Trials@uspto.gov
`571-272-7822
`
`
`Paper 20
`Date: September 27, 2021
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GAIN CAPITAL HOLDINGS, INC.,
`Petitioner,
`
`v.
`
`OANDA CORPORATION,
`Patent Owner.
`____________
`
`CBM2020-00023
`Patent 7,496,534 B2
`____________
`
`
`Before SALLY C. MEDLEY, JUSTIN T. ARBES, and
`SUSAN L. C. MITCHELL, Administrative Patent Judges.
`
`ARBES, Administrative Patent Judge.
`
`
`PRELIMINARY GUIDANCE
`
`PATENT OWNER’S MOTION TO AMEND
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`Patent 7,496,534 B2
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`I. INTRODUCTION
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`
`
`On March 18, 2021, we instituted trial as to claims 1–12 of
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`U.S. Patent No. 7,496,534 B2 (Ex. 1001, “the ’534 patent”). Paper 10
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`(“Dec. on Inst.”). After institution, Patent Owner filed a Contingent Motion
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`to Amend. Paper 17 (“Mot.”). Should we find in a final written decision
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`that challenged claim 1 is unpatentable, Patent Owner proposes substitute
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`claim 13, which corresponds to challenged claim 1. Mot. 1. Petitioner filed
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`an Opposition to the Motion. Paper 19 (“Opp.”).
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`In the Motion, Patent Owner requested that we provide preliminary
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`guidance concerning the Motion in accordance with the Board’s pilot
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`program concerning motion to amend practice and procedures. Mot. 1; see
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`also Notice Regarding a New Pilot Program Concerning Motion to Amend
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`Practice and Procedures in Trial Proceedings Under the America Invents Act
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`Before the Patent Trial and Appeal Board, 84 Fed. Reg. 9,497 (Mar. 15,
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`2019) (providing a patent owner with the option to receive preliminary
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`guidance from the Board on its motion to amend) (“Notice”). We have
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`considered Patent Owner’s Motion and Petitioner’s Opposition.
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`In this Preliminary Guidance, we provide information indicating our
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`initial, preliminary, non-binding views on whether Patent Owner has shown
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`a reasonable likelihood that it has satisfied the statutory and regulatory
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`requirements associated with filing a motion to amend in a covered business
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`method patent review and whether Petitioner (or the record) establishes a
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`reasonable likelihood that the proposed substitute claim is unpatentable. See
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`35 U.S.C. § 326(d); 37 C.F.R. § 42.221; Lectrosonics, Inc. v Zaxcom, Inc.,
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`IPR2018-01129, Paper 15 (PTAB Feb. 25, 2019) (precedential); see also
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`Notice, 84 Fed. Reg. at 9,497 (“The preliminary guidance . . . provides
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`preliminary, non-binding guidance from the Board to the parties about the
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`[motion to amend].”); Rules of Practice to Allocate the Burden of Persuasion
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`on Motions to Amend in Trial Proceedings Before the Patent Trial and
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`Appeal Board, 85 Fed. Reg. 82,923 (Dec. 21, 2020).
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`For purposes of this Preliminary Guidance, we focus on the proposed
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`substitute claim, and specifically on the amendments proposed in the
`
`Motion. See Notice, 84 Fed. Reg. at 9,497. We do not address the
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`patentability of the originally challenged claims. Id. Moreover, in
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`formulating our preliminary views on the Motion and Opposition, we have
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`not considered the parties’ other substantive papers on the underlying merits
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`of Petitioner’s challenges. We emphasize that the views expressed in this
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`Preliminary Guidance are subject to change upon consideration of the
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`complete record, including any revision to the Motion filed by Patent
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`Owner. Thus, this Preliminary Guidance is not binding on the Board when
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`rendering a final written decision. See id. at 9,500.
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`II. PRELIMINARY GUIDANCE
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`A. Statutory and Regulatory Requirements
`
`For the reasons discussed below, at this stage of the proceeding, and
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`based on the current record, it appears that Patent Owner has not shown a
`
`reasonable likelihood that it has satisfied the statutory and regulatory
`
`requirements associated with filing a motion to amend.
