Chicago Mercantile Exchange, Inc.v.5th Market Inc.

Patent Trial and Appeal Board

Dec 17, 2014

09359686 (P.T.A.B. Dec. 17, 2014)

Trials@uspto.gov Paper 33
571-272-7822 Entered: December 17, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

CHICAGO MERCANTILE EXCHANGE, INC.,
Petitioner,

v.

5th MARKET, INC.,
Patent Owner.
____________

Case CBM2013-00027
Patent 6,418,419 B1
____________

Before JAMESON LEE, JONI Y. CHANG, and MICHAEL R. ZECHER,
Administrative Patent Judges.

ZECHER, Administrative Patent Judge.

FINAL WRITTEN DECISION
35 U.S.C. § 328(a) and 37 C.F.R. § 42.73

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I. BACKGROUND
Petitioner, Chicago Mercantile Exchange, Inc. (“CME”), filed a
Petition requesting a review under the transitional program for covered
business method patents of claims 1–23 and 41–49 of U.S. Patent No.
6,418,419 B1 (“the ’419 patent”). Paper 3 (“Pet.”). Patent Owner, 5th
Market, Inc. (“5th Market”), timely filed a Preliminary Response. Paper 6
(“Prelim. Resp.”). Taking into account the arguments presented in 5th
Market’s Preliminary Response, the Board determined that the information
presented in CME’s Petition demonstrated that it was more likely than not
that claims 1–23 are indefinite under 35 U.S.C. § 112 ¶ 2, and that claims 1–
23 and 41–49 are unpatentable under 35 U.S.C. § 103(a). Pursuant to
35 U.S.C. § 324,1 the Board instituted this proceeding on December 18,
2013, as to these claims of the ’419 patent. Paper 9 (“Dec.”).
During the course of this proceeding, 5th Market timely filed a Patent
Owner Response (Paper 20, “PO Resp.”), along with a Motion to Amend
(Paper 21, “Mot. to Amend”). CME timely filed a Reply to the Patent
Owner Response (Paper 24, “Pet. Reply”), along with an Opposition to the
Motion to Amend (Paper 23, “Opp. to Amend”). 5th Market timely filed a
Reply to the Opposition to the Motion to Amend. Paper 26 (“Reply to

1 See section 18(a) of the Leahy-Smith America Invents Act, Pub. L. No.
112-29, 125 Stat. 284, 329 (2011) (“AIA”). Section 18(a)(1) of the AIA
provides that the transitional program for covered business method patents
will be regarded as a post-grant review under chapter 32 of title 35 United
States Code and will employ the standards and procedures of a post-grant
review, subject to certain exceptions.
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Amend”). An oral hearing was held on August 7, 2014, and a transcript is of
record. Paper 32.
We have jurisdiction under 35 U.S.C. § 6(c). This decision is a Final
Written Decision under 35 U.S.C. § 328(a) as to the patentability of claims
1–23 and 41–49 of the ’419 patent. For the reasons discussed below, CME
has demonstrated by a preponderance of the evidence that claims 1–23 are
indefinite under 35 U.S.C. § 112 ¶ 2, and that claims 1–4, 6–23, and 41–49
are unpatentable under 35 U.S.C. § 103(a). CME has not demonstrated by a
preponderance of the evidence that claim 5 is unpatentable under 35 U.S.C.
§ 103(a). We also deny 5th Market’s Motion to Amend.
A. Related Matter
After we instituted a review of the ’419 patent, CME file a Petition
challenging the patentability of claims 1, 2, 4, 6–8, and 10 of U.S. Patent No.
7,024,387 B1 (“the ’387 patent). Chicago Mercantile Exch., Inc. v. 5th Mkt.,
Inc., Case CBM2014-00114, Paper 2 (PTAB April 3, 2014). The ’387
patent is a child of the ’419 patent. CBM2014-00114, Ex. 1001, at [63]. We
instituted a covered business method patent review only as to claims 4, 6–8,
and 10 of the ’387 patent under 35 U.S.C. § 103(a) as being obvious over
two of the prior art references that serve as the basis of the grounds of
unpatentability instituted in this proceeding. CBM2014-00114, Paper 9.
CME also identifies the following reexaminations involving the ’419 patent
and the ’387 patent: (1) Reexamination Control Nos. 90/011,603 and
90/011,618, both of which involve the ’419 patent; and (2) Reexamination
Control No. 95/002,032, which involves the ’387 patent. Pet. 6–7.
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B. CME’s Standing
Section 18 of the AIA governs the transitional program for covered
business method patent reviews. Section 18(a)(1)(B) of the AIA limits such
reviews to persons, or their privies, that have been sued or charged with
infringement of a covered business method patent. CME asserts that it has
been sued for infringement of the ’419 patent and the ’387 patent in Fifth
Market, Inc. v. CME Group Inc., No. 08-0520 GMS (D. Del.). Pet. 6.
C. The ’419 Patent
The ’419 patent generally relates to the conditional trading of
securities, such as convertible bond swaps, risk arbitrage, and combinations
thereof, in both listed and over-the-counter markets via one or more
electronic networks. Ex. 1001, 1:7–13. According to the ’419 patent, there
is no computer network that links participants involved in convertible
securities in a transaction-oriented format. Id. at 1:32–33. Virtually every
transaction is through verbal private negotiations, i.e., almost every bid,
offer, or trade is made verbally and is transmitted only to the participants
involved. Id. at 1:33–36. The ’419 patent purportedly solves this problem
by creating an anonymous auction market, instead of a negotiated market,
that displays prices to all participants and saves the trade information for
later use. Id. at 1:36–41.
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Figure 1 of the ’419 patent, reproduced below, illustrates a conditional
order transaction system. Ex. 1001, 4:39–41.

As shown in Figure 1 of the ’419 patent, there are three scenarios
which use a conditional order routing exchange (“CORE”). Id. at 5:16–18.
The first scenario includes CORE client program T1, which formats and
transmits a client/subscriber/trade request with a directed response; the
second scenario includes CORE client program T2, which formats and
transmits a client request whose response is disseminated to various
interested parties; and the third scenario involves CORE client program T3,
which receives data that originates outside the system and, subsequently,
redistributes it to all interested parties. Id. at 5:18–61.
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Figure 3 of the ’419 patent, reproduced below, illustrates the
processing of a match order using the conditional order transaction system of
Figure 1. Ex. 1001, 4:45–46, 6:41–42.

As shown in Figure 3 of the ’419 patent, a first client requests to be
informed about events relating to a given security; a second client places a
bid for that security; and a third client places an ask for that same security.
Id. at 6:42–46. The processing steps illustrated in Figure 3 of the ’419
patent are as follows: (1) Monitor Security; (2) Return Latest Data; (3) Input
Bid Order; (4) Distribute Bid Order; (5) Distribute Ticker Data; (6) Input
Ask Order; (7) Distribute Ask Order (also Distribute Ticker Data);
(8) External Prices Converge Making Orders Cross; (9) Match Crossed
Orders; and (10) Distribute Trade Details. Id. at 6:47–62.
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D. Illustrative Claims
Claims 1, 41, and 43 are independent claims. Claims 2–23, 44, and 45
directly or indirectly depend from independent claim 1; claims 42, 46, and
47 directly depend from independent claim 41; and claims 48 and 49 directly
depend from independent claim 43. Independent claims 1 and 41, as
amended following ex parte reexamination of the ’419 patent, are illustrative
of the challenged claims and are reproduced below:
1. A conditional order transaction network that
matches or compares buy and sell orders for a plurality of
security instruments based upon conditions set forth within the
order, including price represented as an algorithm with
constraints thereon, the transaction network comprising:
a variable number of trader terminals for entering an
order for a security instrument in a form of an algorithm with
constraints thereon that represent a willingness to transact,
where price of one security is a dependent variable of the
algorithm within the constraints and dynamically changing
price of another security is an independent variable thereof, the
price as the dependent variable being continuously changeable
responsive to changes in price of the independent variable, the
algorithm representing a buy or sell order; and
at least one controller computer coupled to each of the
variable number of trader terminals over a communications
network and receiving as inputs,
a) each algorithm with its corresponding constraints, and
b) at least one external price feed depicting prices of
various securities and contracts from external multiple
exchanges which may be used as an independent variable of the
algorithm or an input to a constraint variable, the controller
computer comprising,
means for matching, in accordance with the constraints
and the conditions, algorithmic buy orders with algorithmic sell
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orders, one of the conditions being a requirement that two or
more securities are tradable contemporaneously as a contingent
trade of those respective securities, and
means for matching or comparing, in accordance with the
constraints and the conditions, algorithmic buy/sell orders with
algorithmic or non-algorithmic sell/buy orders through use of
the external multiple data sources.

Ex. 2001, 1:26–61 (brackets and italics omitted).2
41. A conditional order transaction network that
matches buy and sell orders for a plurality of items based upon
conditions set forth within an order for an item, including price
represented as an algorithm with constraints thereon, the
conditional order transaction network comprising:
a variable number of trader terminals for entering the
order for a traded item being an option in a form of an
algorithm with constraints thereon that represent a willingness
to transact, where price of the traded item is a dependent
variable of the algorithm within the constraints and dynamically
changing price of another item is an independent variable
thereof, the price of the traded item as the dependent variable
being continuously changeable responsive to changes in price
of the another item as the independent variable, the algorithm
representing a buy or sell order for said traded item;
controller computer means coupled to each of the
variable number of trader terminals over a communications
network and receiving as inputs each algorithm with its
corresponding constraints, and at least one external price feed
depicting at least one price of at least one item from at least one
external network which is used as either the independent

2 Exhibit 2001 was entered into the record by 5th Market and refers to
Ex Parte Reexamination Certificate No. US 6,418,419 C1 issued on
February 21, 2013.
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variable of the algorithm or an input to a constraint variable;
and
means for matching, in accordance with the constraints
and the conditions, through use of the at least one external price
feed from the at least one external network, at least one of
algorithmic or non-algorithmic buy orders with algorithmic sell
orders, and non-algorithmic buy orders with algorithmic sell
orders, one of the conditions being a requirement that two or
more securities are tradable contemporaneously as a contingent
trade of those respective securities responsive to changes in
price of said another item as the independent variable.

