TD Ameritrade Holding Corporationv.Trading Technologies International, Inc.

Patent Trial and Appeal Board

Dec 2, 2014

09894637 (P.T.A.B. Dec. 2, 2014)

Trials@uspto.gov Paper No. 19
571.272.7822 Entered: December 2, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

TD AMERITRADE HOLDING CORP.,
TD AMERITRADE, INC., and
TD AMERITRADE ONLINE HOLDINGS CORP.,
Petitioner,

v.

TRADING TECHNOLOGIES INTERNATIONAL, INC.,
Patent Owner.
____________

Case CBM2014-00136
Patent No. 6,766,304 B2
____________

Before SALLY C. MEDLEY, MEREDITH C. PETRAVICK, and
PHILIP J. HOFFMANN, Administrative Patent Judges.

PETRAVICK, Administrative Patent Judge.

DECISION
Denying Institution of Covered Business Method Patent Review
37 C.F.R. § 42.208

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I. INTRODUCTION
A. Background
TD Ameritrade Holding Corp., TD Ameritrade, Inc., and TD
Ameritrade Online Holdings Corp. (collectively, “Petitioner”) filed a
Petition (Paper 4, “Pet.”) on May 20, 2014, that requests review under the
transitional program for covered business method patents of U.S. Patent No.
6,766,304 B2 (Ex. 1001, “the ’304 patent”). Trading Technologies
International, Inc. (“Patent Owner”) filed a Preliminary Response on
September 3, 2014. Paper 18 (“Prelim. Resp.”). We have jurisdiction under
35 U.S.C. § 324, which provides that a post-grant review may not be
instituted “unless . . . the information presented in the petition . . . would
demonstrate that it is more likely than not that at least 1 of the claims
challenged in the petition is unpatentable.”
Petitioner challenges the patentability of claims 1–40 (“the challenged
claims”) of the ’304 patent under 35 U.S.C. §§ 101, 102, 103. We determine
that the Petition fails to demonstrate that it is more likely than not that the
challenged claims are unpatentable, and we do not institute a covered
business method patent review of claims 1–40 of the ’304 patent.

B. Related Matters
Petitioner and Patent Owner identify numerous related U.S. district
court cases. Pet. 2–3; Paper 7, 2–5.
Patent Owner also states that related U.S. Patent No. 7,676,411 is the
subject of TD Ameritrade Holding Corp. v. Trading Technologies
International, Inc., Case CBM2014-00133 (PTAB); that related U.S. Patent
No. 6,772,132 is the subject of TD Ameritrade Holding Corp. v. Trading
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Technologies International, Inc., Case CBM2014-00135 (PTAB); and that
related U.S. Patent No. 7,685,055 is the subject of TD Ameritrade Holding
Corp. v. Trading Technologies International, Inc., Case CBM2014-00137
(PTAB). Paper 7, 5. Patent Owner further states that the ’304 patent was
the subject of Reexamination, Control No. 90/008,577; and related U.S.
Patent No. 6,772,132 was the subject of Reexamination, Control No.
90/008,576 and Reexamination, Control No. 90/011,250. Id.
Related U.S. Patent No. 7,533,056 is the subject of CBM2014-00131
(PTAB).

