Takeaway: The Board considers applying a combination of references to an independent claim in a request for rehearing that had been applied to a claim depending on that independent claim in the Petition as a new argument.

In its Decision, the Board denied both Petitioner’s and Patent Owner’s Requests for Rehearing of the Board’s decision to institute trial in a covered business method patent review of all challenged claims of the ’132 patent under 35 U.S.C. § 101, but denying institution of any claims under 35 U.S.C. §§ 102, 103, and 112. Petitioner requested that the Board reconsider and institute based on grounds 3-5 of the petition, which were obviousness grounds based on Silverman, Gutterman, and Togher. Patent Owner requested that the Board reconsider and deny institution of any CBM review of this patent based on the ’132 patent not qualifying for covered business method patent review.

The Board determined that Petitioner did not show that the Board abused its discretion in denying institution of the obviousness grounds. Petitioner contended that the Board’s decision was based upon a misapprehension that the Petition did not rely on Togher to disclose the single action limitation in claim 1. However, the Board still agreed with its original determination that the obviousness ground regarding claim 1 in the Petition was based solely on Silverman and Gutterman. Therefore, the Board determined that Petitioner’s reliance on Togher in its request for rehearing was a new argument, and thus the Board could not have misapprehended or overlooked the argument.

The Board also determined that Patent Owner did not show that the Board abused its discretion in instituting the CBM review. Patent Owner contended that the Board overlooked Patent Owner’s argument that the legislative history for the AIA included “statements by Congress confirming that a patent claiming a novel GUI (like the ’132 patent) would not be eligible for Section 18 review.” However, the Board still agreed with its determination in its decision on institution that claim 1 is directed to a method of displaying market information, setting trade order parameters, and sending a trade order to an electronic exchange, and that the only hardware recited in claim 1 is known technology, namely a display and an input device. Thus, the Board had determined that claim 1 did not recite a novel GUI tool, and thus the claim was not directed to subject matter discussed in the legislative history.

Patent Owner also argued that the Board misapplied the technological invention test. However, the Board reiterates that reciting the use of known prior art technology to accomplish a process or method, even if the process or method is novel and non-obvious, does not render a patent a “technological invention.”

Patent Owner also argued that the Decision failed to address either of the two technological problems solved by the claim invention, namely (1) the problem of speed and accuracy with prior graphical tools and (2) the inadequate visualization of prior graphical tools. However, because Patent Owner filed to demonstrate sufficiently how the language of claim 1 recites such limitations, the Board was not persuaded. Accordingly, the Board did not believe that it had misapprehended or overlooked any of Patent Owner’s arguments.

TD Ameritrade Holding Corp., TD Ameritrade, Inc., and TD Ameritrade Online Holdings Corp. v. Trading Technologies International, Inc., CBM2014-00135
Paper 29: Decision Denying Request for Rehearing
Patent: 6,772,132 B1
Dated: February 2, 2015
Before: Sally C. Medley, Meredith C. Petravick, and Philip J. Hoffmann
Written by: Hoffmann