UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD

Transcription

1 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD IBG LLC, INTERACTIVE BROKERS LLC, TRADESTATION GROUP, INC., and TRADSTATION SECURITIES, INC., Petitioners v. TRADING TECHNOLOGIES INTERNATIONAL, INC. Patent Owner Patent No. 7,412,416 B2 PETITION FOR COVERED BUSINESS METHOD REVIEW UNDER 35 U.S.C. 321 AND 18 OF THE LEAHY-SMITH AMERICA INVENTS ACT Mail Stop PATENT BOARD Patent Trial and Appeal Board U.S. Patent and Trademark Office P.O. Box 1450 Alexandria, VA

2 Table of Contents I. Mandatory Notices... 2 A. Real parties-in-interest... 2 B. Related Matters... 2 C. Lead and Back-Up Counsel... 3 II. Grounds For Standing... 3 A. Petitioners Certification... 3 B. The 416 Patent is a Covered Business Method Patent The 416 patent claims a covered business method The 416 patent is not for a technological invention AIA 18 does not exempt GUIs from CBM review III. Overview of the 416 patent A. Prosecution history B. Level of ordinary skill in the art at the time of the invention C. Claim construction IV. Identification of the Challenge V. Ground 1: Claims 1-24 are unpatentable under 35 U.S.C. 101 because they are directed to an ineligible abstract idea A. The 416 patent claims are directed to the abstract idea of graphing (or displaying) trading data to assist a trader to place an order (Alice step one) Graphing (or displaying) trading data to assist a trader to place an order is directed to a fundamental economic practice Graphing (or displaying) trading data to assist a trader to place an order is directed to an idea of itself B. The 416 patent claims do not recite an inventive concept (Alice step two) Beyond the abstract idea, independent claims 1 and 14 recite only insignificant and conventional extra-solution activities ii

3 VI. VII. 2. The dependent claims merely recite well-understood, routine, conventional extra-solution activity C. The 416 patent claims are not rooted in computer technology D. The absence of complete preemption does not demonstrate patent eligibility E. TT v. CQG is not controlling precedent Ground 2: Claims are ineligible under 35 U.S.C. 101 because they are not directed to a statutory class of subject matter Ground 3: TSE, Bay, and Subler render claims 1-24 obvious under 35 U.S.C A. TSE, Bay, and Subler render obvious claims 1 and Preambles displaying a chart on a graphical user interface displaying indicators representing historical trading data providing a plurality of locations placing an order icon for a particular quantity generating an order to buy or sell the particular quantity sending the order to an electronic trading system B. TSE, Bay, and Subler render obvious claims 2 and C. TSE, Bay, and Subler render obvious claims 3 and D. TSE, Bay, and Subler render obvious claims 4 and E. TSE, Bay, and Subler render obvious claims 5 and F. TSE, Bay, and Subler render obvious claims 6 and G. TSE, Bay, and Subler render obvious claims 7 and H. TSE, Bay, and Subler render obvious claims 8 and I. TSE, Bay, and Subler render obvious claim J. TSE, Bay, and Subler render obvious claims 10 and K. TSE, Bay, and Subler render obvious claims 12 and L. TSE, Bay, and Subler render obvious claim iii

4 M. TSE, Bay, and Subler render obvious claims 23 and VIII. Ground 4: Claims 2 and 15 are unpatentable under 35 U.S.C. 112, IX. Conclusion iv

5 Table of Authorities Cases Alice Corp. Pty. Ltd. v. CLS Bank Int l, 134 S. Ct (2014)... passim Ariosa Diags. v. DNA Diags. Ctr., 778 F.3d 1371 (Fed. Cir. 2015) Bancorp Servs., L.L.C. v. Sun Life Assur. Co. of Canada (U.S.), 687 F.3d 1266 (Fed. Cir. 2012)... 31, 36, 37 Bilski v. Kappos, 561 U.S. 593 (2010) Bloomberg Inc. v. Markets-Alert Pty Ltd., CBM , Paper No. 18 (P.T.A.B., Mar. 29, 2013)... 5 Cooper Cameron Corp. v. Kvaerner Oilfield Products, Inc., 291 F.3d 1317 (Fed. Cir. 2002) CyberSource Corp. v. Retail Decisions, 654 F.3d 1366 (Fed. Cir. 2011)... 25, 29, 31 DDR Holdings v. Hotels.com, 773 F.3d 1245 (Fed. Cir. 2014)... 35, 36, 37 Enfish, LLC v. Microsoft Corp., No (Fed. Cir. May 12, 2016) Ex parte Mewherter, 107 USPQ2d 1857 (B.P.A.I. 2013) Exxon Mobil Corp. v. Allapattah Servs., Inc., 545 U.S. 546 (2005) Gottschalk v. Benson, 409 US 63 (1972) IBG LLC v. Trading Techs. Int l, Inc., CBM , Paper 19 (P.T.A.B. Mar. 3, 2016) In re Distefano, III, 808 F.3d 845 (Fed. Cir. Dec. 17, 2015) v

6 In re Gulack, 703 F.2d 1381 (Fed. Cir. 1983) In re Nuijten, 550 F.3d 1346 (Fed. Cir. 2007)... 17, 42 In re Russell, 48 F.2d 668 (CCPA 1931) Int l Sec. Exch. v. Chicago Bd. Options Exch., CBM (P.T.A.B. 2015) Internet Patents Corp. v. Active Network Inc., 790 F.3d 1343 (Fed. Cir. 2015)... 29, 31 Mayo Collab. Servs. v. Prometheus Labs, 132 S. Ct (2012)... passim Mims v. Arrow Fin. Servs., 132 S. Ct. 740 (2012) SightSound Tech s, LLC. v. Apple Inc., Case No , slip op. (Fed. Cir. 2015)... 8, 10 TD Ameritrade Holding Corp. v. Trading Technologies, CBM , Paper No. 19 (P.T.A.B., Dec. 2, 2014)... 5 TLI Comm ns LLC v. AV Automotive, L.L.C., Case No , slip op. (Fed. Cir. 2016)... 38, 39 Trading Techs. Int l. v. CQG, No. 05-cv-4811 (N.D. Ill. 2015) Ultramercial v. Hulu, 772 F.3d 709 (Fed. Cir. 2014)... 26, 28 Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306 (Fed. Cir. 2015)... 4, 10, 25 Xianli Zhang v. United States, 640 F.3d 1358 (Fed. Cir. 2011) Statutes 35 U.S.C , 17 vi

7 35 U.S.C. 102(a) U.S.C. 102(b) U.S.C , U.S.C. 112, AIA 18(d)(2) Regulations 37 C.F.R C.F.R (a) C.F.R (b)... 6, 7, Fed. Reg. 48,734 (Aug. 14, 2012) Fed. Reg. 48,756, 48, (Aug. 14, 2012) Other Authorities 157 Cong. Rec. S1360 (Mar. 8, 2011) Cong. Rec. S5402 (Sept. 8, 2011)... 11, 12 M.P.E.P (c) vii

8 Exhibit List Ex No. Description 1001 U.S. Patent No. 7,412,416 B2 to Friesen et al. ( ʼ416 patent ) 1002 File History of Application Ser. No. 11/417,522, which became the 416 patent, as filed and obtained from PAIR ( 416 File History ) 1003 U.S. Patent No. 7,533,056 to Friesen et al. ( ʼ056 patent ) 1004 INTENTIONALLY LEFT BLANK 1005 TD Ameritrade Holding Corp. v. Trading Techs. Int l, Inc., CBM , Paper 19 ( 131 Ins. Dec. ) 1006 TD Ameritrade Holding Corp. v. Trading Techs. Int l, Inc., CBM , Paper 24 ( 131 Reh g Dec. ) 1007 TD Ameritrade Holding Corp. v. Trading Techs. Int l, Inc., CBM , Paper 38 ( 131 POR ) 1008 IBG LLC v. Trading Techs. Int l, Inc., CBM , Paper 21 ( 179 POPR ) 1009 Trading Techs. Int l. v. CQG, No. 05-cv-4811, Slip. Op. (N.D. Ill. Feb. 24, 2015) ( TT v. CQG Slip. Op. ) 1010 Transcript of the Deposition of Christopher Thomas, April 28, 2015 ( Thomas Tr. ) 1011 Redacted Second Corrected Expert Report of Christopher Thomas, Trading Technologies International, Inc. v. CQG, Inc., Case No. 1:05-CV (N.D. Ill. Dec. 12, 2013) ( Thomas Report ) 1012 Expert Declaration of Kendyl A. Román ( Román Decl. ) 1013 Curriculum Vitae of Kendyl A. Román ( Román CV ) 1014 List of Materials Considered by Kendyl A. Román ( Román List of Materials ) 1015 Futures/Option Purchasing System Trading Terminal Operation Guidelines, Tokyo Stock Exchange ( TSE JP ) 1016 Certified Translation of System for Buying and Selling Futures and Options Transaction Terminal Operational Guidelines ( TSE ) viii

9 Ex No. Description 1017 Certificate of Translation for System for Buying and Selling Futures and Options Transaction Terminal Operational Guidelines ( TSE Certificate ) 1018 Deposition Transcript of Atsushi Kawashima, Trading Technologies International, Inc., v. espeed, Inc., Case No. 04-cv-5312, United States District Court, Northern District of Illinois, Eastern Division, dated November 21, 2005 ( Kawashima Dep. Tr. ) 1019 U.S. Patent No. 5,619,631 to Schott ( Schott ) 1020 U.S. Patent No. 5,646,992 to Subler et al. ( Subler ) 1021 INTENTIONALLY LEFT BLANK 1022 U.S. Patent No. 5,136,501 to Silverman et al. ( Silverman ) 1023 U.S. Patent No. 5,297,031 to Gutterman et al. ( Gutterman ) 1024 WO 90/11571 to Belden 1025 Mark J. Powers, Starting Out in Futures Trading, Sixth Edition, 2001 ( Powers ) 1026 History of the American and NASDAQ Stock Exchanges 1027 David M. Weiss, After the Trade is Made, 1993 ( Weiss ) 1028 INTENTIONALLY LEFT BLANK 1029 Alan Cooper, About Face: The Essentials of User Interface Design, First Edition, ( Cooper ) 1030 Ben Shneiderman, Designing the User Interface: Strategies for Effective Human-Computer Interaction, Third Edition, 1998 ( Shneiderman ) 1031 INTENTIONALLY LEFT BLANK 1032 INTENTIONALLY LEFT BLANK 1033 Richard W. Arms Jr., Profits in Volume - Equivolume Charting, 1971 ( Arms ) 1034 INTENTIONALLY LEFT BLANK 1035 Inside Macintosh, Promotional Edition, Apple Computer, Inc., 1985 ( Inside Macintosh ) ix

10 Ex No. Description 1036 Valerie Illingworth, and I. C. Pyle, Dictionary of Computing, 4th Ed, Oxford University Press, 1996 ( Oxford Dictionary ) 1037 U.S. Patent No. 1,760,287 to Schippers ( Schippers ) 1038 INTENTIONALLY LEFT BLANK 1039 INTENTIONALLY LEFT BLANK 1040 Merriam-Webster s Collegiate Dictionary, Tenth Edition, TradeStation Gr p, Inc. v. Trading Techs. Int l, Inc., CBM , Paper 29 ( 161 Ins. Dec. ) 1042 U.S. Patent No. 5,347,452 to Bay, Jr. ( Bay ) x

