• Interactive Brokers LLC / CQG, Inc. et al. v. Chart Trading Development, LLCAll claims unpatentable
  PTAB · Aug 18, 2017 · CBM2016-00038 · APJ Brian J Mcnamara · CBM · Final written decision

  Claims 1–42 are unpatentable under § 101 as patent-ineligible and under § 103 as obvious over Friesen, Jones, and Kirwin.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner

    “We agree with Petitioner that the term “interactive graphical representation of a market” in the preamble is not limiting. Pet. Reply. 4–5. The organization of claims 1 and 9 is similar—claim 1 recites a method for providing an interactive graphical representation of a market and claim 9 recites an apparatus for providing an interactive graphical representation of a market. Thus, the argued term merely sets forth an intended use for the claimed method and apparatus, and it is the elements of the claim that define this term in the preamble. See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999) (“If, however, the body of the claim fully and intrinsically sets forth the complete invention, including all of its limitations, and the preamble offers no distinct definition of any of the claimed invention’s limitations, but rather merely states, for example, the purpose or intended use of the invention, then the preamble is of no significance to claim construction because it cannot be said to constitute or explain a claim limitation.”).” slip op. at 6

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner

    “serves as a trading interface. Although we consider the term in the preamble to be non-limiting, for purposes of clarity, we address its construction in this Decision. Having considered the above arguments, we determine that our initial construction was not the broadest reasonable interpretation. Both method claim 1 and apparatus claim 9 recite “providing an interactive graphical representation of a market.” Our initial construction reads into the preamble term “interactive” a feature that concerns allowing a user to place a trade. However the preamble term “interactive” does not require such a limited view of user interactions. An “interactive graphical representation of a market” encompasses a broader spectrum of user interactions with the graph of the market than making trades. The provided graphical representation is a graph of a market. The graph is interactive because it is presented to the user in a form that the user can interact with it. Other features recited in the claim, e.g., allowing a user to select a portion of the graph, define the scope of that interaction. Thus, we construe “an interactive graphical representation of a market” to mean a graph of a market presented to a user in such a form that the user can take actions using the graph.” slip op. at 6

  • Skill levelOther

    “ORDINARY SKILL IN THE ART Petitioner contends that one of ordinary skill in the art includes someone who, through education or practical experience, possesses the equivalent of a bachelor’s degree in computer science, information science, or a related field and has at least two years of work experience developing or implementing user interfaces for electronic trading systems. Pet. 13 (citing Ex. 1002, Declaration of Bernard S. Donefer (“Donefer Decl.”) ¶ 45). Patent Owner contends that a person of ordinary skill would have a bachelor’s degree in computer science or equivalent experience, and at least three years of experience in designing and/or developing user interfaces, including experience designing and/or developing graphical user interfaces for electronic trading. PO Resp. 13 (citing Declaration of Nazaar Molokhia (“Molokhia Decl.”) ¶¶ 14–15). Notwithstanding their one year difference in experience level, we find the parties’ assessments of the level of ordinary skill not to be materially different.” slip op. at 8

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “testimony because he lacks requisite education and experience to satisfy either party’s definition of a person of ordinary skill. PO Resp. 14–22. Patent Owner acknowledges that Mr. Donefer “may well be experienced with the business considerations of traders and financial institution by virtue of his degrees in two fields of business and his work experience in the business departments of various financial institutions.” PO Resp. 20. Patent Owner argues, however, that Mr. Donefer’s business experience is not a substitute for the relevant technical experience needed to testify as to claim construction, the scope of the ’190 Patent claims, the state of the art, anticipation or obviousness. Id. at 21–22. In addition to the arguing that Mr. Donefer does not have the technical background that his testimony states is a baseline for one of ordinary skill, Patent Owner notes that Mr. Donefer has always held non-technical positions as a project manager and testified that he never used trading software allowing a trader to place a trade directly from a graph and that he does not know when products with such features were introduced to the market. Id. at 18–19. Petitioner contends that Mr. Donefer is more experienced than a typical end user of an electronic trading system and has been developing such systems for many years. Pet. Reply 3. Petitioner emphasizes that, in addition to his bachelor’s in economics and MBA in finance, Mr. Donefer also minored in information systems. Id. at 2. Petitioner further notes that, as a consultant and project manager, Mr. Donefer has extensive experience developing, designing, and implementing graphical user interfaces (GUIs) and that Mr. Donefer was recognized by Fidelity Investments for his work in developing an electronic trading system. Id. at 3. Although, that system did not represent market information in a graph, information it provided to other terminals, such as those used by Bloomberg, may have been presented as graphical information. Ex. 2026, Transcript of Deposition of Bernard S. Donefer (“Donefer Tr.”), 72:16–73:11. At his level of professional responsibility, Mr. Donefer works on system architecture to accommodate trader needs—he acknowledges that he does not code programs and does not teach programming in the college courses he teaches. Ex. 2026, Donefer Tr., 30:10–33:18, 36:19–22. Nevertheless, Mr. Donefer takes courses in programming languages, such as C++, R and Python, to keep up with languages that his students are using. Id. at 54:4–56:5. The college-level courses Mr. Donefer teaches—in IT in financial markets and financial information systems—address order management systems, and Mr. Donefer occasionally invites order management vendors to demonstrate such systems to students. Id. at 35:10– 36:13. Mr. Donefer teaches prospective business analysts about business processes and business problems in order to design solutions, focusing on turning requirements into documentation a coder can use to implement a business process, rather than on coding itself. See id. at 38:10–41:8. There is no requirement imposed by the Federal Rules of Evidence” slip op. at 9