C. The ’304 Patent (Ex. 1001)
The ’304 patent is titled “Click Based Trading with Intuitive Grid
Display of Market Depth,” and issued July 20, 2004, from Application No.
09/894,637, filed June 27, 2001. Ex. 1001, 1. Application No. 09/894,637
is a divisional of Application No. 09/590,692, filed June 9, 2000, which
claims priority to Provisional Application No. 60/186,322, filed March 2,
2000. Id.
The ’304 patent discloses a “Mercury” display and method of using
the Mercury display to trade a commodity. Id. at Abstract, col. 3, ll. 9–10.
The Mercury display is a graphic user interface (“GUI”) that dynamically
displays the market depth of a commodity traded in a market and allows a
trader to place an order efficiently. Id. at col. 3, ll. 15–28.
The Mercury display is depicted in Figure 3, which is reproduced
below.
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Fig. 3 depicts the Mercury display of the ’304 patent
The Mercury display includes a plurality of columns. Column 1005 is
a static price axis, which includes a plurality of price values for the
commodity. See id. at col. 7, ll. 56–67. Columns 1003 and 1004 are aligned
with the static price axis and dynamically display bid and ask quantities,
respectively, for the corresponding price values of the static price axis. See
id. at col. 7, l. 54–col. 8, l. 18. Column 1002 contains various parameters
and information used to execute trades, such as the default quantity
displayed in cell 1016. See id. at col. 8, l. 37–col. 9, l. 3.
A trader executes trades using the Mercury display by first setting the
desired commodity and default parameters, such as default quantity. Id. at
col. 9, ll. 35–49; Fig. 6, step 1302. Then, a trader can send a buy order or
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sell order to the market with a single action, such as clicking on the
appropriate cell in column 1003 or 1004. See id. at col. 9, l. 39–col. 11,
l. 34; Fig. 6, steps 1306–1315. In the example shown in Figure 3, a left click
on “20” in column 1004 will send an order to the market to buy 17 lots (i.e.,
the default quantity set in cell 1016 of column 1002) at a price of 90. See id.
at col. 10, ll. 39–41.
Claim 1 of the ’304 patent is illustrative of the challenged claims and
is reproduced below:
1. A method for displaying market information relating to and
facilitating trading of a commodity being traded in an electronic
exchange having an inside market with a highest bid price and a
lowest ask price on a graphic user interface, the method
comprising:
dynamically displaying a first indicator in one of a plurality of
locations in a bid display region, each location in the bid
display region corresponding to a price level along a common
static price axis, the first indictor representing quantity
associated with at least one order to buy the commodity at the
highest bid price currently available in the market;
dynamically displaying a second indicator in one of a plurality
of locations in an ask display region, each location in the ask
display region corresponding to a price level along the common
static price axis, the second indicator representing quantity
associated with at least one order to sell the commodity at the
lowest ask price currently available in the market;
displaying the bid and ask display regions in relation to fixed
price levels positioned along the common static price axis such
that when the inside market changes, the price levels along the
common static price axis do not move and at least one of the
first and second indicators moves in the bid or ask display
regions relative to the common static price axis;
displaying an order entry region comprising a plurality of
locations for receiving commands to send trade orders, each
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location corresponding to a price level along the common static
price axis; and
in response to a selection of a particular location of the order
entry region by a single action of a user input device, setting a
plurality of parameters for a trade order relating to the
commodity and sending the trade order to the electronic
exchange.

D. Alleged Grounds of Unpatentability
Petitioner sets forth grounds of unpatentability of the challenged
claims as follows:
Ground Prior Art Challenged Claim(s)
§ 101 n/a 1–40
§ 102 TSE
1
1–3, 5–9, 11–15, 20–23, and 26–40
§ 103 TSE 4 and 10
§ 103 TSE and Gutterman
2
16–19, 24, and 25
§ 103 Silverman
3
and Gutterman 1–25 and 27–40
§ 103 Silverman, Gutterman, and
Paal
4

26

1
TOKYO STOCK EXCHANGE OPERATION SYSTEM DIVISION, FUTURES/OPTION
PURCHASING SYSTEM TRADING TERMINAL OPERATION GUIDE (1998) (Ex.
1003).
2
Gutterman et al., U.S. Patent No. 5,297,031 (issued Mar. 22, 1994) (Ex.
1007).
3
Silverman et al., U.S. Patent No. 5,077,665 (issued Dec. 31, 1991) (Ex.
1008).
4
Paal et al., U.S. Patent No. 5,263,134 (issued Nov. 16, 1993) (Ex. 1009).
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II. ANALYSIS
A. Requirements for Covered Business Method Patent Review
Section 18 of the AIA
5
provides for the creation of a transitional
program for reviewing covered business method patents. Section 18 limits
review to persons or their privies who have been sued or charged with
infringement of a “covered business method patent,” which does not include
patents for “technological inventions.” AIA §§ 18(a)(1)(B), 18(d)(1); see
37 C.F.R. § 42.302. Petitioner and Patent Owner indicate that the Petitioner
was sued for infringement of the ’304 patent. Pet. 4; Paper 7, 2. For reasons
discussed below, we find that the ’304 patent is eligible for covered business
method patent review because at least one claim “claims a method or
corresponding apparatus for performing data processing or other operations
used in the practice, administration, or management of a financial product or
service” (see 37 C.F.R. § 42.301(a)), and because the claimed subject matter
as a whole either does not: 1) recite a technological feature that is novel and
unobvious over the prior art or 2) solve a technical problem using a
technological solution (see 37 C.F.R. § 42.301(b)).
i. Covered Business Method Patent Under 37 C.F.R. § 42.301(a)
Petitioner argues that claims 1 and 27 claim a method for performing
data processing in the practice, administration, or management of a financial
product or service. Pet. 5 (citing 37 C.F.R. § 42.301(a)). Petitioner argues
that claims 1 and 27 claim such a method because they require a GUI that
displays information, such as bids and asks, for a market and that creates and
sends trade orders to an electronic exchange. Id.

