In its Decision, the Board denied institution of an inter partes review because the information in the Petition did not show that there is a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim. The ’044 Patent relates to automated trading systems for option contracts. Specifically, the claimed invention is directed to methods for managing the risk of a maker of an options market in an automated trading system. Petitioner asserted both 35 U.S.C. § 102(e) and § 103(a) as grounds of unpatentability.
The Board began with Petitioner’s challenge to claim 1 as anticipated by Tilfors. The Board was not persuaded that Tilfors discloses a server configured to determine the “number of contracts that have been bought or sold” as required by claim 1, and specifically the Board was not persuaded that Petitioner’s expert’s assertion was supported by the Tilfors disclosure. The Board was also not persuaded that Tilfors discloses “determining a number of contracts that have been bought or sold within said quote group” and “comparing” that to a “predefined number of bought or sold contracts relating to said quote group.”
The Board then turned to the obviousness challenge of claims 2 and 3 over Tilfors and Baird. Because Petitioner did not argue that Baird cured the deficiencies of Tilfors from claim 1, the Board was not persuaded that Petitioner had demonstrated a reasonable likelihood of success on this ground.
Finally, the Board discussed Petitioner’s challenge to claims 1-3 as obvious in view of admitted prior art in view of Rickard and/or Baird. The Board noted that Petitioner did not provide an element-by-element analysis for each of claims 1-3 with respect to the asserted prior art with a claim chart. Further, the Board stated that Petitioner did not map the construed claim language to the teachings of the asserted prior art references, explain how the proposed combinations teach or suggest all of the limitations of the claims, or explain how the claims would have been obvious over that combination.
International Securities Exchange, LLC v. Chicago Board Options Exchange, Inc., IPR2014-00099
Paper 12: Decision Denying Institution of Inter Partes Review
Dated: May 22, 2014
Patent 8,266,044 B2
Before: Justin T. Arbes, Rama G. Elluru, and James B. Arpin
Written by: Elluru
Related Proceedings: Chicago Bd. Options Exch., LLC v. Int’l Sec. Exch. LLC, No. 1:13-cv-01339-JMF (S.D.N.Y); CBM2013-00049; CBM2013-00050; CBM2013-00051; IPR2014-00097; IPR2014-00098