April 18, 2019

3 CBMs Hit Their Targets

By Bryan K. Wheelock, Principal

In Trading Technologies International, Inc. v. IBG LLC, [2017-2257] (April 18, 2019), the Federal Circuit affirmed the determination of the Board that the challenged claims in U.S. Patent Nos. 7,533,056, 7,212,999, and 7,904,374 meet the criteria to be eligible for CBM review and the claims are ineligible under 35 U.S.C. § 101. The Board additionally held that the claims of the ’056 patent would have been obvious.

With respect to the ‘999 patent, the Board determined that the claims were directed to “the abstract idea of graphing (or displaying) bids and offers to assist a trader to make an order.” The Federal Circuit agreed, noting it has treated collecting information, including when limited to particular content (which does not change its character as information), as within the realm of abstract ideas. The Federal Circuit also agreed that placing an order based on displayed market information is a fundamental economic practice, and the fact that the claims add a degree of particularity as to how an order is placed does not change the analysis. The Federal Circuit said that the fact that this is a “computer-based method” did not not render the claims non-abstract, the specification indicating that the claimed GUI is displayed on any computing device. The collection, organization, and display of two sets of information on a generic display device is abstract. At Step 2, the Federal Circuit agreed with the Board that the claims do not contain an inventive concept, either individually or as an ordered combination.

With respect to the ‘056 Patent, the Board found the claims were directed to the abstract idea of graphing (or displaying) bids and offers to assist a trader to make an order. The Federal Circuit found no meaningful difference between ‘056 patents and the ‘999 patent. At Step 2, the Board held the elements, both individually and as an ordered combination, do not recite an inventive concept. The Federal Circuit rejected the argument that the invention improves computer functionality, noting that the invention helps the trader process information more quickly, but this is not an improvement to computer functionality.

With respect to the ‘374 patent, the Board held that the claims of the ’374 patent were directed to the abstract idea of receiving user input to send a trade order. This may be because the claims were drafted too broadly. The Board noted that while the claims require “displaying . . . graphical locations along an axis” they did not require the graphical locations to display the price levels that are mapped to them. At Step 2, the Board held the elements of the claims, individually or as an ordered combination, do not add an inventive concept. The Board noted that the specification discloses that the invention can be implemented “on any existing or future terminal or device” and describes the programming as insignificant. The Federal Circuit agreed, adding that the claims do not solve any purported technological problem.

Takeaway

When the Federal Circuit concedes that even meritorious inventions are sometimes patent ineligible, one can start to believe that overcoming Section 101 is hopeless. However, Trading Technologies teaches a few things: (1) Make sure that the technical details actually make it into the claims; (2) Identify a technological problem that is solved; and (3) Avoid sweeping statements that the invention can be implemented with conventional equipment. Good luck.