5
Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284, 329
(2011) (“AIA”).
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Patent Owner disputes that the ’304 patent is directed to a method for
performing data processing in the practice, administration, or management
of a financial product or service because the claims of the ’304 patent are
directed to “purely technological tools.” Prelim. Resp. 39. Patent Owner
argues that, although used in the field of trading, the ’304 patent is not a
covered business method patent because the inventive aspects of the claims
arise from structural and functional features embodied in a GUI tool, “and
not in any business method or practice.” Id. at 28–29.
A covered business method patent “claims a method or corresponding
apparatus for performing data processing or other operations used in the
practice, administration, or management of a financial product or service.”
AIA § 18(d)(1). The “legislative history explains that the definition of
covered business method patent was drafted to encompass patents ‘claiming
activities that are financial in nature.’” 77 Fed. Reg. 48,734, 48,735 (Aug.
14, 2012) (quoting 157 Cong. Rec. S5432 (daily ed. Sept. 8, 2011)
(statement of Sen. Schumer)). The legislative history indicates that
“financial product or service” should be interpreted broadly. Id. A patent
need have only one claim directed to a covered business method to be
eligible for review. Id. at 48,736 (Response to Comment 8).
Upon review of the record, and taking into account Patent Owner’s
argument, we determine that the ’304 patent is directed to a method for
performing data processing or other operations used in the practice,
administration, or management of a financial product or service. Claim 1
recites “[a] method for displaying market information relating to and
facilitating trading of a commodity being traded in an electronic exchange.”
It recites steps of displaying market information, including indicators of asks
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and bids in the market, and recites steps of setting trade order parameters
and sending trade orders to an electronic exchange. Displaying market
information and sending trade orders to an electronic exchange are activities
that are financial in nature. Given this, we determine that at least claim 1 of
the ’304 patent recites a method for performing operations used in the
practice, administration, or management of a financial product or service
(i.e., trading on an electronic exchange).
ii. Not a Technological Invention Under 37 C.F.R. § 42.301(b)
As indicated above, even if a patent includes claims that would
otherwise be eligible for treatment as a covered business method, review of
the patent is precluded if the claims cover only “technological invention[s],”
as defined by 37 C.F.R. § 42.301(b). Petitioner, further, argues that the
’304 patent is a covered business method patent because it is not for a
technological invention because the claims do not recite a technical feature
that is novel and unobvious over the prior art and do not solve a technical
problem with a technical solution. Pet. 5–8. First, the Petitioner argues that
the claims do not recite a technical feature because they only recite software
and general computer components, such as a display and input devices. Pet.
6. Second, the Petitioner argues that the claims do not solve a technical
problem using a technical solution because the claims are directed to the
known problem of placing a trade order for a commodity on an electronic
exchange. Pet. 7–8.
Conversely, Patent Owner argues that the ’304 patent is for a
technological invention and, therefore, is not a covered business method
patent. Prelim. Resp. 42–54. First, Patent Owner argues that the claims
recite a technical feature because they combine structural and functional
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features of the claimed GUI tool in a novel and non-obvious way. Id. at 52–
54. Second, Patent Owner argues that the claims solve the technical
problem of submitting an order to the exchange with speed and accuracy