  Patent outcomesUS 7,113,190 unpatentable
  Claim construction§ 101 eligibility§ 103 obviousnesscites Alice · Mayo · Enfish · Electric Power · KSR · Graham
  Patents in suitUS 7,113,190
• Nautilus Hyosung Inc. v. Diebold Nixdorf, Inc.All claims unpatentable
  PTAB · Aug 14, 2017 · CBM2016-00034 · APJ Barbara A Benoit · CBM · Final written decision

  Claims 1–24 are unpatentable under § 101; claims 1–3 and 5 are also anticipated by Riach, and specified claims are obvious over combinations of Riach, Graf, Gustin, and Anderson.

  RulingsFinal written decision

  • Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable

    “For these reasons, we determine that claim 20—its focus and its” slip op. at 37

  • Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptUnpatentable

    “For the foregoing reasons, we conclude that claim 20 is directed to an” slip op. at 52

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “encompasses Riach’s process that copies a portion (but not all) of the original check image data to produce the required modified check image data. Accordingly, we agree that the portion of Riach on which Petitioner relies discloses step (b) of claim 1 that requires, among other limitations, the modified check image data not include at least some visual feature data included in the check image data. Pet. 30 (relying on Ex. 1008, 5:16–30, Figs. 4, 7).” slip op. at 73

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable

    “several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.” KSR, 550 U.S. at 418. Rather, “it can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.” Apple, 839 F.3d at 1058 (quoting KSR, 550 U.S. at 418–19); see also KSR, 550 U.S. at 418 (“[T]here must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).” slip op. at 89

  Patent outcomesUS 7,314,163 unpatentable
  § 101 eligibility§ 102 anticipation§ 103 obviousnesscites Alice · Mayo · Bilski · Enfish · Electric Power · Phillips · Graham
  Patents in suitUS 7,314,163
• Ibg LLC / Interactive Brokers LLC et al. v. Trading Technologies International, Inc.All claims unpatentable
  PTAB · Aug 14, 2017 · CBM2016-00032 · APJ Meredith C Petravick · CBM · Final written decision

  Claims 1–35 are patent-ineligible under § 101 because they claim displaying market information to facilitate trading, without an inventive concept beyond routine, conventional computer functions.

  RulingsFinal written decision

  • ExcludeDenied

    “D. Motions to Exclude Petitioner moves to exclude various ones of Patent Owner’s Exhibits. Pet. MTE 2–10. Because the outcome of this trial does not change based on 29 whether or not we exclude those exhibits, we dismiss Petitioner’s Motion to Exclude as moot. Patent Owner moves to exclude certain testimony of its declarant Mr. Christopher Thomas. PO MTE 1–8 (seeking to exclude Ex. 1047, 248, 263– 269). Because we did not rely upon this testimony in our decision, we dismiss Patent Owner’s Motion to Exclude as moot.” slip op. at 29

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner

    “1. “axis of prices” and “indicators, icons, and tokens” Petitioner proposes constructions for the following claim terms: “axis of prices” and “indicators, icons, and tokens,” which are recited at least in claims 1, 9, and 35. Pet. 13–17. Patent Owner does not challenge Petitioner’s proposed claim constructions. We have reviewed Petitioner’s proposed constructions and determined that they are consistent with the broadest reasonable constructions for the reason discussed in the Petition. Id. We adopt the following claim constructions: Claim Term Construction axis of prices a reference line for plotting prices, including labeled, unlabeled, visible, and invisible reference lines indicators, icons, and tokens a symbol such as an alphanumeric character or a graphic representation of an item B. Covered Business Method Patent Section 18 of the Leahy-Smith America Invents Act, Pub. L. No. 112–” slip op. at 7

  • Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable

    “According to Petitioner, the challenged claims are directed to the abstract idea of graphing (or displaying) bids and offers to assist a trader to make an order. Pet. 19–20. This is consistent with claim 1 of the ’999 patent. Claim 1 is representative of independent claims 1 and 35. Claim 1 recites a “method for facilitating the placement of an order for an item and for displaying transactional information to a user regarding the buying and selling of items.” Claim 1 recites multiple steps of receiving and displaying market information, including indicators of bids and offers in the market, of new bids and offers in the market, and of an order by the user. Claim 1 also recites steps that require sending an order to an electronic trading exchange. The focus of the claim is on collecting and displaying market order information so that a user (i.e., a trader) can place an order. The disclosure of the purported problem solved by the ’999 patent is consistent with this focus. The ’999 patent discloses that the difference between its system and “conventional systems” is that its system displays all of the outstanding bid and offer orders and not just the highest bid and lowest offer to a trader. Ex. 1001, 2:15–19, 2:28–38. A trader having such information is at an advantage because the trader can better anticipate the market and future demand for an item when placing an order. Id. at 1:26–58. Collecting information and displaying the information, without more, is within the realm of abstract ideas. Electric Power Group, LLC v. Alstom S.A., 830 F.2d 22 1350, 1352 (Fed. Cir. 2016).” slip op. at 22

  • Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptUnpatentable

    “Claim 1 does not recite elements or a combination of elements that are “sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [abstract idea] itself.” Alice, 134 S. Ct. at 2355 (citing Mayo, 132 S. Ct. at 1294). Receiving market information is nothing more than a routine data gathering step. See Ex. 1001, 1:31–35. Routine data gathering does not transform the abstract idea into a patent-eligible invention. See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir. 2011) (holding “[t]he mere collection and organization of data” patent-ineligible). Displaying information as indicators along a scaled price axis is well-understood, routine, conventional activity (see Ex. 1016, 0107, Ex. 1023, Fig. 2b, Ex. 1022, Figs. 4–5, Ex. 1027, Ex. 1050, Fig. 5A) that does not add significantly more to the abstract idea. See Mayo, 132 S. Ct. at 1298, Patent Owner contends that combination of displaying market information and selecting and moving an icon to place an order is an inventive concept that transforms the abstract idea into a particular application. PO Resp. 24–26. Patent Owner relies upon the testimony of Mr. Christopher Thomas to show that “the claimed combination did not exist prior to the invention in either the physical world or as a GUI.” Id. at 22 (citing Ex. 2169 ¶¶ 41, 46–53). Mr. Thomas’s testimony is unpersuasive because, as discussed above, it does not specifically address the claimed invention of the ’999 patent. See Ex. 2169 ¶¶ 1, 43 (discussing U.S. Patent No 7,904,374). Selecting and moving an icon is a well-understood, routine, conventional activity that does not add significantly more to the abstract 28 idea. See Ex. 1029, 247–249 (disclosing that drag-and-drop (i.e., clicking and hold a button while moving some object across a screen) is old and well known). Conventional post-solution activity is not sufficient to transform the abstract idea into patent-eligible subject matter. See Parker v. Flook, 437 U.S. 584, 590–92 (1978). The claim requires nothing more than a generic computer to perform the method of claim 1. The individual elements of the claim do not transform the nature of the claim into a patent-eligible application. They do not add significantly more to the abstract idea or fundamental economic practice. Contrary to Patent Owner’s argument, the claim simply recites the use of a generic computer with routine and conventional functions. Even considering all of the elements as an ordered combination, the combined elements also do not transform the nature of the claim into a patent-eligible application.” slip op. at 28

  Patent outcomesUS 7,212,999 unpatentable
  Claim construction§ 101 eligibilitycites Mayo · Enfish · Electric Power
  Patents in suitUS 7,212,999
• Ibg LLC / Interactive Brokers LLC et al. v. Trading Technologies International, Inc.All claims unpatentable
  PTAB · Aug 7, 2017 · CBM2016-00051 · APJ Jeremy M Plenzler · CBM · Final written decision

  Claims 1–36 are unpatentable under § 101 because they claim the abstract idea of receiving user input and placing a trade order without an inventive concept.

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “Applying that standard, we interpret the claim terms of the ’374 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). Petitioner proposes constructions for several terms (Pet. 24–27), and Patent Owner does not propose any explicit claim construction. We determine that no term requires explicit construction in order to conduct properly our analysis of the asserted challenge.” slip op. at 6

