- 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 - PTAB · Aug 24, 2017 · CBM2016-00009 · APJ Meredith C Petravick · CBM · Rehearing
The Board denied Petitioner’s rehearing request, leaving intact its decision that claims 1–19 were not shown unpatentable under § 103 over TSE1.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“The party challenging the decision has the burden of showing a decision should be modified, and the request for rehearing must identify specifically all matters the party believes the Board misapprehended or overlooked. 37 C.F.R. § 42.71(d). In its Request for Rehearing, the dissatisfied party must (1) “specifically identify all matter that party believes the Board misapprehended or overlooked” and (2) identify the place where each matter was previously addressed. Id.” slip op. at 2
- Strike new argumentNew argument disregardedDecided for patent owner
“Petitioner presents no sufficient reason for us to modify our decision, as mere disagreement is not a sufficient basis for requesting rehearing. For the reasons explained in our Decision, Petitioner’s “boardx4-to-boardx2” argument raises a new argument in the Petitioner’s Reply that exceeds the proper scope of a reply. See Dec. 44–45. An argument that raises a new issue that exceeds the proper scope of reply will not be considered. Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,767 (Aug. 14, 2012); Intelligent Bio- Systems, Inc. v. Illumina Cambrige Ltd., 821 F.3d 1359, 1361–70 (Fed. Cir. 2016) (affirming the Board’s refusal to consider a reply that improperly raised a new issue).” slip op. at 5
NonePatents in suitUS 7,685,055 - 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 - 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 - PTAB · Jul 6, 2017 · CBM2016-00080 · APJ Kevin F Turner · CBM · Rehearing
The Board denied rehearing, maintaining its denial of institution under § 325(d) because the petition’s arguments and evidence were substantially the same as those previously presented.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“For the foregoing reasons, Petitioner has not shown that the Board abused its discretion in denying the instant Petition and not instituting a covered business method patent review of the ’792 Patent. III. CONCLUSION Insofar as we have addressed above the assertions set forth in Petitioner’s Request for Rehearing (Paper 13), the Request is granted. In all other respects, the Request is denied.” slip op. at 8
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for patent owner
“Petitioner’s argument seems to rely on the supposition that any follow-on petition would need to correct any specific errors found in a prior petition to serve as a guide for the follow-on petition to fall within the discretion of 35 U.S.C. § 325(d). For example, if a petition urging unpatentability of claims over references A and B was found to be unworthy of institution because the petition did not provide a rationale to combine those references, Petitioner’s argument suggests that only a follow-on petition asserting references A and B and a proper rationale would fall within the discretion of 35 U.S.C. § 325(d). Presumably, a petition asserting references A and C could not be considered “the same or substantially the same prior art or arguments previously were presented to the Office.” However, as stated in the Decision, our jurisprudence covers more than such special circumstances, including rejecting a “second bite at the apple” over new references or arguments, when they are the same or substantially the same as those previously presented. Dec. 11. A prior failure can guide present actions, 7 even if those present actions do not cure every prior error, and they merely address alternative means of reaching the same conclusion. We remain persuaded that the proposed grounds proffered in the instant Petition involve evidence and arguments we previously considered in the ’167 proceeding and are substantially the same as those previously presented.” slip op. at 7
Discretionary denialcites NautilusPatents in suitUS 6,081,792 - Ibg LLC / Interactive Brokers LLC et al. v. Trading Technologies International, Inc.Rehearing deniedPTAB · May 17, 2017 · CBM2015-00172 · APJ Meredith C Petravick · CBM · Rehearing
The Board denied Patent Owner’s rehearing request, leaving intact its determination that claims 1–22 are ineligible under § 101.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“We did not misapprehend the Federal Circuit’s analysis in CQG. See Dec. 33–34. As discussed in our Final Decision, we considered CQG but determined that the claims of the ’556 patent were unlike the claims at issue in CQG. Id. at 34. “For example, the claims of the ’556 patent do not recite the static display of prices feature claimed by the [patent at issue in CQG].” Id. Considering the actual elements of the claims of the ’556 patent, we considered and discussed both Supreme Court and Federal Circuit guidance emanating from several decisions relevant to the facts of this case. See Dec. 26–38. We determined that the claims of the ’556 patent are like those found ineligible by the Federal Circuit in, for example, Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1353 (Fed. Cir. 2016), because the claims of the ’556 patent do “not go beyond requiring the collection, analysis, and display of available information in a particular field, stating those functions in general terms, without limiting them to technical means for performing the functions that are arguably an advance over conventional computer and network technology.” Id. at 30–33 (quoting Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016)). Patent Owner’s argument is not sufficient reason for us to modify the Final Decision, as mere disagreement with a decision is not a sufficient basis for requesting rehearing.” slip op. at 2
Nonecites Electric PowerPatents in suitUS 7,783,556 - Google Inc. v. Patrick ZuiliAll claims unpatentablePTAB · May 5, 2017 · CBM2016-00021 · APJ Jameson Lee · CBM · Final written decision
Claims 1–3, 6, 10, 14, 15, 18, 19, and 21 are unpatentable under § 101 because they claim an abstract idea without an inventive concept.