Id. at 3:1–37 (brackets and italics omitted).
E. Covered Business Method Patent
Upon considering the information presented by CME in its Petition, as
well as the arguments presented by 5th Market in its Preliminary Response,
we determined that the ’419 patent is a covered business method patent, as
defined in section 18(a)(1)(E) of the AIA and 37 C.F.R. § 42.301, because at
least one claim of the ’419 patent is directed to a covered business method.
Dec. 8–10. Consequently, we concluded that the ’419 patent is eligible for a
covered business method patent review. Id. at 10.
In its Patent Owner Response, 5th Market contends that a review was
improperly instituted as to claims 1–23 of the ’419 patent on the basis of
35 U.S.C. § 112 ¶ 2 because questions of patentability under § 112 ¶ 2 are
ineligible for review under the transitional program for covered business
method patents. PO Resp. 73. We are not persuaded by 5th Market’s
assertion that a petitioner in a covered business method patent review may
not raise questions of patentability under U.S.C. § 112 ¶ 2. As we explained
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previously, section 18(a)(1) of the AIA provides that the transitional
program for covered business method patents will be regarded as a post-
grant review under chapter 32 of title 35 of the United States Code and will
employ the standards and procedures of a post-grant review, subject to
certain exceptions. Section 321(b) of title 35 provides that “[a] petitioner . .
. may request to cancel as unpatentable 1 or more claims of a patent on any
ground that could be raised under paragraph (2) or (3) of section 282(b).”
Section 282(b)(3) of title 35 provides, in relevant part, that a petitioner may
challenge the “[unpatentability] of the patent or any claim in suit for failure
to comply with—(A) any requirement of section 112, except . . . the failure
to disclose the best mode.” Therefore, contrary to 5th Market’s assertion, a
petitioner in a covered business method patent review may raise questions of
patentability under U.S.C. § 112 ¶ 2.
1. Technological Invention
The definition of a “covered business method patent” in
section 18(d)(1) of the AIA does not include patents for “technological
inventions.” When determining 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).
In its Patent Owner Response, 5th Market contends that the ’419
patent, viewed as a whole, falls within the purview of the technological
invention exclusion set forth in 37 C.F.R. § 42.301(b). PO Resp. 73. 5th
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Market relies upon the legislative history of the AIA to support this
argument. Id. According to 5th Market, examples of subject matter that
should not be subject to the transitional program for covered business
method patents include “‘novel software tools and graphical user interfaces
that are used by the electronic trading industry workers to implement trading
or asset allocation strategies.’” Id. at 73–74 (quoting 175 CONG. REC.
S5433 (daily ed. Sept. 8, 2011) (statement of Sen. Durbin)) (emphasis
omitted). 5th Market, however, does not explain adequately how the ’419
patent, viewed as a whole, includes novel software tools and graphical user
interfaces. Notwithstanding 5th Market’s general allegation, we maintain
our initial determination that CME has demonstrated that the ’419 patent is
not for a technological invention and, therefore, is eligible for a covered
business method patent review. Dec. 9–10.
F. Prior Art Relied Upon
CME relies upon the following prior art references:
Lupien US 5,101,353 Mar. 31, 1992 (Ex. 1010)
Memorandum from the Commodity Futures Trading Commission on
the New York Mercantile Exchange’s (“NYMEX”) Proposal to Implement
the NYMEX ACCESS Trading System (Dec. 7, 1992) (on file with the
CFTC) (Ex. 1009) (“CFTC”).
RICHARD S. WILSON & FRANK J. FABOZZI, CORPORATE BONDS
STRUCTURES & ANALYSIS (1996) (Ex. 1011) (“Wilson”).
Allan D. Grody et al., Global Electronic Markets A Preliminary
Report of Findings (Center for Digital Economy Research, Working Paper
No. STERN IS-95-18, 1994) (Ex. 1012) (“Grody”).
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DICTIONARY OF FINANCE & INVESTMENT TERMS (4th ed. 1995)
(Ex. 1013) (“Dictionary”).
Globex User Guide, REUTERS Ltd. (1996) (Ex. 1014) (“Globex User
Guide”).
G. Instituted Grounds of Unpatentability
We instituted this proceeding based on the asserted grounds of
unpatentability set forth in the table below.
References Basis Claims Challenged
§ 112 ¶ 2 1–23
CFTC and Lupien § 103(a) 1, 2, 4, 6–8, 11, 15, 16,
22, 23, and 41–49
CFTC, Lupien, and Wilson § 103(a) 3 and 5
CFTC, Lupien, and Grody § 103(a) 9, 10, 12, 14, and 18
CFTC, Lupien, and Dictionary § 103(a) 13 and 17
CFTC, Lupien, and Globex
User Guide
§ 103(a) 19–21

II. ANALYSIS
A. Claim Construction
In a covered business method patent review, claim terms are given
their broadest reasonable interpretation in light of the specification of the
patent in which they appear. 37 C.F.R. § 42.300(b). Under the broadest
reasonable interpretation standard, and absent any special definitions, claims
terms are given their ordinary and customary meaning as would be
understood by one of ordinary skill in the art in the context of the entire
disclosure. In re Translogic Tech. Inc., 504 F.3d 1249, 1257 (Fed. Cir.
2007).
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1. Claim Phrases Construed in the Decision to Institute
In its Petition, CME identified several claim phrases recited in the
’419 patent, including two means-plus-function limitations, and provided
claim constructions for those phrases. Pet. 8–15. Those claim phrases are
listed as follows: (1) “means for matching” (claims 1, 41, and 43);
(2) “means for matching or comparing” (claim 1); (3) “comparator for
comparing all incoming orders relative to outgoing orders” (claims 23 and
42); (4) “external price feed” (claims 1, 41, and 43); and (5) “controller
computer means” (claims 41 and 43). Pet. 8–15. In its Preliminary
Response, 5th Market proposed alternative claim constructions for all the
claim phrases identified by CME in its Petition, except “controller computer
means” (claims 41 and 43). Prelim. Resp. 13–19. In the Decision to
Institute, we construed each claim phrase identified in the Petition. Dec. 13–
23.
In its Patent Owner Response, 5th Market proposes alternative claim
constructions for the claim phrases “external price feed” (PO Resp. 9–10)
and “means for comparing” (id. at 76–78). 5th Market, however, does not
propose alternative claim constructions for the remaining claim phrases that
we construed in the Decision to Institute. In its Reply, CME does not
propose an alternative claim construction for any claim phrase that we
construed in the Decision to Institute. With the exception of “external price
feed” and “means for comparing,” which we will address below, we discern
no reason to address or alter our claim constructions for the remaining claim
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phrases in this Final Written Decision. For convenience, those claim
constructions are reproduced in the table below.
Claims Claim Phrase Claim Construction
1, 41, and 42 “means for matching” Claimed function: “matching”

Corresponding structure: “a
computer programmed to
perform the ten processing steps
illustrated in Figure 3 of the
’419 patent”
23 and 42 “a comparator for
comparing all incoming
orders relative to
outgoing orders”
“a device that ‘compare[s] all
incoming orders relative to
outgoing orders’”
41 and 43 “controller computer
means . . . receiving as
inputs”
“a computer that receives, as
input, data”

