- Ibg LLC / Interactive Brokers LLC et al. v. Trading Technologies International, Inc.All claims unpatentablePTAB · Nov 17, 2017 · CBM2016-00087 · APJ Sally C Medley · CBM · Final written decision
Claims 1–24 are unpatentable under § 101, and claims 2 and 15 are also unpatentable under § 112 ¶ 4.
RulingsFinal written decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Tradestation Securities, Inc., (“Petitioner”)1 filed a Petition requesting a review of claims 1–24 of U.S. Patent No. 7,412,416 B2 (Ex. 1001, “the ’416 patent”) under the transitional program for covered business method patents.2 Paper 3 (“Pet.”). Trading Technologies International, Inc. (“Patent Owner”) did not file a Patent Owner Preliminary Response. Upon consideration of the Petition, we instituted a covered business method patent review of claims 1– 24 of the ’416 patent (Paper 11 (“Dec.”)).” slip op. at 2
- Skill levelSkill level board ownOther
“B. The Level of Ordinary Skill in the Art Notwithstanding the parties’ submissions of the level of ordinary skill in the art, we find that the level of ordinary skill in the art is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 16
- ExcludeDenied
“Kawashima’s deposition (Ex. 1018), and portions of Exhibit 1060 (the cross examination testimony of Mr. Thomas). PO Mot. to Exclude 1. Patent Owner seeks to exclude Exhibits 1015 and 1016 as not relevant under Rules 401 and 402 of the Federal Rules of Evidence (FRE) and because the exhibits have not been authenticated under FRE 901. Id. at 1–4. Patent Owner also seeks to exclude Exhibit 1018 as hearsay, and pages 248, and 263–269 of Exhibit 1060 (the cross examination testimony of Mr. Thomas) as prejudicial and confusing. Id. at 4–13. In rendering our Final Decision, we did not and need not consider Exhibits 1015, 1016, 1018 or pages 248, and 263–269 of Exhibit 1060. We have determined that Petitioner has demonstrated, by a preponderance of the evidence, that the challenged claims are unpatentable, without considering Exhibits 1015, 1016, 1018 or pages 248, and 263–269 of Exhibit 1060. Accordingly, Patent Owner’s Motion to Exclude is dismissed.” slip op. at 32
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable
“Notwithstanding Patent Owner’s arguments, which we address below, we determine that Petitioner has shown3 that claim 1 is directed to the abstract idea of displaying a chart with a vertical price axis and a horizontal time axis, displaying indicators representing historical trading data along those axes, placing an order icon at a particular location of a plurality of locations, and generating and sending the order to an electronic trading system to assist a trader to place an order, which is a fundamental economic practice. The preamble of claim 1 recites a method for facilitating trading and displaying information regarding the buying and selling of a good. The method steps of claim 1 include displaying a chart on a graphical user interface having a vertical axis of price values and a horizontal axis of time, placing an order icon for a quantity of a good at a location along the vertical axis of price levels, and generating and sending the order to an electronic trading system. We agree with Petitioner that claim 1 encompasses the abstract idea of the fundamental economic practice of graphing (or displaying) trading data to assist a trader to place an order, steps that can be performed using pen and paper, or even in a trader’s mind. Pet. 22–25” slip op. at 21
Patent outcomesUS 7,412,416 unpatentable§ 101 eligibility§ 112 disclosurecites Alice · Mayo · Enfish · Electric PowerPatents in suitUS 7,412,416 - Ibg LLC / Interactive Brokers LLC et al. v. Trading Technologies International, Inc.All claims unpatentablePTAB · Oct 17, 2017 · CBM2016-00054 · APJ Meredith C Petravick · CBM · Final written decision
Claims 1–23 are unpatentable under § 101 and § 103; the Board found the claims patent-ineligible and found the challenged obviousness grounds established.
