- CQG, Inc. / CQG, LLC et al. v. Chart Trading Development, LLCAll claims unpatentablePTAB · Sep 1, 2017 · CBM2016-00047 · APJ Kevin W Cherry · CBM · Final written decision
Claims 1–56 are unpatentable under § 101 because they claim the abstract idea of confirming or modifying an order using conventional computer components; the motion to amend is denied.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“in all of the independent claims, should be construed as “a visual-based environment that enables an exchange of input and output between a user and a computer.” PO Resp. 15. Patent Owner bases its construction on a set of dictionary definitions for the terms “interface,” “graphical user interface,” and “interactive.” See Ex. 2012 (“interface”); Ex. 2013 (“interactive”); Ex. 2014 (“graphical user interface”); Ex. 2021 (“interactive”). Petitioner contends that Patent Owner is improperly importing limitations into this term. Pet. Reply 1–2. Petitioner argues that the term should be construed as a “graphical interface.” Id. at 2. We agree with Petitioner that Patent Owner seeks to improperly limit the term “second interface.” First, only one of the recited in the claims. The terms “graphical user interface” and “interactive” are absent from the claims. Moreover, the term “graphical user interface” is not used in the specification. Thus, we are reluctant to import the general meaning of these terms into the claims. For example, with respect to “interactive,” there is nothing in the claims that requires the “second interface” be involved in the “exchange of input and output.” Although the claims recite the second interface receiving input from the user, there is no discussion in the independent claims of displaying outputs from the trading system or “exchanging information” from the computer to the user. To the extent other claims explicitly recite exchanging information, we do not believe it is necessary to incorporate that limitation into this term. See Apple, Inc. v. Ameranth Inc., 842 F.3d 1229, 1237 (Fed. Cir. 2016) (“Construing a claim term to include features of that term already recited in the claims would make those expressly recited features redundant.”). In addition, from the definition of “graphical user interface,” Patent Owner derives the requirement that the “second interface” be an “environment.” It is unclear what this term adds to construction. The term “environment” is not used in the specification, so we are left to speculate what additional features that term might pull into or exclude from the claim. To the extent that Patent Owner is attempting to use the term “environment” to incorporate additional software components that are not claimed and not described in the specification, we decline to do so. Instead, we rely on the specification’s description of the graphical interface that the parties agree is what is attempted to be claimed as the “second interface.” The specification describes the “second interface” as follows: invention, a trader may enter the command using a command-line interface, click on a component of a bid and offer in a market cell, enter the command using a graphical interface, or may click on a piece of data in a data window. After initiating a command from a command-line interface, a market cell, or a data window, the present invention may verify the entry by presenting a graphical interface. This interface may be the same graphical interface that may be used to enter a trading command. In addition to displaying the graphical interface, a mouse pointer may be redirected to a portion of the graphical interface to speed up entry of the trading command. After initiating the command, but before completing the command, a trader may then alter the parameters of the command either to complete entry of the parameters or to correct one or more incorrect entries. Ex. 1001, 2:8–23. Thus, the specification describes what is attempted to be claimed as the “second interface” simply as a “graphical interface.” We determine that this is the broadest reasonable construction consistent with the specification. Thus, we construe the term “second interface” as a “graphical interface.”” slip op. at 9
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable
“Claim 1, as a whole, recites a sequence for displaying and submitting electronic versions of what used to be paper forms—i.e., using two interfaces—one displaying trading commands (and for some claims also price information) and the second comprising a detailed order form—to confirm or modify orders. This is essentially a computerized version of the age-old process of displaying prices and providing an order form for placing orders based on that price. Ex. 1026, 297; Ex. 1018, 2. Indeed, contrary to Patent Owner’s assertion that we are improperly distilling the claims, PO Resp. 25, it is only by assessing the claims as a whole that it becomes apparent that claim 1 is directed to placing and modifying an order and not on the scantily described graphical user interface. Merely “relying on a computer to perform routine tasks more quickly or more accurately is insufficient to render a claim patent eligible.” OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015) (citing Alice, 134 S. Ct. at 2359).” slip op. at 14
- Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptUnpatentable
“The use of a graphical user interface, a known way for a user to interact with the computer, does not change the generic nature of the computer. Merely reciting a generic computer and generic computer functions cannot transform a patent-ineligible abstract idea into a patent-eligible invention. Alice, 134 S. Ct. at 2358. Even limiting the input to using a pointer device, would not add anything to these claims because use of a pointer with a graphical interface was entirely conventional, routine, and known. Given the above, we determine that 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.” slip op. at 27
- 101 substituteMotion to amend, deniedDenied
“limitations do not alter the fact that these claims are directed to the pre-electronic analog of a paper order form used as part of the traditional order confirmation and modification process. As we explained above, none of these limitations individually altered our conclusion that the claims are directed to the abstract idea of “[c]onfirming and/or modifying an order as part of the order placement process.” For instance, pre-populating certain fields is simply specifying how and in what order certain data are to be displayed, but without more, that is still abstract. See Elec. Power Grp., 830 F.3d at 1353–54 (explaining that collecting, analyzing, and displaying information is abstract). Even considering them together, we agree with Petitioner that they represent merely a computerized version of pre-electronic trading concepts and, much like Ameranth “[t]he patents claim systems including menus with particular features. They do not claim a particular way of programming or designing the software to create menus that have those features, but instead claim the resulting systems.” See Ameranth, 842 F.3d at 1241; see also Affinity Labs, 838 F.3d at 1262 (claims abstract where the alleged technological features are merely “tools in the aid of a process focused on an abstract idea”). Thus, we agree with Petitioner that the amended claims remain directed to the abstract idea of confirming and/or modifying an order as part of the order placement process.” slip op. at 42
Patent outcomesUS 8,041,626 unpatentableClaim construction§ 101 eligibilitycites Alice · Mayo · Bilski · Enfish · Electric PowerPatents in suitUS 8,041,626 - CQG, Inc. / CQG, LLC (F/K/A CQGT, LLC) et al. v. Chart Trading Development, LLCAll claims unpatentablePTAB · Sep 1, 2017 · CBM2016-00046 · APJ Kevin W Cherry · CBM · Final written decision
Claims 1–78 are unpatentable under § 101 because they claim the abstract idea of confirming or modifying an order using conventional computer interfaces; the motion to amend is denied.
RulingsFinal written decision- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable
“Claim 1, as a whole, recites a sequence for displaying and submitting electronic versions of what used to be paper forms—i.e., using two interfaces—one displaying price information and the second comprising a detailed order form—to confirm or modify orders. This is essentially a computerized version of the age-old process of displaying prices and providing an order form for placing orders based on that price. Ex. 1026, 297; Ex. 1018, 2. Indeed, contrary to Patent Owner’s assertion that we are improperly distilling the claims, PO Resp. 24, it is only by assessing the claims as a whole that it becomes apparent that claim 1 is directed to placing and modifying an order and not on the scantily described graphical user interface. Merely “relying on a computer to perform routine tasks more quickly or more accurately is insufficient to render a claim patent eligible.” OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015) (citing Alice, 134 S. Ct. at 2359).” slip op. at 14
- Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptUnpatentable
“functions cannot transform a patent-ineligible abstract idea into a patent-eligible invention. Alice, 134 S. Ct. at 2358. Even limiting the input to using a pointer device, would not add anything to these claims because use of a pointer with a graphical interface was entirely conventional, routine, and known. Given the above, we determine that 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. Moreover, considering all of the elements as an ordered combination, we determine that the combined elements also do not transform the nature of the claim into a patent-eligible application. Patent Owner contends that these claims are similar to the claims found patent eligible in BASCOM Global Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016), because they are directed to a “non-conventional and non-generic arrangement” of elements. PO Resp. 52. Patent Owner argues that “the claimed solution of the ’416 patent utilizes a specialized graphical trading interface with a particular layout to allow a trader to use a pointing device to execute trades from tabular information.” Id. Patent Owner argues that “the implementation is neither conventional nor generic.” Id. at 53. Patent Owner contends that its claims are unlike Electric Power Group because “the ’416 claims do not recite merely gathering and displaying trading information using conventional computer technology . . . [a]nd they do not purport to monopolize every way of gathering and displaying trading information of every way of gathering and displaying trading information or every way of using user interfaces for placing trading instructions.” Id.” slip op. at 27