  • ExcludeMotion to exclude, deniedDenied

    “2292–2296 (the eSpeed/CQG Transcripts); Exhibit 2223 (the Electronic Trader Declarants Exhibit); Exhibit 2214 (Animation); Exhibit 2169 ¶¶ 71, 79, 80, 83–86, 92–95, and 100–102 (Confidential Declaration of Christopher Thomas); and Exhibits 2206, 2207, 2415, 2416, 2250, and 2279–2282 (Documents from District Court Cases). Paper 31, 2–10. Patent Owner moves to exclude Exhibit 1003 (TSE) and Exhibit 1009 (the transcript of Mr. Kawashima’s testimony). Paper 34, 1. Petitioner’s Motion to Exclude Evidence and Patent Owner’s Motion to Exclude Evidence are dismissed because we do not rely on the Exhibits or portions of the Exhibits addressed by those motions in reaching our Decision. ORDER For the reasons given, it is: ORDERED that claims 1–36 of the ’374 patent are unpatentable; FURTHER ORDERED that Petitioner’s Motion to Exclude Evidence is dismissed; FURTHER ORDERED that Patent Owner’s Motion to Exclude Evidence is dismissed; and” slip op. at 23

  • BurdenFwd all claims unpatentableUnpatentable

    “Patent Owner fails to identify, and we are not apprised of, an inventive concept in the claims. Patent Owner does not allege that a specific claim limitation, or combination of limitations, provides an inventive concept. As explained above, we are persuaded that the claim does not include elements that “transform the nature of the claim” into a “patent-eligible application.” Given the above, we determine that the combination of elements of the claim does not transform the nature of the claim into a patent-eligible application of the abstract idea. They do not add significantly more to the abstract idea.” slip op. at 22

  • Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionDecided for petitioner

    “As noted above, claim 1 only minimally requires collecting and analyzing information and includes no requirement that any of that information is displayed. Even collecting, analyzing, and displaying information, by itself, however, does not remove claims from abstraction. See, e.g., Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353–54 (Fed. Cir. 2016). To the extent claim 1 requires a GUI, it does so in the most basic sense, only requiring generic graphical locations that are selectable by a user. Claims that require a GUI are not automatically patent eligible. Affinity Labs, 838 F.3d at 1255–56; Apple, Inc., v. Ameranth, Inc., 842 F.3d 1229, 1234 (Fed. Cir. 2016). In both Affinity Labs and Ameranth, the court determined that the claims were not directed to a particular way of programming or designing the software, but instead merely claim the resulting systems, and determined that the claims are not directed to a specific improvement in the way computers operate. Affinity Labs, 838 F.3d at 1260–61; Ameranth, 842 F.3d at 1241. The same is true here in that the claims are not directed to any particular way of programming or designing software, but merely claim the resulting system and not any specific improvement in the way a computer operates.” slip op. at 16

  Patent outcomesUS 7,904,374 unpatentable
  Claim construction§ 101 eligibilitycites Mayo · Enfish · Electric Power
  Patents in suitUS 7,904,374
• Ibg LLC / Interactive Brokers LLC et al. v. Trading Technologies International, Inc.All claims unpatentable
  PTAB · Aug 7, 2017 · CBM2016-00031 · APJ Meredith C Petravick · CBM · Final written decision

  Claims 1–20 are patent-ineligible under § 101 because they claim the abstract practice of placing trades based on displayed market information without an inventive concept.

  RulingsFinal written decision

  • ExcludeDenied

    “D. Petitioner’s Motion to Exclude Petitioner moves to exclude various ones of Patent Owner’s Exhibits. MTE 2–10. Because the outcome of this trial does not change based on whether or not we exclude those exhibits, we dismiss Petitioner’s Motion to Exclude as moot.” slip op. at 33

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “Applying that standard, we interpret the claim terms of the ’996 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). Petitioner proposes constructions for two claim limitations. Pet. 21–22. Patent Owner does not propose any explicit claim construction. For purposes of this Decision, we determine that no particular term requires explicit construction.” slip op. at 9

  • Expert testimonyOther

    “Petitioner’s response is unhelpful. Petitioner cites to a single dictionary definition for a definition of just the term “record.” Ex. 1043, 3. Petitioner, however, fails to offer evidence or persuasive argument as to how one skilled in the art would have understood the phrase “computer readable medium having program code recorded thereon.” At oral hearing, when asked why no evidence was provided in this regard, Petitioner had no explanation other than “it would be difficult . . . because this is a term of art in the patent field” and “you can[not] go to an IEEE dictionary and find necessarily a dictionary definition that would be helpful here.” Tr. 71:4–10. Accordingly, on this record, we are not persuaded by Petitioner that at the time of the invention one skilled in the art would have understood “computer readable medium having program code recorded thereon” as encompassing transitory, propagating signals.” slip op. at 21

  • Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable

    “Given this, we determine that placing an order based on displayed market information, such as the inside market and few other orders, as well as updating the market information is a fundamental economic and conventional business practice.” slip op. at 26

  Patent outcomesUS 7,813,996 unpatentable
  Claim construction§ 101 eligibilitycites Alice · Mayo · Enfish · Electric Power
  Patents in suitUS 7,813,996
• Life Technologies Corporation v. Unisone Strategic IP, Inc.All claims unpatentable
  PTAB · Jun 23, 2017 · CBM2016-00025 · APJ Hyun J Jung · CBM · Final written decision

  Claims 1, 14, 19, 22–28, 32, 34–36, and 45 are unpatentable under § 101 as patent-ineligible subject matter.

