Instituting CBM Review for Patent with Claim Encompassing Transitory, Propagating Signal CBM2015-00182


Takeaway: A claim that encompasses a transitory, propagating signal is not patent eligible, and adding the phrase “having program code recorded thereon” to limit computer readable medium does not necessarily limit the medium to non-transitory media.

In its Decision, the Board instituted covered business method (CBM) review, finding that Petitioner demonstrated that it is more likely than not that the challenged claims of the ’132 patent are unpatentable. A request by Patent Owner to expand the panel for the decision to institute was also denied.

The ’132 patent, entitled “Click Based Trading with Intuitive Grid Display of Market Depth”, discloses “a display, named the ‘Mercury’ display, and method of using the display to trade a commodity.” The display is “a graphic user interface (“GUI”) that dynamically displays the market depth of a commodity traded in a market and allows a trader to place an order efficiently.”

The Board addressed claim construction under the broadest reasonable interpretation in light of the specification. The Board expressly construed the “single action” limitations recited in each independent claim, adopting the construction set forth in the specification. In particular, the limitations were construed in light of the specification and prosecution history so as not to “require setting the additional parameters or sending the trade order. Rather, the claims require that the selection of the area in the order entry is accomplished by the ‘single action,’ and that ‘single action’ allows for additional parameters to be set and the trade order to be sent.”

The Board then construed the term “computer readable medium having program code recorded thereon.” Petitioner contended that the term “is broad enough to encompass a transitory, propagating signal that is encoded.” The Board agreed, noting that the specification does not include a reference to “computer readable medium” and that adding the phrase “having program code recorded thereon” “does not limit the medium to non-transitory media.” Thus, the term was construed as “any medium that participates in providing instruction to a processor for execution and having program code recorded thereon.”

The Board then addressed whether the ’132 patent qualifies as a covered business method patent. The Board agreed with Petitioner that “at least the subject matter recited by claim 1 is directed to activities that are financial in nature, namely ‘displaying . . . a plurality of bids and a plurality of asks in the market for the commodity’ and ‘selecting a particular area in the order entry region . . . to . . . send the trade order to the electronic exchange,’ which are recited in the claim.”

Patent Owner had argued that “improvements to software tools or GUIs” are outside the scope of a covered business method patent review. The Board disagreed, noting that while the cited legislative history includes statements that novel software tools or GUIs “used by the electronic trading industry worker” would not be the target of these proceedings, “the language of the AIA, as passed, does not include an exemption for all user interfaces for commodities from covered business method patent review.”

Regarding whether the patent is one for a technological invention, the Board considers “whether the claimed subject matter as a whole recites a technological feature that is novel and unobvious over the prior art; and solves a technical problem using a technical solution.” The Board was persuaded by Petitioner that at least claim 1 “does not recite a novel and non-obvious technological feature,” but recites well-known features. The Board was also persuaded that the ’132 patent “does not solve a technical problem with a technical solution,” noting that claim 1, as written, “requires the use of only known technology.”

The Board next turned to the asserted grounds of unpatentability. Claims 1-56 were challenged as being unpatentable under Section 101. The Board first noted that claims 8–13, 30–39, and 51 do not fit within a statutory category because they are broad enough to encompass “a transitory, propagating signal that is encoded, which is not eligible for patenting.” Nevertheless, the Board found that even if all claims fit within a statutory category, the challenged claims do not recite patent-eligible subject matter.

The Board was persuaded that the claims “are more likely than not drawn to a patent-ineligible abstract idea.” “Although certain limitations, such as use of a “static display of prices,” may add a degree of particularity, the concept embodied by the majority of the limitations describes only the abstract idea of displaying market information to facilitate setting parameters and placing a trade order.” The Board was also persuaded that the claims “do not add an inventive concept sufficient to ensure that the patent in practice amounts to significantly more than a patent on the abstract idea itself.”

Petitioner had challenged “claims 1–3, 5–10, 13–16, 18–23, 25–33, 35–43, and 45–56 as having been obvious over Silverman, Gutterman, and Belden, claims 4, 11, and 17 as having been obvious over Silverman, Gutterman, Belden, and May, and claims 23, 34, and 44 as having been obvious over Silverman, Gutterman, Belden, and Paal (‘the Silverman challenges’).” The Board found that Petitioner did not demonstrate that it is more likely than not that it will prevail on the Silverman challenges. In particular, the Board agreed with Patent Owner that the cited references do not disclose all the features recited in the claims.

Petitioner had challenged “claims 1–3, 7–10, 14–16, 20–28, 30–38, 40–48, and 50–56 as having been obvious over TSE and Belden, claims 4, 11, and 17 as having been obvious over TSE, Belden, and May, and claims 5, 6, 12, 13, 18, 19, 29, 39, and 49 as having been obvious over TSE, Belden, and Gutterman (‘the TSE challenges’).” The Board was persuaded that the challenged claims are more likely than not unpatentable based on the TSE challenges. Patent Owner argued that TSE is not prior art, relying upon a previous jury determination. The Board noted that the jury determination is not binding, Petitioner was not involved in the case, and Petitioner’s burden is only a preponderance of the evidence and not the higher clear and convincing standard.

As to whether TSE was a printed publication, the Board agreed with Petitioner, finding that “TSE was made accessible” to “interested members of the relevant public.” In particular, copies of TSE were distributed “to each of the about 200 participants in the Tokyo Stock Exchange, who were free to do whatever they wanted with their copies of the publication.” The Board was persuaded at this stage by Petitioner’s arguments and found Patent Owner’s arguments to rely upon claim constructions that were not adopted.

Patent Owner requested that the Board deny institution because the Petition was an alleged misuse of the covered business method review process, in particular because Petitioner could have joined other proceedings where the same grounds were presented and because the same references had already been considered by the Office. The Board noted that it may deny a petition after taking into account whether the same art or arguments were presented to the Office, not that the Board is required to do so. The Board noted that Petitioner was not required to join the other related CBM proceeding and that Petitioner was not a party to either the related CBM proceeding or the original prosecution and reexamination proceedings. Thus, the Board did not exercise its discretion to deny the Petition.

Finally, Patent Owner also contended that not all real parties-in-interest were identified based upon allegations that the Petition was “‘part of a larger scheme of coordination’ amongst the defendants in the related litigation.” Petitioner also allegedly used the same counsel as CQG, a party to the related litigation, and thus CQG “at least partially funded this proceeding” by “recycl[ing] the work from that [earlier] proceeding where CQG was admittedly an RPI.” The Board was not persuaded that the evidence established that CQG had control over filing the Petition.

IBG LLC v. Trading Tech. Int’l, Inc., CBM2015-00182
Paper 19: Decision on Institution of Covered Business Method Patent Review
Dated: March 3, 2016
Patent: 6,772,132 B1
Before: Sally C. Medley, Meredith C. Petravick, and Jeremy M. Plenzler
Written by: Plenzler
Related Proceedings:  Numerous U.S. district court proceedings; CBM2014-00135; CBM2015-00058