Docket No. 2017-2257, -2621, 2018-1063
CBM Nos. 2015-00179, 2016-00051, 2016-00032
MOORE, MAYER, LINN
April 18, 2019
Brief summary: Board finding that TT’s patents are CBM eligible (e.g., claims are not “for technological inventions”) and patent ineligible (§ 101) affirmed.
Summary: TT appealed Board findings that each of US 7,533,056; 7,212,999; and 7,904,374 are eligible for covered business method (CBM) review and ineligible under § 101, and that the ‘056 claims are invalid for obviousness. The FC panel explained that under § 18(a)(1)(E) of the AIA a patent eligible for CBM review do not include those “for technological inventions” and that the Board must “consider…‘whether the claimed subject matter as a whole recites a technological feature that is novel and unobvious over the prior art’ and whether it ‘solves a technical problem using a technical solution’” (SightSound, FC 2015 (reviewed “under the arbitrary and capricious” and “substantial evidence” standards)). The FC panel reviewed claims 1 of the ‘999 and ‘056 patents (relied on by the Board) and concluded that CBM was appropriate (e.g., “These claims are directed to a financial trading method used by a computer. We see no technological invention in this software method for trading…the patents relate to the practice of a financial product, not a technological invention…This invention made the trader faster and more efficient, not the computer.”) The FC panel did not consider TT’s argument that Versata (FC 2015) “set aside the novelty and nonobviousness language of the regulation” since the FC panel agreed “with the Board that the considered claims do not solve a technical problem using a technical solution” (Apple, FC 2016). The FC panel also found “no meaningful difference between the ‘374 claims and the ‘999 and ‘056 claims”, and agreed “with the Board that claim 1 does not solve the alleged problem of missing an intended price” (“Even if the specification recites an embodiment that solves this problem, as TT alleges, claim 1 does not.”) The FC panel reviewed the Board’s patent eligibility (§ 101) “conclusions de novo” under the Alice framework (Alice, US 2014) and its factual findings for substantial evidence”. Regarding the ‘099 patent, the FC panel explained that “[t]he fact that this is a ‘computer-based method’ does not render the claims non-abstract” under Alice’s step one (e.g., claims “recite a purportedly new arrangement of generic information that assists traders in processing information more quickly”; Interval Licensing, FC 2018; unlike Core Wireless, FC 2018), and do not include an inventive concept under Alice’s step two (e.g., “selecting and moving an icon is a well-understood, routine, conventional activity”; “elements of each claim” considered “individually” or “as an ordered combination” to “look[] more precisely at what the claim elements add” (SAP Am., FC 2018)). The FC panel also agreed with the Board that the ‘056 claims were not “meaningful[ly] differen[t]” from the ‘099 claims (e.g., “simply displaying all the bids and offers in the aggregate, including the user’s bids and offers, is not enough”). The FC panel also agreed with the Board that ‘374 claim 1 “is directed to the abstract idea of receiving a user input to send a trade order” and “does not solve any purported technical problem”. It also wrote that “[e]ligibility depends on what is claimed, not all that is disclosed in the specification” (Data Engine, FC 2018). The FC panel also declined to address TT’s constitutional challenges as TT only provided “conclusory assertion with no analysis” which is “insufficient to preserve the issue for appeal” (Great Am. Ins. Co., FC 2013; Smith Kline, FC 2006). The FC panel therefore affirmed the Board’s ineligibility decisions, and did not address the ‘056 obviousness decision.