2. “external price feed” (claims 1, 41, and 43)
Independent claim 1 recites, in relevant part, “at least one external
price feed depicting prices of various securities and contracts from external
multiple exchanges which may be used as an independent variable of the
algorithm or an input to a constraint variable.” Ex. 2001, 1:46–50.
Independent claims 41 and 43 recite similar claim limitations. Id. at 3:22–
26, 4:17–20. In the Decision to Institute, we construed the claim phrase
“external price feed” as “price data received from outside of the conditional
order transaction network.” Dec. 20–22. To support our claim construction,
we relied upon two disclosures in the Specification of the ’419 patent. Id. at
21 (citing Ex. 1001, 2:64–3:2 (“orders are made . . . as a product of the data
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originating outside of the system, i.e., external data sources”), 5:56–60 (“[the
CORE trading engine] receive[s] data, from some external source”).
In its Patent Owner Response, 5th Market attempts to clarify what
“outside” the network means in the context of the ’419 patent. PO Resp. 9–
10. 5th Market asserts that “outside” the network means either a
marketplace trading, but not aggregating orders for, the same securities or
items as the originating CORE trading engine illustrated, e.g., in Figure 1 of
the ’419 patent, or a diverse marketplace, i.e., one trading securities or items
not traded or aggregated by the same originating CORE trading engine. Id.
at 10. To support this assertion, 5th Market relies upon the testimony of its
expert witness, Dr. Terry Rickard, as well as the district court’s claim
construction of the term “external.” Id. (citing Ex. 2008 ¶ 28; Ex. 1006, 3).
In its Reply, CME does not propose an alternative claim construction for the
claim phrase “external price feed,” nor does CME attempt to clarify what
“outside” the network means in the context of the ’419 patent.
We are not persuaded by 5th Market’s proposed claim construction of
the claim phrase “external price feed” because its construction of “outside”
the network is overly narrow. 5th Market does not direct us to a disclosure
in the Specification of the ’419 patent that suggests “outside” the network
should be limited to a marketplace trading, but not aggregating orders for,
the same securities or items as the originating CORE trading engine, or a
diverse marketplace that does not trade or aggregate the same securities or
items, as the originating CORE trading engine. If a feature is not necessary
to give meaning to what the inventor means by a claim term, it would be
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“extraneous,” and should not be read into the claim. Renishaw PLC v.
Marposs Societa’ per Azioni, 158 F.3d 1243, 1249 (Fed. Cir. 1998); E.I. du
Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1433
(Fed. Cir. 1988). We decline to adopt 5th Market’s construction of
“outside” the network as the broadest reasonable interpretation, as it would
import extraneous limitations into the claims, and it would be inconsistent
with the Specification of the ’419 patent. 5th Market’s attempt to limit
“outside” the network to the two types of marketplaces identified above is
not necessary to give meaning to the claim phrase “external price feed,” and
should not be read into the claims that recite this feature.
We maintain that the broadest reasonable interpretation of the claim
phrase “external price feed” is “price data received from outside of the
conditional order transaction network.” As we explained in the Decision to
Institute (Dec. 20–22), this claim construction is consistent with the ordinary
and customary meaning of “external,” as would be understood by one with
ordinary skill in the art, in light of the ’419 patent.
3. “means for comparing” (claim 1)
Independent claim 1 recites, in relevant part, “means for matching or
comparing, in accordance with the constraints and the conditions,
algorithmic buy/sell orders with algorithmic or non-algorithmic sell/buy
orders through use of the external multiple data sources.” Ex. 2001, 1:57–
61. As we explained in the Decision to Institute, because the claim phrase
“means for matching or comparing” includes alternative language, i.e., “or,”
it includes two alternative functions that should be addressed separately.
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Dec. 16. The parties do not dispute our construction of the claim phrase
“means for matching,” which is reproduced in the table above. The dispute
between the parties centers on the claim phrase “means for comparing.”
With respect to “means for comparing,” we note that the parties do
not dispute that it is a means-plus-function limitation. As we indicated in
the Decision to Institute, this claim phrase uses the term “means for,” the
term “means for” is modified by functional language—namely,
“comparing”—and the term “means for” is not modified by sufficient
structure recited in the claim to perform the recited function of “comparing.”
Dec. 16. Upon reviewing the portions of the Specification of the ’419 patent
cited by 5th Market in its Preliminary Response that purportedly identify the
corresponding structure that performs the recited function of “comparing”
(Ex. 1001, 13:44–14:45, 15:11–19, Figs. 3, 4), we determined that the
Specification fails to disclose sufficient structure. Dec. 17–18. As a result,
we construed “means for comparing” as simply a computer programmed to
compare data. Id. at 18.
In its Patent Owner Response, 5th Market directs us to another
disclosure in the ’419 patent that purportedly identifies the corresponding
structure for performing the recited function of “comparing.” PO Resp. 76–
77 (citing Ex. 1001, 17:20–18:20—i.e., “Table 1”). In particular, 5th Market
argues that the CORE trading engine disclosed, e.g., in Figure 1 of the ’419
patent, is tantamount to a general purpose computer. Id. 5th Market then
argues that Table 1 of the ’419 patent discloses conditions, such as price,
quantity, minimum quantity, cap, and a collar kill, which collectively define
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an algorithm that compares orders. Id. at 77. 5th Market also asserts that
the description of the CORE trading engine in the ’419 patent, along with
the conditions specified in Table 1, amounts to a special purpose computer
for performing the recited function of “comparing.” Id. at 77–78 (citing Ex.
2008 ¶¶ 86, 87).
In its Reply, CME contends that the Specification of the ’419 patent
does not disclose an algorithm for performing the recited function of
“comparing.” Pet. Reply 15. CME argues that, at best, Table 1 of the ’419
patent discloses the types of orders that may be handled by the CORE
trading engine, but this, by itself, is not sufficient to satisfy the requirements
of 35 U.S.C. § 112 ¶ 6. Id.
When construing a means-plus-function limitation under 35 U.S.C.
§ 112 ¶ 6, 3 the corresponding structure of a means-plus-function limitation
must be more than simply a general-purpose computer or microprocessor to
avoid impermissible functional claiming, unless certain narrow exceptions
concerning generic computer functions apply. Aristocrat Techs. Austl. Pty
Ltd. v. Int’l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008); see In re
Katz Interactive Call Proc. Patent Litig., 639 F.3d 1303, 1316 (Fed. Cir.
2011). That is, the specification must disclose “enough of an algorithm to
provide the necessary structure under § 112, ¶ 6” or a disclosure that can be

3 Section 4(c) of the AIA re-designated 35 U.S.C. § 112 ¶ 6 as 35 U.S.C.
§ 112(f). Nonetheless, because the ’419 patent has a filing date before
September 16, 2012 (the effective date of the AIA), we refer to the pre-AIA
version of 35 U.S.C. § 112.
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expressed in any understandable terms, e.g., a mathematical formula, in
prose, or as a flowchart. Finisar Corp. v. The DirectTV Grp., Inc., 523 F.3d
1323, 1340 (Fed. Cir. 2008). Simply reciting a claimed function in the
specification, and saying nothing about how the computer or processor
ensures that such a function is performed, is not a sufficient disclosure for an
algorithm which, by definition, must contain a sequence of steps.
Blackboard, Inc. v. Desire2Learn, Inc., 574 F.3d 1371, 1384 (Fed. Cir.
2009).
According to the Specification of the ’419 patent, Table 1 includes
conditions that are available for input by subscribers, viewable by other
subscribers, and executed by the system’s trading engine, e.g., the CORE
trading engine illustrated in Figure 1. Ex. 1001, 17:20–23. Although the
CORE trading engine is tantamount to a general purpose computer, there is
no explicit disclosure that explains how the conditions included in Table 1
are used to compare orders. For instance, Table 1 includes, amongst other
conditions, price, quantity, minimum quantity, cap, and a collar kill that may
be used to compare orders. Id. at 17:25–18:20. Table 1, however, does not
disclose a well-defined or otherwise recognizable sequence of steps that uses
these conditions to compare orders. See Blackboard, 574 F.3d at 1384.
Absent such a disclosure, we are not persuaded that the Specification of the
’419 patent discloses a specific algorithm that transforms an otherwise
general purpose computer into a special purpose computer programmed to
perform the recited function of “comparing.” See Finisar, 523 F.3d at 1340.
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In summary, because Federal Circuit precedent dictates that the
corresponding structure for performing a specialized function, as here,
cannot just be a general purpose computer, the Specification of the ’419
patent fails to disclose sufficient structure for performing the recited
function of “comparing.”
B. 35 U.S.C. § 112 ¶ 2 Ground of Unpatentability
1. “means for comparing” (claims 1–23)
CME contends that claims 1–23, each of which recites the claim
phrase “means for comparing,” are indefinite under 35 U.S.C. § 112 ¶ 2.
Pet. 15–18. CME contends that the Specification of the ’419 patent fails to
disclose an algorithm for performing the recited function of “comparing”
and, therefore, claims 1–23 are indefinite under § 112 ¶ 2. Id. (citing Ex.
1005 ¶ 92). In its Preliminary Response, 5th Market first contends that the
Specification of the ’419 patent provides several disclosures, including
diagrams, that purportedly identify the corresponding structure for
performing the recited function of “comparing.” Prelim. Resp. 27–28 (citing
Ex. 1001, 13:44–14:45, 15:11–19, Fig. 4). Upon considering CME’s
analysis and supporting evidence in the Petition, and taking into account 5th
Market’s arguments presented in its Preliminary Response, we determined
that it was more likely than not that claims 1–23 are indefinite under § 112
¶ 2. Dec. 24–27.
In its Patent Owner Response, 5th Market pivots and directs us to
different disclosures in the Specification of the ’419 patent, particularly the
CORE trading engine illustrated in Figure 1 and the conditions specified in
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Table 1, that purportedly identify the corresponding structure for performing
the recited function of “comparing.” PO Resp. 76–77 (citing Ex. 1001,
17:20–18:20; Ex. 2008 ¶ 86). 5th Market argues that these disclosures in the
Specification collectively amount to a structure in the form of an algorithm
that transforms an otherwise general purpose computer into a special-
purpose computer programmed to perform the recited function of
“comparing.” Id. at 77–78 (citing Ex. 2008 ¶ 87). In its Reply, CME
contends that the ’419 patent does not disclose an algorithm for comparing
orders, nor does it explain how a computer may be programmed to compare
algorithmic orders with algorithmic or non-algorithmic orders. Pet. Reply
15.
As we explained in the claim construction section above, upon
reviewing the disclosures in the Specification of the ’419 patent relied upon
by 5th Market in its Patent Owner Response, the Specification of the ’419
patent fails to disclose sufficient structure for performing the recited
function of “comparing.” In other words, the conditions included in Table 1
of the ’419 patent, by themselves, do not set forth a well-defined or
otherwise recognizable sequence of steps for comparing orders and,
therefore, do not amount to a specific algorithm that transforms an otherwise
general purpose computer into a special purpose computer programmed to
perform the recited function of “comparing.” See Blackboard, 574 F.3d at
1384; Finisar, 523 F.3d at 1340. Consequently, we conclude that CME has
demonstrated by a preponderance of evidence that claims 1–23, each of
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which recites the claim phrase “means for comparing,” are indefinite under
§ 112 ¶ 2.
C. 35 U.S.C. § 103(a) Grounds of Unpatentability Based, in Whole or in
Part, on the Combination of CFTC and Lupien

