PTAB

CBM2018-00029

Miami Intl Holdings Inc v. Nasdaq Inc

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Key Events
Petition

1. Case Identification

2. Patent Overview

  • Title: Recipient Status Indicator System and Method
  • Brief Description: The ’506 patent discloses a system and method for use in electronic securities trading. The invention monitors the online or offline status of a primary message recipient by detecting the presence or absence of a repeatedly broadcast indicator signal (a "heartbeat") and redirects "security interest messages" to a backup recipient if the primary recipient is determined to be offline.

3. Grounds for Unpatentability

Ground 1: Claims 1-38 are Unpatentable as Directed to Patent-Ineligible Subject Matter under 35 U.S.C. §101

  • Prior Art Relied Upon: Raman ("A Framework for Highly-Available Composed Real-Time Internet Services"), Silverman (WO 01/26003), Zajac (Application # 2002/0120546), Bladow (Patent 6,115,040), Bhandari (a 1998 article), Ionescu (a 2002 article), Aguilera (a 1997 article), Shambroom (a 1993 IEEE paper), Stewart (a 2001 IEEE paper), and Chen (a 1998 article).
  • Core Argument for this Ground: Petitioner argued that claims 1-38 are unpatentable under the two-step framework from Alice Corp. v. CLS Bank Int’l.
    • Step One (Abstract Idea): Petitioner asserted the claims are directed to the abstract idea of monitoring information (the presence or absence of an indicator signal) to determine a recipient's availability and redirecting a message if the recipient is unavailable. This concept, Petitioner argued, is a fundamental, long-standing practice analogous to a postal worker leaving a package with a neighbor. The claims simply apply this abstract concept within the context of electronic securities trading using conventional computer components.
    • Step Two (No Inventive Concept): Petitioner contended the claims lack an inventive concept sufficient to transform the abstract idea into a patent-eligible application. The claims merely recite generic, off-the-shelf computer components (e.g., broadcast server, processor, memory, data bus) performing their conventional functions. The core concept of monitoring a recipient's status via a "heartbeat" or "keep-alive" signal was a well-understood, routine, and conventional feature in computer networking and electronic trading long before the patent's filing, as demonstrated by the numerous prior art references. The ordered combination of these elements adds nothing unconventional, as it represents a standard client-server architecture.

Ground 2: Claims 1-38 are Unpatentable for Lack of Written Description under 35 U.S.C. §112

  • Prior Art Relied Upon: Talluri (Patent 6,615,383) is referenced from the prosecution history to provide context for the amendment at issue.
  • Core Argument for this Ground: Petitioner argued that the claims are invalid because the specification fails to provide adequate written description for the limitation that the indicator signal is broadcast "independently of receipt of attributable security interest messages."
    • Prosecution History Context: This "independently" limitation was added to all independent claims during prosecution to overcome a rejection over the Talluri reference. Petitioner asserted this was new matter not supported by the original disclosure.
    • Lack of Specification Support: The petition argued that the specification does not disclose any embodiment where the indicator signal is broadcast independently of the security messages. Instead, Petitioner pointed to Figure 5 of the ’506 patent, which allegedly shows a dependent relationship. The flowchart in Figure 5 depicts a direct arrow from the step of transmitting security messages (step 202) to the step of broadcasting the indicator signal (step 204), which Petitioner argued would convey to a person of ordinary skill in the art that the broadcast is triggered by or otherwise dependent on the message transmission, directly contradicting the claim language. The specification describes only a "repeatedly and sequentially" broadcast signal, which is not synonymous with "independently."

4. Key Claim Construction Positions

  • "System": Petitioner proposed this term be construed as "an electronic system for trading securities." This construction was based on the specification's consistent description of the invention as relating to "electronic-based securities trading" and a "computerized trading system." This construction supports the argument that the patent is a covered business method patent.
  • "security interest message": Petitioner proposed this term be construed as "a message relating to electronic securities trading." This is based on the specification's description of the messages being processed by a "computerized trading system" that "trades securities electronically." This construction reinforces the financial nature of the claimed invention.

5. Relief Requested

  • Petitioner requested institution of a Covered Business Method (CBM) patent review and cancellation of claims 1-38 of the ’506 patent as unpatentable.