XYZ:SP1)” and “[r]ule-entry
`table 172 includes id-range assignment entries (e.g., A*-L*:SP1).” Id. at 12:16–
`20. Security look-up process 56 first accesses and searches specific entry table 170
`to determine if it includes an assignment entry for the ordered security and, if it
`does, security look-up process 56 stops searching. Id. at 12:21–26. If specific
`entry table 170 does not, security look-up process 56 searches rule-entry table 172
`for an assignment entry for the ordered security. Id. at 12:26–32.
`Look-up table 50 can be configured in various forms. For example,
`table 50 can be in the form of a multi-column, multi-row text-based
`ASCII (i.e., American Standard Code for Information Interchange) file
`that is accessed to determine the assigned securities processor.
`Alternatively, look-up table 50 may be a database from which a query
`is made concerning the security and the appropriate database record is
`
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`CBM2018-00032
`Patent 7,933,827 B2
`retrieved, such that this database record specifies the security processor
`to which
`that
`specific security
`is assigned.
` Other
`file
`arrangements/structures are also possible, such as a comma delimited
`text file.
`Id. at 6:35–45.
`The ’827 patent discloses Administrator 62, depicted as a stick-figure person
`in Figure 2, configuring the look-up table 50 to vary the loading of securities
`processors 14. Id. at 10:31–43, Fig. 2. The ’827 patent states:
`Administrator 62 (via computer 64 and a configuration utility running
`on it) can configure and reconfigure configurable look-up table 50 to
`vary the load of the securities processors 541-n or the overall load of the
`computerized trading system 16. The manner in which table 50 is
`modified varies depending on the configuration of the table. If the table
`is an ASCII-based table or text file, a simple text or ASCII line editor
`may be used to assign and reassign securities to various securities
`processors. Alternatively, if table 50 is configured as a database,
`database editing/configuration software (such as that offered by
`Sybase®, Microsoft®, and Oracle®) may be used to add, delete, or
`modify records within the database.
`Id. at 10:31–43. By editing the assignment entries in look-up table 50,
`Administrator 62 can vary the loading to increase the number of trades processed
`by system 16. See id. at 10:52–11:3.
`
`
`IV. THE CLAIMS
`Petitioner challenges claims 1–3, 5–8, 20–24, 33–36, 38–43, 53–55, 57, and
`67–70 of the ’827 patent. Claims 1, 34, and 67 are independent and directed to a
`corresponding system, method, and computer program product, respectively.
`Claims 2, 3, 5–8, 20–24, and 33 depend directly or indirectly from claim 1. Claims
`35, 36, 38–43, 53–55, and 57 depend directly or indirectly from claim 34. Claims
`
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`CBM2018-00032
`Patent 7,933,827 B2
`68–70 depend from claim 67. Claim 1 is illustrative of the subject matter at issue
`and is reproduced below.
`1. A system for securities trading, the system comprising:
`a plurality of securities processors for processing
`attributable security interest messages generated by
`market participants, the attributable security interest
`messages relate to securities traded on the securities
`trading system, each security is assigned to one or more
`of the securities processors based on a unique security
`identifier associated with the security; and
`an order routing system for routing each attributable
`security interest message to one of the securities
`processors according to the assignment.
`Ex. 1001, 14:57–67.
`
`
`
`V. CLAIM CONSTRUCTION
`We interpret claims in an unexpired patent using the “broadest reasonable
`construction in light of the specification of the patent in which [they] appear[].” 37
`C.F.R. § 42.300(b) (2017).2 Under this standard, we interpret claim terms using
`“the broadest reasonable meaning of the words in their ordinary usage as they
`would be understood by one of ordinary skill in the art, taking into account
`whatever enlightenment by way of definitions or otherwise that may be afforded
`by the written description contained in the applicant’s specification.” In re Morris,
`
`2 The Petition in this proceeding was filed on April 2, 2018, prior to the effective
`date of the rule change that replaces the broadest reasonable interpretation standard
`with the federal court claim interpretation standard. See Changes to the Claim
`Construction Standard for Interpreting Claims in Trial Proceedings Before the
`Patent Trial and Appeal Board, 83 Fed. Reg. 51,340, 51,340 (Oct. 11, 2018) (“This
`rule is effective on November 13, 2018 and applies to all IPR, PGR and CBM
`petitions filed on or after the effective date.”).
