- Gain Capital Holdings, Inc. v. Oanda CorporationAll claims unpatentablePTAB · Mar 16, 2022 · CBM2020-00023 · APJ Justin T Arbes · CBM · Final written decision
Claims 1–12 are unpatentable under § 101; proposed substitute claim 13 is unpatentable under §§ 101 and 103 over Pictet, and the revised motion to amend is denied.
RulingsFinal written decision- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable
“all directed to “time-based trade analysis” “improperly describes the claims at too high a level of abstraction, as warned against in” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335, 1337 (Fed. Cir. 2016). PO Resp. 5–6. We disagree. Petitioner’s articulation of the abstract idea to which claim 1 is allegedly directed is appropriately focused and tied to the specific language of the limitations of the claim. Petitioner explains how the recited “price data” and “current system position information” are the key inputs for time-based trade analysis and how calculating a trade recommendation using sub-models based on different times of day constitutes such analysis. See Pet. 31–34. Further, “time-based trade analysis” is not a general field, but rather a particular practice, namely the analysis of potential trades based on time. That type of analysis is reflected expressly in claim 1 via the use of a plurality of sub-models where each is based on “a different time of day.” Petitioner’s analysis is persuasive, as it is consistent with the language of claim 1 and supported by the testimony of Mr. Donefer, which we credit.6 Based on the full record developed during trial, we are persuaded that claim 1 recites time-based trade analysis. Doing so is a fundamental economic practice, which is one of the certain methods of organizing human activity identified in the Guidance, and, thus, an abstract idea.” slip op. at 21
- Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptUnpatentable
“We disagree. Claim 1 does not recite a distributed system architecture, sub-model calculations executed concurrently in parallel, or real-time operation for a large number of users, all of which Patent Owner relies on to show a patent-eligible application of the alleged abstract idea. See Reply 6, 8; Ex. 1038 ¶¶ 22, 25–26. Claim 1 broadly recites “calculating trade recommendation information from each of a plurality of trading sub-models,” each “based on a different time of day,” and “calculating a trade recommendation . . . based on said trade recommendation information from each of said trading sub-models.” The claim does not specify how, when, or by what component the calculations are performed. Thus, Patent Owner’s contention that steps (d) and (e) do not represent well-understood, routine, and conventional activity is not commensurate with the language of the claim. With respect to what is actually recited in the claim, we are persuaded based on the full trial record that the calculations are the abstract idea itself (i.e., the fundamental economic practice of “time-based trade analysis”), rather than additional elements that could transform the claim into a patent-eligible application of an abstract idea. See supra Section II.F.1.b; BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018) (“[A] claimed invention’s use of the ineligible concept to which it is directed cannot supply the inventive concept that renders the invention ‘significantly more’ than that ineligible concept.”). Regardless, though, Petitioner also has provided persuasive evidence regarding the conventionality of steps (d) and (e), particularly given the broad manner in which they are recited in the claim. See, e.g., Ex. 1004 ¶¶ 69–84; Ex. 1021, 115 (“It is widely documented that return volatility varies systematically over the trading day and that this pattern is highly correlated with the intraday variation of trading volume and bid-ask spreads.”); Ex. 1019, 13 (“Trading models offer a real-time analysis of foreign exchange movements and generate explicit trading recommendations. These models are based on the continuous collection and treatment of foreign exchange quotes by market makers around the clock at the tick-by-tick frequency level.”); Ex. 1031, 728–732 (describing modeling that accounts for time periods of different levels of activity, such as when particular FX markets are open, and using time intervals of “hours, days, weeks or years”). Petitioner also