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`1. Reasonable Number of Substitute Claims
`
`Does Patent Owner propose a reasonable number of substitute
`claims? (35 U.S.C. § 326(d)(1)(B))
`
`Yes. Patent Owner proposes one substitute claim for one challenged
`claim. Mot. App’x A. Petitioner does not argue otherwise.
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`2. Respond to Ground of Unpatentability
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`Does the Motion respond to a ground of unpatentability involved in
`the trial? (37 C.F.R. § 42.221(a)(2)(i))
`
`Yes. Patent Owner responds to the sole ground of unpatentability, arguing
`that proposed substitute claim 13 addresses the instituted ground of
`unpatentability that claim 1 does not recite patent-eligible subject matter
`under 35 U.S.C. § 101. Mot. 4–6. Petitioner does not argue otherwise.
`
`3. Scope of Amended Claims
`
`Does the amendment seek to enlarge the scope of the claims?
`(35 U.S.C. § 326(d)(3); 37 C.F.R. § 42.221(a)(2)(ii))
`
`No. Proposed substitute claim 13 includes narrowing limitations and does
`not remove any limitation from challenged claim 1.1 See Mot. App’x A.
`Petitioner does not argue otherwise.
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`4. New Matter
`
`Does the amendment seek to add new subject matter? (35 U.S.C.
`§ 326(d)(3); 37 C.F.R. § 42.221(a)(2)(ii))
`
`No. Although the amendment does not seek to add new subject matter,
`the amendment does not meet the regulatory requirements of 37 C.F.R.
`§ 42.221(b).
`
`Our Order setting forth guidance for the motion to amend instructs that
`(1) citations for written description support should be made to the original
`disclosure of the application as filed (i.e., Ex. 1002, 202–283), not the
`patent as issued; (2) written description support must be shown for the
`entire proposed substitute claim, not just the features added by the
`
`1 Patent Owner argues in the Motion that “[s]ince all claims are dependent
`on claim 1 (proposed claim 13), all remaining dependent claims are
`narrowed. . . . All other amendments update the dependencies of certain
`dependent claims to depend from a corresponding substitute claim.” Mot. 3.
`Patent Owner, however, proposed only one substitute claim in the Motion:
`claim 13. If Patent Owner intends to amend any of claims 2–12 to depend
`from proposed substitute claim 13 (rather than claim 1), amendments to that
`effect would need to be submitted in a revised motion to amend.
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`amendment; and (3) written description support must be set forth in the
`motion to amend itself, not in the claim listing. Paper 15, 2–3; see
`37 C.F.R. § 42.221(b). Patent Owner’s Motion does not meet any of these
`requirements. See Mot. App’x A. Should Patent Owner file a reply or a
`revised motion to amend, we encourage Patent Owner to address this issue
`and follow the requirements set forth in the Order.
`
`Patent Owner’s Motion further lists only pin cites to alleged written
`description support for the added limitations in the issued patent, without
`explanation. Should Patent Owner file a revised motion to amend, we
`encourage Patent Owner to provide explanation for alleged written
`description support for the entire proposed substitute claim, in addition to
`citations to the original application.
`
`B. Patentability
`
`For the reasons discussed below, at this stage of the proceeding, and
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`based on the current record,2 it appears that Petitioner (or the record) has
`
`shown a reasonable likelihood that proposed substitute claim 13 is
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`unpatentable.
`
`Does the record establish a reasonable likelihood that the proposed
`substitute claim is unpatentable?
`
`1. Indefiniteness
`
`No. On this record, Petitioner has not established a reasonable likelihood
`that proposed substitute claim 13 is unpatentable for failure to comply
`with the definiteness requirement of 35 U.S.C. § 112, second paragraph.
`“[A] patent is invalid for indefiniteness if its claims, read in light of the
`specification delineating the patent, and the prosecution history, fail to
`inform, with reasonable certainty, those skilled in the art about the scope
`of the invention.” Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898,
`901 (2014); see USPTO Memorandum on the Approach to Indefiniteness
`Under 35 U.S.C. § 112 in AIA Post-Grant Proceedings (Jan. 6, 2021),
`available at https://www.uspto.gov/sites/default/files/documents/
`
`
`2 We express no view on the patentability of original claims 1–12 in this
`Preliminary Guidance. Instead, we focus on proposed substitute claim 13,
`which adds certain limitations to challenged claim 1.