`
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`CBM2018-00032
`Patent 7,933,827 B2
`127 F.3d 1048, 1054 (Fed. Cir. 1997); see In re Smith Int’l, Inc., 871 F.3d 1375,
`1382–83 (Fed. Cir. 2017) (“[The] broadest reasonable interpretation . . . is an
`interpretation that corresponds with what and how the inventor describes his
`invention in the specification . . . .”). “Under a broadest reasonable interpretation,
`words of the claim must be given their plain meaning, unless such meaning is
`inconsistent with the specification and prosecution history.” TriVascular, Inc. v.
`Samuels, 812 F.3d 1056, 1062 (Fed. Cir. 2016).
`Petitioner asserts:
`Petitioners believe that the Board needs no guidance as to the meaning
`of any term, and further that the Challenged Claims would be held
`invalid under any reasonable claim construction. Indeed, the
`specification does not disclose any subject matter that, if incorporated
`into the construction of any limitation, would confer eligibility to any
`claims.
`Pet. 15. Likewise, Patent Owner provides no explicit construction of any claim
`terms. See generally PO Resp.
`We determine that no explicit claim construction is required for the purposes
`of this Decision. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795,
`803 (Fed. Cir. 1999) (stating that “only those terms need be construed that are in
`controversy, and only to the extent necessary to resolve the controversy”). An
`initial discussion of claim scope, however, is helpful in resolving the issues
`because much of Patent Owner’s argument is not commensurate with the scope of
`the claims.
`
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`CBM2018-00032
`Patent 7,933,827 B2
`
`Load Balancing
`Many of Patent Owner’s arguments concern load balancing. For example,
`
`Patent Owner states:
`The claimed components offer an improvement over prior art electronic
`securities trading systems, because they make conventional load
`balancing (where trade volume is distributed across processing units)
`“intelligent”—i.e., the innovative systems architecture divert trades to
`specific securities processors programmed to handle trades for specific
`securities based on the content or characteristics of trades received. (Ex.
`1001, 6:19-7:21; Vinella, ¶¶ 3, 116, 208.)
`(PO Resp. 14), and
`[b]y introducing a different architecture that now included numerous
`autonomous securities processors, whose less voluminous tasks were
`being assigned by an order routing system which discerned tasks based
`on their content, the ’827 patent’s solution improved the functionality
`of the electronic trading computer platforms.
`(Id. at 36–37). Patent Owner asserts, “Nasdaq invented a specific way to
`route incoming data that achieves load balancing in a manner that had not
`been done before.” Id. at 4. “Highly active securities were assigned to a
`specific securities processor, while regular securities were routed to more
`general securities processors that would execute matches for a variety of
`securities.” Id. at 8.
`
`None of the challenged claims of the ’827 patent, however, explicitly
`
`requires assigning active securities to a specific securities processor and regular
`securities to more general securities processors that would execute matches for a
`variety of securities to achieve load balancing. See Ex. 1001, 14:56–15:9, 15:12–
`29, 16:20–48, 17:20–45, 17:38–18:12, 18:54–19:10, 19:54–20:32. Patent Owner
`contends, “the particular technological advantage need not be explicitly recited in
`the claims for the claims to achieve that technological advantage.” PO Resp. 31.
`
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`CBM2018-00032
`Patent 7,933,827 B2
`According to Patent Owner, merely distributing messages across multiple
`securities processors achieves load balancing and the challenged claims reflect this
`because messages are assigned to one of the multiple securities processors. Id. at
`31–32 (citing Ex. 2016, 77:5–6).
`Petitioner responds that “the claims do not recite any element that involves
`‘intelligently assign[ing]’ securities to a securities processor” and “Nasdaq’s
`claims do not describe how ‘load balancing’ would happen.” Pet. Reply 8, 10,
`11–12, 11 n.5.
` We agree with Petitioner. Although the challenged claims require making
`assignments, the challenged claims do not require making the assignment in such a
`way as to achieve load balancing. The ’827 patent discloses human administrator
`62 determining the assignments and many types of assignments that may be made
`by administrator 62. Ex. 1001, 10:31–35, 10:52–11:3, 11:29–12:20. For example,
`administrator 62 may assign the highest traded stock to a specific security
`processor or may assign a security to the next-available securities processor. Id. at
`10:54–57, 12:1–4. The challenged claims, however, do not require assigning the
`highest traded stock to a single securities processor and assigning all other stocks
`to a range of other securities processors. The challenged claims are silent as to
`why the assignments are made and do not require the assignments to be made in
`such a way as to route highly active securities to a specific securities processor,
`while routing regular securities to more general securities processors that would
`execute matches for a variety of securities. The claims, thus, encompass
`assignments that are made for any reason, for example business reasons, not just
`load balancing.
