CAFC addresses 101 issues in INTERNATIONAL SECURITIES EXCHANGE case
The contemperanous opinion mentioned below is a Rule 36 judgment, which
judgment mentions ISE as the appellee.
In the caption for the case [ 2015-1743, 2015-1744 ], ISE is the appellant.
ISE, LLC (“ISE”) challenges the determination of the Patent
Trial and Appeal Board (the “Board”) in inter partes
review proceedings involving U.S. Patent Nos. 7,356,498
(“the ’498 patent”) (IPR2014-00097) and 7,980,457 (“the
’457 patent”) (IPR2014-00098). The Board found that ISE
failed to show by a preponderance of the evidence that the
challenged claims of the ’498 and ’457 patents are unpatentable
as either anticipated, obvious, or both, under
35 U.S.C. § 102(e) and 35 U.S.C. § 103(a). In light of our
decision in Chicago Bd. Options Exch., Inc. v. Int’l Secs.
Exch., Case Nos. 2015-1728, -1729, and -1730, issued
contemporaneously herewith, affirming the Board’s
conclusion that both patents address unpatentable subject
matter under 35 U.S.C. § 101, we find this companion
case moot. We dismiss the appeal and vacate the Board’s
Thus, ISE lost at the Board, failing to show that
the claims were invalid under 102 or 103.
HOWEVER, the claims were invalid under 101.
Of course, if invalid for any reason, then invalid and
CHICAGO BOARD OPTIONS EXCHANGE loses.