11 Petitioners, IBG LLC, Interactive Brokers LLC, TradeStation Group, Inc., and TradeStation Securities, Inc., petition for Covered Business Method review of claims 1-24 of U.S. Patent No. 7,412,416 (Ex ( 416 patent )) owned by Trading Technologies International, Inc. ( TT ). This Petition demonstrates that claims 1-24 of the 416 patent are more likely than not unpatentable. First, claims 1-24 are ineligible for patenting under 35 U.S.C 101 because each merely recites the abstract idea of graphing (or displaying) trading data to assist a trader to place an order. The claims represent nothing more than the well understood, routine, and conventional activities of displaying a chart of trading data on a graphical user interface ( GUI ), and placing an order using, for example, the extremely well-known drag-and-drop GUI operation. The claims do no more than simply instruct the practitioner to implement the abstract idea via the GUI. A computer is not even recited in the claims. Second, claims 1-24 are obvious under 35 U.S.C The claims recite a method for displaying information regarding, and facilitating the buying and selling of, a good. The method includes allowing a trader to set trade order parameters using well-known GUI operations such as drag-and-drop, and then send the order to an exchange. TSE, which is prior art because it was distributed in August of 1998 to about 200 companies that traded on the Tokyo Stock Exchange, teaches a GUI for trading financial products that allows a trader to set order 1

12 parameters using a point-and-click operation a well-known and obvious variant of the drag-and-drop operation. Prior art such as Subler teaches the conventional feature of using a drag-and-drop operation during order placement. Thus, the 416 patent merely utilizes well-known and simple GUI design techniques in a financial trading product. Petitioners request that the PTAB institute trial on all Grounds. I. Mandatory Notices A. Real parties-in-interest The real parties-in-interest are IBG LLC, Interactive Brokers LLC, TradeStation Group, Inc., TradeStation Securities, Inc., TradeStation Technologies, Inc., and IBFX, Inc. B. Related Matters The 416 patent is currently involved in the following proceedings that may affect, or be affected by, a decision in this proceeding: TradeStation Technologies, Inc. v. TT, 0:16-cv (S.D. Fl.); TT v. BGC Partners, Inc., et al., 1:10-cv (N.D. Ill.); TT v. FuturePath Trading, LLC, 1:10-cv (N.D. Ill.); TT v. IBG LLC et al., 1:10-cv (N.D. Ill.); TT v. Cunningham Trading Systems, LLC et al., 1:10-cv (N.D. Ill.). The 416 patent claims benefit as a continuation application to U.S. Patent No. 7,212,999 ( 999 patent ), which is the subject of IBG LLC et al. v. TT, CBM Additionally, U.S. Patent No. 2

13 7,533,056 (Ex ( 056 patent )), which also claims benefit as a continuation to the 999 patent, is involved in: IBG LLC et al. v. TT, CBM ; and ex parte reexamination control no. 90/013,578. Two pending U.S. Patent Applications claim priority as continuations to the 999 patent: 14/828,328, filed August 17, 2015; and 14/884,207, filed October 15, C. Lead and Back-Up Counsel Petitioners appoint Robert E. Sokohl (Reg. No. 36,013) as its lead counsel, and Lori A. Gordon (Reg. No. 50,633) and Richard M. Bemben (Reg. No. 68,658) as its back-up counsel, at: STERNE, KESSLER, GOLDSTEIN & FOX, 1100 New York Avenue, N.W., Washington, D.C., 20005, phone no. (202) , facsimile (202) ; and John C. Phillips (Reg. No. 35,322) of Fish & Richardson P.C. as back-up counsel. Petitioners consent to service by at: rsokohl-ptab@skgf.com, lgordon-ptab@skgf.com, rbemben-ptab@skgf.com, PTAB@skgf.com, and PTABINBOUND@FR.COM. II. Grounds For Standing A. Petitioners Certification Petitioners certify that they meet the eligibility requirements of 37 C.F.R because they were sued for infringement of the 416 patent: TT v. IBG LLC et al., 1:10-cv-721 (N.D. Ill.) (consolidated with TT v. BGC Partners, Inc., et al., 1:10-cv (N.D. Ill.)); and TradeStation Technologies, Inc. v. TT, 0:16-cv- 3

14 60296 (S.D. Fl.). Petitioners also certify that they are not estopped or barred from filing this Petition they have not been a party or a privy to a party in any postgrant proceeding of the 416 patent, nor filed a civil action challenging any of its claims. B. The 416 Patent is a Covered Business Method Patent. The 416 patent is a CBM patent because it claims a method for facilitating the buying and selling of a good and is not for a technological invention. In CBM , the Board analyzed the 056 patent a sibling of the 416 patent that claims a similar method for trading and found it eligible for CBM review. And contrary to TT s previous arguments, GUIs are not exempt from CBM review. 1. The 416 patent claims a covered business method. A patent that claims a method for performing data processing in the practice, administration or management of a financial product or service is a CBM patent. 37 C.F.R (a). The term financial product or service should be interpreted broadly, encompassing patents claiming activities that are financial in nature, incidental to a financial activity or complementary to a financial activity. Transitional Program for CBM Patents Definitions, 77 Fed. Reg , (Aug. 14, 2012). The Federal Circuit upheld the Office s interpretation in Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, (Fed. Cir. 2015). 4

15 The 416 patent meets this definition. Claim 1, e.g., recites a method for facilitating trading and displaying information regarding the buying and selling of a good, and recites steps of: (i) displaying a chart on a GUI comprising a vertical axis of price values and a horizontal axis of time; (ii) displaying indicators representing historical trading data for the good on the chart; (iii) providing a plurality of locations on the GUI to place an order icon; (iv) placing an order icon for a particular quantity of the good at a specific location along the vertical axis; (v) generating an order to buy or sell the particular quantity of the good; and (vi) sending the order to an electronic trading system. ( 416 patent, claim 1.) Each of these activities is inherently financial in nature. For example, displaying historical trading data is a financial activity. See Bloomberg Inc. v. Markets-Alert Pty Ltd., CBM , Paper No. 18 at 5 (P.T.A.B. Mar. 29, 2013) (informing a user of certain stock market events is a financial service). Further, placing an order icon for a particular quantity of [a] good at a specific location along a price axis where the location corresponds to a particular price value for the good is a financial activity. Similarly, sending an order to an electronic trading system is a financial activity. See TD Ameritrade Holding Corp. v. TT, CBM , Paper No. 19 at 9 (P.T.A.B. Dec. 2, 2014) ( Displaying market information and sending a trade order to an electronic exchange are activities that are financial in nature. ); (Ex ( Powers ) at ). And the other 23 claims in the 416 5

16 patent further demonstrate its CBM eligibility. (See, e.g., 416 patent, claims 2 (the historical trading data is of the good), claims 6-7 (defining the historical trading data), claim (defining the good as either a commodity or stock), claim 13 ( the electronic trading system comprises a matching process for matching orders of a bid type or an offer type ), claim 14 (limitations of claim 1 recited as a computer readable medium ).) Collectively, the claims are directed to a method for facilitating trading in an electronic trading system. Not only does the preamble recite that the collection of method steps is drawn to facilitating trading and displaying information regarding the buying and selling of a good, but the 416 patent illustrates a GUI (e.g., FIGs. 3A-E, 4 and 9) displaying various financial indicia, thereby confirming that the patent is directed to financial services. Indeed, the Board has already determined that the 056 patent a sibling of the 416 patent that claims a similar method for trading meets the definition of a CBM. (Ex ( 131 Ins. Dec. ) at 8; Ex ( 131 Reh g Dec. ) at 1-5.) 2. The 416 patent is not for a technological invention. The 416 patent is not for a technological invention. A technological invention is determined by considering 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. 37 C.F.R (b). 6

17 When applying the technological invention test, it is appropriate to consider the Office Patent Trial Guide, which provides exemplary claim drafting techniques that do not render a patent a technological invention. 77 Fed. Reg. 48,756, 48, (Aug. 14, 2012). Under the Trial Guide, (a) [m]ere recitation of known technologies, such as computer hardware, communication or computer networks, software, memory, computer-readable storage medium, scanners, display devices or databases...[;] (b) [r]eciting the use of known prior art technology to accomplish a process or method, even if that process or method is novel and nonobvious[; and] (c) [c]ombining prior art structures to achieve the normal, expected, or predictable result of that combination are insufficient to establish a technological invention. Id. Yet, as demonstrated below, the 416 patent claims in their entirety employ precisely these claim drafting techniques and therefore fail both prongs of the technological invention test under 37 C.F.R (b). In short, the claims (and in particular claims 1 and 14) recite trading software that is implemented using conventional computer hardware, such as personal computers, servers and networks, and therefore do not include a technological feature or implement a technological solution. The claims do not even recite a computer. Rather, the only alleged structure recited in claim 1 is a graphical user interface and an input device. ( 416 patent, claim 1.) These two claim features are notoriously well-known concepts as demonstrated herein. And 7

18 the 416 patent itself admits that the computing device used to display the graphical user interface and that performs the claimed method i.e., conventional computer functions such as displaying, providing, placing... with a pointer of an input device, and sending need not be any specific hardware but rather can be personal computers, terminals as part of a network, or any other computing device. (Id. at 4:34-36.) And, electronic trading was well known as of the filing date, going back as far as 1971 when NASDAQ set up the first electronic stock exchange. (Ex (History of the American and NASDAQ Stock Exchanges) at 1.) Because the claims recite only conventional prior art features, the result is entirely normal, expected, and predictable. See 77 Fed. Reg.at 48, (claims drawn to combinations of structures that achieve normal, expected, and predictable results are not technological). As described in detail below, the claims of the 416 patent do not recite a technological feature that is novel or unobvious over the prior art. See infra Section VII; (Ex ( Román Decl. ), (demonstrating that claims 1-24 are obvious)); SightSound Tech s, LLC. v. Apple Inc., 809 F.3d 1307, 1316 (Fed. Cir. 2015) (upholding the PTAB s technological invention analysis, which relied on prior art submitted with the petition that demonstrated that the claims-at-issue were obvious). Rather, they recite only well-understood, routine, and conventional steps of displaying to a trader a chart that includes prices 8

19 on a graphical user interface, entering buy and sell orders, and sending the trader s orders to an exchange to be executed. See infra Section VII; (Román Decl., ; see also 416 patent, 1:34-52 (admitted conventional activities of an exchange).) Moreover, the 416 patent does not provide a technical solution to a technical problem. The inventors allegedly recognized that trading systems suffered from a problem: conventional trading systems made it difficult for a trader to quickly and effectively process disparate information from multiple diverse sources in order to make an informed transaction decision. (See 416 patent, 1:56-63.) Indeed, the Specification confirms that the purported problem facing traders was the inability to anticipate market movement. (Id. at 1:28-32 ( The successful trader anticipates the rise or fall of the value of an item and performs his or her own transaction before the rest of the market is aware of the item s potential gain or loss in value. Thus, anticipation of the market and specifically of the future demand for an item of interest is critical to the success of a trader. ).) The Specification also highlights the problem and importance of informing a trader of certain market events so that the trader may use that information to facilitate trading a commodity. (Id. at 2:19-26.) Yet, each of these so-called problems are business, financial, or trader problems, not technical or computer problems, as the Board recognized in CBM of the sibling 056 patent. ( 131 Ins. Dec. at 9