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached

    “II. ANALYSIS A. Claim Construction Although Petitioner presents constructions for several claim terms (Pet. 39), we determine that no terms require express construction for purposes of this Decision. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy).” slip op. at 9

  • BurdenFwd all claims unpatentableUnpatentable

    “Patent Owner presents no arguments regarding Petitioner’s challenge that claims 1, 14, 19, 22–28, 32, 34–36, and 45 are directed to patent-ineligible subject matter under 35 U.S.C. § 101. Patent Owner acknowledges that the Scheduling Order (Paper 8, 3) cautions that “any arguments for patentability not raised in the response will be deemed waived.” Paper 15, 5. Patent Owner’s counsel also stated that “Patent owner has been advised of all the orders from the board.” Ex. 1037, 6:9–12. In view of the record before us, we determine that Patent Owner has been cautioned and advised regarding waiver of patentability arguments, and because Patent Owner has not raised any arguments for patentability, we find that it has waived its arguments regarding Petitioner’s challenge of claims 1, 14, 19, 22–28, 32, 34–36, and 45 as directed to patent-ineligible subject matter. Therefore, the record now is the same as with our Decision on Institution. For the reasons stated in that decision, we conclude that claims 1, 14, 19, 22–28, 32, 34–36, and 45 are unpatentable under 35 U.S.C. § 101.” slip op. at 23

  • Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Unpatentable

    “Patent Owner presents no arguments regarding Petitioner’s challenge that claims 1, 14, 19, 22–28, 32, 34–36, and 45 are directed to patent-ineligible subject matter under 35 U.S.C. § 101. Patent Owner acknowledges that the Scheduling Order (Paper 8, 3) cautions that “any arguments for patentability not raised in the response will be deemed waived.” Paper 15, 5. Patent Owner’s counsel also stated that “Patent owner has been advised of all the orders from the board.” Ex. 1037, 6:9–12. In view of the record before us, we determine that Patent Owner has been cautioned and advised regarding waiver of patentability arguments, and because Patent Owner has not raised any arguments for patentability, we find that it has waived its arguments regarding Petitioner’s challenge of claims 1, 14, 19, 22–28, 32, 34–36, and 45 as directed to patent-ineligible subject matter. Therefore, the record now is the same as with our Decision on Institution. For the reasons stated in that decision, we conclude that claims 1, 14, 19, 22–28, 32, 34–36, and 45 are unpatentable under 35 U.S.C. § 101.” slip op. at 23

  Patent outcomesUS 6,996,538 unpatentable
  Claim construction§ 101 eligibility
  Patents in suitUS 6,996,538
• Google Inc. v. Patrick ZuiliAll claims unpatentable
  PTAB · May 5, 2017 · CBM2016-00021 · APJ Jameson Lee · CBM · Final written decision

  Claims 1–3, 6, 10, 14, 15, 18, 19, and 21 are unpatentable under § 101 because they claim an abstract idea without an inventive concept.

  RulingsFinal written decision

  • BurdenFwd all claims unpatentableUnpatentable

    “3. Conclusion Petitioner has established by a preponderance of the evidence that claims 1–3, 6, 10, 14, 15, 18, 19, and 21 are directed to patent-ineligible subject matter under 35 U.S.C. § 101.” slip op. at 40

  • ExcludeMotion to exclude, deniedDenied

    “to Petitioner Exhibits 1004, 1005, 1010, 1011, 1013, 1014, 1032, and 1037. Paper 33. None of these exhibits was relied on by Petitioner in support of the sole ground on the basis of which trial was instituted in this proceeding, i.e., subject matter eligibility under 35 U.S.C. § 101, or in support of Petitioner’s arguments for establishing the ’667 patent as a covered business method patent eligible for covered business method patent review. Patent Owner in its Reply to Petitioner’s opposition to Patent Owner’s renewed Motion to Exclude asserts that the Board’s Decision on Institution did rely on the Declaration of Mr. Gray and that Mr. Gray’s Declaration does refer to Exhibits 1004, 1005, and 1037. Paper 40, 3. Mr. Gray’s Declaration, however, covers many subjects, and the portions of Mr. Gray’s Declaration cited to in the Decision on Institution do not rely on or refer to Exhibits 1004, 1005, 1010, 1011, 1013, 1014, 1032, and 1037. We have not relied on any portion of Exhibits 1004, 1005, 1010, 1011, 1013, 1014, 1032, and 1037, in this Final Written Decision. Those exhibits all relate to an alleged ground of unpatentability over prior art that has not been instituted for trial and also were not referred to by Mr. Gray in connection with his testimony regarding either patent subject matter eligibility under 35 U.S.C. § 101 or whether the ’667 patent is a covered business method patent eligible for covered business method patent review. Accordingly, Patent Owner’s Renewed Motion to Exclude is dismissed as moot.” slip op. at 40