RulingsFinal written decision- BurdenFwd all claims unpatentableUnpatentable
“3. Conclusion Petitioner has established by a preponderance of the evidence that claims 1–3, 6, 10, 14, 15, 18, 19, and 21 are directed to patent-ineligible subject matter under 35 U.S.C. § 101.” slip op. at 40
- ExcludeMotion to exclude, deniedDenied
“to Petitioner Exhibits 1004, 1005, 1010, 1011, 1013, 1014, 1032, and 1037. Paper 33. None of these exhibits was relied on by Petitioner in support of the sole ground on the basis of which trial was instituted in this proceeding, i.e., subject matter eligibility under 35 U.S.C. § 101, or in support of Petitioner’s arguments for establishing the ’667 patent as a covered business method patent eligible for covered business method patent review. Patent Owner in its Reply to Petitioner’s opposition to Patent Owner’s renewed Motion to Exclude asserts that the Board’s Decision on Institution did rely on the Declaration of Mr. Gray and that Mr. Gray’s Declaration does refer to Exhibits 1004, 1005, and 1037. Paper 40, 3. Mr. Gray’s Declaration, however, covers many subjects, and the portions of Mr. Gray’s Declaration cited to in the Decision on Institution do not rely on or refer to Exhibits 1004, 1005, 1010, 1011, 1013, 1014, 1032, and 1037. We have not relied on any portion of Exhibits 1004, 1005, 1010, 1011, 1013, 1014, 1032, and 1037, in this Final Written Decision. Those exhibits all relate to an alleged ground of unpatentability over prior art that has not been instituted for trial and also were not referred to by Mr. Gray in connection with his testimony regarding either patent subject matter eligibility under 35 U.S.C. § 101 or whether the ’667 patent is a covered business method patent eligible for covered business method patent review. Accordingly, Patent Owner’s Renewed Motion to Exclude is dismissed as moot.” slip op. at 40
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for petitioner
“We are cognizant that a “pay-per-click system” is expressly recited only in claim 1’s preamble, and that a preamble recitation may not be limiting. “Whether a preamble stating the purpose and context of the invention constitutes a limitation of the claimed process is determined on the facts of each case and in light of the overall form of the claim, and the invention as described in the specification and illuminated in the prosecution history.” Applied Materials, Inc. v. Advanced Semiconductor Materials Am., Inc., 98 F.3d 1563, 1572–73 (Fed. Cir. 1996). In this instance, the recitation of a “pay-per-click system” in the preamble of claim 1 is limiting, because it is necessary to give life, meaning, and vitality to the subject matter of claim 1. See Symantic Corp. v. Computer Assocs. Int’l Inc., 522 F.3d 1279, 1288 (Fed. Cir. 2008); Catalina Marketing Int’l. v. Coolsavings.Com, 289 F.3d 801, 808 (Fed. Cir. 2002); Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999). In the Summary of the Invention section, the Specification states: “This invention improves upon existing pay-per-click arrangements . . . .” Ex. 1001, 1:62–64. The Specification describes no environment for the disclosed invention other than in a “pay-per-click” system. The body of claim 1 specifically recites a step of “detecting fraudulent activity by measuring the duration between clicks by said client to said selected website by examining said code and website information.” Id. at 3:12–15. The “fraudulent activity” referred to in the body of the claim depends on the operations of a pay-per-click system to have meaning. For instance, the potentially fraudulent activity related to the duration between clicks is a problem, because the merchant has an obligation to pay for each click in a pay-per-click system. Also in the Summary of the Invention section, the Specification states that determining if certain clicks are illegitimate “allows the pay-per-click company to more fairly invoice the merchants, thereby preventing fraudulent [overuse].” Id. at 2:1–4. Claim 1 expressly requires the links provided to a client be “associated with a plurality of websites associated with a plurality of merchants.” Id. at 3:2–5. For all of these reasons, we determine that the recitation of “pay-per-click system” in the preamble of claim 1 is limiting. We determine, in particular, that the step in the body of claim 1 for detecting fraudulent activity derives its meaning and significance from being implemented in a pay-per-click system.” slip op. at 14
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable
“above-noted testimony of Mr. Gray, we agree with Petitioner’s articulation of what constitutes an abstract idea to which the claimed invention is directed, i.e., “detecting fraud based on the time between two requests by the same client.” That articulation is reasonably tied to the claims, and not an over-generalization or over-simplification of the claimed subject matter.” slip op. at 29
Patent outcomesUS 7,953,667 unpatentableClaim construction§ 101 eligibilitycites Mayo · Bilski · EnfishPatents in suitUS 7,953,667 - 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
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.