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`IndefinitenessMemo.pdf.
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`Petitioner contends that claim 13 is indefinite because the phrase
`“high-frequency grand model” does not inform a person of ordinary skill
`in the art about the scope of the claim with reasonable certainty.
`Opp. 15–16 (citing Ex. 1001; Ex. 1038 ¶¶ 39–41). Petitioner argues that
`the Specification references “low” and “high” frequency trading models,
`but does not explain sufficiently the difference between them. Id. at 15.
`Petitioner points out that the Specification “notes a once-per-day model
`that would not be considered high frequency” and discloses a preferred
`embodiment of a high-frequency model that “provides hourly
`recommendations,” but does not reasonably inform a person of ordinary
`skill in the art “which frequencies in between these data points would
`qualify as ‘high.’” Id. Petitioner acknowledges that the Specification
`describes multiple examples of high-frequency parameters. Id. at 16.
`According to Petitioner, though, “the outer bounds of what is considered
`‘high’ frequency [are] not reasonably certain.” Id.
`
`Patent Owner cites various portions of the Specification as written
`description support for the added limitation of proposed substitute
`claim 13 that “the plurality of trading sub-models form a high-frequency
`grand model according to a set of 5 high-frequency parameters.”
`Mot. App’x A (citing Ex. 1001, col. 28, l. 44–col. 29, l. 5, col. 29,
`ll. 25–38, col. 30, ll. 44–52). Those portions describe a “high-frequency
`grand model . . . specified according to” five exemplary “high-frequency
`parameters” that “determine how individual sub-models (acting only once
`daily) are to be converted into a high-frequency grand model with
`temporal delocalization.” Ex. 1001, col. 28, ll. 44–62. We also note that
`the Specification identifies a problem with individual models that give
`recommendations every 24 hours and states that
`
`[t]he solution to this problem is to regard the models at different
`hours to be simply sub-models that are ingredients of a final
`model, which we shall refer to hereafter as the grand model. The
`grand model is thus a portfolio of models that are each updated
`individually by the daily business time series corresponding to
`every hour of the day. The grand model then acts at any hour,
`on the hour, based on some voting scheme applied to the most
`recently updated sub-models within the past [zero to 23] hours.
`
`Id. at col. 25, ll. 1–16. Petitioner has not provided sufficient explanation
`at this stage for why the claim fails to inform, with reasonable certainty,
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`those skilled in the art as to the scope of the phrase “high-frequency grand
`model.” To the extent Petitioner’s issue is with respect to the adjective
`“high-frequency” (which modifies both “grand model” and “parameters”
`in limitation (g)), the parties are encouraged to provide a proposed
`interpretation for the term in their papers during trial.
`
`We also note that proposed substitute claim 13 appears to contain two
`typographical errors. First, proposed substitute claim 13 is missing the
`parentheses around each claim limitation (e.g., “(a),” “(b)”) that are
`present in challenged claim 1. Second, a period rather than a semicolon
`follows the phrase “wherein the plurality of computers includes two or
`more computers” in limitation (f) of proposed substitute claim 13. Should
`Patent Owner file a revised motion to amend, we encourage Patent Owner
`to address these typographical errors. We further encourage Patent Owner
`to consider whether the phrase “wherein the plurality of computers
`includes two or more computers” in limitation (f) is mere surplusage, as
`the ordinary meaning of a “plurality” is “two or more.”
`
`2. Eligibility
`
`Yes. On this record, Petitioner establishes a reasonable likelihood that
`proposed substitute claim 13 is unpatentable because it is directed to
`patent-ineligible subject matter under 35 U.S.C. § 101. See Opp. 4–15.
`In determining whether a claim falls within an excluded category, we are
`guided by the Supreme Court’s two-step framework, described in Mayo
`and Alice. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217–18 (2014)
`(citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66,
`75–77 (2012)). We further apply the 2019 Revised Patent Subject Matter
`Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”).