In its Petition, CME contends that: (1) claims 1, 2, 4, 6–8, 11, 15, 16,
22, 23, and 41–49 are unpatentable under 35 U.S.C. § 103(a) over the
combination of CFTC and Lupien; (2) claims 3 and 5 are unpatentable under
35 U.S.C. § 103(a) over the combination of CFTC, Lupien, and Wilson;
(3) claims 9, 10, 12, 14, and 18 are unpatentable under 35 U.S.C. § 103(a)
over the combination of CFTC, Lupien, and Grody; (4) claims 13 and 17 are
unpatentable under 35 U.S.C. § 103(a) over the combination of CFTC,
Lupien, and Dictionary; and (5) claims 19–21 are unpatentable under
35 U.S.C. § 103(a) over the combination of CFTC, Lupien, and Globex User
Guide. Pet. 54–77. In support of these asserted grounds of unpatentability,
CME relies upon claim charts to explain how the proffered combinations
teach the claimed subject matter recited in each of these challenged claims,
as well as the Declaration of Dr. Craig Pirrong (Ex. 1005 ¶¶ 119–138) to
support its positions. Id.
In its Patent Owner Response, 5th Market presents the following
arguments: (1) the combination of CFTC and Lupien does not teach using
an external price feed to match orders in the manner required by independent
claims 1, 41, and 43; (2) CME fails to provide an articulated reason with a
rationale underpinning to combine the teachings of CFTC and Lupien;
(3) modifying CFTC’s automated order matching system—the NYMEX
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ACCESS system—with Lupien’s external price feed would change CFTC’s
principle of operation or otherwise render CFTC inoperable for its intended
purpose; (4) the combination of CFTC, Lupien, and Wilson does not teach
yield spreads as required by dependent claim 5; (5) the combination of
CFTC and Lupien does not teach options as required by dependent claim 15;
and (6) the combination of CFTC and Lupien does not teach using at least
one price from an external price feed as an independent variable of an
algorithm, as required by dependent claims 44, 46, and 48, and an input to
the constraint variable, as required by dependent claims 45, 47, and 49.
PO Resp. 27–45, 48–71.
We begin our analysis with the principles of law that generally apply
to a ground of unpatentability based on obviousness, followed by our
determination regarding the knowledge level of a person with ordinary skill
in the art, proceeded by brief discussions of CFTC and Lupien, and then we
address each of 5th Market’s arguments in turn.
1. Principles of Law
A claim is unpatentable under § 103(a) if the differences between the
claimed subject matter 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; (3) the level of skill in
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the art; and (4) where in evidence, so-called secondary considerations.
Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). We also recognize
that prior art references must be “considered together with the knowledge of
one of ordinary skill in the pertinent art.” In re Paulsen, 30 F.3d 1475, 1480
(Fed. Cir. 1994) (citing In re Samour, 571 F.2d 559, 562 (CCPA 1978)).
We analyze the grounds of unpatentability based, in whole or in part, on the
combination of CFTC and Lupien with the principles identified above in
mind.
2. Level of Skill in the Art
In determining the level of skill in the art, various factors may be
considered, including “type of problems encountered in the art; prior art
solutions to those problems; rapidity with which innovations are made;
sophistication of the technology; and educational level of active workers in
the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citing
Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962
(Fed. Cir. 1986)). There is evidence in the record before us that reflects the
knowledge level of a person with ordinary skill in the art. CME’s expert
witness, Dr. Pirrong, attests that a person with ordinary skill in the art would
be an individual who possesses the following: (1) a bachelor’s degree in
computer science, or another quantitative field such as mathematics,
statistics, economics, or finance; (2) two to five years of work experience in
any one of the aforementioned areas; and (3) an understanding of the
operation of markets for financial instruments, including computerized and
electronic markets. Ex. 1005 ¶ 44.
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5th Market’s expert witness, Dr. Rickard, offers testimony as to the
knowledge level of a person with ordinary skill in the art that is essentially
the same as Dr. Pirrong’s assessment. Dr. Rickard attests that a person with
ordinary skill in the art would be an individual who possesses any one of the
following: (1) at least two years of work experience with trading software
on one or more securities exchanges or private securities markets, and the
ability to describe algorithmic trading to programmers with at least two
years of programming experience in a securities exchange or private
securities market; or (2) a computer programmer with at least two years of
programming experience in the area of trading on a securities exchange or
private securities marketplace, as well as a general knowledge of the details
of algorithmic trading and the characteristics of data from other
marketplaces external to his/her work environment. Ex. 2008 ¶ 8.
In addition, the prior art of record in this proceeding also is indicative
of the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d
1350, 1355 (Fed. Cir. 2001); GPAC, 57 F.3d at 1579; In re Oelrich, 579
F.2d 86, 91 (CCPA 1978).
3. CFTC
CFTC generally relates to New York Mercantile Exchange
(“NYMEX”) proposed rules and the rule amendments necessary to
implement NYMEX American Computerized Commodity Exchange System
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and Services (“NYMEX ACCESS”). Ex. 1009, 3.4 NYMEX ACCESS is an
automated order matching system that may be used by NYMEX members
and customers trading through NYMEX members to trade futures and
options contracts after regular trading hours. Id. In addition to the trade
execution function, NYMEX ACCESS provides trade reporting and
quotation information for NYMEX ACCESS contracts traded via the
system. Id. at 3–4.
CFTC discloses a NYMEX ACCESS trade matching host that accepts
limit orders, i.e., orders to buy or sell a particular number of futures or
option contracts in a given commodity and month at a specified price, and
spread orders entered at a differential. Ex. 1009, 19. NYMEX ACCESS
terminal operators enter orders into the NYMEX ACCESS system using a
Trader Work Station. Id. at 4, 9. The NYMEX ACCESS trade matching
host is coupled to these Trader Work Stations over a network and, therefore,
is capable of receiving the orders entered at each station. Id. at 4. Orders
cannot be entered into the NYMEX ACCESS system for a customer unless
the customer provides the following information: (1) Commodity;
(2) Contract Month; (3) Buy or Sell; (4) Account Number; (5) Quantity;
(6) Limit Price; (7) Clearing Member; (8) Strike Price and Put or Call; and
(9) any precondition for entry into the matching system. Id. at 20–21.
CFTC discloses at least one example where the price of one security is
dependent on the price of another security being traded. For instance, the

4 The page numbers referred to in CFTC are the original page numbers
located in the top, middle of each page.
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NYMEX ACCESS system may generate implied spread bids and offers by
calculating spread differentials based on the current, best prices for each
component in the order. Ex. 1009, 28. CFTC also discloses generating
conditional bids and offers only if they better the best bids or offers currently
in the market. Id. at 28–29. These conditional bids and offers adjust as the
underlying markets move. Id. at 29. If a conditional bid or offer was taken,
the NYMEX ACCESS system immediately completes the transaction by
buying or selling the number of contracts of securities in accordance with
the conditions and constraints entered as part of the order. Id.
4. Lupien
Lupien generally relates to an automated system for trading securities
in financial markets that increases liquidity and depth in such markets by
trading portions of normally dormant portfolios, including those with
numerous and diverse securities. Ex. 1010, 1:6–11. When discussing the
on-line storage devices associated with the automated securities trading
system, Lupien discloses that external data is available to clients from
securities information vendors. Id. at 6:20–22. The external data from
securities information vendors may include quote and trade feeds covering
current external quotes, trades, and other market data. Id. at 9:53–54. As
orders are executed, market quotes change, or trades occur in the market, the
automated securities trading system updates the market data and portfolio
holdings, including cash, and recalculates purchase and sale orders for all
relevant securities. Id. at 4:32–36.
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5. Claims 1, 41, and 43
In its Petition, CME contends that CFTC teaches all the limitations
recited in each independent claim, except “at least one external price feed
depicting prices of various securities and contracts from external multiple
exchanges which may be used as an independent variable of the algorithm or
an input to a constraint variable,” as recited in independent claim 1, and
similarly recited in independent claims 41 and 43. Pet. 57–66. CME then
turns to Lupien’s automated trading system that makes external market data
from securities information vendors available to clients to teach the
aforementioned claim limitation. Id. at 59, 62, 65 (citing Ex. 1010, 4:32–36,
6:20–22).
To support combining the teachings of CFTC and Lupien, CME
contends that “Lupien, combined with CFTC, discloses executing a trade of
multiple securities in the same and diverse markets with a single order where
the price of one security is responsive to dynamic changes in price of
another security or other securities in that order.” Pet. 56 (citing Ex. 1005
¶ 123). CME argues that “[i]t would have been obvious to one of ordinary
skill in the art to modify the NYMEX ACCESS system described in CFTC,
based on Lupien, to use external market data in calculating and matching
purchase and sale orders.” Id. (citing Ex. 1005 ¶ 124).

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a. The Combination of CFTC and Lupien Collectively Teaches Using an
External Price Feed to Match Orders in the Manner Required by
Independent Claims 1, 41, and 43

Independent claim 1 recites, in relevant part:
at least one external price feed depicting prices of various
securities and contracts from external multiple exchanges . . .
used as an independent variable of [an] algorithm or an input to
a constraint variable . . . and . . . matching . . . in accordance
with the constraints and the conditions, algorithmic buy/sell
orders with algorithmic or non-algorithmic sell/buy orders
through use of the external multiple data sources.