has provided a detailed explanation citing persuasive evidence that, even if claim 1 did require distributed parallel processing and real-time trading model calculations, both were well-understood, routine, and conventional at the time of the ’534 patent. See Reply 9–11, 15–17; Ex. 1038 ¶¶ 23 (citing, for example, Ex. 1031, 228–232), 29–35 (citing, for example, Ex. 1031, 718). We credit Mr. Donefer’s testimony, which is supported by evidence in the record and unrebutted—Patent Owner did not address the evidence discussed in the Petition and Mr. Donefer’s initial declaration in its Response, did not file a Sur-Reply addressing Mr. Donefer’s reply declaration and cited evidence, and did not provide any contrary evidence in the record. See Reply 1, 3.” slip op. at 30
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“testimony of Mr. Donefer, 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. Id. at 24–25 (citing Ex. 1031, 716–723; Ex. 1038 ¶¶ 52–58, 75–77). Petitioner argues that a person of ordinary skill in the art “would have recognized that Pictet’s data collection and storage steps (i.e., steps (a)-(c)) provide inputs for the subsequent calculations (i.e., steps (d)-[(e)]),” “would have understood Pictet as teaching that the distributed parallel processing . . . applies to the implementation of the trading models performing those calculations,” and would have had “reason to use at least five of the parameters discussed [in Pictet] when configuring the rules governing the ‘grand’ model.” Id. at 24. Petitioner further contends that numerous types of parameters were routinely used when designing and evaluating trade models, and Pictet’s moving average . . . is no different. Moreover, Pictet describes two categories of threshold values (i.e., trend and overbought/oversold) and expressly teaches using “several threshold values of both types,” which at a minimum suggests four such parameters. The voting scheme is also an integral part of the weighted moving average Pictet describes. A [person of ordinary skill in the art] also had reason to incorporate a time parameter setting the amount of time in the past that is considered, since a [person of ordinary skill in the art] would have understood that price data from the distant past is less 984, 990 (Fed. Cir. 2020) (non-precedential) (recognizing that “the Board need not address issues that are not necessary to the resolution of the proceeding”). relevant to a moving average. Pictet also teaches using stop-loss and stop-profit parameters as part of its model implementation. Id. at 24–25 (citations omitted). We have reviewed Petitioner’s analysis and find it persuasive. Petitioner’s reasoning is consistent with the disclosure of Pictet and supported by the testimony of Mr. Donefer, which we credit. For the reasons stated by Petitioner and Mr. Donefer, we find that a person of ordinary skill in the art would have had reason to combine the cited teachings of Pictet in the manner asserted with a reasonable expectation of success.” slip op. at 53
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied
“3. Patentability Pursuant to 37 C.F.R. § 42.221(d)(2), Petitioner “bears the burden of persuasion to show, by a preponderance of the evidence,” that proposed substitute claim 13 is unpatentable. Petitioner argues that proposed substitute claim 13 fails to recite patent-eligible subject matter under 35 U.S.C. § 101, is indefinite under 35 U.S.C. § 112, second paragraph, and would have been obvious under 35 U.S.C. § 103(a). Opp. 3–25. For the reasons explained below, we determine that Petitioner has met its burden to show, by a preponderance of the evidence, that claim 13 is unpatentable as claiming patent-ineligible subject matter under 35 U.S.C. § 101 and obvious under 35 U.S.C. § 103(a), and need not reach Petitioner’s arguments regarding definiteness under 35 U.S.C. § 112, second paragraph.” slip op. at 39
Patent outcomesUS 7,496,534 unpatentableClaim construction§ 101 eligibility§ 103 obviousnesscites Alice · Mayo · Bilski · Berkheimer · Enfish · KSR · GrahamPatents in suitUS 7,496,534 - Cambridge Associates, LLC v. Capital DynamicsAll claims unpatentablePTAB · Aug 31, 2015 · CBM2014-00079 · APJ Donna M Praiss · CBM · Final written decision
Claims 1–17 are unpatentable under § 101 because they claim an abstract mathematical correlation implemented with generic computer functions.