with the technical solution of the combined structural and functional features
of the claimed GUI tool. Id. at 42–52.
The definition of “covered business method patent” in § 18(d)(1) of
the AIA does not include patents for “technological inventions.” To
determine whether a patent is for a technological invention, we consider
“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. § 42.301(b). Both prongs
must be satisfied in order for the patent to be excluded as a technological
invention. The following claim drafting techniques, for example, typically
do not render a patent a “technological invention”:
(a) Mere recitation of known technologies, such as computer
hardware, communication or computer networks, software,
memory, computer–readable storage medium, scanners, display
devices or databases, or specialized machines, such as an ATM
or point of sale device.
(b) Reciting the use of known prior art technology to
accomplish a process or method, even if that process or method
is novel and non–obvious.
77 Fed. Reg. 48,756, 48,763–64 (Aug. 14, 2012).
On this record, and taking into account Patent Owner’s argument, we
are persuaded by Petitioner that the ’304 patent is not for a technological
invention. At least independent claim 1 does not recite a technological
feature that is novel and unobvious over the prior art. Claim 1 recites a
method that requires the display of certain information in a certain
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arrangement on a GUI and, via a single action of a user input device on a
particular location in the GUI, the setting of order parameters and sending of
the order to the exchange. Claim 1 requires a display, an input device, and a
GUI (i.e., software).
The ’304 patent discloses that its system can be implemented “on any
existing or future terminal or device” (Ex. 1001, col. 4, ll. 9–15), which are
known to include displays, and discloses that the input device can be a
mouse (id. at col. 4, ll. 13–19), which is a known input device. The
’304 patent depicts a prior art GUI tool used for trading in Figure 2. Id. at
col. 5, ll. 13–19. Patent Owner describes this prior art GUI tool as
“conventional” (Prelim. Resp. 6) and states that “[s]ome of these types of
tools permitted ‘single action’ order entry” (id. at 7). From this, we
determine that the use of software to create GUI’s for displaying market
information and entering orders via a “single action” was known. Further,
the ’304 patent discloses that the physical mapping of information sent by
the exchange to a screen grid (i.e., the GUI) “can be done by any technique
known to those skilled in the art.” Ex. 1001, col. 4, l. 66–col. 5, l. 7.
Given the above, we determine that claim 1 does not recite a
technological feature that is novel and unobvious over the prior art. Because
both prongs must be satisfied for a patent to be excluded from covered
business method patent review for being a technological invention, we find
that the ’304 patent is eligible for a covered business method patent review
for at least the reason that claim 1 fails to recite a technological feature that
is novel and unobvious.
Notwithstanding our determination above, on this record, we also are
persuaded by Petitioner that the ’304 patent does not solve a technical
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problem with a technical solution. The ’304 patent solves the problem of a
trader having to read a display of prices for a commodity and enter a trade
order before the price for the commodity changes. See Ex. 1001, col. 2, ll.
29–67. The ’304 patent solves this problem by displaying market
information in a certain arrangement on a GUI and, via a single action of a
user input device on a particular location in the GUI, setting order
parameters and sending the order to the exchange. As discussed above,
claim 1’s use of a display, an input device, and a GUI (i.e., software) were
all known technology. Given this, we determine that at least claim 1 does
not solve a technical problem using a technical solution and at least claim 1
does not satisfy the second prong. Accordingly, we find that the ’304 patent
is eligible for covered business method patent review.