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for petitioner

    “We are cognizant that a “pay-per-click system” is expressly recited only in claim 1’s preamble, and that a preamble recitation may not be limiting. “Whether a preamble stating the purpose and context of the invention constitutes a limitation of the claimed process is determined on the facts of each case and in light of the overall form of the claim, and the invention as described in the specification and illuminated in the prosecution history.” Applied Materials, Inc. v. Advanced Semiconductor Materials Am., Inc., 98 F.3d 1563, 1572–73 (Fed. Cir. 1996). In this instance, the recitation of a “pay-per-click system” in the preamble of claim 1 is limiting, because it is necessary to give life, meaning, and vitality to the subject matter of claim 1. See Symantic Corp. v. Computer Assocs. Int’l Inc., 522 F.3d 1279, 1288 (Fed. Cir. 2008); Catalina Marketing Int’l. v. Coolsavings.Com, 289 F.3d 801, 808 (Fed. Cir. 2002); Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999). In the Summary of the Invention section, the Specification states: “This invention improves upon existing pay-per-click arrangements . . . .” Ex. 1001, 1:62–64. The Specification describes no environment for the disclosed invention other than in a “pay-per-click” system. The body of claim 1 specifically recites a step of “detecting fraudulent activity by measuring the duration between clicks by said client to said selected website by examining said code and website information.” Id. at 3:12–15. The “fraudulent activity” referred to in the body of the claim depends on the operations of a pay-per-click system to have meaning. For instance, the potentially fraudulent activity related to the duration between clicks is a problem, because the merchant has an obligation to pay for each click in a pay-per-click system. Also in the Summary of the Invention section, the Specification states that determining if certain clicks are illegitimate “allows the pay-per-click company to more fairly invoice the merchants, thereby preventing fraudulent [overuse].” Id. at 2:1–4. Claim 1 expressly requires the links provided to a client be “associated with a plurality of websites associated with a plurality of merchants.” Id. at 3:2–5. For all of these reasons, we determine that the recitation of “pay-per-click system” in the preamble of claim 1 is limiting. We determine, in particular, that the step in the body of claim 1 for detecting fraudulent activity derives its meaning and significance from being implemented in a pay-per-click system.” slip op. at 14

  • Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable

    “above-noted testimony of Mr. Gray, we agree with Petitioner’s articulation of what constitutes an abstract idea to which the claimed invention is directed, i.e., “detecting fraud based on the time between two requests by the same client.” That articulation is reasonably tied to the claims, and not an over-generalization or over-simplification of the claimed subject matter.” slip op. at 29

  Patent outcomesUS 7,953,667 unpatentable
  Claim construction§ 101 eligibilitycites Mayo · Bilski · Enfish
  Patents in suitUS 7,953,667
• Ibg LLC / Interactive Brokers LLC et al. v. Trading Technologies International, Inc.Rehearing denied
  PTAB · Apr 27, 2017 · CBM2015-00179 · APJ Sally C Medley · CBM · Rehearing

  The Board denied Patent Owner’s rehearing request, leaving claims 5–7 unpatentable under § 103 and ineligible under § 101.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “Analysis A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). The party must identify specifically all matters we misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. Id.” slip op. at 2

  • Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptDecided for petitioner

    “In rendering our Decision, we did not focus on individual claim elements and overlook the claimed combination as a whole as Patent Owner asserts. Req. Reh’g 8–9. Rather, we applied the Supreme Court’s guidance that to be patent eligible, a claim to an otherwise abstract idea must recite additional elements that constitute an inventive concept and that one looks to elements of each claim individually and as an ordered combination. Dec. 26 (citing Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347, 2357 (2014) 4 and Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1297–98 (2012). We considered elements of each claim individually and as an ordered combination. Dec. 26–29. And with respect to considering the claimed combination as a whole, we specifically held that “considering all of the elements as an ordered combination, we determine that the combined elements also do not transform the nature of the claims into a patent-eligible application.” Id. at 29 (emphasis added). Thus, Patent Owner’s argument is not persuasive.” slip op. at 4

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Decided for petitioner

    “unpatentable under 35 U.S.C. § 103 over TSE2, Togher3, Schott4, and Cooper5. Req. Reh’g 2–8. Essentially, Patent Owner disagrees with our interpretation of claim 5. Id. Claim 5 depends directly from claim 1 and recites “displaying an order icon at a location that corresponds to the desired price level along the price axis, the order icon indicating the user’s order at the electronic exchange.” We did not adopt Patent Owner’s proposed interpretation such that the phrase means “an icon indicating to the user that the user has an order at a particular level along the price axis, distinct from other orders at the same level.” Dec. 16. Rather, we explained that claim 5 was broad enough to also cover that when an order is placed by a user,” slip op. at 5

