Addressing the issue of subject matter eligibility for covered business method (CBM) patent jurisdiction under § 18(d)(1) of the America Invents Act (AIA), the Patent Trial and Appeal Board (PTAB or Board) instituted CBM review for challenged claims directed to a graphical user interface (GUI). IBG LLC v. Trading Technologies International, Inc., Case No. CBM2016-00031 (Aug. 8, 2016) (Plenzler, APJ).
The patent owner’s claimed invention provides a GUI that dynamically displays the market depth of a traded commodity and allows a trader to place an order efficiently. The petitioner filed a petition requesting CBM review of the challenged claims. A CBM patent is a patent claiming data processing or other operations used in the practice, administration or management of a financial product or service, but excludes patents for technological inventions.
The patent owner did not dispute that the claims were directed to a financial product or service but contended that the claims were not directed to data processing or other operations as required by statute. The PTAB found that the claims encompassed processing financial data of a commodity for display and sending trade orders. The patent owner further contended that the legislative history showed that GUIs were intended to be exempt from CBM review. The PTAB disagreed and found that the AIA did not exempt all user interfaces from CBM review.
The PTAB agreed with the petitioner that the claims did not recite novel and non-obvious technological features because the specification treats as well known all potentially technological aspects of the claims. The PTAB further agreed with petitioner that the challenged patent did not solve a technical problem using a technical solution. Rather, the PTAB found that the challenged patent purported to solve the problem of a user missing an intended price because the price level changed as the user tried to click to send an order. Thus, the PTAB concluded that the challenged patent was subject to CBM review and granted institution.
Practice Note: The PTAB refused to recognize GUIs as an exception to CBM jurisdiction. The PTAB cited the US Patent and Trademark Office’s July 2015 “Update on Subject Matter Eligibility,” noting that at least one example of a claim subject to patent eligibility challenge under § 101 was directed to a GUI invention.
In terms of its § 18(d)(1) jurisdiction, the PTAB declined to credit the patent owner’s legislative history argument that patents claiming GUIs for trading, as opposed to patents claiming a trading strategy, are not subject to CBM review under the AIA. In particular, the legislative history shows that the bill’s sponsor, Senator Chuck Schumer, agreed with Senator Dick Durbin that a patent claiming “software tools and graphical user interfaces that have been widely commercialized and used within the electronic trading industry to implement trading and asset allocation strategies” should not be considered a CBM patent under the AIA.