Takeaway: The fact that a petitioner copied the arguments and exhibits from a prior petition of a non-party does not prove in itself that the non-party is a real party-in-interest to the current proceeding.
In its Decision, the Board granted institution of covered business method review on all challenged claims of the ’304 Patent. The ’304 Patent discloses a display and a method of using the display to trade a commodity.
The Board first addressed Patent Owner’s request for an expanded panel. The Board stated that the Chief Judge has discretion to expand a panel, and the Chief Judge declined to do so in this case.
The Board then discussed whether the Petition satisfies all of the requirements for covered business method review. The Board noted that both parties have indicated that Petitioner was sued for infringement. The Board then discussed whether the ’304 Patent is a covered business method patent. Petitioner argued that it is because it claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial service. Patent Owner disputed this argument, stating that the statute disqualifies patents where the invention resides in the claimed features of a tool, such as a GUI tool that is claimed in the ’304 Patent. Patent Owner also argued that the claims are not directed to a business method or practice. The Board agreed with Petitioner that at least claim 1 claims the processing of financial data that is used in the practice, administration or management of a commodity, which is a financial product. The Board also noted that although it is not dispositive, the ’304 Patent is primarily classified in Class 705.
The Board then turned to whether the ’304 Patent claims a technological invention that would preclude it from covered business method review. Petitioner argued that the ’304 Patent does not solve a technical problem using a technical solution, but rather solves the problem of “placing a trade order for a commodity on an electronic exchange,” which is a financial issue and not a novel technical problem. Patent Owner argued that the ’304 Patent solves a speed and accuracy problem found in prior trading GUIs with an improved GUI tool. The Board agreed with Petitioner that the problem solved by the ’304 Patent is a business problem, not a technical problem, and that the disclosed system could be implemented on any existing or future terminal or device.
The Board next turned to claim construction, stating that the claims are given their broadest reasonable interpretation in light of the specification. The only term that the Board found the need to address at this time was “common static price axis.” The Board agreed with Petitioner that the reasonable interpretation of “common static price axis” is “a reference line or column of price levels that is common to the bid and ask display regions where the price levels do not change positions unless a re-centering command is received.” However, the Board found that, unlike proposed by Petitioner, this interpretation does not encompass a price axis or column that has both static and non-static price levels.
Then the Board addressed Petitioner’s first ground of unpatentability––that the ’304 Patent is unpatentable under 35 U.S.C. § 112, first paragraph. Specifically, Petitioner argued that the ’304 Patent does not provide written description support for a price axis that has non-static price levels. Because the Board construed “common static price axis” to not encompass a price axis with non-static price levels, it was not persuaded by Petitioner’s arguments on this ground.
The Board then turned to the other ground of unpatentability––whether the challenged claims of the ’304 Patent are unpatentable under 35 U.S.C. § 101 as being directed to ineligible subject matter. Petitioner argues that the claims are directed to the abstract idea of “placing an order based on displayed market information, as well as updating market information,” and that the claimed GUI is simply a conventional mechanism for implementing the abstract idea and does not add anything to the abstract idea other than well-known or insignificant extra activity. Patent Owner disputes this claim, and states that the challenged claims are directed to the features of a GUI tool and recite an inventive concept other than an abstract idea. The Board agreed with petitioner that the claims are directed to the fundamental economic practice of placing an order based on displayed market information, as well as updating market information. The Board further determined that the individual elements of the claim do not transform the nature of the claim into a patent-eligible application because they do not add significantly more to the abstract idea or fundamental economic practice.
The Board next discussed Patent Owner’s contention that the Petition fails to name all of the real parties-in-interest. Specifically, Patent Owners note that CQG, Inc. and CQGT, LLC (collectively, “CQG”) should have been identified as real parties-in-interest, and if it is a real party-in-interest, then the Petitioner is barred under 35 U.S.C. § 325(a)(1). Patent Owner notes that both Petitioner and CQG are defendants in related litigation and co-petitioners of related petitions for covered business method review. Petitioner argues that it and CQG are unrelated entities with no common ownership and no common control, and that a non-party’s status as a co-defendant in a joint defense group is insufficient to render that non-party a real party-in-interest. Petitioner states that CQG did not control or influence Petitioner’s decision to file the Petition or participate in its preparation. The Board agreed with Petitioner that the evidence presented does not establish that CQG is a real party-in-interest. The fact that Petitioner substantially copied CQG’s petition and exhibits from a prior CBM does not establish that CQG had control over the filing of this Petition.
TradeStation Group, Inc. and TradeStation Securities, Inc. v. Trading Technologies International, Inc., CBM2015-00161
Paper 29: Decision on Institution of Covered Business Method Patent Review Dated: January 27, 2016 Patent 6,766,304 B2
Before: Sally C. Medley, Meredith C. Petravick, and Jeremy M. Plenzler
Written by: Petravick
Related proceedings: CBM2014-00136; CBM2015-00057