`
`Step 1: Statutory Category
`
`Proposed substitute claim 13 recites a “method,” which is a “process” that
`is statutory subject matter under § 101.
`
`Step 2A, Prong 1: Whether the Claim Recites an Abstract Idea
`
`Under Step 2A, Prong 1 of the Guidance, we must determine whether
`proposed substitute claim 13 recites limitations that fall within any of the
`recognized categories of abstract ideas. Petitioner asserts that claim 13 is
`directed to the same alleged abstract idea argued in the Petition with
`respect to claim 1—“time-based trade analysis”—which is a fundamental
`economic practice, or, alternatively, “high-frequency time-based trade
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`analysis using distributed parallel processing and parameters,” which
`likewise is a fundamental economic practice. Opp. 4–8. Limitation (f)
`adds the requirement that the method be performed by separate programs
`run in parallel on different computers, and limitation (g) adds the
`requirement that the plurality of trading sub-models form a
`“high-frequency grand model according to a set of 5 high-frequency
`parameters.” Patent Owner argues that each of these is “a specific,
`non-abstract, concrete limitation, which causes the claim to be not directed
`to an abstract idea.” Mot. 5. Petitioner responds that limitation (f) “does
`not alter the claim’s character” because it provides only a general
`instruction on how to implement the abstract idea on generic computers,
`and limitation (g) likewise “fails to alter the claim’s character” because the
`“high-frequency” nature of the grand model at most “describes the speed”
`at which the time-based trade analysis is performed. Opp. 6–7. On this
`record, we are persuaded that the original limitations of claim 1 recite
`time-based trade analysis, for the reasons stated in the Decision on
`Institution, and limitation (g) places limitations on the speed of such
`analysis. See Dec. on Inst. 21–25. Thus, based on the current record, it
`appears that claim 13 recites high-frequency time-based trade analysis,
`which is a fundamental economic practice, one of the certain methods of
`organizing human activity identified in the Guidance, and, thus, an
`abstract idea. We address limitation (f) below in assessing Step 2A,
`Prong 2.
`
`Step 2A, Prong 2: Whether the Judicial Exception is
`Integrated Into a Practical Application
`
`Under Step 2A, Prong 2 of the Guidance, a claim reciting an abstract idea
`is not “directed to” the abstract idea “if the claim as a whole integrates the
`recited judicial exception into a practical application of that exception.”
`Guidance, 84 Fed. Reg. at 53. Step 2A, Prong 2 is evaluated by
`“(a) [i]dentifying whether there are any additional elements recited in the
`claim beyond the judicial exception(s); and (b) evaluating those additional
`elements individually and in combination to determine whether they
`integrate the exception into a practical application.” Id. at 54–55. One
`example in which a judicial exception may be integrated into a practical
`application is when the claim includes “[a]n additional element [that]
`reflects an improvement in the functioning of a computer, or an
`improvement to other technology or technical field.” Id. at 55.
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`Regarding limitation (f), Patent Owner argues that the limitation of
`“separate programs” each running “in parallel with one or more other
`separate programs” narrows the claimed method to “being practiced on a
`specific software architecture,” and the limitation of execution on
`“a plurality of computers” narrows the claimed method to “a specific
`hardware architecture.” Mot. 5. Regarding limitation (g), Patent Owner
`argues that the added language “removes any possibility that the method
`is directed simply to ‘time based trade analysis’ or any other purportedly
`abstract idea.” Id. at 5–6. Petitioner responds that limitations (f) and (g)
`do not “provide a practical application of time-based trade analysis that
`improves technology.” Opp. 8. Petitioner contends that “[d]istributed
`parallel processing was already well known, and the claim offers no
`specifics about how distributed parallel processing is integrated into the
`abstract method.” Id. at 9 (citing Ex. 1038 ¶¶ 29–36, 48–50) (emphasis
`added). Petitioner also argues that “claim 13 does not describe any feature
`that would make the speed or frequency of the model calculations higher
`than prior models,” and “[u]sing ‘high-frequency’ models and parameters
`thus did not improve technology, nor did using five such parameters.” Id.