  • Strike new argumentNew argument disregardedNot reached

    “Patent Owner also argues that dependent claim 7, which depends from claim 5, is instructive for interpreting claim 5. Req. Reh’g 7. Specifically, Patent Owner argues that claim 7 requires that the order icon indicate the default quantity working at the electronic exchange and that in order for the order icon to indicate the default quantity selected by the user, the order icon must indicate the user’s own order. Id. This argument in connection with construing claim 5 is newly presented and improper for our consideration. We need not and do not consider this newly presented argument. In any event, we observe that Patent Owner has not explained sufficiently, with any supporting evidence, why claim 7 informs a person of ordinary skill in the art that we must read claim 5 as narrowly as Patent Owner proposes.” slip op. at 7

  § 101 eligibility§ 103 obviousnesscites Alice · Mayo
  Patents in suitUS 7,533,056
• Google Inc. v. Patrick ZuiliAll claims unpatentable
  PTAB · Apr 24, 2017 · CBM2016-00008 · APJ Stacey G White · CBM · Final written decision

  Claims 1, 5, 9, and 11 are unpatentable under § 101 and obvious over IAB 1 and IAB 2; claims 5 and 11 are also obvious over IAB 1, IAB 2, and Laurent.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “a first code on the server side computing device . . . sending said first code to said at least one device over a communication network. PO Resp. 144. According to Patent Owner, Petitioner “inconsistently pointed [] to cookies as constituting a first code,” and Patent Owner alleges that this is insufficient because claim 1 does not discuss cookies. Id. at 146. Patent Owner contends that Petitioner has equated code generation with cookies and that is improper because cookies are used only to store the code after it has been generated. Id. We do not agree with Patent Owner’s analysis. Petitioner’s declarant, Stephen Gray, asserts that “[c]ookies are set by servers that store the cookie in the client. That cookie is then transmitted back from the client to the server upon subsequent accesses by the user to the origin server that set the cookie.” Ex. 1006 ¶ 60. Gray opines that one of ordinary skill in the art would have known that “when a user clicks a cookie-enabled website, a cookie is generated on the server and this cookie is stored on the client computer along with all of the information.” Ex. 1006 ¶ 105. We find that this comports with IAB 1’s description of measuring the number of visits to a web site by using a “Unique Cookie with Heuristic.” Ex. 1004, 5. IAB 1’s server stores “a small piece of information with a browser.” Id. IAB 2 notes that “[t]he web server responds to the user browser by checking for an existing cookie and creating one if one does not exist.” Ex. 1005, 27 (emphasis added). As described in the IAB references, cookies are designed to be unique to each browser, or if possible, the cookies should be unique to each user. Ex. 1004, 5, Ex. 1005, 21–22, 27. We find that these disclosures from IAB 1 and IAB 2 would have taught one of ordinary skill in the art the claimed first code.” slip op. at 32

  • Skill levelOther
  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “analyze patentability using the broadest reasonable construction of the claims in light of the specification. 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the broadest reasonable interpretation standard under 37 C.F.R. § 42.100(b)). Neither party makes an explicit claim construction argument in the proceeding. See generally PO Resp., Reply. For purposes of this Final Written Decision, we determine that no claim terms require express construction. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”).” slip op. at 17

  • Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionDecided for petitioner

    “Intellectual Ventures I LLC v. Erie Indemnity Co., 850 F.3d 1315, 1325 (Fed. Cir. 2017) (citation omitted). Thus, we must determine whether the claims are directed to “longstanding conduct that existed well before the advent of computers and the Internet.” Id. at 1327. What we are presented with is a system for marking the occurrence of two events and making a determination about the validity of the second occurrence based on the time elapsed between occurrences. We find that this is a longstanding business practice as exemplified by Petitioner’s pharmacy example. See Pet. 47. Patent Owner asserts that the ’057 patent is different from the sort of fraud detection that may be performed by a pharmacist because the challenged claims are “able to handle millions of clicks in real time whether from the same or different users.” PO Resp. 90. We do not agree. The claims recite only two data points, a time associated with click one and a time associated with click two. Thus, a pharmacist comparing the dates or times for two prescription requests is performing the same comparison as the one recited in the claims. There is no requirement in the claims that the system be able to handle millions of data points. Further, there is no discussion of the determination being made in real time and to the contrary the specification states that “by observing a metric like the number of clicks for a given period of time, be it a short time or a longer period, such as a day or a week, the system can automatically determine if certain clicks are illegitimate.” Ex. 1001, 2:64‒3:2. In addition, while the claims recite the creation of codes and encoded codes none of this is used by the claimed method to perform its determination. That data merely is sent from one place to another while the system marks the time associated with a click. The only information used in the determination is the time of the two clicks. The claims are not directed to improving the function of the computer or its associated software; instead, they are directed to using a computer to perform a well-known business task. See Bancorp Servs., LLC v. Sun Life Assurance Co., 687 F.3d 1266, 1278 (Fed. Cir. 2012) (“[T]he fact that the required calculations could be performed more efficiently via a computer does not materially alter the patent eligibility of the claimed subject matter.”). Therefore, we are persuaded that the challenged claims are directed to a longstanding economic task and not to an improvement to the computer functionality itself. Cf. Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016). For all of the foregoing reasons, we find that Petitioner has established that claims 1, 5, 9, and 11 are directed to an abstract idea.” slip op. at 23