Ex. 2001, 1:46–61 (emphasis omitted). Independent claims 41 and 43 recite
similar limitations. Id. at 3:22–32, 3:61–4:2, 4:16–32. Independent claim
41 also recites “a traded item being an option in a form of an algorithm with
constraints thereon that represent a willingness to transact, where price of
the traded item is a dependent variable of the algorithm within the
constraints and dynamically changing price of another item is an
independent variable.” Id. at 3:8–13 (bracketing and emphases omitted).
In its Patent Owner Response, 5th Market contends that CFTC’s
NYMEX ACCESS system only operates outside regular trading hours,
merely supplements open outcry trading, employs strict price/time priority
rules, eliminates legging risk, does not support option spreads, and does not
attempt to create conditional bids or offers for the various legs of inter-
market spreads in underlying future markets. See PO Resp. 27–33. Based
on these contentions, 5th Market asserts that CFTC does not teach using an
external price feed to match orders in the manner required by independent
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claims 1, 41, and 43. Id. at 33–34. Next, 5th Market contends that Lupien
does not disclose multi-legged trades that require multiple conditional trades
executed together, but instead simply discloses buying or selling a quantity
of an individual security with no conditional orders. Id. at 35. 5th Market
then asserts that Lupien does not teach using an external price feed to match
orders in the manner required by independent claims 1, 41, and 43. Id. at
35–36.
In its Reply, CME contends that 5th Market’s arguments focus on the
teachings of CFTC and Lupien individually, and do not address the
combined teachings of these references. Pet. Reply. 2. CME argues that
these arguments should be found unpersuasive for the same reasons they
were found unpersuasive in the Decision to Institute. Id. (citing Dec. 31–
33).
5th Market’s arguments directed to the separate teachings of CFTC
and Lupien are misplaced. When assessing obviousness, the test is what the
combined teachings of the references would have taught or suggested to one
with ordinary skill in the art. In re Young, 927 F.2d 588, 591 (Fed. Cir.
1991). In its Petition, CME does not rely upon CFTC to teach an external
price feed, nor does CME rely upon Lupien to teach spread orders. Instead,
CME relies upon the combined teachings of CFTC and Lupien. That is,
CME takes the position that CFTC’s NYMEX ACCESS system, which
matches future contracts, option contracts, and spread orders entered at a
differential (Ex. 1009, 19, 28–34), in conjunction with the aspect of Lupien’s
automated trading system that makes external market data available to its
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clients (Ex. 1010, 4:32–36, 6:20–22), collectively teaches using external
market data to match orders in the manner required by independent claims 1,
41, and 43. See Pet. 57–66.
With respect to independent claim 41 only, we understand 5th Market
as contending that the limitation regarding “a traded item being an option in
a form of an algorithm with constraints thereon that represent a willingness
to transact” to require that the traded item be an option spread order.
PO Resp. 31, 33, 52–53. In particular, 5th Market argues that the
aforementioned limitation includes algorithmic orders involving options,
e.g., an option spread order. Id. at 53 (citing Ex. 2008 ¶ 23). 5th Market
asserts that, because CFTC’s NYMEX ACCESS system does not possess
the functionality to trade option spread orders, CFTC, even if combined with
Lupien, does not teach this limitation recited in independent claim 41. Id. at
31, 53 (citing Ex. 1009, 34).
5th Market’s argument is not commensurate in scope with the
limitation at issue. 5th Market’s argument is predicated on the notion that
independent claim 41 requires that the traded item be “an option spread
order.” 5th Market and its expert witness, Dr. Rickard, nonetheless readily
admit that an option spread order is merely one example of algorithmic
orders involving options. PO Resp. 53; see Ex. 2008 ¶ 23. Narrowly
confining the limitation at issue in independent claim 41 to an option spread
order, without considering other orders that may fall within the purview of
algorithmic orders involving options, would be contrary to affording this
claim its broadest reasonable interpretation. See 37 C.F.R. § 42.300(b).
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In its Petition, CME contends that the orders entered into the NYMEX
ACCESS system are in the form of an algorithm with constraints, such as
quantity, limit prices, strike price and put or call, and any precondition for
entry into the system. Pet. 60–61 (citing Ex. 1009, 20–21). CME also
argues that CFTC’s NYMEX ACCESS system matches spread orders at a
differential. Id. at 61–62 (citing Ex. 1009, 28, 30–31). Based on these cited
disclosures, we are satisfied that CFTC teaches algorithmic orders involving
options, as required by independent claim 41.
Based on the record before us, we are persuaded that CME presents
sufficient evidence to support a finding that the combination of CFTC and
Lupien teaches all the limitations recited in independent claims 1, 41, and
43.
b. CME Provides a Sufficient Rationale to Combine the Teachings of
CFTC and Lupien

In its Patent Owner Response, 5th Market contends the CME’s
rationale to combine the teachings of CFTC and Lupien is ambiguous,
generic, and conclusory. PO Resp. 43. 5th Market argues that the portions
of Dr. Pirrong’s testimony relied upon by CME to support its rationale to
combine these references does not reveal how, or why, one with ordinary
skill in the art would add Lupien’s external price feed to CFTC’s NYMEX
ACCESS system. Id. at 45.
In its Reply, CME contends that using external price feeds in
electronic trading systems was old and well-known in the art prior to the
’419 patent. Pet. Reply 3. To support its argument that traders have long
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used price and other data from various sources, including external markets,
as a basis for developing trading strategy and making trades, CME relies
upon the cross-examination testimony of Dr. Pirrong. Id. (citing Ex. 2007,
102:21–104:16, 163:10–13, 165:3–4).
The Supreme Court has held that “[t]he combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results.” KSR, 550 U.S. at 416. The Court
further instructs that:
[o]ften it will be necessary for a court to look to interrelated
teachings of multiple [references]; . . . and the background
knowledge possessed by a person having ordinary skill in the
art, all in order to determine whether there was an apparent
reason to combine the known elements in the fashion claimed
by the patent at issue.

Id. at 418. The Court also notes that a person of ordinary skill in the art is “a
person of ordinary creativity, not an automaton,” and “will be able to fit the
teachings of multiple [references] together like pieces of a puzzle.” Id. at
420–21.
As we explained previously, CFTC discloses that the NYMEX
ACCESS system trades spread orders at a differential (Ex. 1009, 19, 28–34),
and Lupien discloses that its automated trading system makes external
market data, particularly price, available to its clients (Ex. 1010, 4:32–36,
6:20–22). With respect to the background knowledge possessed by one with
ordinary skill in the art prior to the ’419 patent, we credit the testimony of
Dr. Pirrong elicited during his cross-examination. In response to a question
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regarding what one with ordinary skill in the art in 1992 would do next to
improve CFTC’s NYMEX ACCESS system, Dr. Pirrong states that “one of
the most import things about trading and traders is information. And so
providing more information to traders and providing information in a more
. . . convenient and easy-to-understand format would have been an important
consideration.” Ex. 2007, 102:22–103:4.
In considering the entirety of the record before us, we are persuaded
by CME’s assertion that “[i]t would have been obvious to one of ordinary
skill in the art to modify the NYMEX ACCESS system described in CFTC,
based on Lupien, to use external market data in calculating and matching
purchase and sale orders.” Pet. 56 (citing Ex. 1005 ¶ 124). In particular, we
are satisfied that one with ordinary skill in the art would have recognized
that adding Lupien’s external price feed to CFTC’s NYMEX ACCESS
system would provide a prospective trader with more information to develop
trading strategies and, as a result, provide the trader a better opportunity to
successfully complete trades. In that respect, instead of presenting a
rationale to combine that is conclusory in nature as asserted by 5th Market,
CME has provided an articulated reason with rational underpinnings in
urging that an ordinarily skilled artisan would have added Lupien’s external
price feed to CFTC’s NYMEX ACCESS system so as to allow a prospective
trader to execute orders across multiple markets. See Pet. 56; Ex. 1005
¶ 123.
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c. Adding Lupien’s External Price Feed to CFTC’s NYMEX ACCESS
System Would Not Change CFTC’s Principle of Operation or
Otherwise Render CFTC Inoperable for its Intended Use