RulingsFinal written decision- ExcludeMotion to exclude, deniedDenied
“Patent Owner’s argument is not persuasive. FRE 106 provides that: If a party introduces all or part of a writing or recorded statement, an adverse party may require the introduction, at that time, of any other part —or any other writing or recorded statement — that in fairness ought to be considered at the same time. As Petitioner points out, “rather than providing a basis for excluding evidence, Fed. R. Evid. 106 is a vehicle for entry of additional evidence.” Here, the two translator’s notes from Patent Owner’s original translation already appear in the record. Ex. 2178, 39–40. FRE 403 provides: The court may exclude relevant evidence if its probative value is substantially outweighed by a danger of one or more of the following: unfair prejudice, confusing the issues, misleading the jury, undue delay, wasting time, or needlessly presenting cumulative evidence. Patent Owner has not met its burden to show Exhibit 1017 should be” slip op. at 75
- Skill levelOther
- Expert testimonyPetitioner expert discountedPatent owner expert discountedDecided for patent owner
“We have considered the evidence to which we are directed, but do not find that evidence (passages from Mr. Kawashima’s original and cross examination) to support Patent Owner’s assertions that Mr. Kawashima is biased. Indeed, when asked if the Tokyo Stock Exchange preferred that vendors like Trading Technologies not have patents on trading screens, Mr. Kawashima testified, that that was “not something I would know.” Ex. 2163, 41:6–12. Lastly, Patent Owner has not demonstrated sufficiently that Mr. Kawashima’s meetings with Petitioner’s attorneys prior to his cross examination is demonstrative of “bias.” PO Resp. 24. Patent Owner has not shown why Mr. Kawashima’s meeting with Petitioner’s counsel prior to his deposition would make him biased. For these reasons, we are not persuaded that Mr. Kawashima is an interested witness.” slip op. at 45
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable
“2. Abstract Idea “The ‘abstract idea’ step of the inquiry calls upon us to look at the” slip op. at 27
Patent outcomesUS 7,693,768 unpatentable§ 101 eligibility§ 103 obviousnesscites Mayo · Enfish · Electric Power · KSRPatents in suitUS 7,693,768 - Ibg LLC / Interactive Brokers LLC et al. v. Trading Technologies International, Inc.All claims unpatentablePTAB · 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 unpatentableClaim construction§ 101 eligibilitycites Mayo · Enfish · Electric PowerPatents in suitUS 7,212,999 - Ibg LLC / Interactive Brokers LLC et al. v. Trading Technologies International, Inc.All claims unpatentablePTAB · 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 unpatentableClaim construction§ 101 eligibilitycites Mayo · Enfish · Electric PowerPatents in suitUS 7,904,374 - Ibg LLC / Interactive Brokers LLC et al. v. Trading Technologies International, Inc.All claims unpatentablePTAB · 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 unpatentableClaim construction§ 101 eligibilitycites Alice · Mayo · Enfish · Electric PowerPatents in suitUS 7,813,996 - Ibg LLC / Interactive Brokers LLC et al. v. Trading Technologies International, Inc.Rehearing deniedPTAB · 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 · MayoPatents in suitUS 7,533,056 - Ibg LLC / Interactive Brokers LLC et al. v. Trading Technologies International, Inc.All claims unpatentablePTAB · Mar 3, 2017 · CBM2015-00181 · APJ Meredith C Petravick · CBM · Final written decision
Claims 1–28 are patent-ineligible under § 101 and unpatentable under § 103 over TSE, Belden, and Togher.