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“a “graphical interface.” Id. at 2. We agree with Petitioner that Patent Owner seeks to improperly limit the term “second interface.” First, only one of the terms Patent Owner relies upon for its dictionary definitions is actually recited in the claims. The terms “graphical user interface” and “interactive” are absent from the claims. Moreover, the term “graphical user interface” is not used in the specification. Thus, we are reluctant to import the general meaning of these terms into the claims. For example, with respect to “interactive,” there is nothing in the claims that requires the “second interface” be involved in the “exchange of input and output.” Although the independent claims recite the “second interface” receiving input from the user, there is no discussion of the second interface displaying outputs from the trading system or “exchanging information” from the computer to the user. To the extent other claims explicitly recite exchanging information, we do not believe it is necessary to incorporate that limitation into this term. See Apple, Inc. v. Ameranth Inc., 842 F.3d 1229, 1237 (Fed. Cir. 2016) (“Construing a claim term to include features of that term already recited in the claims would make those expressly recited features redundant.”). In addition, from the definition of “graphical user interface,” Patent Owner derives the requirement that the “second interface” be an “environment.” It is unclear what this term adds to construction. The term “environment” is not used in the specification, so we are left to speculate what additional features that term might pull into or exclude from the claim. To the extent that Patent Owner is attempting to use the term “environment” to incorporate additional software components that are not claimed and not described in the specification, we decline to do so. Instead, we rely on the claimed as the “second interface.” The specification describes a second interface as follows: After initiating a command from a command-line interface, a market cell, or a data window, the present invention may verify the entry by presenting a graphical interface. This interface may be the same graphical interface that may be used to enter a trading command. In addition to displaying the graphical interface, a mouse pointer may be redirected to a portion of the graphical interface to speed up entry of the trading command. After initiating the command, but before completing the command, a trader may then alter the parameters of the command either to complete entry of the parameters or to correct one or more incorrect entries. Ex. 1001, 2:12–24. Thus, the specification describes what is attempted to be claimed as the “second interface” simply as a “graphical interface.” We determine that this is the broadest reasonable construction consistent with the specification. Thus, we construe the term “second interface” as a “graphical interface.”” slip op. at 10
- 101 substituteMotion to amend, deniedDenied
“The only substantive amendments made to the claims are the addition of an explicit limitation requiring a “pointer device” as providing the input recited in the claims, an explanation that what is selected is the bid price or the bid price and offer price are pre-populated in the second interface. As we discussed above, these limitations do not alter the fact that these claims are directed to the pre-electronic analog of a paper order form used as part of the traditional order confirmation and modification process. As we explained above, none of these limitations individually altered our conclusion that the claims are directed to the abstract idea of “[c]onfirming and/or modifying an order as part of the order placement process.” For instance, pre-populating certain fields is simply specifying how and in what order certain data are to be displayed, but without more, that is still abstract. See Elec. Power Grp., 830 F.3d at 1353–54 (explaining that collecting, analyzing, and displaying information is abstract). Even considering them together, we agree with Petitioner that they represent merely a computerized version of pre-electronic trading concepts and, much like Ameranth “[t]he patents claim systems including menus with particular features. They do not claim a particular way of programming or designing the software to create menus that have those features, but instead claim the resulting systems.” See Ameranth, 842 F.3d at 1241; see also Affinity Labs, 838 F.3d at 1262 (claims abstract where the alleged technological features are merely “tools in the aid of a process focused on an abstract idea”). Thus, we agree with Petitioner that the amended claims remain directed to the abstract idea of confirming and/or modifying an order as part of the order placement process.” slip op. at 40
Patent outcomesUS 7,890,416 unpatentableClaim construction§ 101 eligibilitycites Alice · Mayo · Bilski · Enfish · Electric PowerPatents in suitUS 7,890,416 - Interactive Brokers LLC / CQG, Inc. et al. v. Chart Trading Development, LLCAll claims unpatentablePTAB · Aug 18, 2017 · CBM2016-00039 · APJ Brian J Mcnamara · CBM · Final written decision
Claims 1–22 are unpatentable under § 101 and § 103 over Friesen, Jones, and Kirwin; Patent Owner’s motion to amend with substitute claims 23–44 is denied.