B. Claim Construction
Consistent with the statute and legislative history of the AIA, we
interpret claims using the broadest reasonable construction in light of the
specification of the patent in which they appear. 37 C.F.R. § 42.300(b). An
inventor, however, may rebut that presumption by providing a definition of
the term in the specification with reasonable clarity, deliberateness, and
precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
“single action”
Petitioner argues, and Patent Owner does not dispute, that “single
action” is defined in the ’304 patent. Pet. 10–11 (citing Ex. 1001, col. 4,
ll. 19–23). Upon review, we determine that the ’304 patent defines “single
action” to mean “[a]ny action by a user within a short period of time,
whether comprising one or more clicks of a mouse button or other input
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device, . . . for the purposes of the present invention.” Ex. 1001, col. 4, ll.
19–23.

C. Ground Under 35 U.S.C. § 101
Petitioner argues that claims 1–40 are patent ineligible under
35 U.S.C. § 101 because they encompass an abstract idea. Pet. 14–15.
Patent Owner argues that Petitioner fails to demonstrate that the claims are
patent ineligible because the Petition simply recites case law without any
proper analysis as to why the “claims preempt the idea of placing an order in
response to observing market data.” Prelim. Resp. 64–65.
We are persuaded by Patent Owner that the Petition fails to
demonstrate that claims 1–40 are more likely than not patent ineligible
because the Petition fails to provide sufficient analysis as to why the claims
merely recite an abstract idea without significantly more. Patent-eligible
subject matter is defined in § 101 of the Patent Act, which recites:
Whoever invents or discovers any new and useful
process, machine, manufacture, or composition of matter, or
any new and useful improvement thereof, may obtain a patent
therefor, subject to the conditions and requirements of this title.
There are, however, three judicially created exceptions to the broad
categories of patent-eligible subject matter in § 101: laws of nature, natural
phenomena, and abstract ideas. Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134
S. Ct. 2347, 2354 (2014); Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 132 S. Ct. 1289, 1293 (2012). Although an abstract idea, itself, is
patent-ineligible, an application of the abstract idea may be patent-eligible.
Alice, 132 S. Ct. at 2355. Thus, we must consider “the elements of each
claim both individually and ‘as an ordered combination’ to determine
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whether the additional elements ‘transform the nature of the claim’ into a
patent-eligible application.” Id. (citing Mayo, 132 S. Ct. at 1297–98). The
claim must contain elements or a combination of elements that are
“sufficient to ensure that the patent in practice amounts to significantly more
than a patent upon the [abstract idea] itself.” Id. (citing Mayo, 132 S. Ct. at
1294).
Other than a paragraph that only quotes case law (Pet. 14), the entirety
of Petitioner’s argument is reproduced below:
The claims of the ’304 patent recite just such an abstract
idea, namely placing a trade order in response to observing
market data. Here, this abstract idea is merely recited in the
independent claims along with well-known and insignificant
extra-solution activity. Importantly, this abstract idea is central
to the trading of commodities all over the world. Patentee
cannot be allowed to preempt this fundamental economic tool.
Moreover, abstract ideas “cannot be circumvented by
attempting to limit the use . . . to a particular technological
environment.” Bilski, supra at 3230 (quoting Diamond v.
Diehr, 450 U.S.175, 191–92). Thus, limiting the claims to the
field of trading commodities is insufficient to save them.
Pet. 14–15. Petitioner provides insufficient analysis as to why each of the 40
challenged claims merely recites the alleged abstract idea without requiring
significantly more. Id.; see also 35 U.S.C. § 322(a)(3); 37 C.F.R.
§ 42.304(b)(4) (“the petition must identify the specific part of the claim that
fails to comply with the statutory grounds raised and state how the identified
subject matter fails to comply with the statute”). We, thus, determine that
Petitioner fails to demonstrate that claims 1–40 are more likely than not
patent ineligible under 35 U.S.C. § 101 for encompassing an abstract idea.
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D. Grounds Under 35 U.S.C. §§ 102, 103
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628,
631 (Fed. Cir. 1987). With respect to obviousness,
Section 103(a) forbids issuance of a patent when “the
differences between the subject matter sought to be patented
and the prior art are such that the subject matter as a whole
would have been obvious at the time the invention was made to
a person having ordinary skill in the art to which said subject
matter pertains.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
obviousness is resolved on the basis of underlying factual determinations,
including: (1) the scope and content of the prior art, (2) any differences
between the claimed subject matter and the prior art, and (3) the level of skill
in the art. Graham v. John Deere Co., 383 U.S. 1, 17 (1966); see KSR, 550
U.S. at 407 (“While the sequence of these questions might be reordered in
any particular case, the [Graham] factors continue to define the inquiry that
controls.”).
i. Anticipation of Claims 1–3, 5–9, 11–15, 20–23, and 26–40 by TSE
Petitioner argues that claims 1–3, 5–9, 11–15, 20–23, and 26–40 are
anticipated under 35 U.S.C. § 102(a) by TSE. Pet. 15–39. Independent
claim 1 recites:
in response to a selection of a particular location of the order
entry region by a single action of a user input device, setting a
plurality of parameters for a trade order relating to the
commodity and sending the trade order to the electronic
exchange.
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Independent claim 27 recites a similar limitation. Petitioner argues that this
limitation is met by TSE’s description of placing an order by, first, double-
clicking a specific area on the Board/Quotation Screen to open a new order
entry window, and then selecting a send button on the new order entry
window. See Pet. 15–16, 26–29 (citing Ex. 1003, 137; Ex. 1017 ¶¶ 97–99,
“Roman Decl.”).
Patent Owner argues that the above relied-upon description of TSE
does not meet the limitation because double-clicking the area of the
Board/Quotation Screen and clicking a send button on the new order entry
window is not a selection of a particular location of the order entry region by
a single action, but is a selection of two different locations by two actions.
Prelim. Resp. 59–62.
TSE is a guide for operating a trading terminal of the Tokyo Stock
Exchange. Ex. 1003, 1.
6
The trading terminal displays a GUI for depicting
market information on a Board/Quotation Screen (see id. at 107), and for
allowing a trader to enter an order (see id. at 137). A figure that appears on
page 137 of TSE is reproduced below.