20 8 ( informing a trader of certain stock market trends or events is more of a financial problem than a technical problem ).) Not only is the problem not technical, but the purported solution is also not technical. The 416 patent simply provides a graphical representation of what a trader would do in his mind, thus allowing the trader to better anticipate market movement. ( 416 patent, 1:56-60.) Importantly, TT did not design a more accurate mouse or computer that responded faster and more efficiently. Rather, TT s nontechnical solution was to rearrange available market data and provide locations to place a trade on a GUI albeit into a known display configuration and allow a trader to send a trade to an electronic trading system by performing a well-known drag-and-drop action. See infra Section VII. TT s solution may be aesthetic, but it is certainly not technical. (See 131 Ins. Dec. at 7 (presenting data, even in an intuitive format, does not make[] a meaningful distinction for purposes of determining whether a claim is to a technological invention ).) And, merely assisting a trader in making quick mental calculations the purpose of a general purpose computer is not technical in nature. See Versata, 793 F.3d at 1327 (not technological if conventional); SightSound, 809 F.3d at 1316 (not technological if obvious over the prior art). Thus, TT s claims also fail the second prong of the technological invention test. Accordingly, the 416 patent is a CBM patent that is eligible for CBM review based on at least claims 1 and

21 3. AIA 18 does not exempt GUIs from CBM review. TT has previously argued for the creation of a GUI exception to the statute based on Senator Durbin s statement regarding novel software tools and [GUIs]. (Ex ( 131 POR ) at (citing 157 Cong. Rec. S5402 at S5428 (Sept. 8, 2011) ).) But the legislative history is irrelevant here because the statute unambiguously lacks any such GUI exception. Exxon Mobil Corp. v. Allapattah Servs., Inc., 545 U.S. 546, 568 (2005) ( As we have repeatedly held, the authoritative statement is the statutory text, not the legislative history or any other extrinsic material. ); Xianli Zhang v. United States, 640 F.3d 1358, 1373 (Fed. Cir. 2011) (may refer to legislative history only if text of statute is ambiguous). As a result, TT s cherry-picked quotes from the legislative history do not alter the statute s meaning. Mims v. Arrow Fin. Servs., 132 S. Ct. 740, 752 (2012) ( [T]he views of a single legislator, even a bill s sponsor, are not controlling. ). Further, Senator Durbin was merely expressing his own opinion over the statute s reach and his hope that the Office would keep [it] in mind when it crafts the technological invention exception. 157 Cong. Rec. S5402 at S5433. But should the Board turn to the legislative history, claims 1 and 14 are squarely within Senator Schumer s definition of a CBM because he expressly listed methods for selling and trading financial instruments and other securities such as those claimed here as falling within the definition of a CBM patent

22 Cong. Rec. S5402 at S5432 (Sep. 8, 2011). Senator Schumer further explained that the method or corresponding apparatus in the statute s CBM definition covers [GUI] claims. 157 Cong. Rec. S1360 at S1364 (Mar. 8, 2011); see also 157 Cong. Rec. S5402 at S5409, S (Senator Schumer explaining that Congress is particularly concerned with patents relying on single- or double-clicking with a mouse). And, regardless, the statute unambiguously gave the Office broad discretion to define the technological invention exception. AIA 18(d)(2). The Office did so, but without TT s proposed GUI clause. 37 C.F.R (b); (Ex ( 161 Ins. Dec. ) at 13 ( the language of the AIA, as passed, does not include an exemption for all user interfaces for commodities from covered business method patent review ).) III. Overview of the 416 patent The 416 patent specification describes a GUI for electronic trading. ( 416 patent, Abstract, 2:8-15.) FIGS. 3A and 3D (reproduced below) illustrate an embodiment of the GUI described in the specification. As shown, bids (labeled 300) and offers (labeled 304) in the market are plotted along a value axis (labeled 332). (Id. at 6:1-32.) A trader can place an order by dragging-and-dropping an order icon (e.g., bid order icon 320) to a desired location on the chart, triggering a pop-up window (e.g., FIG. 3D) that allows the trader to send the order. (Id. at 8:28-56.) 12

23 ( 416 patent, FIGS. 3A and 3D.) The 416 patent s claims, however, are not directed to a GUI tool. Rather, they are directed to a a method for facilitating trading and displaying information regarding the buying and selling of a good... and a computer readable medium, for an electronic exchange in which a good is bought and sold responsive to orders submitted by traders.... (Id. at claims 1 and 14.) A. Prosecution history The application that matured into the 416 patent had a relatively limited prosecution history. (See Ex ( 416 File History ).) It included a single Office Action on the merits, followed by an amendment by the Applicant that prompted the Office to issue a Notice of Allowance. (Id. at (Office Action on the merits dated September 20, 2007), (Applicant s amendment and response), (Notice of Allowance.) Although limited, the 416 patent s prosecution history provides insight about the patentability of the claims challenged in this CBM. In the September 20, 13

24 2007 Office Action, the Examiner took official notice that the following facts were old and well known: display[ing] average data when displaying historical trading data, as historical trading data is historically and conventionally the average of all trades conducted within a specified time frame (see 416 patent, claims 7 and 20); that the value quantifying metric, such as the value assigned to an offer, may be a formula, such as 10% above market price (see 416 patent, claim 9); drag[ging] an icon with an input device, such as a mouse, to a location on a displayed chart, particularly in relation to standard and conventional graphic user interfaces (see 416 patent, claims 12 and 22). ( 416 File History, 0229.) The Applicant did not refute the Examiner s official notice. See M.P.E.P (c) ( To adequately traverse such a finding, an applicant must specifically point out the supposed errors in the examiner s action, which would include stating why the noticed fact is not considered to be common knowledge or well-known in the art. ). Rather, the Applicant merely requested that the Examiner identify where the references (cited in the Office Action) teach the noticed facts. ( 416 File 14

25 History, 0212.) Thus, these facts should be treated as admitted prior art since the Applicant failed to provide an adequate traversal. See M.P.E.P (c). The Examiner made similar statements in the March 28, 2008 Notice of Allowance that the Applicant did not traverse. ( 416 File History, ) There, the Examiner stated that the following were old and well known: display[ing] information regarding the buying and selling of goods via a chart comprising a vertical axis of price values and a horizontal axis of time. An example of such an informational display would be a chart detailing the price history of a particular financial instrument over time ; utiliz[ing] a graphical user interface to buy or sell goods. Internetbased graphical user interfaces are now commonplace but, even before the Internet, graphical user interfaces such as a computer display prompting a user for command input were well known among information systems. (Id. at ) Again, the Applicant did not refute these findings. Nevertheless, the Examiner allowed the claims, alleging that the steps of placing an order icon... at a specific location of the GUI and generating an order to buy or sell... responsive to placing the order icon at the specific location were novel and 15

26 non-obvious features. (Id. at 0086.) But, as discussed below, the combined TSE- Bay-Subler GUI which the Examiner did not consider before allowing the claims of the 416 patent teaches these features. See infra Section VII. B. Level of ordinary skill in the art at the time of the invention A person of ordinary skill in the art at the time of the alleged invention, i.e., the April 9, 1999 timeframe, would have had the equivalent of a Bachelor s degree or higher in computer science or computer engineering, at least 2 years of experience designing and/or programming GUIs, and direct or indirect experience with trading or related systems. (Román Decl., 55.) Experience could take the place of some formal training, as domain knowledge and user interface design skills may be learned on the job. (Id.) This description is approximate, and a higher level of education or skill might make up for less experience, and vice versa. (Id.) C. Claim construction Except as set forth herein, the claim terms of the 416 patent carry their ordinary and customary meanings under the broadest reasonable interpretation ( BRI ) as would be understood by one of ordinary skill in the art. computer readable medium : Claims recite a computer readable medium. The specification neither defines this term nor provides examples. Under the broadest reasonable interpretation ( BRI ), the scope of this term is broad enough to encompass a 16

27 transitory, propagating signal that is encoded, which is not eligible for patenting. In re Nuijten, 500 F.3d 1346, 1357 (Fed. Cir. 2007); IBG LLC v. Trading Techs. Int l, Inc., CBM , Paper 19 at 11 (P.T.A.B. Mar. 3, 2016). The addition of the phrase containing a program containing instructions to cause a processor to perform the following steps does not limit the medium to non-transitory media. (Merriam-Webster s Collegiate Dictionary, 10 th ed. (Ex. 1040), p. 977 (defining record as to set down in writing or to cause (as sound, visual image, or data) to be registered on something (as a disc or magnetic tape) in reproducible form. )); see Ex parte Mewherter, 107 USPQ2d 1857, (B.P.A.I. 2013) (precedential) (determining that a computer readable storage medium having a computer program stored thereon encompasses transitory propagating signals). Thus, the BRI of computer readable medium is any medium that participates in providing instructions to a processor for execution and having program code recorded thereon. IV. Identification of the Challenge Petitioners request review of claims 1-24 on the following grounds: Ground 1: Claims 1-24 are unpatentable under 35 U.S.C. 101 because they recite an ineligible abstract idea; Ground 2: Claims are unpatentable under 35 U.S.C. 101 because they are not directed to a statutory class of subject matter; Ground 3: TSE, Bay, and Subler render claims 1-24 obvious under 35 U.S.C. 17

28 103; and Ground 4: Claims 2 and 15 are unpatentable under 35 U.S.C. 112, 4. Each of TSE, Bay, and Subler is prior art to the 416 patent, which claims an earliest priority date of April 9, 1999: TSE JP, Exhibit 1015, Tokyo Stock Exchange publication called Futures/Option Purchasing System Trading Terminal Operation Guide, [translated] is a Tokyo Stock Exchange publication published in Japanese. It is prior art under 102(a) because it was published in August of 1998 by giving two copies to each of the about 200 participants in the Tokyo Stock Exchange. (Ex ( Kawashima Dep. Tr. ) at ) Mr. Kawashima, a Japanese employee of TSE, testified that by participants he meant securities companies for banks who are able to carry out futures options trading at the TSE. (Id. at 0012.) The participants were free to do whatever they wanted with their copies of this publication. (Id. at 0015.) Thus, in August of 1998 TSE JP was distributed to about 200 companies that engaged in trading without an injunction of secrecy or any other restrictions. In CBM of the sibling 056 patent, TT asserted that TSE is not 1 TT attended this deposition of this third party witness and was free to cross-examine this witness. 18

