PTAB

CBM2018-00030

Miami Intl Holdings Inc v. Nasdaq Inc

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Security-based Order Processing Technique
  • Brief Description: The ’051 patent discloses a computerized trading system for an electronic securities market. The system routes incoming security orders to one of multiple securities processors based on assignment information stored in a manually configurable lookup table, which contains both specific security assignments and rule-based range assignments.

3. Grounds for Unpatentability

Ground 1: Claims 1-49 are Directed to Patent-Ineligible Subject Matter under 35 U.S.C. §101.

  • Prior Art Relied Upon: Petitioner did not assert a ground under 35 U.S.C. §102 or §103. For its §101 challenge, Petitioner relied on evidence to show the claimed concepts were well-understood, routine, and conventional, including: Silverman (WO 01/26003), Yazdani (Patent 6,614,789), Neches (Patent 4,445,171), and historical analogues such as the Public Switched Telephone Network (PSTN) and physical trading floor practices at the NYSE and CBOT.

  • Core Argument for this Ground: Petitioner argued that all challenged claims fail the two-step test for patent eligibility established in Alice Corp. v. CLS Bank Int’l.

    • Alice Step 1 (Abstract Idea): Petitioner asserted that the claims are directed to the abstract idea of routing information to a specific destination based on a pre-determined set of rules stored in a lookup table. This was framed as a fundamental, longstanding economic and organizational practice. Petitioner argued this concept existed long before the advent of computers, citing analogues like postal mail delivery based on zip codes, telephone call routing using operator tables (as described in a 1940 patent), and the physical routing of trade orders to specific "posts" or "pits" on a trading floor, where traders would use published booklets (lookup tables) to find the correct location for a given stock. Petitioner contended that the claims merely automate this longstanding practice using generic computer hardware and do not offer any improvement to computer functionality itself, distinguishing them from patents upheld in cases like Enfish and Amdocs. The claims solve a business problem (load distribution), not a technical problem inherent to computer networks.

    • Alice Step 2 (No Inventive Concept): Petitioner argued that the claims, viewed individually and as an ordered combination, lack an inventive concept sufficient to transform the abstract idea into a patent-eligible application. The implementation relies entirely on generic and conventional elements. The claimed "processing device," "main memory," and "computer readable medium" are off-the-shelf components performing their ordinary functions. The central element, a "configurable look-up table," was argued to be a basic building block of computer science and communication networks for decades. The patent’s own specification suggests the table can be a standard database managed with common software like Excel, with its "configurability" being nothing more than manual data entry by a human administrator.

    • Key Aspects: Petitioner emphasized that the specific structure of the lookup table, including a "specific entry table" and a "rule entry table" for ranges, was also conventional. The use of a lookup table to route securities orders based on a security's symbol was shown in prior art like Silverman. Furthermore, the use of range-based or "prefix" lookup tables was a cornerstone of internet routing since ARPANET. Petitioner pointed to Yazdani, which disclosed a prefix lookup table for network routing that used the exact same asterisk (*) convention as the ’051 patent to denote a range of entries, demonstrating the conventionality of the claimed features. Dependent claims were argued to add only other conventional steps, such as using a backup table or assigning orders to available processors, which do not confer patent eligibility.

4. Relief Requested

  • Petitioner requested institution of a Covered Business Method (CBM) review and cancellation of claims 1-49 of the ’051 patent as directed to patent-ineligible subject matter under 35 U.S.C. §101.