6
We refer to the English translation of TSE (Ex. 1003) and to the pagination
inserted into Ex. 1003 and not the original pagination.
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Figure depicting the displaying of the new order entry window
The Figure depicts that double-clicking on a specific area of the
Board/Quotation Screen displays a new order entry window, which is
automatically set with the information from the double-clicked area. Id. at
133, 139. The new order entry window includes a send button for sending
the order to a central system. Id. at 137, 143.
Given the above and taking into account Petitioner’s argument, we are
persuaded by Patent Owner that TSE does not meet the above-quoted
limitation of claim 1 as well as the corresponding limitation of claim 27.
The limitation requires that both the setting of the parameters and the
sending of the order occur in response to a selection of a particular location
of the order entry region by a single action of a user input device. Even
giving “single action” the interpretation discussed above, TSE’s system does
not meet this limitation. Although TSE describes setting the parameters in
response to double-clicking an area on the Board/Quotation Screen (i.e., the
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claimed particular location of the order entry region) (id. at 133, 139), TSE
does not describe that the order is sent in response to the selection of the area
on the Board/Quotation Screen. In TSE, the order is sent if or when the send
button on the new order entry window is selected. Id. at 137, 143.
Accordingly, we determine that Petitioner fails to establish that it is
more likely than not that claims 1 and 27, and claims 2, 3, 5–9, 11–15, 20–
23, 26, and 28–40, dependent thereon, are anticipated by TSE.
ii. Obviousness of Claims 4 and 10 over TSE and Obviousness of Claims
16–19, 24, and 25 over TSE and Gutterman
Claims 4, 10, 16–19, 24, and 25 directly or indirectly depend from
claim 1, and, as discussed above, we determine that TSE does not meet the
single action limitation of claim 1. Petitioner does not rely upon Gutterman
or any other reasoning or evidence to cure this deficiency of TSE.
Accordingly, for the same reasons as discussed above, we determine that
Petitioner fails to demonstrate that claims 4 and 10 would have been obvious
over TSE and fails to demonstrate that claims 16–19, 24, and 25 would have
been obvious over TSE and Gutterman.
iii. Obviousness of Claims 1–25 and 27–40 over Gutterman and Silverman
Petitioner argues that claims 1–25 and 27–40 are unpatentable under
35 U.S.C. § 103 as obvious over Gutterman and Silverman. Pet. 43–78. At
issue again, is the limitation of independent claims 1 and 27 that:
in response to a selection of a particular location of the order
entry region by a single action of a user input device, setting a
plurality of parameters for a trade order relating to the
commodity and sending the trade order to the electronic
exchange.
Ex. 1001, col. 12, l. 66–col. 13, l. 3. Petitioner relies upon Gutterman’s
disclosure of a trader selecting an order icon, which causes the system to
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populate an electronic message with the trade information, and, then,
selecting a “SEND FILL” button to transmit the message to meet the
limitation of selecting a particular area through a single action to set
parameters and to send the trade order. Pet. 47, 62–64 (citing Ex. 1007, col.
13, ll. 29–43; Roman Decl. ¶ 133).
Patent Owner argues that Gutterman’s relied-upon disclosures do not
meet the limitation because selecting an order icon in the deck pane and then
selecting a send button in the fill pane is not a selection of a particular
location of the order entry region by a single action, but is instead a selection
of two different locations by two different actions. Prelim. Resp. 62–64.
Gutterman discloses a broker workstation for managing orders in a
market. Ex. 1007, Abstract. Gutterman’s Figure 2d is reproduced below.