29 prior art because the petition allegedly failed to show that TSE was not indexed in a library and that TSE was not distributed to POSITAs. (Ex ( 179 POPR ) at ) TT is off the mark. A document may be publically accessible by distributing it to the interested public without limiting its use. Cooper Cameron Corp. v. Kvaerner Oilfield Products, Inc., 291 F.3d 1317, (Fed. Cir. 2002). And the document need only be accessible to the interested public, which may be the very entities to which the document distribution was targeted. Id. at 1324 ( [The interested public] in this case may be the very entities who had access to the documents: SISL joint venture members, participants, and their contractors and licensees. ). Thus, the August 1998 distribution of TSE to about 200 companies that engaged in trading on the TSE without an injunction of secrecy or any other restrictions establishes that TSE was publically accessible to the interested public. Because TSE JP was published in Japanese, Petitioners also submit TSE, which is a certified translation of this Tokyo Stock Exchange publication. (Exs and 1017.) For the Board s convenience, all citations are to the Englishlanguage TSE, Ex. 1016, but the corresponding pages in the original-language document are found by turning to the same page/bates number in the Japaneselanguage Ex Each of the following qualify as prior art under 35 U.S.C. 102(b): Bay, 19

30 20 U.S. Patent No. 7,412,416 B2 Exhibit 1042, U.S. Patent No. 5,347,452 issued on September 13, 1994; Subler, Exhibit 1020, U.S. Patent No. 5,646,992 issued on July 8, V. Ground 1: Claims 1-24 are unpatentable under 35 U.S.C. 101 because they are directed to an ineligible abstract idea. Claims 1-24 of the 416 patent are unpatentable under 101 because they fail the Alice two-step for determining patent eligibility. Alice Corp. Pty. Ltd. v. CLS Bank Int l, 134 S. Ct (2014). Step one asks whether the patent is directed to one of the three judicial exceptions to patentable subject matter: laws of nature, natural phenomena, and abstract ideas. Id. at The abstract idea category embodies the longstanding rule that an idea of itself is not patentable. Id. at Step two asks whether the elements of each claim, both individually and as an ordered combination, recite any significant limitation or inventive concept transforming the abstract idea into a patent-eligible invention. Alice, 134 S. Ct. at A claim must do more than merely state the abstract idea and add the words apply it. Id. It must recite additional features that are more than wellunderstood, routine, conventional activities. Id. at And limiting the use of an abstract idea to a technological environment does not circumvent the ban on abstract ideas. Id. at Applying Alice s two-step test here leads to one conclusion: TT s claims are not eligible for patent protection. Applying step one, claims 1-24 are directed to the

31 abstract idea of graphing (or displaying) trading data to assist a trader to place an order. This concept is both (i) a fundamental economic practice long prevalent in our system of commerce, Id. at 2356, and (ii) an idea of itself because it can be performed using pen and paper, or even in a trader s mind. Applying step two, claims 1-24 do not recite an inventive concept; instead, they merely recite wellknown and insignificant extra-solution activity. Unlike the claims in DDR Holdings and Enfish, claims 1-24 are not rooted in computer technology because they do not overcome a problem specifically arising in the realm of computers or computer networks. Nor do their field-of-use limitations (e.g., an electronic trading system) demonstrate patent eligibility. Finally, TT v. CQG a decision from the Northern District of Illinois is not controlling precedent in this CBM proceeding. A. The 416 patent claims are directed to the abstract idea of graphing (or displaying) trading data to assist a trader to place an order (Alice step one). Claims 1-24 of the 416 patent are directed to the abstract idea of graphing (or displaying) trading data to assist a trader to place an order. Specifically, independent claims 1 and 14 recite displaying (i) a chart that has a vertical axis of price values and a horizontal axis of time and (ii) indicators representing historical trading data along the vertical and horizontal axes. In other words, they describe graphing (or displaying) trading data. 21

32 22 U.S. Patent No. 7,412,416 B2 Claims 1 and 14 also recite providing a plurality of locations to place an order icon, placing an order icon at a particular location of the plurality of locations (e.g., using the well-known drag-and-drop action), and sending the order to an electronic trading system. In other words, they describe placing an order. The 416 patent specification explains that the alleged invention s display of trading data was intended to assist a trader to place an order. It asserts that traders rely on a host of information including historical transaction data to anticipate the market and decide whether to buy or sell. ( 416 patent, 1:53-63.) But it is often difficult for a trader to quickly assemble this information from diverse and often unrelated sources or even effectively process all of this information in order to make an informed transaction decision. (Id. at 1:56-60.) Thus, the alleged invention s display of trading data about the item or the market to the trader while the trader is trading on a specific item... allows the trader to quickly interpret the information and then act accordingly, e.g., enter buy or sell orders. (Id. at 1:64-2:36.) This concept graphing (or displaying) trading data to assist a trader to place an order is directed to both (i) a fundamental economic practice and (ii) an idea of itself, and thus is not eligible for patent protection under Alice step one. 1. Graphing (or displaying) trading data to assist a trader to place an order is directed to a fundamental economic practice. Claims 1 and 14 are directed to a fundamental economic practice, which are

33 often found to be abstract ideas, even if performed on a computer. Enfish, LLC v. Microsoft Corp., No , slip op. at 10 (Fed. Cir. May 12, 2016); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (describing hedging as a fundamental economic practice). Specifically, claims 1 and 14 recite displaying a chart that has a vertical axis of price values and a horizontal axis of time, displaying indicators representing historical trading data along these axes, placing an order icon at a particular location of a plurality of locations (e.g., using the well-known drag-and-drop action), and generating and sending the order to an electronic trading system. In other words, the claims are directed to the concept of graphing (or displaying) trading data to assist a trader to place an order. Yet this concept is basic and foundational for the same reason that entering into contracts to hedge risk in commodity pricing is basic and foundational. Bilski, 561 U.S. at 599. And this concept also happens to be old, well-known, and prevalent. See infra Section VII. For example, in his 1971 treatise Profits in Volume - Equivolume Charting (Ex. 1033, Arms ), Richard W. Arms Jr. explained that vertical line charts i.e., a method of charting [that] places prices on the vertical axis, and time on the horizontal axis are the oldest and most widely used method of charting. (Arms at 0012.) As shown in Arms Figure 1 (reproduced below), most [vertical line charts] include volume figures across the bottom of the 23

34 chart. (Id.) According to Arms, traders used these charts to perform technical analysis of a stock analyzing volatility, price moves, trading ranges, etc. in order to make logical market decisions. (Id. at ; see also id. at (technical analysis is one of [t]wo schools of thought [that] exist regarding the behavior of the stock market. ) In other words, vertical line charts (as well as other graphs used to perform technical analysis) assist traders to place orders. (See id.) (Id. at 0013). Further, the 416 claims do not solve any technological problem but rather are directed to solving a business problem, i.e., anticipating market movement. The 416 patent specifically states that the successful trader anticipates the rise or fall 24

35 25 U.S. Patent No. 7,412,416 B2 of the value of an item and performs his or her own transaction before the rest of the market is aware of the item s potential gain or loss in value. ( 416 patent, 1:28-31.) It further states, Thus, anticipation of the market and specifically of the future demand for an item of interest is critical to the success of a trader. (Id. at 1:31-33.) Patents, like the 416 patent, that are directed to business endeavors rather than technological problems, fall within the realm of the abstract and ineligible. See Versata, 793 F.3d at 1334 ( claims reciting a commonplace business method aimed at processing business information despite being applied on a general purpose computer are insufficient to reach eligibility. ). Thus, the claimed concept of graphing (or displaying) trading data to assist a trader to place an order is an abstract idea that is directed to a fundamental economic practice. It is also directed to an idea of itself. 2. Graphing (or displaying) trading data to assist a trader to place an order is directed to an idea of itself. Not only is the abstract concept a fundamental economic practice, but it is an idea of itself because it can be performed using pen and paper, or even in a trader s mind. See CyberSource Corp. v. Retail Decisions, 654 F.3d 1366, 1372 (Fed. Cir. 2011) (unpatentable mental process performed with aid of pen and paper); (Román Decl., 67-69; Arms at (describing technical analysis and vertical line charts); Ex ( Schippers ), p. 0003, ll (describing a finance board game from 1928 that had players select a card and move it to a location on a game board

36 in order to buy or sell a commodity.) Indeed, the 416 patent concedes that the successful trader anticipates the rise or fall of the value of an item and performs his or her own transaction before the rest of the market is aware of the item s potential gain or loss in value. ( 416 patent, 1:28-31.) Thus, instead of solving a technological problem, the 416 patent simply displays what a trader has done in his mind since trading began. (Id. at 1:53-63.) And the analysis does not change merely because the claims include details such as displaying indicators representing historical trading data along vertical and horizontal axes or well-known GUI operations (e.g., drag-and-drop). These additional limitations are equally abstract as ideas of themselves or are irrelevant because they merely provide a degree of particularity. See supra (the display limitations are plotting steps that can be performed by pen and paper); Ultramercial v. Hulu, 772 F.3d 709, 715 (Fed. Cir. 2014) (an abstract idea is not concrete merely because the claims include a degree of particularity). TT argued in CBMs and that the sibling 056 patent is not directed to an abstract idea. ( 131 POR at 2-25; Ex ( 179 POPR ) at ) TT argued that those claims are directed to a GUI improvement rather than a trading strategy or trading on a GUI in the abstract. ( 131 POR at 18-20; see also 179 POPR at 33.) In doing so, TT merely fashioned a straw man to knock down. There, as here, the abstract idea is not a trading 26

37 27 U.S. Patent No. 7,412,416 B2 strategy or trading on a GUI. Rather, the 416 patent s abstract idea is graphing (or displaying) trading data to assist a trader to place an order, the digital equivalent to a trader manually plotting or mentally visualizing such data. While it might be possible to claim a GUI improvement that is not directed to an abstract idea, TT has not done so here. Thus, the claimed concept of graphing (or displaying) trading data to assist a trader to place an order is abstract as an idea of itself. * * * For at least these reasons, the 416 patent s abstract idea is directed to both (1) a fundamental economic practice and (2) an idea of itself, and is therefore not eligible for patent protection under Alice step one. (See Román Decl., 70.) B. The 416 patent claims do not recite an inventive concept (Alice step two). The claims also fail Alice step two, which asks whether the elements of each claim, both individually and as an ordered combination, recite any significant limitation or inventive concept transforming the abstract idea into a patenteligible invention. Alice, 134 S. Ct. at The elements of the 416 patent claims, considered individually or as an ordered combination, fail to recite any significant limitation or inventive concept to transform the abstract idea into a patent-eligible invention. Alice, 134 S. Ct. at Beyond the abstract idea of graphing (or displaying) trading data to assist a trader to place an order, the claims