`
`Patent Owner points to the testimony of Petitioner’s declarant Dr. Min as
`“defin[ing] ‘load balancing’ as spread[ing] the computing load across multiple
`
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`CBM2018-00032
`Patent 7,933,827 B2
`processors.” PO Resp. 31 (citing Ex. 2016, 77:5–6). When viewed in the wider
`colloquy (see, e.g., Ex. 2016, 76:20–88:29), however, Patent Owner’s reliance on
`Dr. Min’s testimony is misplaced as Dr. Min’s testimony indicates that load
`balancing requires trying to equalize the load across multiple processors (see, e.g.
`id. at 82:24–25, 83:9–15). See also PO Resp. 49 (“conventional load balancing
`(where trade volume is distributed evenly across processing units)”); Ex. 1053 ¶
`153 (“Merely distributing the load across multiple processors is not load
`balancing.”). Again, the claims are silent as to why administrator 62 assigns a
`security to a security processor, and do not require the assignments to be made in
`such a way as to achieve load balancing or equalize the load across multiple
`processors. See Ex. 2016, 81:4–21 (“So in order to achieve this load balancing, it
`also has to say how this assignment is done.”).
`
`As the claims do not require loading balancing (or that the assignments are
`made in such a way as to route highly active securities to a specific securities
`processor, while routing regular securities to more general securities processors
`that would execute matches for a variety of securities), many of Patent Owner’s
`arguments are not commensurate with the scope of the claims. Likewise, much of
`the testimony of Patent Owner’s expert Mr. Peter U. Vinella focuses on load
`balancing, which is not commensurate with the scope of the claims. See generally
`Ex. 2009. We, thus, do not accord much weight to Mr. Vinella’s testimony.
`
`
`VI. BUSINESS METHOD PATENT REVIEW ELIGIBILITY
`Section 18 of the AIA provides that
`the term “covered business method patent” means 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
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`CBM2018-00032
`Patent 7,933,827 B2
`not include patents for technological inventions.
`AIA § 18(d)(1); see also 37 C.F.R. § 42.301(a) (concerning the same). A patent
`need have only one claim directed to a covered business method to be eligible for
`review. See Transitional Program for Covered Business Method Patents—
`Definitions of Covered Business Method Patent and Technological Invention;
`Final Rule, 77 Fed. Reg. 48,734, 48,736 (Aug. 14, 2012) (“Final Rule”). Thus, we
`must “examine the claims when deciding whether a patent is a CBM patent.” Blue
`Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1340 (Fed. Cir. 2016) (emphasis
`omitted).
`
`Standing
`Section 18(a)(1)(B) of the AIA requires that Petitioner, or its real party in
`interest or privy, “has been sued for infringement of the patent.” Petitioner asserts
`that it has been sued for infringing the ’827 patent in Nasdaq, Inc. v. Miami
`International Holdings, Inc., Case No. 3:17-cv-06664 in the District of New
`Jersey. Pet. 1–2, 14. Patent Owner does not dispute that it sued Petitioner.
`Accordingly, Petitioner has standing to file the Petition.
`
`A method or corresponding apparatus for performing data processing or other
`operations used in the practice, administration, or management of a financial
`product or service
`The AIA defines a CBM 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 CBM patent can be interpreted
`broadly to encompass patents claiming activities that are financial in nature. Final
`Rule, 77 Fed. Reg. at 48735; Blue Calypso, 815 F.3d at 1338–41 (determining that
`a patent was a covered business method patent because it claimed activities that are
`
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`Patent 7,933,827 B2
`financial in nature); Unwired Planet, LLC v. Google, Inc., 841 F.3d 1376, 1380 n.
`5 (Fed. Cir. 2016) (stating, “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 Am. Inc., 793 F.3d 1306,
`1324–25 (Fed. Cir. 2015) (“[The statute] on its face covers a wide range of
`finance-related activities.”).
`Petitioner asserts, “[t]he Challenged Claims are directed to routing securities
`orders in an electronic securities market” and, thus, the ’827 patent claims financial
`activities. Pet. 5–6. Patent Owner does not dispute Petitioner’s assertion in its
`Patent Owner’s Response. See generally PO Resp.
`As Petitioner asserts, the challenged claims are directed to routing securities
`orders in an electronic securities market. See Ex. 1001, 14:57–20:32. For
`example, claim 1 recites “[a] system for securities trading” (id. at 14:57) and
`recites an order routing system for routing attributable security interest messages to
`securities processors. Id. at 14:57–67. Claims 34 and 67 recite a corresponding
`method and computer program process. Id. at 17:25–36, 19:54–20:8. A security is
`a financial product. Routing or processing orders for securities in an electronic
`market is a financial activity. Accordingly, we determine that the ’827 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.