1. Price and Time Priority Rule
In its Patent Owner Response, 5th Market contends that one
fundamental principle of operation of CFTC’s NYMEX ACCESS system is
trading with price and time priority. PO Resp. 49 (citing Ex. 1009, 7, 24–25;
Ex. 2007, 93–94), 68, 69–70. According to 5th Market, price and time
priority is a rule that indicates price is the first priority, and time is the
second priority. Id. at 49 (citing Ex. 2008 ¶ 16). 5th Market argues that
adding Lupien’s external price feed to CFTC’s NYMEX ACCESS system
would create the possibility of violating the price and time priority rule. Id.
(citing Ex. 2008 ¶ 80).
In its Reply, CME contends that 5th Market’s expert witness, Dr.
Rickard, indicated during cross-examination that a person with ordinary skill
in the art is capable of programming a price and time priority rule in an
automated order matching system. Pet. Reply 9 (citing Ex. 1021, 21:14–22).
CME then argues that adding Lupien’s external price feed to CFTC’s
NYMEX ACCESS system would not have introduced any price and time
priority issues that a person of ordinary skill in the art could not have
recognized and accounted for. Id.
For at least two reasons, we are not persuaded by 5th Market’s
argument that adding Lupien’s external price feed to CFTC’s NYMEX
ACCESS system would violate CFTC’s price and time priority rule. First,
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we are not convinced that CFTC’s price and time priority rule is a
fundamental principle of operation of the NYMEX ACCESS system. As we
explained previously, CFTC generally relates to an automated order
matching system referred to as NYMEX ACCESS. Ex. 1009, 3. Of
particular importance here is that CFTC’s NYMEX ACCESS system
includes a trade matching host that accepts limit orders, such as orders for
future contracts, option contracts, and spread orders entered at a differential.
Id. at 19. Based on these disclosures, the principle of operation that more
accurately epitomizes CFTC is using the NYMEX ACCESS system to
match orders.
Second, although CFTC discloses that the NYMEX ACCESS system
executes orders for future and option contracts based on a set of rules, one of
which is price and time priority (Ex. 1009, 23–25), 5th Market does not
explain adequately how the price and time priority rule also applies to
trading spread orders at a differential. There is no indication in CFTC that
the same price and time priority rule would apply when trading spread
orders at a differential. See Ex. 1009, 27–34. As such, one of ordinary skill
in the art would have recognized that a price and time priority rule is not a
critical or essential aspect of CFTC’s NYMEX ACCESS system because
such a rule would have varied depending on the specific type of order
executed by the system. Nonetheless, even if we were to assume that the
price and time priority rule applies equally to trading spread orders at a
differential, 5th Market does not provide sufficient or credible evidence that
explains why programming the price and time priority rule in CFTC’s
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NYMEX ACCESS system to account for Lupien’s external price feed would
be uniquely challenging or otherwise beyond the level of an ordinary skilled
artisan. See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157,
1161–62 (Fed. Cir. 2007) (holding that Leapfrog had not presented evidence
that the proposed modification was “uniquely challenging or difficult for one
of ordinary skill in the art” or “represented an unobvious step over the prior
art”).
2. Legging Risk
In its Patent Owner Response, 5th Market contends that another
fundamental principle of operation of CFTC’s NYMEX ACCESS system is
executing spread orders without legging risk. PO Resp. 50, 68 (citing Ex.
1009, 29). 5th Market argues that adding Lupien’s external price feed to
CFTC’s NYMEX ACCESS system would create the possibility of
introducing legging risk to a spread order where no such risk previously
existed. Id. at 50–51 (citing Ex. 2008 ¶ 79).
In its Reply, CME contends that the portion of CFTC relied upon by
5th Market does not indicate that the NYMEX ACCESS system completely
eliminates legging risk in its electronic trades, but instead the legging risk
CFTC addresses is the completion of a spread order during open outcry
trading. Pet. Reply. 11 (citing Ex. 1009, 29). CME argues that there is a
potential for more latency in open outcry trading because it involves
shouting and hand signaling to traders across a trading pit. Id. CME further
argues that CFTC does not assert that the NYMEX ACCESS system
eliminates legging risk altogether. Id. at 11–12. To support this argument,
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CME directs us to the cross-examination of 5th Market’s expert witness, Dr.
Rickard, during which he purportedly admits that, in the context of
electronic trading, although there is some machine latency involved in
processing trades, trades generally are considered to be executed
simultaneously. Id. at 12 (citing Ex. 1021, 29:20–30:23, 56:6–10).
We are not persuaded by 5th Market’s argument that adding Lupien’s
external price feed to CFTC’s NYMEX ACCESS system would introduce
legging risk to a spread order where no such risk previously existed. When
discussing how the NYMEX ACCESS system would treat both legs of a
spread order as a single event, CFTC discloses that the NYMEX ACCESS
system “would eliminate the risk, inherent in legging into a spread during
open outcry trading, that once a position in one leg was established the other
leg of the spread could no longer be executed at the appropriate price.”
Ex. 1009, 29. This disclosure does not contemplate that the NYMEX
ACCESS system necessarily eliminates legging risk associated with
processing a spread order altogether. Instead, we agree with CME that this
disclosure only addresses how completing a spread order using the NYMEX
ACCESS system would reduce the latency associated with completing the
same spread order during open outcry trading.
Moreover, we credit Dr. Rickard’s cross-examination testimony that
there is at least some machine latency associated with processing orders in
an automated order matching system. See, e.g., Ex. 1021, 29:20–30:23,
56:6–10. As evidenced by this testimony, there is at least some acceptable
level of machine latency associated with processing a spread order in
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CFTC’s NYMEX ACCESS system. 5th Market does not provide sufficient
or credible evidence that explains how adding Lupien’s external price feed
to CFTC’s NYMEX ACCESS system adversely impacts this acceptable
level of machine latency, or otherwise prevents a trader from using the
NYMEX ACCESS system to complete a spread order with minimal legging
risk.
3. Liquidity in the Marketplace
In its Patent Owner Response, 5th Market contends that adding
Lupien’s external price feed to CFTC’s NYMEX ACCESS system would
reduce the liquidity of CFTC’s marketplace because it would divert orders to
external markets. PO Resp. 70. To support this argument, 5th Market
directs us to Dr. Rickard’s testimony that one of ordinary skill in the art
“would have considered any scheme to modify an exchange marketplace so
as to route some of its order flow to external markets to be contrary to the
vested interest of the exchange regarding its market liquidity, i.e., it would
not have been considered obvious to pursue.” Ex. 2008 ¶ 38.
In its Reply, CME contends that the aforementioned testimony from
Dr. Rickard is contradicted by statements he made in other patent
applications and patents where he is one of the named inventors. Pet. Reply.
13 (citing Ex. 1023, 1:55–60; Exs. 1024–1027). CME also argues that using
an external market price is a benefit to the liquidity of the marketplace
receiving the price because the receiving marketplace experiences more
trading activity and enhanced trading volume. Id. at 14 (citing Ex. 2007,
100:5–21).
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We are not persuaded by 5th Market’s argument that combining the
teachings of CFTC and Lupien would reduce the liquidity of CFTC’s
marketplace by diverting orders to external markets. 5th Market does not
identify clearly the principle of operation that would be changed in CFTC if
Lupien’s external price feed were added to CFTC’s NYMEX ACCESS
system. Although increasing liquidity may be an overall goal that each
marketplace strives to achieve, other than the testimony offered by Dr.
Rickard, there is no other evidence in the record before us that adding
external market data to a marketplace would prevent that marketplace from
increasing its liquidity. Instead, as we explained above, we credit Dr.
Pirrong’s cross-examination testimony that an important consideration when
looking to improve CFTC’s NYMEX ACCESS system is providing traders
with more information. See Ex. 2007, 102:22–103:4. Applying this
testimony to 5th Market’s argument regarding reduced liquidity, Dr. Pirrong
suggests that adding more information, such as external market data, to a
given marketplace would be an improvement in the sense that it promotes
liquidity, rather than reduces it.
Even if we assume that a fundamental principle of operation in
CFTC’s NYMEX ACCESS system is increasing liquidity in its marketplace,
we do not credit Dr. Rickard’s testimony that one of ordinary skill in the art
would have considered any scheme to modify CFTC’s marketplace so as to
route some of its order flow to external markets to be undesirable. See
Ex. 2008 ¶ 38. Dr. Rickard’s testimony, by itself, suggests that one of
ordinary skill in the art would never have a sufficient or credible reason for
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incorporating external market data into a marketplace. Dr. Rickard,
however, fails to appreciate that an obviousness evaluation is not determined
on the basis of absolutes, such as “any” or “never.” One with ordinary skill
in the art would have been cognizant of trade-offs, i.e., less of this is offset
by more of that, and vice-versa.
Our obviousness evaluation in this case requires us to consider the
teachings of CFTC and Lupien together with the knowledge of one of
ordinary skill in the pertinent art. See Paulsen, 30 F.3d at 1480. We also
recognize that CFTC and Lupien must be considered for everything they
teach by way of technology and are not limited to the particular invention
each reference is describing and attempting to protect. See EWP Corp. v.
Reliance Universal Inc., 755 F.2d 898, 907 (Fed. Cir. 1985). There is at
least some evidence in the record before us that suggests one of ordinary
skill in the art would have appreciated that adding Lupien’s external market
data to CFTC’s marketplace would be beneficial because it provides the
marketplace with more trading activity and an enhanced trading volume.
See Ex. 2007, 102:22–103:4, 100:5–21.
d. CME’s Expert Witness, Dr. Pirrong, Does Not Attempt to “Backfill”
the Testimony Provided in His Declaration Supporting the Petition by
Proposing New Approaches to Combine the Teachings of CFTC and
Lupien During Cross-examination