38 recite only insignificant and conventional extra-solution activities. 28 U.S. Patent No. 7,412,416 B2 And merely implementing that abstract idea using well known components (a graphical user interface and input device), limiting the abstract idea to a particular field of use (i.e., on an electronic trading system), or adding insignificant extra-solution activities (data gathering, drag-and-drop, sending orders, and arranging data and locations to place a trade on a display) add[s] nothing of practical significance to the underlying abstract idea. Ultramercial, 772 F.3d at In short, the claims do not transform the abstract idea into patent-eligible subject matter. And the dependent claims add nothing of significance. The independent claims are addressed first, then the dependent claims. 1. Beyond the abstract idea, independent claims 1 and 14 recite only insignificant and conventional extra-solution activities. Beyond the abstract idea, independent claims 1 and 14 recite the steps of providing locations on the displayed chart to place an order icon, placing the order icon on the chart to generate an order, and sending the order to an electronic trading system. These steps add nothing significant, and merely recite wellunderstood, routine, conventional extra-solution activity. Mayo Collab. Servs. v. Prometheus Labs, 132 S. Ct. 1289, 1298 (2012). And, these steps merely instructs the practitioner to implement the abstract idea on a generic computer. This is not enough. Alice, 134 S. Ct. at 2359; Int l Sec. Exch. v. Chicago Bd. Options Exch., CBM , Paper No. 53 at 9 (P.T.A.B. Mar. 2, 2015) (generic computer

39 limitations do not confer patent eligibility). Further, reference to prior art can inform whether there is an inventive contribution. Internet Patents Corp. v. Active Network Inc., 790 F.3d 1343, 1347 (Fed. Cir. 2015) ( pragmatic analysis of 101 is facilitated by considerations analogous to those of 102 and 103. ). Here, the art of record teaches (as explained below) the well understood, routine, and conventional extra-solution activities recited in the claims such as the particulars of where indicators are displayed; providing locations on a GUI to place an icon; placing an icon at a location; and generating and sending trade orders. See infra at Section VII. Third, moving an icon using a select-and-move or drag-and-drop operation is a wellunderstood and conventional GUI operation. (Ex ( Cooper ) at 0259 (dragand-drop is a cornerstone of the modern GUI ).) Finally, limiting the claims to a particular environment, here an electronic trading system, is insufficient. Alice, 134 S. Ct. at And even if the claims recited organizing the data into a particular arrangement, which they do not, that would be insufficient to confer patentability. See CyberSource, 654 F.3d at 1375 ( the mere manipulation or reorganization of data is not a transformation). Merely gathering known market data and organizing it on a display is insufficient to confer patent eligibility. 29

40 Moreover, the claims as an ordered combination do not recite something more because they do not improve the function of the computer or affect an improvement in technology. See Alice, 134 S. Ct. at Rather, the patent characterizes its problem to be solved as how to quickly interpret how market demand is changing to an item. ( 416 patent, 1:64-67.) As explained above, the patent merely provides a solution, if any, to a business problem, not a technological problem. And the patent does not improve the functioning of the computer itself but rather admits that the purported solution can be performed essentially on any generic, conventional computing technology. (Id. at 4:34-36.) Thus, claim 1 does nothing more than simply instruct the practitioner to implement the abstract idea on a conventional computer. To be patent-eligible, a claim cannot simply state the abstract idea and add the words apply it. Mayo, 132 S. Ct. at Aside from reciting conventional and generic computer terms and processes, such as an input device and sending an order to an electronic trading system, claim 1 could be performed in the human mind or with the aid of pen-and-paper. (Román Decl., ) Indeed, long before the alleged invention, traders were performing technical analysis using vertical line charts having prices on the vertical axis, and time on the horizontal axis. (Arms at ) Arms chart of International Paper s stock data on page 0013, which is strikingly similar to the 30

41 416 patent s trading screen, demonstrates that graphing trading data to assist a trader in placing in an order was in fact performed using pen and paper. In theory, someone desiring to make a trade could specify a trade order simply by pointing to or marking a price along the vertical axis. Thus, the 416 claims merely computerized this manual process, which makes the claims no less abstract. Thus, claim 1 is directed to an unpatentable abstract idea. Mayo, 132 S. Ct. at 1293; CyberSource, 654 F.3d at 1372 (unpatentable mental process performed with aid of pen and paper). In CBM of the related 056 patent, TT argued that its patent speeds up the data gathering and display so that the trader may quickly ascertain the current state of the market. ( 131 POR at 3-4.) But this simply proves Petitioners point: the 416 claims are directed to graphing market data to facilitate trading, not to a technical solution or improvement. Merely using a computer to do something quickly does not impart patentability on otherwise patent ineligible subject matter. See Bancorp Servs., L.L.C. v. Sun Life Assur. Co. of Canada (U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012) (using a computer for its most basic functions and repetitive calculations is patent ineligible); Internet Patents Corp., 790 F.3d at ( Although computer capability achieved financial activity of a scope not previously available, no inventive concept was found in the claims, for the computer functions are well understood, routine, conventional activities 31

42 32 U.S. Patent No. 7,412,416 B2 previously known to the industry. ) (quoting Alice at 2359). Moreover, the claims do not recite the amount of trading data that need be displayed. (Román Decl., 69.) Nor do they recite any speed or timing limitations with respect to the display of data. (Id.) Thus, a system that displays very little trading data and takes hours to display the trading data, although perhaps unsatisfactory for a user, would still be covered by the claims. (Id.) 2. The dependent claims merely recite well-understood, routine, conventional extra-solution activity. The dependent claims likewise add nothing significant, and merely recite well-understood, routine, conventional extra-solution activity. Mayo, 132 S. Ct. at Claims 2, 6, 7, 15, 19, and 20 merely define the type of historical trading data that is displayed. The mere display of a particular type of data by itself cannot transform a claim into statutory subject matter. Further, these claims merely recite displaying historical data, which is simply the insignificant extra-solution activity of displaying data. (Bay, FIGS. 1 and 2; Arms, (figure 1 on 0013).) Claims 3 and 16 merely display a bar line to indicate a high and low price value for the good. Again, this is nothing more than providing an indicator for well-known, conventional information that is readily available in the market. (Bay, FIGS. 1 and 2; Arms, (figure 1 on 0013).) Claims 4 and 17 similarly display volume data that is readily available in the market in a well-know, conventional manner. (See id.)

43 Claims 2-8 and should also be given no weight since they are nothing more than printed matter. See In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983) ( Where the printed matter is not functionally related to the substrate, the printed matter will not distinguish the invention from the prior art in terms of patentability. Although the printed matter must be considered, in that situation it may not be entitled to patentable weight. ); In re Russell, 48 F.2d 668, 669 (CCPA 1931) ( the mere arrangement of printed matter on a sheet or sheets of paper, in book form or otherwise, does not constitute any new and useful art, machine, manufacture, or composition of matter, or any new and useful improvements thereof... ) (internal quotation marks omitted). The common thread amongst [prior printed matter] cases is that printed matter must be matter claimed for what it communicates. In re Distefano, III, 808 F.3d 845, 850 (Fed. Cir. 2015). That is exactly what is occurring in claims 2-8 and The printed matter recited in claims 2-8 and simply has no functional or structural relationship to any associated physical substrate (e.g., the computer display). Thus, the printed matter should be given no patentable weight. Claims 5 and 18 merely state that the horizontal axis of time has units according to [an established / any] time period. It s hard to imagine a claim that is more conventional than a timeline that uses known units of measurement. (See Bay, FIGS. 1 and 2; Arms, (figure 1 on 0013).) Claims 10 and 11 merely 33

44 define the good as a commodity or stock, respectively. These are nothing more than field of use limitations. (See id.) Claims 8, 9, and 21 merely recite displaying the well-understood, routine and conventional activity of displaying a marker that is representative of a value quantifying metric. This marker can simply be a line drawn on the GUI. (See 416 patent, 9:16-22.) Claims 8 and 9 merely recite insignificant extra-solution activity of displaying data. And, claim 9 merely recites that metric is determined by a formula, i.e., a mathematical algorithm, which are abstract ideas themselves. See Gottschalk v. Benson, 409 US 63 (1972) (ruling that the discovery of a new formula is not patentable). Claims 12 and 22 merely recite the well-understood, routine, and conventional GUI operation of manipulating displayed data. (Cooper at (describing direct manipulation and drag-and-drop); (Ex ( Schott ), 11:35-12:7 (manipulating displayed graphic).) Claim 13 recites the well-understood, routine, and conventional activity of matching orders submitted to the electronic trading system. (See TSE at 0135 ( If a buy (sell) order with a price that is higher (lower) than the relevant sell (buy) quotation is received by the central system while that sell (buy) quotation is displayed, the relevant buy (sell) quotation is treated as an order that matches that sell (buy) quotation s price. ); Ex ( Silverman ), Title ( Anonymous 34

45 Matching System ), FIGS. 1, 17, 18.) This is not a meaningful limitation as contemplated by Alice. In fact, the 416 patent does not provide any detail on how to match orders and cites to a number of patents that do describe how to match orders (e.g., U.S. Patent Nos. 5,077,665, 5,136,501, 5,924,082, 5,924,083, 6,131,087 and U.S. Pub. No. 2001/ ). Finally, claims 23 and 24 merely relate to the well-understood, routine and conventional activity of modifying an order based on either price (claim 23) or quantity (claim 24). (See TSE at (describing cancellation or modification orders).) As explained in the following sections, each of these are well-understood, routine, conventional extra-solution activities that do not in any way rise to the level of an inventive concept. C. The 416 patent claims are not rooted in computer technology. Contrary to the recent Federal Circuit decisions in DDR Holdings v. Hotels.com, 773 F.3d 1245 (Fed. Cir. 2014) and Enfish, the claims are not rooted in computer technology because they do not overcome a problem specifically arising in the realm of computers or computer networks, DDR Holdings, 773 F.3d at 1257, nor are they designed to improve the way a computer functions, Enfish, slip op. at 18. The DDR claims passed Alice s step two because they specified how 35

46 interactions with the Internet are manipulated to yield a desired result a result that overrides the routine and conventional sequence of events ordinarily triggered by the click of a hyperlink as determined by the Internet hyperlink protocol, and expressly recited a specific way to automate the creation of a composite web page. DDR Holdings, 773 F.3d at Unlike the DDR claims, which were rooted in computer technology and overcame a problem specifically arising in the realm of computers..., id. at 1257, the 416 patent claims are rooted in no technology at all. There is no protocol or computer technology that limited the prior art. Indeed, TT s specification admits that the problem was business, financial or trader-related, and not arising in computers or otherwise dependent upon computer components. See supra. 3 And, to 3 In CBM of the 056 patent, TT alleged that its claims make trading faster and help traders visualize information. ( 131 POR at 1-3; see also 179 POPR at 47; Ex ( Thomas Tr. ) at 63:7-9 (traders would track inside market in their head ); Ex ( Thomas Rep. ), 32 ( significantly reduces the mental calculations required by the preexisting systems ).) Again, this is not a computer problem, rather it s a business problem, and accelerat[ing] an ineligible mental process does not make that process patent-eligible. Bancorp Servs., LLC v. Sun Life Assurance Co., 687 F.3d 1266, 1279 (Fed. Cir. 2012). 36