RulingsFinal written decision- Skill levelSkill level board ownOther
“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 Ex. 2027, Declaration of Nazaar Molokhia in Support of Patent Owner Response (“Molokhia Resp. 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 7
- Expert testimonyPetitioner expert creditedDecided for petitioner
“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 in the college courses he teaches Mr. Donefer does not teach programming. 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 that an expert’s qualifications perfectly match the field of the patent at issue. See SEB S.A. v. Montgomery Ward & Co., 594 F.3d 1360, 1373 (Fed. Cir. 2010). The patent claims before us concern a method and an apparatus for providing an interactive graphical representation of a market. Independent method claim 1 recites displaying a graph and a trading dialog box on a display of a workstation. Dependent claims recite the elements of the displayed trading dialog box and user selection options. Independent apparatus claim 9 recites a processor programmed to cause a computer to display a graph and trading dialog box. In the independent and dependent apparatus claims, the programmed processor carries out steps similar to those recited in the method claims. None of the claims in this proceeding recites technical details that require an extensive knowledge of programming or computer design. Mr. Donefer’s background in electronic trading system architectures and supervising the development of graphical user interfaces, along with his many years of experience, are sufficient for him to render opinions as to the subject matter of the claims before us. In addition, the Board can has accord proper weight to the testimony of each party’s expert witness. Therefore, in the context of this covered business method patent review, we are persuaded that we can properly weigh Mr. Donefer’s testimony.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Trading Dialog Box We construed “trading dialog box” to mean “a display on a display terminal through which the user can view values for trading and selected information.” Id. at 13. Patent Owner proposes that we construe this term to mean “an interface that appears as an overlay and enables exchange of input and output between a user and a computer.” PO Resp. 24–29. Petitioner contends that Patent Owner’s construction does present a material dispute, noting that Patent Owner’s testifying expert, Mr. Molokhia states that a popup window, such as that Friesen is an example of an overlay. Pet. Reply 4 (citing Ex. 1024, Transcript of Deposition of Nazaar Molokhia (“Molokhia Tr.”) 54:19–24). Upon review, we agree with Patent Owner that the specification of the ’611 Patent refers to the trading dialog box as an overlay and that the dialog box is used for exchanging information with the computer. PO Resp. 27–28. For purposes of this Decision, we apply Patent Owner’s proposed construction and construe “trading dialog box” to mean “an interface that appears as overlay and enables exchange of input and output between a user and a computer.”” slip op. at 5
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Workstation Neither party previously sought a construction of “workstation” and in our Decision to Institute, we accorded this term its ordinary meaning. Patent Owner now proposes that we construe “workstation” to mean “a display terminal.” PO Resp. 29–37. Our analysis of the construction of “trading dialog box” in our Decision to Institute we noted that claims 1 and 12 recite that the display is displayed on “the workstation,” a term for which there is no antecedent basis. Dec. to Inst. 13. Method claim 1 recites “displaying a trading dialog box on the display of the workstation.” Patent Owner’s proposed construction effectively amend the claim by substituting “display terminal,” which has an antecedent basis for the term “workstation,” which has no antecedent basis. However, the antecedent in the claim recites “a display terminal of an electronic trading system,” not a display terminal of a workstation. Nevertheless, according to Patent Owner the meaning of the claim would be understood by persons of ordinary skill and Petitioner did not argue that the claim was indefinite under 35 U.S.C. § 112. PO Resp. 31. Patent Owner correctly points out that indefiniteness under 35 U.S.C. § 112 was not presented as an issue in this proceeding and is not an issue we considered. Neither our Decision to Institute nor this Final Decision is based on indefiniteness. In view of Patent Owner’s positon that meaning of the claim would be understood by persons of ordinary skill, that Petitioner has not argued indefiniteness, and that none of our decisions in this covered business method patent review are based on indefiniteness, we need not further construe the term “workstation.”” slip op. at 6
Patent outcomesUS 8,380,611 unpatentableClaim construction§ 101 eligibility§ 103 obviousness§ 112 disclosurecites Alice · Mayo · Enfish · Electric Power · KSR · GrahamPatents in suitUS 8,380,611 - Interactive Brokers LLC / CQG, Inc. et al. v. Chart Trading Development, LLCAll claims unpatentablePTAB · 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 unpatentableClaim construction§ 101 eligibility§ 103 obviousnesscites Alice · Mayo · Enfish · Electric Power · KSR · GrahamPatents in suitUS 7,113,190 - Nautilus Hyosung Inc. v. Diebold Nixdorf, Inc.All claims unpatentablePTAB · 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 · GrahamPatents in suitUS 7,314,163 - 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 - Life Technologies Corporation v. Unisone Strategic IP, Inc.All claims unpatentablePTAB · 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 unpatentableClaim construction§ 101 eligibilityPatents in suitUS 6,996,538 - Walgreen Co. / Ahold USA, Inc. et al. v. Advanced Marketing Systems, LLCAll claims unpatentablePTAB · May 11, 2017 · CBM2016-00012 · APJ Mitchell G Weatherly · CBM · Final written decision
Claim 9 is unpatentable as anticipated by Nichtberger and, independently, by Ovadia under 35 U.S.C. § 102(b).