`In its Sur-reply, Patent Owner improperly3 raises an argument that the ’827
`patent is not directed to a financial activity because Petitioner’s expert Dr. Paul
`
`
`3 Pursuant to 37 C.F.R. § 42.23, “[a] reply may only respond to arguments raised in
`the corresponding opposition.” Neither Patent Owner’s Response nor Petitioner’s
`Reply address whether the ’827 patent claims a financial activity.
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`Patent 7,933,827 B2
`Min allegedly testifies that the subject matter of the ’827 patent is not limited to
`financial systems. See PO Sur-reply 21–25 (citing Ex. 1053 ¶¶ 4–11). Patent
`Owner’s argument mischaracterizes Dr. Min’s testimony, which specifically
`addresses whether the claims only recite generic computer components performing
`their conventional function in the field of electronic trading. See Ex. 1053 ¶ 5.
`Contrary to Patent Owner’s argument, Dr. Min testifies, “the ’827 Patent claims,
`which generally recite at a very high level of generality, a securities trading
`communications system having computer components, i.e., hardware and
`software” (id. ¶ 4) and “the claims of the ’827 Patent are directed to a
`conventional, general purpose communications system that happens to be used in
`the field of trading securities” (id. ¶ 11). Dr. Min’s testimony is consistent with the
`challenged claims, which recite, for example, “[a] system for securities trading”
`(Ex. 1001, 14:57 (claim 1)), and a computer program product “for processing of
`messages for trading securities in an electronic trading venue” (id. at 19:54–56
`(claim 67)). See SIPCO, LLC v. Emerson Elec. Co., No. 2018-1635, slip op. 13–15
`(Fed. Cir. Sept. 25, 2019) (determining that a patent that claimed a device for
`communicating information was CBM patent review eligible because dependent
`claims recited that the device was associated with a vending machine and an
`ATM).
`
`Not for a technological invention
`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
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`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 to exclude the patent as a technological
`invention. See Versata, 793 F.3d at 1326–7; Apple Inc. v. Ameranth, Inc., 842 F.3d
`1229, 1240 (Fed. Cir. 2016). The following claim-drafting techniques 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 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 and Patent Owner dispute whether the claims of the ’827 patent
`(1) recite a technological feature that is novel and unobvious over the prior art; and
`(2) solves a technical problem using a technical solution. Pet. 9–13; PO Resp. 68–
`85.
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`Patent 7,933,827 B2
`
`First Prong
`In our Institution Decision, we determined Petitioner’s evidence and analysis
`
`sufficiently demonstrated that the ’827 patent is not for a technological invention
`because the claimed subject matter as a whole does not recite a technological
`feature that is novel and unobvious over the prior art. Inst. Dec. 12–16. In its
`Patent Owner’s Response, Patent Owner reasserts many of its arguments from the
`Preliminary Response to contend that the claimed subject matter as a whole does
`recite a technological feature that is novel and unobvious over the prior art. See
`PO Resp. 69–80; Prelim. Resp. 8–21.
`As to the first prong, Petitioner contends that the ’827 patent does not claim
`a novel and nonobvious technological feature and merely recites conventional
`components used in a conventional manner. Pet. 10–11. In particular, Petitioner
`argues that “the computer-related technology recited in the Challenged Claims
`such as the ‘server computer’ of claim 34 and the ‘computer readable storage
`device’ and ‘processor’ of claim 67 were conventional computer and networking
`technology at the time of the ’827 Patent.” Pet. 10–12 (incorporating id. at 36–45
`(section VIII.B.2)). Petitioner provides a number of references (Ex. 1008–1015,
`1019, 1020, 1032), as well as the testimony of Dr. Paul Min (Ex. 1005), to support
`its contention. See id.
`Patent Owner argues that none of Petitioner’s evidence shows that the claims
`as a whole are not novel or unobvious. See PO Resp. 69–80. Patent Owner states:
`“Such a hodgepodge collection of references cannot anticipate the ’827 patent
`claims.” Id. at 77. Patent Owner also argues that the prosecution history and the
`’827 patent highlight the multi-parallel architecture, showing that the claims are
`novel and nonobvious. Id. at 70–71, 78–79.
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`To determine whether a patent is for a technological invention, we consider
`the following: “whether the claimed subject matter as a whole recites a
`technological feature that is novel and unobvious over the prior art.” 37 C.F.R.