`at 10 (citing Ex. 1038 ¶¶ 23, 31–34, 57). As explained above, we are
`persuaded on this record that the language of limitation (g) is part of the
`fundamental economic practice of high-frequency time-based trade
`analysis. With respect to limitation (f), claim 13 recites generic computer
`components (“plurality of computers,” “plurality of separate programs”)
`and does not include any technical detail as to how the calculations of the
`recited method are performed, other than that the separate programs are
`executed “in parallel.” See Guidance at 55 & n.30; Intellectual Ventures I
`LLC v. Symantec Corp., 838 F.3d 1307, 1315 (Fed. Cir. 2016) (“Claims
`that amount to nothing significantly more than an instruction to apply an
`abstract idea using some unspecified, generic computer and in which each
`step does no more than require a generic computer to perform generic
`computer functions do not make an abstract idea patent-eligible because
`claiming the improved speed or efficiency inherent with applying the
`abstract idea on a computer does not provide a sufficient inventive
`concept.” (internal quotations, alterations, and citations omitted)).
`Accordingly, on this record, it appears that the added language of
`limitation (g) does not integrate the recited abstract idea into a practical
`application.
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`Step 2B: Whether the Claim Provides an Inventive Concept
`
`If a claim is determined to be directed to a judicial exception at Step 2A,
`we must evaluate the additional elements individually and in combination
`at Step 2B to determine whether they provide an inventive concept (i.e.,
`whether the additional elements amount to significantly more than the
`exception itself). Guidance, 84 Fed. Reg. at 56. We must consider in
`Step 2B whether an additional element or combination of elements:
`(1) “[a]dds a specific limitation or combination of limitations that are not
`well-understood, routine, conventional activity in the field, which is
`indicative that an inventive concept may be present,” or (2) “simply
`appends well-understood, routine, conventional activities previously
`known to the industry, specified at a high level of generality, to the
`judicial exception, which is indicative that an inventive concept may not
`be present.” Id.
`
`Patent Owner contends that the combination of the “hardware
`architecture” and “software architecture” recited in limitation (f), and the
`use of a “high-frequency grand model according to a set of
`5 high-frequency parameters” in limitation (g), each represent a “specific
`novel technological advance which . . . provides an inventive step.”
`Mot. 5–6. Petitioner responds that “the basic trade-modeling steps and
`generic computer functionality recited in claim 13 were well-known,
`routine, and conventional.” Opp. 10 (citing Ex. 1004 ¶¶ 52–54; Ex. 1038
`¶¶ 43–57). Petitioner argues that the “distributed parallel processing”
`recited in limitation (f) is “merely a high-level recitation of conventional
`computer functionality,” given that the claim “says nothing about how the
`separate programs are ‘construct[ed],’ what functions the programs
`perform, which aspects of the method are performed in parallel, or any
`other implementation details.” Id. at 12–13. Petitioner further contends
`that limitation (g) “recites the well-known, routine, and conventional use
`of parameters when combining the output of sub-models.” Id. at 13.
`Petitioner relies on the testimony of Bernard S. Donefer and various
`supporting materials in support of its assertions regarding the alleged
`conventionality of limitations (g) and (f). Id. at 12–15 (citing Ex. 1004
`¶¶ 29–30, 42, 52–53; Ex. 1038 ¶¶ 30–36, 40, 48–50, 53–58; Exs. 1001,
`1012, 1015, 1019, 1027, 1031, 1032, 1039, 1041, 1043, 1044, 1045).
`
`On this record, Petitioner has made a sufficient showing that the
`limitations of proposed substitute claim 13, viewed individually and as an
`ordered combination, merely use well-understood, routine, and
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`conventional computer components and functionality to perform
`high-frequency time-based trade analysis. We acknowledge that Patent
`Owner has not yet had the opportunity to address Petitioner’s contentions
`regarding proposed substitute claim 13, including the new declaration
`from Mr. Donefer and supporting evidence filed with Petitioner’s
`Opposition. Patent Owner will have the opportunity to do so in its reply to
`Petitioner’s Opposition (or in a revised motion to amend) in this
`proceeding.