RulingsFinal written decision- BurdenFwd all claims unpatentableUnpatentable
“must establish facts supporting its challenges by a preponderance of the evidence. 35 U.S.C. § 326(e); 37 C.F.R. § 42.1(d). In proceedings under the AIA, “the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” See Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). This burden never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1326– 27 (Fed. Cir. 2008)) (discussing the burden of proof in AIA proceedings). “A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). With this standard in mind, we address each challenge below.” slip op. at 18
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner
“Petitioner persuasively argues that we should apply the general rule that a preamble which merely recites an intended purpose for an apparatus does not limit the apparatus. Reply 2–3. The preamble of claim 9 recites, in pertinent part, a “distributed discount vehicle for use with a data processing system for tracking and processing a plurality of in-store discounts to potential purchasers of plural products during the checkout process.” Ex. 1001, 11:46–49. By its plain terms, the phrase “during the checkout process” modifies “for tracking and processing,” which in turn modifies the “data processing system.” As explained in Part II.B.1 above, claim 9 is directed to a “discount vehicle” and not to the “data processing system” that is recited in the preamble of claim 9. By its plain terms, therefore, at best, “during the addressing only “during the checkout process” from among phrases recited in the preamble). checkout process” describes an intended use of the unclaimed “data processing system,” namely, by stating when that system is intended to perform “tracking and processing . . . of in-store discounts.” For the same reasons, even if we were to accept Patent Owner’s argument that “during the checkout process” is limiting, the limitation would relate to when the unclaimed “data processing system” tracks and processes discounts, and not to when the “select code” was “selectively deactivated” for particular discounts. As Patent Owner acknowledges, the Specification describes a “computer” that deactivates discounts after the items are scanned and purchased, as follows: As promoted items listed on the MDV are scanned during checkout, the system flags these items as purchased and applies a discount to the price provided to the customer. The computer may thereafter deactivate the promotion for that product to insure that the MDV is not used again to duplicate the discount for the purchased item. The MDV, however, remains active to the extent promoted items were not purchased by the customer during this or previous shopping visits, and the time period set for the promotion has not expired (typically 45 to 90 days). PO Resp. 7 (quoting Ex. 1001, 10:20–29) (emphasis added). This portion of the Specification describes two events occurring “[a]s promoted items listed on the MDV are scanned during checkout,” namely, flagging items as purchased and applying a discount to the price. This passage also indicates that the data processing system with which the discount vehicle is used (i.e., the computer) may “thereafter deactivate” discounts. Thus, the Specification makes it clear that selective deactivation need not occur during checkout, as argued by Patent Owner, but may occur “thereafter.” Patent Owner also cites three other portions of the Specification as describing “what occurs during checkout,” but those portions fail to demonstrate that deactivation must occur “during the checkout process.” See id. at 4 (citing Ex. 1001, 4:43–47, 4:56–58, 5:1–9). The first and third cited portions describe the checkout process as using a Point-Of-Sale (“POS”) processor that may include a barcode reader and as involving “data processing performed locally within the retail outlet and/or remotely via network connections.” Ex. 1001, 4:43–47, 5:1–9. The second cited portion explains that the discount vehicle may include “coded data located in separate locations [other than a “single code”] for reading during the checkout process.” Id. at 4:56–58. We are not persuaded that these cited portions of the Specification” slip op. at 14
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). With this standard in mind, we address each challenge below. slip op. at 18
Patent outcomesUS 8,219,445 unpatentableClaim construction§ 102 anticipationPatents in suitUS 8,219,445
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.