In its Patent Owner Response, 5th Market contends that during the
cross-examination of CME’s expert witness, Dr. Pirrong, he attempts to
“backfill” the testimony provided in his Declaration supporting the Petition
by proposing new approaches for adding Lupien’s external price feed to
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CFTC’s NYMEX ACCESS system. PO Resp. 17–18 (citing Ex. 2007,
146:4–5, 165:2–5, 165:8–13, 166:6–7, 166:8–11, 177–181), 46–48. Dr.
Pirrong was not attempting to introduce new approaches for combining the
teachings of Lupien and CFTC to bolster the rationale to combine discussed
in the Petition, but instead simply was responding to questions posed by 5th
Market’s counsel. As we discussed previously, CME provides a sufficient
rationale to combine the teachings of CFTC and Lupien in the Petition,
itself. We did not rely upon the aforementioned portions of Dr. Pirrong’s
cross-examination testimony when determining whether CME’s Petition
provides a sufficient rationale to combine these references. In other words,
the portions of Dr. Pirrong’s cross-examination testimony cited by 5th
Market do not “backfill” the rationale to combine the teachings of CFTC and
Lupien set forth by CME in its Petition or otherwise undermine that
rationale. 5th Market’s arguments in that regard are misplaced because they
focus on these approaches as though they were articulated and relied upon in
the Petition.
5th Market further contends that there is no guidance in the prior art
references, themselves, on how to add Lupien’s external price feed to
CFTC’s NYMEX ACCESS system. PO Resp. 18. The approaches elicited
from Dr. Pirrong during cross-examination, however, are not a rebuttal to
this contention. Of particular importance for this contention is what 5th
Market does not assert. 5th Market does not assert that one of ordinary skill
in the art would not have known how to add Lupien’s external price feed to
CFTC’s NYMEX ACCESS system. It is well-settled that “[a] suggestion,
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teaching, or motivation to combine the relevant prior art teachings does not
have to be found explicitly in the prior art.” In re Kahn, 441 F.3d 977, 987–
88 (Fed. Cir. 2006). As we explained in the section discussing the rationale
to combine the teachings of CFTC and Lupien, one of ordinary skill in the
art would have appreciated that adding Lupien’s external price feed to
CFTC’s NYMEX ACCESS system would provide a prospective trader with
more information to develop trading strategies and, as a result, provide the
trader a better opportunity to successfully complete trades. See supra
II(C)(5)(b).
5th Market also attempts to distinguish the limitations recited in
independent claims 1, 41, and 43 from each of the approaches elicited from
Dr. Pirrong during his cross-examination. PO Resp. 22–26, 51–57. As we
explained above, these approaches were not presented in the Petition or in
the accompanying Declaration of Dr. Pirrong. Indeed, we did not consider
these approaches when determining whether the asserted grounds of
unpatentability based, in whole or in part, on the combination of CFTC and
Lupien satisfy the “more likely than not” threshold standard for instituting a
covered business method patent review. 35 U.S.C. § 324(a); 37 C.F.R.
§ 42.208(c).
Moreover, as we discussed previously, CME presents sufficient
evidence in its Petition to support a finding that the combination of CFTC
and Lupien teaches all the limitations recited in independent claims 1, 41,
and 43. See supra II(C)(5)(a). 5th Market’s attempt to distinguish the new
approaches elicited from Dr. Pirrong during cross-examination from the
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limitations recited in independent claims 1, 41, and 43 does not undermine
the evidence presented by CME in its Petition or otherwise render Dr.
Pirrong’s supporting testimony provided in the accompanying Declaration
less persuasive.
e. Summary
Based on the record before us, we conclude that CME has
demonstrated by a preponderance of the evidence that independent claims 1,
41, and 43 would have been obvious over the combination of CFTC and
Lupien.
6. Claims 2–4, 6–14, 16–23, and 42
5th Market does not challenge the contentions and supporting
evidence regarding dependent claims 2–4, 6–14, 16–23, and 42 that were
presented by CME in its Petition. Pet. 70–77; Ex. 1005 ¶¶ 125–138. Upon
reviewing CME’s contentions and supporting evidence, we are persuaded
that it presents sufficient evidence to support a finding that the cited prior art
references teach the claimed subject matter recited in each of these
dependent claims. Therefore, based on the record before us, we conclude
that CME has demonstrated by a preponderance of the evidence that:
(1) dependent claims 2, 4, 6–8, 11, 16, 22, 23, and 42 would have been
obvious over the combination of CFTC and Lupien; (2) dependent claim 3
would have been obvious over the combination of CFTC, Lupien, and
Wilson; (3) claims 9, 10, 12, 14, and 18 would have been obvious over the
combination of CFTC, Lupien, and Grody; (4) claims 13 and 17 would have
been obvious over the combination of CFTC, Lupien, and Dictionary; and
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(5) claims 19–21 would have been obvious over the combination of CFTC,
Lupien, and Globex User Guide.
7. Claim 5
Dependent claim 5 recites “[t]he conditional order transaction network
of claim 2 wherein the price is a yield spread.” Ex. 2001, 2:3–4.
In its Petition, CME contends that the combination of CFTC, Lupien,
and Wilson teaches this limitation. Pet. 70–71. In particular, CME argues
that Wilson discloses an advertisement for BondNet Trading Systems that
indicates its comprehensive transaction system allows a trader to trade on
price, yield, or spreads. Id. (citing Ex. 1011, 22; Ex. 1005 ¶¶ 126, 127).
Based on the cited disclosure in Wilson, along with the supporting testimony
from Dr. Pirrong, CME asserts that it would have been obvious to
implement price as a yield spread. Id. CME further contends that, because
Wilson’s BondNet Trading System and CFTC’s NYMEX ACCESS system
are both trading systems that offer similar functionality, they are capable of
being combined. Id.
In its Patent Owner Response, 5th Market contends that Wilson does
not teach yield spreads, as required by dependent claim 5. PO Resp. 58. 5th
Market argues that the disclosure in Wilson relied upon by CME separates
the words “yield” and “spread” by a comma and the word “or,” and,
therefore, does not indicate that these words are part of the same multi-word
noun phrase, such as “yield spread.” Id. (quoting Ex. 1011, 22). 5th Market
also argues that CME does not provide an articulated reason with a rational
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underpinning to combine Wilson’s one-page advertisement for BondNet
with the teachings of CFTC and Lupien. Id. at 59–60.
We are not persuaded that CME has presented sufficient evidence to
support a finding that Wilson teaches a yield spread, as claimed. Although
the cited disclosure in Wilson offsets the words “yield” and “spread” by a
comma and the word “or” (Ex. 1011, 22), it does not contemplate that these
two words may be used in combination to achieve a “yield spread.” We
have reviewed Dr. Pirrong’s supporting testimony and he simply repeats the
arguments made by CME in its Petition. Ex. 1005 ¶¶ 126, 127. Dr. Pirrong
does not offer an explanation from the perspective of one with ordinary skill
in the art as to how the disclosure of “yield” and “spread” in Wilson may be
combined to achieve a “yield spread.”
We also are not persuaded that CME provides a sufficient rationale to
combine the teachings of CFTC, Lupien, and Wilson. The rationale for
combining the teachings of CFTC and Wilson offered by CME indicates, at
best, that these prior art references are analogous art to each other. The fact
that the prior art references are analogous art, however, does not suffice as
an articulated reason with a rational underpinning to combine CFTC,
Lupien, and Wilson. The relevant inquiry for a ground of unpatentability
based on obviousness is whether the petitioner has set forth “some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.” KSR, 550 U.S. at 418. Notably absent from
CME’s rationale for combining CFTC, Lupien, and Wilson is a credible and
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sufficient explanation of how these references might be combined to arrive
at “price is a yield spread,” as recited in dependent claim 5.
Based on the record before us, we conclude that CME has not
demonstrated by a preponderance of the evidence that dependent claim 5
would have been obvious over the combination of CFTC, Lupien, and
Wilson.
8. Claim 15
Dependent claim 15 recites, “[t]he conditional order transaction
network of claim 1 wherein the security instrument for which the order is
entered includes options.” Ex. 2001, 2:29–31.
In its Petition, CME contends that CFTC’s NYMEX ACCESS system
trades future and option contracts, and, therefore, teaches options, as
required by dependent claim 15. Pet. 33 (citing Ex. 1009, 2, 19).5 In its
Patent Owner Response, 5th Market argues that the options feature recited in
dependent claim 15 requires the order to be an option order in the form of an
algorithm, e.g., an option spread. PO Resp. 60. 5th Market then asserts that,
because CFTC’s NYMEX ACCESS system does not possess the
functionality to trade options spreads at a differential, CFTC, even if
combined with Lupien, does not teach the options feature recited in
dependent claim 15. Id. (citing Ex. 1009, 34).

5 CME directs us to the claim chart regarding the ground of unpatentability
based on the combination of CFTC and Miller, which was not instituted in
this proceeding, only to explain how CFTC teaches the limitations recited in
dependent claims 2, 4, 6–8, 11, 15, 16, 22, 23, and 42. Pet. 56 n.10.
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5th Market’s argument is not commensurate in scope with the
limitation at issue. 5th Market’s argument is predicated on the notion that
dependent claim 15 requires “an option spread order.” Dependent claim 15,
however, only requires that “the security instrument for which the order is
entered includes options.” Dependent claim 15 does not recite an option
order in the form of an algorithm, much less include the words “option
spread.” Upon ascertaining the proper scope of independent claim 15, we
are persuaded that CME presents sufficient evidence to support a finding
that CFTC teaches the options feature recited in dependent claim 15. That
is, CFTC discloses that the NYMEX ACCESS system accepts limit orders,
including option contracts. Ex. 1009, 2, 19.
Based on the record before us, we conclude that CME has
demonstrated by a preponderance of the evidence that dependent claim 15
would have been obvious over the combination of CFTC and Lupien.
9. Claims 44–49
Dependent claim 44 recites, in relevant part, “at least one price
depicted by the at least one external price feed is used as the independent
variable of the algorithm.” Ex. 2001, 4:38–40. Dependent claims 46 and 48
recite the same limitation. Id. at 4:49–51, 4:58–60. Dependent claim 45
recites, in relevant part, “at least one price depicted by the at least one
external price feed is used as the input to the constraint variable.” Id. at
4:43–44. Dependent claims 47 and 49 recite the same limitation. Id. at
4:54–55, 4:63–64.
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In its Petition, CME contends that CFTC’s NYMEX ACCESS
system, which matches spread orders entered at a differential, in conjunction
with the aspect of Lupien’s automated trading system that makes external
market data available to its clients, teaches using price as both “the
independent variable of the algorithm,” as recited in dependent claims 44,
46, and 48, and “the input to the constraint variable,” as recited in dependent
claims 45, 47, and 49. Pet. 66–70 (citing Ex. 1009, 28–31; Ex. 1010, 4:32–
36, 6:20–22). In its Patent Owner Response, 5th Market contends that CME
relies upon the same portions of Lupien to teach both of the aforementioned
limitations. PO Resp. 61–63 (citing Pet. 67–69, Ex. 1010, 4:32–36, 6:20–
22). 5th Market further argues that the disparate disclosures in Lupien relied
upon by CME do not disclose, much less draw a distinction between, using a
price as an independent variable of an algorithm and inputting the price as
the constraint variable. Id. at 63.
Once again, 5th Market’s arguments directed to the individual
teachings of Lupien are misplaced. When assessing obviousness, the test is
what the combined teachings of the references would have taught or
suggested to one with ordinary skill in the art. Young, 927 F.2d at 591. In
its Petition, CME does not rely solely upon Lupien to teach using price as an
independent variable of an algorithm and inputting price as the constraint
variable, but instead relies upon the combined teachings of CFTC and
Lupien. That is, CME takes the position that CFTC’s NYMEX ACCESS
system, which matches spread orders entered at a differential (Ex. 1009, 28–
31), in conjunction with the aspect of Lupien’s automated trading system
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that makes external market data, particularly price, available to its clients
(Ex. 1010, 4:32–36, 6:20–22), collectively teach using price as an
independent variable of an algorithm in the manner required by dependent
claims 44, 46, and 48, and inputting price as the constraint variable in the
manner required by dependent claims 45, 47, and 49. See Pet. 66–70.
Moreover, 5th Market does not provide sufficient or credible evidence
that explains why, in the context of CFTC’s NYMEX ACCESS system
processing different legs of a spread order, using a price received from an
external market, as taught by Lupien, as an independent variable of an
algorithm, or inputting the price as the constraint variable of the algorithm,
would be uniquely challenging or otherwise beyond the level of an ordinary
skilled artisan. See Leapfrog, 485 F.3d at 1161–62. We are persuaded that
CME has presented sufficient evidence to support a finding that the
combination of CFTC and Lupien teaches the claimed subject matter recited
in dependent claims 44–49.
Based on the record before us, we conclude that CME has
demonstrated by a preponderance of the evidence that dependent claims 44–
49 would have been obvious over the combination of CFTC and Lupien.
D. 5th Market’s Motion to Amend
In its Motion to Amend, 5th Market moves to substitute claims 50–72
for challenged claims 1–23 only if we determine that these claims, which
recite the claim phrase “means for comparing,” are indefinite under
35 U.S.C. § 112 ¶ 2. Mot. to Amend 1–2. As we explained previously, we
determine that CME has demonstrated by a preponderance of evidence that
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the claim phrase “means for comparing” is indefinite because the
Specification of the ’419 patent does not disclose sufficient structure for
performing the recited function of “comparing.” See supra Section II.B (1).
Therefore, 5th Market’s Motion to Amend is before us for consideration.
For the reasons set forth below, we deny 5th Market’s Motion to Amend.
Proposed substitute claim 50 is an independent claim. Except for the
removal of the language “or compare,” proposed substituted claim 50 is the
same as challenged independent claim 1. Proposed substituted claim 50 is
reproduced below.
50. A conditional order transaction network that
matches or compares buy and sell orders for a plurality of
security instruments based upon conditions set forth within the
order, including price represented as an algorithm with
constraints thereon, the transaction network comprising:
a variable number of trader terminals for entering an
order for a security instrument in a form of an algorithm with
constraints thereon that represent a willingness to transact,
where price of one security is a dependent variable of the
algorithm within the constraints and dynamically changing
price of another security is an independent variable thereof, the
price as the dependent variable being continuously changeable
responsive to changes in price of the independent variable, the
algorithm representing a buy or sell order; and
at least one controller computer coupled to each of the
variable number of trader terminals over a communications
network and receiving as inputs,
a) each algorithm with its corresponding constraints, and
b) at least one external price feed depicting prices of
various securities and contracts from external multiple
exchanges which may be used as an independent variable of the
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algorithm or an input to a constraint variable, the controller
computer comprising,
means for matching, in accordance with the constraints
and the conditions, algorithmic buy orders with algorithmic sell
orders, one of the conditions being a requirement that two or
more securities are tradable contemporaneously as a contingent
trade of those respective securities, and
means for matching [or comparing], in accordance with
the constraints and the conditions, algorithmic buy/sell orders
with algorithmic or non-algorithmic sell/buy orders through use
of the external multiple data sources.