RulingsFinal written decision- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable
“We agree with Petitioner that Digitech is instructive guidance concerning claims to “a process that employs mathematical algorithms to manipulate existing information to generate additional information.” Digitech, 758 F.3d at 1351 (citing Parker v. Flook, 437 U.S. at 595) (concluding such claims are ineligible subject matter). Like the ’196 patent claims, the process claim in Digitech did not recite expressly mathematical formulae or equations. It claimed, in prose, generating two data sets by taking existing information, such as measured chromatic stimuli, spatial stimuli, and device response characteristic functions, and organizing the information into a new form called a device profile. Digitech, 758 F.3d at 1350–51. The method claim was determined to be an abstract idea “because it describes a process of organizing information through mathematical correlations and is not tied to a specific structure or machine.” Id. at 1350. The absence of expressly recited mathematical formulae or equations in the claim carried no significance in determining whether the claims as a whole were directed to the abstract idea. See also Alice, 134 S. Ct. at 2356–57 (noting that no special significance was given to the fact that one of the claims in Bilski reduced hedging to a mathematical formula). In sum, because we agree with Petitioner that the challenged claims involve determining a mathematical correlation, like the claims in Digitech, we conclude that the first step in the Alice/Mayo test is met for claims 1–17.” slip op. at 12
- Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptUnpatentable
“The fact that a claim relies on a method that is implemented on a computer does not, by itself, demonstrate that the claim is patent eligible. Rather, a challenged claim, properly construed, must incorporate enough meaningful limitations to ensure that what is claimed is more than just an abstract idea, and is not a mere “drafting effort designed to monopolize [an abstract idea] itself.” Mayo, 132 S. Ct. at 1297. In order for a machine to impose a meaningful limitation on the scope of a method claim, it must play “a significant part in permitting the claimed method to be performed, rather than function solely as an obvious mechanism for permitting a solution to be achieved more quickly.” SiRF Tech., Inc. v. Int’l Trade Comm’n, 601 F.3d 1319, 1333 (Fed. Cir. 2010). Claims that recite a method of doing business on a computer, and do no more than merely recite the use of the computer for its ordinary function of performing repetitive calculations, are not patent eligible. Bancorp Servs., L.L.C. v. Sun Life Assurance Co., 687 F.3d 1266, 1278–79 (Fed. Cir. 2012) (finding computer used for its most basic function, the performance of repetitive calculation, does not impose a meaningful claim limitation). We are persuaded that Petitioner has shown by a preponderance of the evidence that the extent to which a computer aids the performance of the claimed invention is no more than the ordinary function of common computer software programs, such as the Microsoft Excel spreadsheet used by Patent Owner’s expert. Reply 7 (citing Ex. 1012, 153:15–154:21). Patent Owner’s argument that the computer technology required by the ’196 patent claims “is integral to meeting the requirements of accuracy, precision and timeliness” (PO Resp. 27 (citing Ex. 2004 ¶ 96)) focuses on a specific commercial application of the patent claims “[i]n the private equity world” (id. (citing Ex. 2004 ¶¶ 86–95)). We are not persuaded by Patent Owner’s arguments because they presume particular mathematical computation methods not required by the claims, and reinforce that the nature of the invention is a patent ineligible mathematical algorithm. For example, Patent Owner contends that when presented with a problem to solve at his deposition, Petitioner’s expert, Dr. Robinson, inaccurately computed a real rate of return on an investment because he used quarterly compounding rather than daily compounding. Ex. 2004 ¶ 87. According to Mr. Reyes, Patent Owner’s expert, “daily cashflow (as opposed to monthly or quarterly) has been recognized as a requisite compounding frequency as far back as the 1960s.” Id. at ¶ 91. Such mathematical computations, even if required by the claims, are not sufficient to transform the claims into patent eligible subject matter.” slip op. at 15
- ExcludeMotion to exclude, deniedDenied
“For the reasons that follow, we determine that Petitioner has shown by a preponderance of the evidence that claims 1–17 of the ’196 patent are unpatentable under 35 U.S.C. § 101. Because our determination does not rely on the deposition testimony subject to Patent Owner’s Motion to Exclude, we dismiss the motion as moot.” slip op. at 2
- Expert testimonyOther
“We are persuaded that Petitioner has shown by a preponderance of the evidence that the extent to which a computer aids the performance of the claimed invention is no more than the ordinary function of common computer software programs, such as the Microsoft Excel spreadsheet used by Patent Owner’s expert. Reply 7 (citing Ex. 1012, 153:15–154:21). Patent Owner’s argument that the computer technology required by the ’196 patent claims “is integral to meeting the requirements of accuracy, precision and timeliness” (PO Resp. 27 (citing Ex. 2004 ¶ 96)) focuses on a specific commercial application of the patent claims “[i]n the private equity world” (id. (citing Ex. 2004 ¶¶ 86–95)). We are not persuaded by Patent Owner’s arguments because they presume particular mathematical computation methods not required by the claims, and reinforce that the nature of the invention is a patent ineligible mathematical algorithm. For example, Patent Owner contends that when presented with a problem to solve at his deposition, Petitioner’s expert, Dr. Robinson, inaccurately computed a real rate of return on an investment because he used quarterly compounding rather than daily compounding. Ex. 2004 ¶ 87. According to Mr. Reyes, Patent Owner’s expert, “daily cashflow (as opposed to monthly or quarterly) has been recognized as a requisite compounding frequency as far back as the 1960s.” Id. at ¶ 91. Such mathematical computations, even if required by the claims, are not sufficient to transform the claims into patent eligible subject matter.” slip op. at 16
Patent outcomesUS 7,698,196 unpatentable§ 101 eligibilitycites Alice · Mayo · BilskiPatents in suitUS 7,698,196
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.