`
`3. Obviousness
`
`Yes. On this record, Petitioner establishes a reasonable likelihood that
`proposed claim 13 is unpatentable over O.V. Pictet et al., “Real-Time
`Trading Models for Foreign Exchange Rates,” International Journal on
`Neural and Mass-Parallel Computing and Information Systems, vol. 2,
`no. 6, 713–744 (1992) (Ex. 1031, “Pictet”), under 35 U.S.C. § 103.
`Although not addressed by the parties, we determine at this stage and for
`the purposes of this Preliminary Guidance that there is a reasonable
`likelihood that Pictet is a printed publication. Pictet appears to be an
`article from an international journal and includes on its face a copyright
`date of 1992 and an International Standard Serial Number (“ISSN”) of
`1210-0552. See Ex. 1031; Hulu, LLC v. Sound View Innovations, LLC,
`IPR2018-01039, Paper 29, 11, 18 (PTAB Dec. 20, 2019) (precedential)
`(“The Board has often found a reasonable likelihood that a reference is a
`printed publication . . . when the evidence relied on in a petition provides
`strong indicia that an asserted reference was publicly accessible,” but
`“[t]o prevail in a final written decision, . . . the petitioner bears the burden
`of establishing by a preponderance of the evidence that a particular
`document is a printed publication.”).
`
`We address each limitation of proposed substitute claim 13 below.
`
`Preamble: Petitioner argues that Pictet teaches a method of using
`computers to run real-time trading models that make recommendations for
`foreign exchange (“FX”) deals. Opp. 17 (citing Ex. 1031, 713–714, 723;
`Ex. 1038 ¶ 60). On this record, and to the extent the preamble is limiting,
`it appears that Pictet teaches the preamble.
`
`Limitation (a): Petitioner argues that Pictet teaches collecting FX price
`quotes over a computer network. Id. (citing Ex. 1031, 713–716, 718;
`Ex. 1038 ¶ 61). On this record, it appears that Pictet teaches limitation (a).
`
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`Limitation (b): Petitioner argues that Pictet teaches a trading model that
`receives “current position system information” because the model displays
`the “current position” and evaluates the “current position” as an input for
`making trading recommendations. Id. at 17–18 (citing Ex. 1031, 714, 716,
`720, 732; Ex. 1038 ¶ 62). On this record, it appears that Pictet teaches
`limitation (b).
`
`Limitation (c): Petitioner argues that Pictet teaches a price database that
`stores “received asset price data” in a computer-readable medium. Id. at
`18 (citing Ex. 1031, 718; Ex. 1038 ¶ 63). Petitioner contends that a person
`of ordinary skill in the art “would have understood that for the computer
`system to use and reevaluate the current system position information
`[as recited in limitation (b)], that information would also be stored in a
`computer-readable medium.” Id. (citing Ex. 1038 ¶ 63). On this record,
`it appears that Pictet teaches limitation (c).
`
`Limitation (d): Petitioner argues that a person of ordinary skill in the art
`“would have understood sub-models ‘based on a different time of day,’
`as recited in [limitation] (d), to encompass models run successively at
`different times of day,” and “would have understood ‘trade
`recommendation information’ to encompass an indicator.’” Id. at 19
`(citing Ex. 1001, col. 2, ll. 16–20, col. 25, ll. 1–10; Ex. 1038 ¶¶ 64, 65).
`Petitioner contends that Pictet teaches iterative calculations of indicators
`at different hours, which correspond to the claimed sub-models each based
`on a different time of day. Id. at 19–20 (citing Ex. 1038 ¶ 66). Petitioner
`cites to Pictet’s “indicators” that are a “function only of time and the price
`history,” “activity functions” that are “functions of the time within a day
`and of the nature of the weekday,” and “repeated application” of a moving
`average. Id. (citing Ex. 1031, 728–732). On this record, it appears that
`Pictet teaches, or at least suggests, limitation (d). The parties are
`encouraged to address in their papers during trial whether Pictet’s hourly
`iterations constitute “a plurality of trading sub-models, wherein each
`sub-model is based on a different time of day,” as recited in proposed
`substitute claim 13. See Ex. 1001, col. 25, ll. 1–10.