Mot. to Amend 3–4 (brackets indicate language 5th Market is seeking to
remove). Except for the change in their dependency, proposed substitute
claims 51–72 are the same as challenged dependent claims 2–23. Id. at 4–8.
A motion to amend claims in a covered business method patent
review is not, by itself, an amendment. As the moving party, 5th Market
bears the burden of proof to establish that it is entitled to the relief requested.
37 C.F.R. § 42.20(c). As such, 5th Market’s proposed substitute claims 50–
72 are not entered automatically, but only upon 5th Market demonstrating by
a preponderance of the evidence the patentability of these proposed
substitute claims. See, e.g., 37 C.F.R. § 42.1(d) (noting that the “default
evidentiary standard [in proceedings before the Board] is a preponderance of
the evidence.”).
1. Patentability Over the Prior Art
5th Market bears the burden of proof in demonstrating the
patentability of proposed substitute claims 50–72 over the prior art of record,
as well as the prior art in general. See Idle Free Sys., Inc. v. Bergstrom, Inc.,
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Case IPR2012-00027, Paper 26, 7 (PTAB June 11, 2013). In its Motion to
Amend, 5th Market must show that the conditions for novelty and non-
obviousness are met for the prior art known to 5th Market. With respect to
obviousness as the basis of the potential unpatentability of the proposed
substitute claims, 5th Market should present and discuss facts which are
pertinent to the first three underlying factual inquiries set forth in Graham,
which include: (1) the scope and content of the prior art; (2) differences
between the claimed subject matter and the prior art; and (3) the level of
ordinary skill in the art. Graham, 383 U.S. at 17–18. 5th Market should
provide some discussion and analysis regarding the specific technical
disclosure of the closest prior art known to 5th Market, as well as the level
of ordinary skill in the art, in terms of ordinary creativity and the basic skill
set of a person of ordinary skill in the art.
Without even reaching whether 5th Market has demonstrated
patentability over the prior art in general, we are not persuaded that 5th
Market has demonstrated by preponderance of evidence that proposed
substitute claim 50 is patentable over the prior art of record. We recognize
that 5th Market asserts that its Motion to Amend is contingent only upon our
determination that independent claim 1 is indefinite under 35 U.S.C. § 112
¶ 2. When satisfying the requirement to confer with us prior to filing its
Motion to Amend, we instructed 5th Market that it must explain, in detail,
how each proposed substitute claim obviates all of the grounds of
unpatentability instituted in this proceeding. Paper 19, 2. Our instruction in
this regard is based on our rules. Pursuant to 37 C.F.R. § 42.221(a)(2)(ii), a
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motion to amend may be denied where “[t]he amendment does not respond
to a ground of unpatentability involved in the trial.” In this case, because
independent claim 1 is involved in more than one instituted grounds of
unpatentability, 5th Market cannot simply select one ground and explain
how its proposed substitute claim obviates that ground. Instead, when
seeking to amend independent claim 1, 5th Market must explain how its
amendment obviates each ground of unpatentability instituted in the
proceeding that involves independent claim 1—in this case, both the ground
of unpatentability based on 35 U.S.C. § 112 ¶ 2 and the ground of
unpatentability based on 35 U.S.C. § 103(a).
5th Market contends that, because its proposed amendment only seeks
to remove the language “or compare” from independent claim 1, the
arguments presented by 5th Market in its Patent Owner Response against
independent claim 1 fully traverse any grounds of unpatentability under
35 U.S.C. § 103(a) that would have applied to proposed substitute claim 50.
Mot. to Amend. 12. As we explained previously, because the claim phrase
“means for matching or comparing” recited in independent claim 1 includes
alternative language, i.e., “or,” it includes two alternative functions. The
prior art need only satisfy the “means for matching” limitation, along with
the other limitations recited in independent claim 1, to render the claim
unpatentable. Therefore, even if we were to enter 5th Market’s amendment
that removes the language “or compare” from independent claim 1, the
combined teachings of CFTC and Lupien still would have rendered
proposed substitute claim 50 unpatentable. See supra Section II.C (5)(a–e).
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In any event, we note that our rules prohibit incorporating arguments
by reference. Pursuant to 37 C.F.R. § 42.6(a)(3), “[a]rguments must not be
incorporated by reference from one document into another document.
Combined motions, oppositions, replies, or other combined documents are
not permitted.” 5th Market is precluded from incorporating arguments
regarding the patentability of independent claim 1 from its Patent Owner
Response into its Motion to Amend to address how proposed substitute
claim 50 is patentable distinction from the prior art of record. Such
incorporation by reference circumvents our rule limiting the pages in a
motion to amend to fifteen pages. See 37 C.F.R. § 42.24(a)(v). Arguments
that are not developed and presented in the Motion to Amend, itself, are not
entitled to consideration.
2. Summary
For the foregoing reasons, we are not persuaded that 5th Market has
met its burden of demonstrating that proposed substitute claims 50–72 are
patentable over the prior art of record. Accordingly, we deny 5th Market’s
Motion to Amend.

III. CONCLUSIONS
CME has demonstrated by a preponderance of the evidence that
claims 1–23 and 41–49 of the ’419 patent are unpatentable based on the
instituted grounds of unpatentability set forth in the table below.

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References Basis Claims Challenged
§ 112 ¶ 2 1–23
CFTC and Lupien § 103(a) 1, 2, 4, 6–8, 11, 15, 16,
22, 23, and 41–49
CFTC, Lupien, and Wilson § 103(a) 3
CFTC, Lupien, and Grody § 103(a) 9, 10, 12, 14, and 18
CFTC, Lupien, and Dictionary § 103(a) 13 and 17
CFTC, Lupien, and Globex
User Guide
§ 103(a) 19–21

CME has not demonstrated by a preponderance of the evidence that claim 5
is unpatentable under 35 U.S.C. § 103(a) over the combination of CFTC,
Lupien, and Wilson. Nonetheless, because CME has demonstrated by a
preponderance of the evidence that dependent claim 5 is indefinite under
35 U.S.C. 112 ¶ 2, dependent claim 5 is unpatentable.

IV. ORDER
In consideration of the foregoing, it is
ORDERED that CME has shown by a preponderance of the evidence
that claims 1–23 and 41–49 of the ’419 patent are unpatentable;
FURTHER ORDERED that 5th Market’s Motion to Amend is
DENIED; and
FURTHER ORDERED that, because this is a Final Written Decision,
parties to this proceeding seeking judicial review of our decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

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For PETITIONER:

Erika H. Arner
Timothy P. McAnulty
Justin Loffredo
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
erika.arner@finnegan.com
timothy.mcanulty@finnegan.com
justin.loffredo@finnegan.com

Matthew J. Kelly
Chicago Mercantile Exchange, Inc.
Matthew.Kelly@cmegroup.com

For PATENT OWNER:

D. Richard Anderson
George S. Dolina
Birch, Stewart, Kolasch & Birch, LLP
dra@bskb.com
gsd@bskb.com

J. Gregory Whitehair
The Whitehair Law Firm, LLC
jgw@whitehairlaw.com