Patent Eligibility of GUI-Related Claims in Light of the Federal Circuit’s Recent Decision in Trading Techs. Int’l. v. IBG LLC
In Trading Techs. Int’l. v. IBG LLC, the Federal Circuit affirmed the Patent Trial and Appeal Board’s decision that the claims in a GUI-related patent, U.S. Patent No. 7,783,556 to Singer et al. (“the ’556 Patent”), were ineligible under 35 U.S.C. § 101.[i] Generally, the ’556 Patent relates to displaying a trading screen on a graphical user interface (“GUI”).[ii] The trading screen displays market information to a trader and also places orders for a trade from the trader.[iii] Using the Alice framework, the Federal Circuit determined that the claims were “directed to” an abstract idea at step one of the Alice framework, and that there were no additional elements that transformed the claims into a patent eligible application at step two of the Alice framework.[iv] At first glance, this decision might be disappointing to inventors of GUI-related technology. However, a review of the ’556 Patent reveals support for this decision, which still leaves room for patent eligible GUI-related claims.
Referring to step one of the Alice framework, the Federal Circuit in Trading Techs. evaluated the “focus of the claimed advance over the prior art” to determine if the claims were directed to excluded subject matter.[v] To accomplish this, the Federal Circuit relied on the detailed review of the prior art in the ’556 Patent itself. The only difference between the trading screen provided in the prior art and that of the claimed embodiment was that the claimed embodiment added price derivative values to one of the columns.[vi] This is best illustrated by the side-by-side comparison of Figure 2 and Figure 8 of the ’556 Patent, reproduced below:
Other than the addition of the price derivative values in the right-hand column shown in Figure 8, there are no other significant differences between the claimed embodiment illustrated in Figure 8 and the prior art trading screen illustrated in Figure 2.
Any claim limitations that went beyond the display of derivative values were found either not to constitute a patentable improvement, or to be identical to the prior art.[vii] For example, claim limitations relating to how the values were calculated were classified as “nothing more than ‘mere automation of manual processes using generic computers.’”[viii], while claim limitations relating to placing an order using the screen were characterized as identical to the prior art[ix] and, thus, did not provide an advance over the prior art.
After comparing the claimed embodiment and the prior art, the Federal Circuit stated that the claims “focused on providing information to traders in a way that helps them process information more quickly, ’556 Patent at 2:26-39, not on improving computers or technology.”[x] The court also noted that the claims failed because “arranging information along an axis does not improve the functioning of the computer, make it operate more efficiently, or solve any technological problem”, and concluded that the claims were directed to an abstract idea under step one of the Alice framework.[xi]
The Federal Circuit’s analysis of step two of the Alice framework was shorter. The court again noted that adding price derivative values to the screen was the only difference between the screens provided in the prior art and the claimed invention.[xii] The specification of the ’556 Patent even acknowledged that one of ordinary skill in the art would recognize that there were many possibilities to calculate these price derivative values.[xiii] Moreover, displaying these values on the screen—even if never done before—did not provide “significantly more” under step two of the Alice framework because the use of the abstract idea to which a claim is directed cannot supply the inventive concept that renders the claim eligible under that step.[xiv] As such, the claims also failed step two of the Alice framework and were thus ineligible under 35 U.S.C. §101.[xv]
Considering the similarities between the prior art and the claimed embodiment, the Federal Circuit’s decision appears reasonable, and should not deter inventors from pursuing patent protection for GUI-related inventions. However, inventors considering filing GUI-related applications should consider including an advancement over the prior art that can also be tied to one to or more of the following improvements: 1) improving the functioning of the computer; 2) making the computer operate more efficiently; and 3) solving a technical problem, as well as including an explanation in those applications as to why the advancement results in one or more of the three above-listed improvements.
If you have any questions about this case or GUI-related inventions generally, please contact Vera Suarez or any member of Haynes and Boone’s IP Team.
[i] Trading Technologies Int’l, Inc. v. IBG LLC, et al., No. 2017-2323, slip op. at 11 (Fed. Cir. April 30, 2019).