`
`Limitation (e): Petitioner argues that Pictet teaches “calculating trade
`recommendations for an FX asset based on the indicators.” Opp. 20
`(citing Ex. 1031, 730–732; Ex. 1038 ¶ 67). Petitioner points to Pictet’s
`iterative calculation of a moving average, where each iteration
`incorporates the previous outputs of the sub-models. Id. On this record,
`it appears that Pictet teaches, or at least suggests, limitation (e).
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`Limitation (f): Petitioner argues that Pictet teaches a system that “is
`constructed as a collection of separate programs” where “various programs
`run in parallel on several computers.” Id. at 21 (quoting Ex. 1031, 718;
`citing Ex. 1038 ¶ 68). On this record, it appears that Pictet teaches
`limitation (f).
`
`Limitation (g): Petitioner argues that although limitation (g) recites five
`high-frequency parameters for the high-frequency grand model, the claim
`is open-ended (because it uses the term “comprising”) and does not require
`any particular parameters. Id. According to Petitioner, a person of
`ordinary skill in the art “would have viewed Pictet’s model as a ‘grand’
`model, as that term is used in the ’534 patent, because it combines the
`outputs of multiple previous iterations.” Id. at 21–22 (citing Ex. 1001,
`col. 25, ll. 1–19; Ex. 1038 ¶ 70). Petitioner contends that Pictet teaches
`a system that analyzes data in “real-time,” which a person of ordinary skill
`in the art would have understood as “high-frequency.” Id. at 22 (citing
`Ex. 1031, 713–714, 743; Ex. 1038 ¶ 71). Petitioner argues that, although
`it believes the scope of the claim is unclear, a person of ordinary skill in
`the art would have understood Pictet to teach the limitation because “Pictet
`teaches forming its modeling according to at least five parameters that are
`the same, or at least analogous to, the ’534 patent’s exemplary
`high-frequency parameters,” including “stop-loss and stop-profit
`parameters,” a “time parameter,” a “voting scheme,” and “several
`threshold parameters for evaluating whether the indicator warrants a trade
`recommendation.” Id. at 23–24 (citing Ex. 1031, 718–723, 729–732,
`737–738). Finally, Petitioner provides an explanation for why a person of
`ordinary skill in the art would have had reason to combine Pictet’s
`teachings and arrive at the method of proposed substitute claim 13. For
`example, Petitioner contends that an ordinarily skilled artisan would have
`had “reason to use at least five of the parameters discussed [in the
`Opposition] when configuring the rules governing the ‘grand’ model”
`because “numerous types of parameters were routinely used when
`designing and evaluating trade models, and Pictet’s moving average . . . is
`no different.” Id. at 24–25 (citing Ex. 1038 ¶¶ 52–58, 76). On this record,
`it appears that Pictet teaches, or at least suggests, limitation (g) and that a
`person of ordinary skill in the art would have had reason to combine the
`various cited teachings of Pictet in the manner asserted.
`
`
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`13
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`

`

`CBM2020-00023
`Patent 7,496,534 B2
`
`
`For the reasons explained above, at this preliminary stage of the
`proceeding, and prior to having heard from Patent Owner on the issue,
`we determine that Petitioner has shown a reasonable likelihood that
`proposed substitute claim 13 is unpatentable over Pictet.
`
`
`
`
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`
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`14
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`

`

`CBM2020-00023
`Patent 7,496,534 B2
`
`FOR PETITIONER:
`
`Michael Rosato
`Matthew Argenti
`Wesley Derryberry
`WILSON SONSINI GOODRICH & ROSATI
`mrosato@wsgr.com
`margenti@wsgr.com
`wderryberry@wsgr.com
`
`
`FOR PATENT OWNER:
`
`Drew Koning
`KONING ZOLLAR LLP
`drew@kzllp.com
`
`
`
`
`
`15
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`