RulingsFinal written decision- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable
“3. Abstract Idea “The ‘abstract idea’ step of the inquiry calls upon us to look at the ‘focus of the claimed advance over the prior art’ to determine if the claim’s ‘character as a whole’ is directed to excluded subject matter.” Affinity Labs of Texas v. DirectTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (quoting Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016); see also Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016). According to Petitioner, the claims are directed to the abstract idea of” slip op. at 23
- Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptIneligibleUnpatentable
“4. Inventive Concept To be patent eligible, a claim directed to an abstract idea must recite additional elements that constitute an inventive concept. Alice, 134 S. Ct. at 2357. One looks to “[t]he elements of each claim both individually and ‘as an ordered combination’ to determine whether the additional elements ‘transform the nature of the claim’ into a patent-eligible application.” Id. at 2355 (quoting Mayo, 132 S. Ct. at 1297–98). The additional elements must be more than “well-understood, routine, conventional, activity.” Mayo, 132 S. Ct. at 1298. Petitioner contends that claim 1 does not recite an inventive concept.” slip op. at 30
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“1. TSE Printed Publication Status Petitioner argues that TSE is prior art under 35 U.S.C. § 102(a). Pet. 11. In support of its showing that TSE qualifies as prior art, Petitioner relies on the November 21, 2005, deposition testimony of Atsushi Kawashima taken during litigation between Patent Owner and a third party, eSpeed, Inc. Id.; Ex. 1010. Whether a document qualifies as a printed publication under 35 U.S.C. § 102(a) is a question of law based on underlying findings of fact. In re Enhanced Sec. Research, LLC, 739 F.3d 1347, 1354 (Fed. Cir. 2014) (citing In re Hall, 781 F.2d 897, 899 (Fed. Cir. 1986)). The Federal Circuit “has interpreted § 102 broadly, explaining that even relatively obscure documents qualify as prior art so long as the public has a means of accessing them.” Id. (citing Hall, 781 F.2d at 899).” slip op. at 34
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“2. TSE, Belden, and Togher a. Claims 1 and 26 With respect to claims 1 and 26, Petitioner cites TSE as teaching the majority of limitations of the claims. Pet. 64–69. Petitioner cites Belden for the “single action” limitation in the claims, including the “setting” and “sending” via the “single action,” and cites Togher as teaching an order being for a “default quantity.” Id. at 69–73. Petitioner proposes modifying TSE based on the teachings of Belden and Togher. Id. at 62–64. TSE describes a trading system that facilitates trading with an electronic exchange by receiving bid and offer information, displaying it to a user, and accepting and sending bid and offer orders. Ex. 1007, 6–13, 35. A trading terminal displays a GUI for depicting market information on a Board Screen, which is shown in the figure reproduced below (“TSE’s Board Screen”).” slip op. at 43
Patent outcomesUS 7,676,411 unpatentable§ 101 eligibility§ 102 anticipation§ 103 obviousnesscites Alice · Mayo · Enfish · Electric PowerPatents in suitUS 7,676,411 - Google, Inc. / Apple Inc. v. Smartflash LLCRehearing deniedPTAB · Jan 27, 2017 · CBM2015-00130 · APJ Jennifer S Bisk · CBM · Rehearing
The Board denied Smartflash’s rehearing request, leaving in place its determination that claims 3–10, 15–31, and 33 are patent-ineligible under § 101.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” slip op. at 3
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Decided for petitioner
“Id. at 13–14 (citing Ex. 1001, 25:59–61 (claim 1), 26:42–67 (claim 15), 27:36–55). But McRO does not stand for the general proposition that use of rules or conditions to achieve an improved technological result, alone, removes claims from the realm of abstract ideas. In McRO, the Court explained that “the claimed improvement [was] allowing computers to produce ‘accurate and realistic lip synchronization and facial expressions in animated characters’ that previously could only be produced by human animators.” Id. at 1313 (citation omitted). The Court explained that the claimed rules in McRO transformed a traditionally subjective process performed by human artists into a mathematically automated process executed on computers (i.e., the processes were fundamentally different). Id. at 1314. The Court explained that “it [was] the incorporation of the claimed rules, not the use of the computer, that ‘improved [the] existing technological process’ by allowing the automation of further tasks.” Id. at 1314 (alteration in original) (quoting Alice Corp. Pty. Ltd. v. CLS Bank Int’l., 134 S. Ct. 2347, 2358 (2014)). The Court distinguished this from situations “where the claimed computer-automated process and the prior method were carried out in the same way.” Id. (citing Parker v. Flook, 437” slip op. at 6
- Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptDecided for petitioner
“In Amdocs, the Court held that “[claim 1] is eligible under step two because it contains a sufficient ‘inventive concept.’” Amdocs, 841 F.3d at 1300. The claim at issue recited “computer code for using the accounting information with which the first network accounting record is correlated to enhance the first network accounting record.” Id. The Court explained that the “claim entails an unconventional technological solution (enhancing data in a distributed fashion) to a technological problem (massive record flows which previously required massive databases).” Id. The Court noted that, although the solution requires generic computer components, “the claim’s enhancing limitation necessarily requires that these generic components operate in an unconventional manner to achieve an improvement in computer functionality.” Id. at 1300–1301. When determining that the claim was patent-eligible, the Court explained that the “enhancing limitation necessarily involves the arguably generic gatherers, network devices, and other components working in an unconventional distributed fashion to solve a particular technological problem.” Id. at 1301. The Court distinguished the claim from the claim held unpatentable in Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat’l Ass’n, 776 F.3d 1343 (Fed. Cir. 2014) on the grounds that the “enhancing limitation . . . necessarily incorporates the invention’s distributed architecture—an architecture providing a technological solution to a technological problem,” which “provides the requisite ‘something more’ than the performance of ‘well-” slip op. at 8
§ 101 eligibilitycites Alice · Bilski · EnfishPatents in suitUS 8,118,221 - Apple Inc. v. Smartflash LLCRehearing deniedPTAB · Jan 27, 2017 · CBM2015-00127 · APJ Rama G Elluru · CBM · Rehearing
The Board denied Patent Owner’s rehearing request, leaving intact its determination that claims 4–12 and 16–18 are patent-ineligible under § 101.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“identify any specific matter that we misapprehended or overlooked. Although Patent Owner repeatedly states that the Board “misapprehends” Smartflash’s argument (see, e.g., Req. Reh’g 5, 10), it does not offer sufficient explanation as to how we misapprehended or overlooked any particular “matter [that] was previously addressed in a motion, an opposition, or a reply.” Rather than providing a proper request for rehearing, addressing particular matters that we previously allegedly misapprehended or overlooked, Patent Owner’s Request provides new briefing by expounding on argument already made.” slip op. at 4
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionDecided for patent owner
“Id. at 13 (citing Ex. 1001, 26:59–67 (claims 4–12), 28:12–19 (claims 16– 18)). But McRO does not stand for the general proposition that use of rules or conditions, such as payment, to achieve an improved technological result, alone, removes claims from the realm of abstract ideas. In McRO, the Court explained that “the claimed improvement [was] allowing computers to produce ‘accurate and realistic lip synchronization and facial expressions in animated characters’ that previously could only be produced by human animators.” Id. at 1313 (citation omitted). The Court explained that the claimed rules in McRO transformed a traditionally subjective process performed by human artists into a mathematically automated process executed on computers (i.e., the processes were fundamentally different). Id. at 1314. The Court explained that “it [was] the incorporation of the claimed rules, not the use of the computer, that ‘improved [the] existing technological process’ by allowing the automation of further tasks.” Id. at 1314 (alteration in original) (quoting Alice Corp. Pty. Ltd. v. CLS Bank Int’l., 134 S. Ct. 2347, 2358 (2014)). The Court distinguished this from situations “where the claimed computer-automated process and the prior method were carried out in the same way.” Id. (citing Parker v. Flook, 437 U.S. 584, 585–86 (1978); Bilski v. Kappos, 561 U.S. 593, 611 (2010); Alice, 134 S. Ct. at 2356)). As explained in our Final Decision, the challenged claims “merely implement an old practice in a new environment.” Final Dec. 12 (quoting FairWarning IP, LLC v. Iatric Systems, Inc., 839 F.3d 1089, 1094 (Fed. Cir. 2016)). The challenged claims are similar to the claims found ineligible in FairWarning, which the Court distinguished from those at issue McRO. FairWarning, 839 F.3d at 1094–95. In FairWarning, the Court explained that “[t]he claimed rules ask . . . the same questions . . . that humans in analogous situations . . . have asked for decades, if not centuries” and that it is the “incorporation of a computer, not the claimed rule, that purportedly ‘improve[s] [the] existing technological process.’” Id. at 1095 (citing Alice, 134 S. Ct. at 2358). This is similar to the challenged claims, where the “payment validation data” and “access rule” in claim 4, via its dependency from claim 3, for example, is merely a condition for “determin[ing] what access is permitted to data stored on the data carrier,” that the ’720 patent explains “will normally be dependent upon payments made for data stored on the data carrier” (i.e., allowing access when the data has been purchased). Ex. 1001, 9:21–25.” slip op. at 5
- Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptDecided for patent owner
“understood, routine, [and] conventional activities previously known to the industry.’” Id. (citations omitted). We are not persuaded that we misapprehended Amdocs. As noted in our Final Decision, “[t]he ’720 patent treats as well-known all potentially technical aspects of the challenged claims, which simply require generic computer components.” Final Dec. 15. Unlike the generic components at issue in Amdocs, the generic components recited in claims 4–12 and 16–18 of the ’720 patent do not operate in an unconventional manner to achieve an improvement in computer functionality. See id. at 17–21. The challenged claims of the ’720 patent simply recite generic memories, data types, processors, and “code to” perform well-known functions with no description of the underlying implementation or programming. See id. at 14–17.” slip op. at 8
§ 101 eligibilitycites Alice · Bilski · EnfishPatents in suitUS 7,334,720 - Apple Inc. v. Smartflash LLCRehearing deniedPTAB · Jan 27, 2017 · CBM2015-00124 · APJ Rama G Elluru · CBM · Rehearing
The Board denied Patent Owner’s rehearing request and left intact its determination that claims 2–5, 9–11, 14, 15, 17, and 19 are patent-ineligible under § 101.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“showing unpatentability by a preponderance of the evidence. 35 U.S.C. § 326(e). The standard of review for rehearing requests is set forth in 37 C.F.R. § 42.71(d), which states: The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” slip op. at 3
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Decided for patent owner
“[b]ecause the challenged claims are a technological improvement over the then-existing systems, and limit transfer and retrieval of content based on payment and/or access rules in a process specifically designed to achieve an improved technological result in conventional industry practice, the challenged claims are not directed to an abstract idea. Id. at 13 (citing Ex. 1001, 22:36–57 (claim 11), 26:4–7 (claim 2–5), 26:58– 27:17 (claims 14, 15), 28:16–23 (claim 17)). But McRO does not stand for the general proposition that use of rules or conditions, such as payment, to achieve an improved technological result, alone, removes claims from the realm of abstract ideas. In McRO, the Court explained that “the claimed improvement [was] allowing computers to produce ‘accurate and realistic lip synchronization and facial expressions in animated characters’ that previously could only be produced by human animators.” Id. at 1313 (citation omitted). The Court explained that the claimed rules in McRO transformed a traditionally subjective process performed by human artists into a mathematically automated process executed on computers (i.e., the” slip op. at 5
- Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptDecided for patent owner
“In Amdocs, the Court held that “[claim 1] is eligible under step two because it contains a sufficient ‘inventive concept.’” Amdocs, 841 F.3d at 1300. The claim at issue recited “computer code for using the accounting information with which the first network accounting record is correlated to enhance the first network accounting record.” Id. The Court explained that the “claim entails an unconventional technological solution (enhancing data in a distributed fashion) to a technological problem (massive record flows which previously required massive databases).” Id. The Court noted that, although the solution requires generic computer components, “the claim’s enhancing limitation necessarily requires that these generic components operate in an unconventional manner to achieve an improvement in computer functionality.” Id. at 1300–1301. When determining that the claim was patent-eligible, the Court explained that the “enhancing limitation necessarily involves the arguably generic gatherers, network devices, and other components working in an unconventional distributed fashion to solve a particular technological problem.” Id. at 1301. The Court distinguished the claim from the claim held unpatentable in Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat’l Ass’n, 776 F.3d 1343 (Fed. Cir. 2014) on the grounds that the “enhancing limitation . . . necessarily” slip op. at 7
§ 101 eligibilitycites Alice · Bilski · EnfishPatents in suitUS 7,942,317
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.