`§ 42.301(b). A patent “typically” does not cover a “technological invention” if it
`recites “the use of known prior art technology to accomplish a process or method,
`even if that process or method is novel and non-obvious.” Office Patent Trial
`Practice Guide, 77 Fed. Reg. at 48,763–64 (emphasis added). Merely listing
`computer components, or performing actions by computers, does not make an
`invention technical. See Blue Calypso, 815 F.3d at 1341; see also Versata, 793
`F.3d at 1327.
`We determine that Petitioner’s analysis and the evidence shows that the
`technological features recited by claim 14 are not novel and unobvious over the
`prior art. Claim 1 recites “[a] system for securities trading,” which comprises a
`plurality of securities processors for processing attributable security interest
`messages and an order routing system for routing each attributable security interest
`message to an assigned securities processor. Ex. 1001, 14:57–67. The ’827 patent
`describes that the plurality of securities processors and order routing system for a
`multi-parallel architecture. Id. at 5:52–53.
`
`
`4 Patent Owner argues that Petitioner “wholly fails to address claim 1, and thus
`cannot rely on claim 1 for CBM eligibility, [Petitioner] only address[es] three
`terms in the entirety of claims 34 and 67.” PO Resp. 71. Patent Owner’s argument
`is misplaced. Petitioner does address independent claim 1, as well as
`corresponding independent claims 34 and 67, and provides a sufficiently detailed
`analysis of the elements of claim 1. See, e.g., Pet. 9–13 (incorporating id. at 36–45
`(section VIII.B.2)). The Petition refers to “the Challenged Claims” and claim 1 is
`a challenged claim. See id. at 9–13. Further, we discussed claim 1 in the
`Institution Decision. Inst. Dec. 12–13.
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`Petitioner’s evidence sufficiently shows that it was known to route
`information to multiple processors to increase processing speed and reliability. See
`Pet. 36–45 (citing Ex. 1008 ¶ 6, Fig. 1; Ex. 1009, 2:15–28, Fig. 2; Ex. 1010, 180,
`184; Ex. 1011, 7:10–14; Ex. 1012, 10:28–32; Ex. 1013, 1:16–17; Ex. 1014,
`Abstract, 24:64–66, 25:51–54; Ex. 1015, 5:7–9, 5:13–17, 24:5–6; 35:1–4, Fig. 1;
`Ex. 1020 ¶ 6; Ex. 1032, 24). For example, U.S. Patent No. 4,445,171, issued in
`1984, states, “[s]ince the advent of the electronic computer in reliable form,
`workers in the art have given much consideration to systems employing a number
`of computers functioning together in interrelated fashion to accomplish a given
`overall task” and describes known systems having control computers that route
`tasks to multiple processors to increase overall processing speed and reliability.
`Ex. 1014, 1:5–2:16. Likewise, Petitioner’s expert Dr. Min testifies that the
`methods of the ’827 patent are implemented on standard, conventional routing
`technology. Ex. 1005 ¶ 48; see also id. ¶¶ 64–73, 80, 81.
`Further, the ’827 patent, itself, discloses the system may be implemented in
`a number of hardware or software, or combination, embodiments, including on
`“general purpose microprocessors” and is not limited to any one embodiment.
`Ex. 1001, 14:7–50. The ’827 patent, thus, indicates that the use of computers to
`implement the order routing system is not a novel or unobvious technological
`feature.
`Additionally, Patent Owner acknowledges that electronic trading systems
`that distribute trades across multiple processing units were known and
`conventional. Patent Owner states: “At the time of the invention, some electronic
`trading systems attempted to address this overload by adding additional processing
`units to the trading system and distributing the trades across those processing
`units . . . .” PO Resp. 7 (emphasis added); see also Ex. 2009 ¶¶ 3 (testimony of
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`Mr. Vinella that “[c]onventional systems could not compete because . . . employed
`conventional approaches to load balancing that involved, for example, distributing
`trades evenly across processing units based on capacity.”), 78–79 (testimony of
`Mr. Vinella describing known parallel processing systems).
`Petitioner has shown by a preponderance of the evidence that the ’827 patent
`is not for a technological invention because at least claim 1 does not recite a
`technological feature that is novel and unobvious over the prior art.
`Because both prongs must be satisfied for a patent to be excluded from
`covered business method patent review for being a technological invention, we
`determine that the ’827 patent is not for a technological invention based on the first
`prong alone. See Apple, 842 F.3d at 1240 (“We need not address this argument
`regarding whether the f