  Patent outcomesUS 8,671,057 unpatentable
  Claim construction§ 101 eligibility§ 103 obviousnesscites Alice · Mayo · Enfish
  Patents in suitUS 8,671,057
• Tradestation Group, Inc. / Tradestation Securities, Inc. et al. v. Trading Technologies International, Inc.All claims unpatentable
  PTAB · Mar 31, 2017 · CBM2016-00040 · APJ Meredith C Petravick · CBM · Final written decision

  Claims 1–22 are unpatentable under § 101 because they claim an abstract financial practice using conventional computer and display functions, and claims 12–22 also encompass nonstatutory transitory signals.

  RulingsFinal written decision

  • Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable

    “below, we determine that Petitioner has shown5 that claim 1 is directed to the abstract idea of providing a trader with financial information to facilitate market trades, which is a fundamental economic practice. Claim 1 recites in the preamble a method for displaying market information on a graphical user interface. Ex. 1001, 15:22–23. The method steps include receiving current highest bid price and current lowest ask price for a tradeable object; identifying a long or short position taken by a user; computing a plurality of values, which represent a profit or loss if the long or short position is closed at a range of price levels; displaying the values along a value axis; displaying an indicator or a current best bid, current best ask, or a last traded price along the value axis; and moving the indicator in response to receipt of updated information. Id. at 15:23–54. In essence, all that claim 1 requires was well known in the prior art many years before the claimed invention. See id. at 1:13–2:33. We agree with Petitioner that claim 1 encompasses the abstract idea of providing a trader with financial information to facilitate market trades, a fundamental economic practice, and steps that can be performed using pen and paper, or even in a trader’s mind. See Pet. 27–30.” slip op. at 30

  • Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptUnpatentable

    “we are persuaded that Petitioner has shown that none of the additional claim elements in claim 1 transforms the nature of the claims into a patent-eligible application. Claim 1 of the ’556 patent requires “a method for displaying market information on a graphical user interface.” Ex. 1001, 15:23. The ’556 patent discloses that trading screens or GUIs that display market information were known. Id. at 1:45–2:17; Figs. 1–2. The ’556 patent’s Figure 2 depicts an example of one known trading screen or GUI that displays market information along a value axis having a range of price levels. Id. at 2:5–17; Fig. 2. The use of a GUI to display market information is a well-understood, routine, conventional activity that does not add significantly more to the abstract idea. Mayo, 132 S. Ct. at 1298. Moreover, a mere recitation of a GUI does not make the claim patent eligible. See Affinity Labs, 838 F.3d at 1257–58; Ameranth, 842 F.3d at 1236–1242; Internet Patent Corp. v. Active Network, Inc., 790 F.3d 134, 1348–1349 (Fed. Cir. 2015). A recitation of a generic GUI merely limits the use of the abstract idea to a particular technological environment. “Limiting the field of use of the abstract idea to a particular existing technological environment does not render any claims less abstract.” Affinity Labs, 838 F.3d at 1258 (citing Alice, 134 St. Ct. at 2358; Mayo, 132 S. Ct. at 1294).” slip op. at 35

  • ExcludeOther

    “We did not and need not consider the specific pages objected to in Exhibit 1018. We have determined that Petitioner has demonstrated that the challenged claims are unpatentable without considering the specific objected to pages or the portion of Petitioner’s Reply that relies on such evidence. Accordingly, we dismiss Patent Owner’s Motion to Exclude as moot.” slip op. at 39

  Patent outcomesUS 7,783,556 unpatentable
  § 101 eligibilitycites Mayo · Enfish · Electric Power
  Patents in suitUS 7,783,556

Holdings, summaries, rulings, issues, outcomes, winners and claim constructions shown for a decision were generated by a large language model reading the opinion. They are a guide to the decision, not the decision. Confirm every one against the court's own text before relying on it. Outcomes read from the patent owner’s side. Party names are extracted from the decision and are missing on about 900 short Director denials and scans, which carry the trial number instead.