47 the extent that a computer is used in the 416 patent claims, it is used only for its most basic function, the performance of repetitive calculations, such as displaying data and accepting user inputs. DDR Holdings, 773 F.3d at That is not enough to confer patent eligibility. Bancorp, 687 F.3d at The claims here do not recite how to receive data, display it (other than as a chart comprising a vertical axis of price values and a horizontal axis of time), nor specifically how to display, select, and place an order icon, and send an order associated with the order icon to an electronic trading system. As such, the claims do not present a technological advance. See id. at 1279 (claims are not a technological advancement where they do not use less processor power or memory space or otherwise depend upon the computer components required to perform the claimed process, but instead merely employ computers to perform more efficiently or quickly what could otherwise be accomplished manually). In Enfish, the Federal Circuit found that the patent-eligible data structure was designed to improve the way a computer stores and retrieves data in memory. Enfish, slip op. at 18. But the 416 patent does not (and does not purport to) improve the functioning of a computer or even the GUI. Instead, it purports to improve the functioning of a trader, by allowing the trader to better anticipate the market and make trading decisions. ( 416 patent, 1:67-2:36.) The focus of TT s patents is on the trader, i.e., the business activity; not improving how a computer or 37

48 its peripherals work. Unlike Enfish, the computer doesn t benefit from the purported invention; the trader (allegedly) does. See TLI Comm ns LLC v. AV Automotive, L.L.C., No , slip op. at 8-9 (Fed. Cir. May 12, 2016) (distinguishing Enfish and finding claims not directed to a specific improvement to computer functionality to be ineligible). TT refers to its patents as GUI improvements (see, e.g., 131 POR at 18-19), but the alleged improvement is directed to how the trader interacts with the GUI. TT did not improve the functioning of the GUI itself. See TLI Comm ns, slip op. at 8-9. TT did not, for example, design a new GUI widget that can perform previously-unknown functions. Rather, the claim elements function in the conventional and expected manner: data is received and displayed in a known manner, GUI operations (e.g., drag-and-drop) function as known, etc. The claims of the 416 patent are similar to those in TLI where the Federal Circuit distinguished Enfish since the claims at issue in TLI were not directed to a specific improvement to computer functionality, but rather directed to the use of conventional or generic technology in a nascent but well-known environment and thus non-statutory. Id. at 8. Notably, the claims in TLI recited a number of computer-specific steps (such as receiving data by a server, extracting information from the data, storing digital images on a server, and the like) but this was insufficient to render the combination patentable. See id. at 4-5, The Court 38

49 noted that the specification does not describe a new telephone, a new server, or a new physical combination of the two. Id. at 9. Likewise, the 416 patent does not describe or claim any new computer functionality, but employs conventional technology to allow a trader to decide what commodities to buy and sell. Thus, the Board should reject any attempt by TT to analogize the 416 patent to the patentsat-issue in DDR and Enfish. Additionally, the Board should also not entertain any TT argument that the July 2015 Guidelines on Patent Eligibility change the analysis or that the present claims are somehow similar to those in example 23 to Appendix I to those Guidelines. July 2015 Update Appendix I: Examples ( Appendix I ), USPTO.gov, at Initially, the Guidelines simply restate the established law on patent eligibility and example 23 adds nothing new to DDR Holdings. Again, the instant claims are drawn to both a fundamental economic practice and an idea of itself, and are not rooted in computer technology. In particular, the 416 patent is drawn to an aesthetic display and arrangement of conventional information. See supra. Further, the instant claims solve a business problem, not a computer- or GUI-created problem. And the claims do not improve the functioning of the computer. The claims merely re-arrange the same information that was previously available to traders. See supra. In contrast, hypothetical claim 1 of example 23 lacked an 39

50 40 U.S. Patent No. 7,412,416 B2 abstract idea and was therefore eligible. Hypothetical claim 4 of example 23, which was also described as eligible, included a specific algorithm to display information (text hidden from overlapping windows) to a user that was never before capable of being displayed when operating a computer with overlapping windows. And by solving this computer-related problem, hypothetical claim 4 improved the functioning of the computer (according to the Guidelines). D. The absence of complete preemption does not demonstrate patent eligibility. The existence of non-infringing alternatives does not per se render a claim patentable. For example, a field-of-use restriction opens up an entire universe of non-infringing ways to practice an abstract idea, but that is not enough to confer patent eligibility. Mayo, 132 S. Ct. at Likewise, adding insignificant postsolution claim steps to an abstract idea may open up non-infringing alternatives, but that does not confer patent eligibility. Id. This was confirmed recently by the Federal Circuit in Ariosa Diags. v. DNA Diags. Ctr., 788 F.3d 1371 (Fed. Cir. 2015): While preemption may signal patent ineligible subject matter, the absence of complete preemption does not demonstrate patent eligibility. Id. at 1379 (emphasis added). Accordingly, the Board should not countenance any argument from TT that its claims are patent eligible because they allegedly do not preempt all electronic trading GUIs. See id. (a judicial exception is not saved merely by showing that

51 there are other uses of the judicial exception outside of the scope of the claims, because preemption concerns become moot). TT s attempt to take what is routine and conventional, add it to the abstract idea, and obtain a monopoly must fail based on Alice, Mayo and their progeny. E. TT v. CQG is not controlling precedent. TT v. CQG, No. 05-cv-4811, slip op. at 10 (N.D. Ill. Feb. 24, 2015) (Ex. 1009) is irrelevant. That decision looked at different patents, and (incorrectly) concluded that those patents passed Alice s step two because the recited static price axis, which does not appear in the claims of the 416 patent, was an inventive concept. (Ex at 9.) Regardless, a static price axis is present on any paper plot, and was a conventional data display feature. (See TSE at 0107 (electronic static price axis); Ex ( Silverman ) at FIG. 4; Ex ( Weiss ) at ) Also, the CQG decision involved a different burden of proof (clear and convincing), it is not binding on the PTAB, and Petitioners were not a party to that CQG case. (See 161 Ins. Dec. at 10 fn. 3.) And, importantly, the CQG court lacked the benefit of the extensive prior art evidence introduced here. It did not consider these teachings, which demonstrate that a static price axis is wellunderstood, routine, and conventional, when the CQG court analyzed whether those claims recite an inventive concept. 41

52 VI. Ground 2: Claims are ineligible under 35 U.S.C. 101 because they are not directed to a statutory class of subject matter. In addition to being directed to an ineligible abstract idea under Alice, claims are ineligible under In re Nuijten, 550 F.3d 1346 (Fed. Cir. 2007). Claims recite a computer readable medium. The specification neither defines this term nor provides examples. Under the BRI, the scope of this term is broad enough to encompass a transitory, propagating signal that is encoded, which is not eligible for patenting. In re Nuijten, 550 F.3d 1346, 1357 (Fed. Cir. 2007); see Section III(C). Thus, claims are patent ineligible for this additional reason. VII. Ground 3: TSE, Bay, and Subler render claims 1-24 obvious under 35 U.S.C The combination of TSE, Bay, and Subler render obvious claims (See, e.g., Román Decl., ) The combination of TSE and Bay disclose the limitations of independent claims 1 and 14 relating to displaying a chart of market information on a GUI. TSE discloses a GUI that includes a Board Screen that displays, among other things, outstanding bids and offers plotted along a vertical price axis. Bay discloses displaying, on a computer monitor, a chart of trading data for stocks, bonds, or commodities (i.e., price and volume data) that are plotted along a vertical axis of price values and a horizontal axis of time. Mr. Román, supported by explicit teachings in Bay and Arm s 1971 treatise on charting market data (Ex. 1033), confirms that combining Bay s chart having a vertical axis of 42

53 price values and a horizontal axis of time with TSE s GUI would have been obvious to a POSITA. (See, e.g., Román Decl., ) Regarding the order entry (or order placement) limitations of claims 1 and 14, TSE teaches click-based order entry but does not explicitly disclose placing an order icon at a location on the GUI (e.g., via a drag-and-drop GUI operation) as part of the order entry process. Subler explicitly discloses a GUI that enables selecting and moving an order icon to facilitate placing an order (e.g., via a drag and drop operation). Mr. Román, supported by several GUI treatises, confirms that implementing Subler s select and move order entry technique in TSE s GUI would have been obvious to a POSITA. (See, e.g., Román Decl., ) A. TSE, Bay, and Subler render obvious claims 1 and Preambles Claim 1 s preamble recites, A method for facilitating trading and displaying information regarding the buying and selling of a good. Claim 14 s preamble recites, A computer readable medium, for an electronic exchange in which a good is bought and sold responsive to orders submitted by traders, each order specifying a value and quantity for the order, the computer readable medium containing a program containing instructions to cause a processor to perform various steps. TSE teaches or suggests the preambles of claims 1 and 14. TSE discloses an electronic exchange and trading system. (TSE at ) 43

54 More specifically, TSE discloses a Futures/ Option Purchase System that handles the trades in the bond futures, bond future option, index futures, index option, and stock option markets. (Id. at 0035 ( Trading Products ).) A POSITA would have understood each of TSE s trading products to be a recited good. (Román Decl., 75-76; 416 patent, 5:63-65 ( The items of trade include any possible commodity, for example, minerals, futures, or shares in a corporation. ).) Thus, TSE teaches the buying and selling of a good (claim 1) and an electronic exchange in which a good is bought and sold (claim 14). (Román Decl., 75-76, ) TSE s system includes a client computer, used by a trader, which has a graphical user interface for displaying market information on a Board Screen. (TSE at , 0026, (client receives market information, which is displayed on the Board Screen).) The basic operation of the client is almost equal to that of the Windows personal computer. (Id. at 0026.) A POSITA would have understood that TSE s trading system (e.g., central system, client computers, etc. (id. at 0009)) includes software stored on computer readable memory. (Román Decl., 76, ) Thus, TSE teaches a computer readable medium, for an electronic exchange... containing a program containing instructions to cause a processor to perform various steps, as recited claim 14 s preamble. (Id.) TSE teaches displaying information regarding the buying and selling of a 44

55 good. Chapter 7 of TSE discloses the Board and Quotation displays, which provide a variety of displays for displaying transactional information to a user such as the figure on 0107 of TSE (annotated and reproduced below), depicting an example Board Screen that a trader views to observe the market and place trade orders. (TSE at , (order entry); Román Decl., 77.) Román s annotated FIG. A (reproduced below) maps certain limitations of claims 1 and 14 to the Board Screen shown at page 0107 of TSE: Román FIG. A (annotating TSE at 0107) As shown, TSE s Board Screen displays current bid and offer prices and 45

56 quantities in the market: Column 11 is a price column that displays prices. (TSE at , 0111.) Orders to the left of the price column 11 are outstanding offers and orders to the right are outstanding bids. (Román Decl. 78 (labeling area to the right and left of the price column as bids and offers, respectively); see also TSE at 0137 (depicting that selecting an area to the right of price column 11 automatically populates the new order entry window with buy order code (3)).) A POSITA would have understood that bids are associated with buying... of a good, and offers are associated with selling of a good. (Román Decl., 78.) The columns labeled 12 display the order quantity... for each order price, and the columns labeled 13 display the order count... for each order price. (TSE at 0112.) TSE teaches facilitating trading. (Román Decl., 79.) The figure on 0137 of TSE (reproduced below) shows one method of order entry (i.e., generating an order) using the Board Screen. Using an input device, such as a mouse, a trader may [d]ouble click on a specific area on the [Board] Screen to enter a new order. (TSE at 0137; see also id. at 0138 (depicting order entry using a keyboard).) Depending on the place that is double clicked, the Security Name, Sell/Buy Category, Order Price, or Execution Conditions are set automatically before the order is sent to the market. (Id. at 0137.) The Volume field of the New Order Input window allows a trader to input the quantity for the order. (Id. at 0142.) Selecting the send button in the New Order Input window send[s] the 46