Fig. 2d depicts a screen of the broker workstation
Figure 2d depicts a broker’s workstation screen that includes deck pane 135,
which displays a buy side and a sell side divided by column 136. Id. at col.
12, ll. 1–6. Deck pane 135 also includes touch-sensitive order icons 139,
such as buy order icon 139-1 and sell order icon 139-9. Id. at col. 12, ll. 25–
44. Figure 2d also depicts fill pane 140. Gutterman states:
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[T]he broker selects the order by touching the corresponding
order icon in the deck pane 135. When the order is selected, the
icon is highlighted, and the order’s quantity, price and time
stamp appear in so-designated areas of the fill pane 140 which
“pops up” into the lower left portion of the screen 12 by the
operation of Fill Pane object 454. The broker enters the
identification code of his counterpart broker and firm by means
of the keyboard 14 or other suitable data entry device and
presses the SEND FILL “button” on the screen 12. The
workstation 10 then communicates the filled order information
to the customer and clearing house via the electronic order entry
system.
Id. at col. 13, ll. 27–40.
Given the above, and taking into account Petitioner’s argument, we
are persuaded by Patent Owner that Gutterman does not meet the “single
action” limitation. Gutterman does not send the order in response to the
selection of the order icon in deck pane 135 (i.e., the claimed particular
location of the order entry region). Instead, the order is sent to the fill
pane 140 and then when the “SEND FILL” button is selected, the order is
transmitted. Id. We note that Petitioner does not rely upon Silverman to
meet this limitation. See Pet. 46 (explaining that Silverman does not provide
any details on order entry, other than through conventional data entry tools).
Accordingly, we determine that Petitioner fails to establish that
it is more likely than not that claims 1 and 27, and claims 2–25 and
28–40, dependent thereon, would have been obvious over Gutterman
and Silverman.
iv. Obviousness of Claim 26 over Gutterman, Silverman, and Paal
Claim 26 depends from claim 1, and, as discussed above, we
determine that Petitioner’s combination of Gutterman and Silverman does
not meet the single action limitation of claim 1. Petitioner does not rely
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Patent 6,766,304 B2

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upon Paal or any other evidence to cure this deficiency of the combination of
Gutterman and Silverman. Accordingly, for the same reasons as discussed
above, we determine that Petitioner fails to demonstrate that claim 26 would
have been obvious over the combination of Gutterman, Silverman, and Paal.

III. CONCLUSION
We determine that Petitioner has not demonstrated that it is more
likely than not that any of the claims challenged in the Petition is
unpatentable.

IV. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that the Petition is denied.

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Patent 6,766,304 B2

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PETITIONER:

Lori Gordon
Jonathan Strang
Robert E. Sokohl
STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
lgordon-ptab@skgf.com
jstrang-ptab@skgf.com
rsokohl-ptab@skgf.com

PATENT OWNER:

Erika H. Arner
Joshua L. Goldberg
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
erika.arner@finnegan.com
Joshua.goldberg@finnegan.com

Steven F. Borsand
TRADING TECHNOLOGIES INTERNATIONAL, INC.
Steve.Borsand@tradingtechnologies.com