CAFC tackles CBM issues in Trading Technologies

The CAFC noted:


Pursuant to § 18(a)(1)(E) of the AIA, the Board may
only institute CBM review for a patent that is a CBM patent.
A CBM patent is “a patent that 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, except that
the term does not include patents for technological inventions.”
Id. § 18(d)(1) (emphasis added). Pursuant to its authority under § 18(d)(2), the Patent and Trademark Office
(“PTO”) promulgated 37 C.F.R. § 42.301(b), which requires
the Board to consider the following on a case-by-case basis
in determining whether a patent is for a technological invention:
“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.” We review the Board’s reasoning “under the arbitrary and capricious standard and
its factual determinations under the substantial evidence
standard.” SightSound Techs., LLC v. Apple Inc., 809 F.3d
1307, 1315 (Fed. Cir. 2015).

The only issue of CBM eligibility that TT contests is
whether its patents are for technological inventions.



The issue



We agree with the Board that these claims are directed
to a covered business method and thus CBM review was
appropriate. 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 claims
require receiving bid and offer information from an electronic exchange, displaying such information (“bid indicators” and “offer indicators”), and sending an order to the
electronic exchange based on a user input. The two claims
differ mainly in the way the user places the order (clicking
and dragging an “order icon” to a location on the price axis
versus selecting a point on the price axis). In each case, the
Board applied the considerations of § 42.301(b) and found
that the claims do not recite a technological feature that is
novel and unobvious over the prior art and do not solve a
technical problem with a technical solution for essentially
the same reasons.

TT argues the Board erred in applying the first consideration of § 42.301(b)
based on our decision in Versata Development Group Inc. v. SAP America, Inc., 793 F.3d 1306
(Fed. Cir. 2015). According to TT, Versata set aside the
novelty and nonobviousness language of the regulation,
leaving the definition of a technological invention as one
having a technological feature that solves a technical problem using a technical solution.
E.g., Appellant Br. 24–25,
No. 18-1063 (citing 793 F.3d at 1326). We need not decide
this issue because we agree with the Board
that the considered claims do not solve a technical problem using a technical solution.
See Apple, Inc. v. Ameranth, Inc., 842 F.3d
1229, 1240 (Fed. Cir. 2016) (“We need not address this argument regarding whether the first prong of 37 C.F.R.
§ 42.301(b) was met, as we affirm the Board’s determination on the second prong of the regulation . . . .”).