57 U.S. Patent No. 7,412,416 B2 input order details to the central system. (Id. at 0143.) Thus, in TSE s electronic exchange, a good is bought and sold responsivee to orders submitted by traders, each order specifying a value and quantity for the order, as recited in claim 14 s preamble. (Román Decl., 166.) (TSE at 0137.) Thus, TSE teaches the preambles of claims 1 and 14. (Román Decl., 76-79, ) 47

58 2. displaying a chart on a graphical user interface... The combination of TSE and Bay teaches or suggests displaying a chart on a graphical user interface comprising a vertical axis of price values and a horizontal axis of time, as required by claims 1 and 14. TSE teaches displaying a chart on a graphical user interface comprising a vertical axis of price values. TSE s Board Screen is a chart that displays current bid and offer prices and quantities in the market. (TSE at ; Román Decl., 80.) Column 11 is a vertical price column that displays prices i.e., a vertical axis of price values. (TSE at , 0111; Román Decl., 80.) TSE further discloses displaying price with respect to time. (TSE at 0107, (figure on 0113 displaying Supplementary Information such as Opening Price and Opening Price Time ); see also Román Decl., 81 (would have been obvious to and within the skill set of a POSITA to display this information graphically).) But TSE does not explicitly disclose that the chart comprises a horizontal axis of time. Bay teaches displaying a chart on a graphical user interface comprising a vertical axis of price values and a horizontal axis of time. Bay relates to stock, bond, and commodity trading and, more particularly, to a method for providing a visual display of current trading volume and cumulative average trading volume for preselected time intervals in conjunction with trading price for each of a 48

59 plurality of stocks, bonds, and commodities. (Bay, 1:8-13.) Bay discloses displaying, on a computer monitor, a graph or a chart that has a vertical axis of price values and a horizontal axis of time. (Id. at 1:36-46, 2:7-33 (describing a computer system that receives market data from an exchange and displays price information simultaneously with volume information on a computer monitor), 2:65-3:23 (describing the chart of FIG. 1), 3:24-56 (describing the charts of FIGS. 1-2), 5:1-6:8 (describing the flowcharts of FIGS. 3-5, which depict drawing a chart on a computer monitor).) FIGS. 1 and 2 of Bay are illustrative, and are annotated and reproduced below. As shown, FIG. 1 illustrates price and volume information for TBonds over a period of three days with each volume indicia or marker 12 corresponding to a thirty minute time interval. (Id. at 2:67-3:2 (emphasis added).) In FIG. 1, [e]ach of the time intervals are associated with a letter code A-Z in which conventional practice has assigned the letter A to indicate the time period from 8:20 a.m. to 8:50 a.m. at the Chicago Bond [sic] of Trade. (Id. at 3:2-6 (emphasis added); see also id. at 3:6-51 (further describing chart of FIG. 1).) As shown, Bay depicts time intervals A-Z along the horizontal axis on the bottom of the chart in FIG. 1. (Id. at FIG. 1; Román Decl., ) In FIG. 2, Bay depicts time intervals M, T, W, T, and F along the horizontal axis on bottom of the chart (Bay, FIG. 2), which a POSITA would have understood depict days e. g., 49

60 M for Monday (Román Decl., 85; see Bay, 4:24-34.) U.S. Patent No. 7,412,416 B2 (Bay, FIG. 1 (annotated to label horizontal and vertical axes, the displayed volume and price data, and the good being traded).) 50

61 (Bay, FIG. 2 (annotated to label horizontal and vertical axes, the displayed volume and price data, and the good being traded).) As shown in FIGS. 1 and 2, Bay discloses that price information is displayed with volume information for each time interval. (Id. at 4:25-26.) For example, in FIG. 2, marker 26 indicates an opening price of June TBonds at 97 and a closing price at 96 on a Tuesday. The price ranged from a high of 97 to a low of about (Id. at 4:28-31.) A POSITA would have understood that the vertical axis on the left side of Bay s charts displays price values, such as and in FIG. 1, and 98-00, 97-00, 96-00, 95-00, 94-01, 93-00, and 92-0 in FIG. 2. (Román Decl., 86. ) 51

62 At the time of the alleged invention, it would have been obvious to a POSITA to combine Bay s chart having a vertical axis of price values and a horizontal axis of time with TSE s GUI. (Id. at 87.) The combination would have been nothing more than combining prior art elements according to known methods to yield the predictable and desirable result of displaying market data over a period of time in an easy to read and interpret fashion. (Id.) Particularly, combining TSE and Bay would yield a display of trading price and volume information over time, which was very well known by the time of the alleged invention. (Id. (citing pages of Arms, a 1971 treatise describing vertical line charts as a method of charting [that] places prices on the vertical axis, and time on the horizontal axis and as the oldest and most widely used method of charting, and explaining numerous benefits including that they are easily read and understood by anyone ).) Bay provides additional motivation for the combination. Bay explains, It has been recognized that volume in association with price is an indicator of whether a price is likely to increase or decrease. (Bay, 1:16-18; see also id. at 4:3-19 (explaining the benefits of Bay s charts).) With such a display, traders can anticipate price trends from comparison of present trading volume against historical trading volume during similar time intervals. (Id. at 6:21-24.) Thus, a POSITA would have been further motivated to combine TSE and Bay to observe 52

63 current market conditions, and compare them against historical market data in order to better anticipate market trends. (Román Decl., 88 (citing Arms at (explaining that the benefits of vertical line charts, e.g., easily read and understood, easy to see volatility, etc.).) Thus, the combination of TSE and Bay teaches or suggests the displaying a chart on a graphical user interface... step. (Román Decl., 89.) 3. displaying indicators representing historical trading data... Bay teaches or suggests displaying indicators representing historical trading data for the good at locations along the vertical axis of price values and the horizontal axis of time, as required by claims 1 and 14. Bay discloses displaying current trade volume against historical trade volume for each of a plurality of time intervals. (Bay, 1:41-43 (emphasis added); see also id. at 3:6-9 ( historical average volume of trade ), 3:24-27 ( average historical volume ), 3:33-48 ( historical data ), 5:23-26, 6:19-28.) As depicted in FIGS. 1 and 2, Bay discloses displaying markers representing volume information of the good along the vertical axis of price values and the horizontal axis of time. For example, Bay discloses that the markers 12A-12C of FIG. 1 represent the historical average volume of trade at different time intervals. (Id. at 3:6-51.) Bay also discloses that the markers 14A-14C of FIG. 1 represent the current volume. (Id. at 3:37-43; see also Román Decl., 90.) 53

64 Bay further discloses displaying markers representing price information of the good along the vertical axis of price values and the horizontal axis of time. (Bay, 2:67-3:2, 4:22-32.) For example, FIG. 1 displays price information of June TBonds over a three day period. (Id. at 2:67-3:23.) As another example, Bay disclose that the marker 26 of FIG. 2 represents price information of June TBonds on a Tuesday. (Id. at 4:28-32; see also Román Decl., 91.) Thus, Bay teaches or suggests the displaying indicators representing historical trading data... step. (Id. at (noting that TSE also teaches displaying historical trading data).) 4. providing a plurality of locations... The combination of TSE, Bay, and Subler teaches or suggests providing a plurality of locations on the graphical user interface to place an order icon with a pointer of a user input device, each location corresponding to a particular price value along the vertical axis of price values. TSE s Board Screen provid[es] a plurality of locations on the graphical user interface to place an order... with a pointer of a user input device. Román s FIG. A (above) labels three exemplary locations ( 1 st, 2 nd, and 3 rd ) in each of the bid and offer order entry regions. (Román Decl., 94.) The figure on 0137 of TSE shows one method of order entry (i.e., order placement) using the Board Screen. Using an input device, such as a mouse, a trader may [d]ouble click 54

65 on a specific area on the [Board] Screen to enter a new order. (TSE at 0137; see also id. at 0138 (depicting order entry using a keyboard).) Depending on the place that is double clicked, the Security Name, Sell/Buy Category, Order Price, or Execution Conditions are set automatically before the order is sent to the market. (Id. at 0137.) The Volume field of the New Order Input window allows a trader to input the quantity for the order. (Id. at 0142.) Selecting the send button in the New Order Input window send[s] the input order details to the central system. (Id. at 0143.) A POSITA would have understood that the figure on 0137 of TSE illustrates a trader placing a buy order using TSE s Board Screen by moving the pointer using a mouse to a location in this case to the right of the price level and double clicking. (See Román Decl., 96, FIG. A (labeling area to the right and left of the price column are bids and offers, respectively); see also TSE at 0137 (depicting that selecting an area to the right of price column 11 automatically populates the new order entry window with buy order code (3)).) A POSITA would have also understood that a trader could move the pointer to other locations on TSE s Board Screen to place other orders. (Román Decl. 96; see also TSE at 0139 (depicting the cursor at six different locations in the Board Screen for the purpose of order entry).) For example, a POSITA would have understood that a trader could place an ask order by moving the pointer to the left of the

66 price level and double clicking, as shown in the annotated version of the figure on 0137 of TSE below. (Román Decl. 96.) Thus, TSE s Board Screen provides a plurality of locations on the graphical user interface to place an order... with a pointer of a user input device. (Id.) (TSE at 0137 (reproduced in-part and annotated to depict moving the pointer to the left of the price level).) Additionally, each location correspond[s] to a particular price value along the vertical axis of price values in TSE s Board screen. Román s FIG. A (above) labels three exemplary locations ( 1 st, 2 nd, and 3 rd ) in each of the bid and offer order entry regions to highlight that each location corresponds to a different price level. (Román Decl., 97.) However, neither TSE nor Bay explicitly discloses that the plurality of locations are for placing an order icon with a pointer of the user input device. Subler teaches this limitation. Subler discloses an end user system that includes a workstation and 56

67 software that provides a GUI that enables a user to generate and send purchase orders for items or goods to an order taking system. (Subler, 1:31-52 (GUI for placing orders), 3:46-52 ( power, easy-to-use interface for placing orders; can be used for virtually any product ), 4:45-54 (workstation, software), 5:26-30, FIG. 10 (example GUI screen).) The items or goods that can be ordered are represented in Subler s GUI as icons. (Id. at 1:31-52 ( graphical representations ), 3:18-23 ( icons representing the items (emphasis added)), 7:33-37, FIG. 10 (icons in Category/Package Viewer ).) Using Subler s GUI, the user interactively explores the representations [icons] and selects items or groups to be ordered, using a pointer. (Id. at Abstract; see also id. at 1:31-52 ( using a pointer ).) Specifically, referring to FIG. 10 (reproduced below), the user uses the Order Pad window to generate and place a new order. (Id. at 13:21-14:37, FIG. 10.) An order is composed by assembling in the Order Pad window a list of orderable items from the Viewer window. (Id. at 13:29-32.) A POSITA would have understood the icons in Subler s Viewer window (e.g., Bundles, Clip Art, Photos, etc.) to be order icons. (Román Decl., ) 57

