PTAB

CBM2018-00032

Miami Intl Holdings Inc v. Nasdaq Inc

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Multi-parallel architecture and a method of using the same
  • Brief Description: The ’827 patent discloses a system for electronic securities trading that utilizes a multi-parallel architecture. The system comprises multiple securities processors and an order routing system that directs incoming "attributable security interest messages" to a specific processor based on a pre-determined assignment linked to a unique security identifier.

3. Grounds for Unpatentability

Ground 1: Patent Ineligibility under 35 U.S.C. §101 - Claims 1-3, 5-8, 20-24, 33-36, 38-43, 53-55, 57, and 67-70 are directed to patent-ineligible subject matter.

  • Evidence of Conventionality: Petitioner cited prior art not for obviousness combinations, but to demonstrate that the claimed concepts and components were well-known and conventional. Key references included Silverman (WO 01/26003), Kohn (Patent 7,248,585), Begun (Patent 5,381,541), Takao (Application # 2002/0095303), and Neches (Patent 4,445,171), alongside historical evidence of routing in telecommunications (PSTN) and on physical trading floors.
  • Core Argument: Petitioner argued the challenged claims fail the two-step test for patent eligibility established in Alice Corp. v. CLS Bank Int’l.
    • Step 1 (Directed to an Abstract Idea): Petitioner asserted the claims are directed to the abstract idea of routing information to an assigned destination based on its classification. This was characterized as a fundamental, longstanding practice, analogous to routing mail by zip code, routing telephone calls via an operator's lookup table, or manually routing trade orders to specific posts on a physical stock exchange floor. The claims were argued to merely apply this abstract concept to the field of electronic securities trading without improving computer functionality itself. Petitioner contended the claim language is so broad that system claim 1 could read on the physical operations of a 19th-century trading floor where human "runners" routed orders to specific "posts" where brokers (processors) were assigned to trade specific stocks.
    • Step 2 (Lacks an Inventive Concept): Petitioner argued the claims lack an inventive concept sufficient to transform the abstract idea into a patent-eligible invention. The recitation of generic computer components (e.g., "processor," "server computer," "computer readable storage device") to automate the abstract routing process was argued to be insufficient. Petitioner mapped the claimed elements to conventional practices to show they add nothing "significantly more" than the abstract idea itself:
      • Prior Art Mapping: The core function of routing data to assigned processors using a lookup table was shown to be conventional through references like Dorigo (a 1984 publication on routing tasks to processors) and Kohn (’585 patent), which disclosed routing data to processor cores via a lookup table. The specific application of routing securities orders based on a security identifier (e.g., a stock symbol) was argued to be conventional per Silverman (WO 01/26003), which described routing orders to specific brokers using a lookup table based on the security's symbol. The use of "configurable" lookup tables was also argued to be a conventional feature, as shown by Neches (’171 patent), which disclosed a "dynamically revisable lookup table."
      • Conclusion on Inventive Concept: Petitioner concluded that the claims simply combine these well-known, routine, and conventional elements, with each performing its expected function. The ordered combination yields only a predictable result—the automation of a longstanding business practice—and therefore lacks the inventive concept required to impart patent eligibility.

4. Key Technical Contentions

  • Petitioner contended the ’827 patent is not directed to a "technological invention," a threshold requirement for eligibility in a Covered Business Method (CBM) review. It was argued that the claims do not recite a novel or unobvious technical feature but merely automate a known manual business process (routing trade orders) using conventional computer technology.
  • The patent was also argued to not solve a technical problem with a technical solution. Petitioner asserted that purported advantages described in the specification, such as increased system throughput and scalability, are administrative or business outcomes, not technical solutions to a technical problem. Furthermore, these alleged advantages are not recited in the claims, and features like a "configurable" lookup table were argued to simply describe a manual administrative function, not a technical solution.

5. Relief Requested

  • Petitioner requested institution of a Covered Business Method patent review and cancellation of claims 1-3, 5-8, 20-24, 33-36, 38-43, 53-55, 57, and 67-70 of the ’827 patent as being directed to patent-ineligible subject matter under 35 U.S.C. §101.