68 (Subler, FIG. 10.) For the reasons provided in the next section (with respect to the placing an order icon for a particular quantity... step), it would have been obvious to combine Subler with TSE and Bay. 5. placing an order icon for a particular quantity... The combination of TSE, Bay, and Subler teaches or suggests placing an order icon for a particular quantity of the good at a specific location of the plurality of locations along the vertical axis of price values with a pointer of an input device, wherein the specific location on which the order icon is placed corresponds to a particular price value, as required by claims 1 and 14. As explained above, TSE discloses click-based order entry. TSE s click- 58

69 based order entry includes placing an order... for a particular quantity of the good by selecting a specific location of the plurality of locations along the vertical axis of price values with a pointer of an input device, wherein the specific location that is selected corresponds to a particular price value. (TSE at 0137; see also id. at 0138 (order input using keyboard).) For example, the figure on 0137 of TSE depicts a trader moving a pointer icon, using a mouse, to a location on the Board Screen associated with a price of along the price column 11 and double clicking to perform order entry. (Román Decl., 102.) The Volume field of the New Order Input window allows a trader to input the particular quantity for the order. (TSE at 0142.) However, TSE does not explicitly disclose placing an order icon at a specific location in the Board Screen as part of order entry. Subler teaches this well-known feature. Subler discloses a computer based method for facilitating the placement of an order by selecting an order icon and moving the order icon with a pointer of a user input device to a location on the GUI. Indeed, Subler teaches placing an order using the famously well-known drag-and-drop GUI operation (as well as other select and move techniques). (Subler, 13:31-32; see also Román Decl., 104; TSE at 0030, 0094 (teaching the drag-and-drop operation).) Like TSE, Subler teaches that order entry (placement) can be initiated using 59

70 a pointer. Using Subler s GUI, the user interactively explores the representations [icons] and selects items or groups to be ordered, using a pointer. (Subler at Abstract; see also id. at 1:31-52 ( using a pointer ).) Specifically, referring to FIG. 10, the user uses the Order Pad window to generate and place a new order. (Id. at 13:21-14:37.) An order is composed by assembling in the Order Pad window a list of orderable items.... (Id. at 13:29-30.) Subler teaches that one way to assemble this list is to drag and drop the entity from the Viewer window into the Order Pad window. (Id. at 13:31-32; see also id. at 13:33-37 (teaching two additional select-and-move order entry techniques).) To place the order, the user clicks on the Place Order button in the Order Pad window (id. at 13:60-61), which causes an order information window to be displayed (id. at 13:63-64). Similar to TSE s New Order Input window, Subler s order information window includes a number of fields that are automatically populated with order parameters. (Id. at 13:64-14:3 (e.g., customer name, company name, etc.).) Subler s end user system can deliver the order to the order taking system under program control (e.g., via FAXmodem, modem, network packet, or cable system). (Id. at 4:61-63; see also id. at 14:34-35 ( [m]odem to modem communication ), 15:35-45 ( electronically over a telephone line ).) Thus, Subler teaches a GUI that displays order icons and that enables a user to place (e.g., via a drag-and-drop operation) the order icons with a pointer of a 60

71 user input device to one or more locations (e.g., Order Pad) of the GUI to initiate placing an order. (Román Decl., ) At the time of the alleged invention, it would have been obvious to a POSITA to modify TSE and Bay s GUI to support Subler s drag-and-drop order entry technique. (Id. at 107.) The figure below annotates the figure on 0137 of TSE to illustrate this obvious combination ( combined TSE-Bay-Subler GUI ). (Id.) As shown below, a trader would place an order by selecting a quantity icon ( 5 in this example) and moving it with a pointer of a mouse to a location associated with a price ( ) along the vertical axis of price values. (Id.) 61

72 (TSE at 0137 (annotated to depict drag-and-drop order entry, an obvious variant of click-based order entry).) TSE discloses a GUI that supports and uses the drag-and-drop operation. (TSE at 0030, 0094.) Since Subler teaches displaying a plurality of order icons that can be selected and moved to initiate placing an order (Subler, FIG. 10 (icons in Category/Package Viewer )), the combined TSE-Bay-Subler GUI displays a plurality of order icons (represented above as alphanumeric characters 5, 10, and 62

73 20 based on TSE s teachings) 4 that a trader can drag-and-drop next to a desired price along the vertical axis of prices in TSE s Board Screen to initiate placing an order (Román Decl., 108). An order icon in the combined TSE-Bay-Subler GUI would represent a particular quantity. (Id. at 109.) First, the claims do not define a particular quantity, and thus a POSITA would have understood this term to include any quantity, such as a quantity of one. (Id.) And second, both TSE and Subler teach or suggest displaying icons that represent a particular quantity. TSE teaches displaying icons or indicators corresponding to quantity (TSE at 0107, (explaining columns 11-14).) And Subler teaches that the order icons shown in FIG. 10 of Subler are associated with different quantities of items. (Subler, 11:30-57.) For example, Subler discloses that the type of each icon i.e., individual, package, or category is indicated in its upper right corner. (Id.) When the upper right corner is blank, the icon represents an individual item. (Id. at 11:48-51.) A POSTIA would have understood an individual item means one item; that is, a 4 While the order icons are shown as the alphanumeric characters 5, 10, and 20 (as in TSE) in the combined TSE-Bay-Subler GUI, it would have been just as obvious to a POSITA to use graphical icons representing quantity. (Román Decl., 110 ( nothing more than a design choice ).) 63

74 quantity of one, which is a particular quantity. (Román Decl., 109.) Subler further discloses that when the upper right corner indicates the letter P, the icon represents a package. (Subler, 11:48-51.) In Subler, a package represents a certain number of items. (Id. at 11:34-36 ( Items... may be bundled into packages for purposes of sale. ).) To determine the number of items a package icon represents, the user merely clicks on the package icon, which displays the individual items. (Id. at 12:1-7.) Thus, a POSITA would have understood that each of Subler s package icons are for a particular quantity of items. (Román Decl., 109.) And it would have been obvious to a POSITA that an order icon in the combined TSE- Bay-Subler GUI is for a particular quantity. (Id.) A POSITA would have been motivated to combine Subler with TSE and Bay for at least the following reasons. (Román Decl., 111.) First, implementing Subler s order entry by placing an order icon at a location of a GUI (e.g., via a drag-and-drop operation), in place of TSE s click-based order entry, would have been an obvious design choice and nothing more than the simple substitution of one known GUI technique (point-and-click) for another (drag-and-drop). (Id.) By the time the 416 patent was filed, drag-and-drop was a well-known and widelyused GUI operation. (Id.; TSE at 0030, 0094; Cooper at 0259 ( Of all the directmanipulation idioms characteristic of the GUI, nothing defines it more than the drag-and-drop operation, clicking and holding the button while moving some 64

75 object across the screen.... drag-and-drop was accepted immediately as a cornerstone of the modern GUI. ).) POSITAs would have known of these obvious variants (i.e., point-and-click and drag-and-drop), and would have substituted one for the other with predictable results. (Román Decl., 111.) Further, it would have been a trivial task for a POSITA to modify TSE s GUI to support Subler s drag-and-drop order entry technique. (Id. at 112.) From a coding perspective, there are basically two variants of drag-and-drop: interior drag-and-drop ( from one place to another inside your program ) and exterior drag-and-drop ( from inside your program into some other program ). (Cooper at 0261.) Interior drag-and-drop can be made pretty simple, both from a conceptual and from a coding point of view. (Id.) Modifying TSE s GUI (as described) would merely require an internal drag-and-drop, further demonstrating that the proposed combination is nothing more than a simple substitution of one known GUI technique (point-and-click) for another (drag-and-drop). (Román Decl., 112.) Indeed, TSE already implements internal drag-and-drop. (Id. at 113 (citing TSE at 0030, 0094.)) Second, the proposed combination would have been nothing more than combining prior art elements according to known methods to yield predictable and desirable results, such as increasing the efficiency and decreasing the complexity of order entry in TSE. (Román Decl., 114; see also Subler, 3:46-52 ( The user is 65

76 provided with a powerful, easy-to-use interface to... place the order.... ).) Combining Subler s drag-and-drop order entry with TSE s GUI would increase order entry efficiency. (Román Decl., 115.) As discussed, TSE discloses that certain order parameters (e.g., price, sell/buy) are automatically populated in the New Order Input window in response to click-based order entry. (TSE at 0137.) However, a POSITA would have understood that, in some situations, a trader using TSE s click-based order entry would manually enter (e.g., using a keyboard) the quantity in the volume field of the New Order Input window. (Id. at 0142; Román Decl., 115.) In the combined TSE-Bay-Subler GUI, on the other hand, the quantity would be established via selection of the order icon, allowing the quantity (volume) to also be automatically populated in the New Order Input window (as shown in the annotated figure above). (Román Decl., 115.) Indeed, Cooper instructs GUI designers to use click-and-drag idioms instead of dialog boxes with edit fields because the click-and-drag idioms make input clearer and easier. (Cooper at ) Thus, a POSITA would have been motivated to make the proposed combination in order to reduce the number of actions required from the trader, thereby increasing efficiency while achieving the additional benefit of reducing the opportunity for errant quantity entries in the New Order Input window. (Román Decl., 116; see also Cooper at 0259 ( Any mouse action is very efficient because 66

77 it combines two command components in a single user action: a geographical location and a specific function. Drag-and-drop is doubly efficient because, in a single, smooth action, it adds a second geographical location. ); Shneiderman at (desirable to reduce number of operator actions such as keystrokes).) Drag-and-drop was also recognized as a simple, easy-to-use, and easy-tolearn GUI operation by the time of filing. (Román Decl., 117; see also Cooper at 0241 ( direct manipulation is clicking-and-dragging things ), 0242 ( Direct manipulation is simple, straightforward, easy to use and easy to remember. ).) Shneiderman, for example, describes a usability study of four touchscreen designs for a VCR scheduling application. (Shneiderman at ) The results indicated that the design that implemented drag-and-drop was the easiest to understand and use. (Id. at ) Specifically, this design allowed users to perform scheduling by dragging-and-dropping ON and OFF icons (displayed on the screen) to a 24-hour time line (i.e., an axis), as shown in Figure 6.13 of Shneiderman (reproduced below). (Id. (figure on 0234).) Thus, a POSITA would have been further motivated to modify TSE s GUI to support Subler s drag-and-drop order entry technique in order to decrease the complexity (e.g., make it easier to learn and use) of order entry in TSE. (Román Decl., 117.) 67

78 (Shneiderman, 0234.) Thus, the combination of TSE, Bay, and Subler teaches or suggests the providing a plurality of locations... and placing an order icon for a particular quantity... steps. (Román Decl., 118.) 6. generating an order to buy or sell the particular quantity... The combination of TSE, Bay, and Subler teaches or suggests generating an order to buy or sell the particular quantity of the good at the particular price value responsive to placing the order icon at the specific location, as required in claims 1 and 14. As explained above, TSE teaches click-based order entry that includes generating an order to buy or sell the particular quantity of the good at the 68