Datum
`Date
`Date
`
`30.09.2010
`
`Blatt
`Sheet
`Feuille
`
`1
`
`Anmelde-Nr:
`ApplicationNo:
`Demande n ”z
`
`01 920 183.9
`
`SUMMARY OF FACTS AND SUBMISSIONS
`
`European Patent No. 1 319 211 entitled "Click-based trading with intuitive grid
`
`display of market depth" is based on European Patent Application
`
`No. 019201839 which was filed as International Patent Application No. PCT!
`
`US2001/006792 on 2 March 2001. The International Patent Application was
`
`published as WO 0065403. The patent claims rights of priority from
`
`P1
`
`US Provisional Application for Patent No. 60f186,322, filed on 2
`March 2000,
`
`P2
`
`US Patent Application No. 09/590,692, filed on 9 June 2000.
`
`The grant of the patent was mentioned on 13 April 2005 in European Patent
`Bulletin 2005/15.
`
`The Proprietor of the patent is:
`
`Trading Technologies International, Inc
`
`Chicago, Illinois 60606 (US)
`
`A notice of opposition was filed on 12 January 2006 by a group of common
`
`opponents:
`
`Opponent I:
`
`Rosenthal Collins Group LLC
`
`Chicago, Illinois 60606 (US)
`
`Peregrine Financial Group Inc
`
`Chicago, Illinois 60603 (US)
`
`GL Trade SA
`
`75002 Paris (FR)
`
`CQG Inc
`
`Denver, Colorado 80265 (US)
`
`Further notices on oppositions were filed on 12 and 13 January 2006 by:
`
`Opponent II:
`Deutsche Borse AG
`
`6048? Frankfurt am Main (DE)
`
`Opponent Ill:
`tick—IT GmbH
`
`40210 Diisseldorf (DE)
`
`EPO Form 2906 01.91TRI
`
`TDA 1049
`TDA 1049
`TD Ameritrade v. TT
`CBM2014-00131
`
`TD Ameritrade V. TT
`
`CBM2014-00131
`
`

`

`Datum
`Date
`Date
`
`30.09.2010
`
`Blatt
`Sheet
`Feuille
`
`2
`
`Anmelde-Nr:
`ApplicationNo:
`Demands n”:
`
`01 920 183.9
`
`Opponent IV:
`
`Anitra Medienprojekte GmbH
`
`81677 Mtinchen (DE)
`
`Opponent V:
`Eccoware Limited
`
`London EC2N 2L8 (UK)
`
`The notices of oppositions will hereinafter be referred to as 0P1 to 0P5,
`
`respectively.
`
`I],
`
`The following evidences were indicated in the notices of oppositions; the
`
`numbering is introduced by the opposition division and will be adhered to in
`
`the rest of the procedure:
`
`D1
`
`D2
`
`D3
`
`D4
`
`D5
`
`D6
`
`WO 99i19821 A1 (Derivatives Net Inc.) 22 April 1999
`
`[in 0P1: "D1"; in 0P3: "E1"; in 0P5: "D4"]
`
`WO 99i53424 A1 (lmpink) 21 October 1999
`
`[in 0P1: "D2"]
`
`WO 98i49639 A1 (Lawrie) 5 November 1998
`
`[in 0P1: "D3"]
`
`US 5 297 031 (Gutterrnan et al.) 22 March 1994
`
`[in 0P1: "D4"]
`
`WO 91(14231 A1 (Chicago Board of Trade) 19 September 1991
`
`[in 0P2: "E1"; in 0P4: "A2"]
`
`Tokyo Stock Exchange, "Futures and Options Trading System -
`
`Transaction Terminai Operation Procedures " (title also translated
`
`as "System for Buying and Setting Futures and Options -
`
`Transaction Terminai Operationai Guidelines "), original Japanese
`
`version, August 1998
`
`[in 0P1: "Exhibit 1"; in 0P2: "E4"; in 0P5: "01 (1 )"]
`
`D6'
`
`Collection of pages of D6, original Japanese version, comprising:
`
`cover page, tabie of contents pages 1 to 4, pages 2-1, 3-6, 5-1,
`
`7-1, 7-17, 7-21, 7-22, 7-25, 7-26, 9-5, appendix page 4-1 of D6
`
`[in 0P1: part of "Exhibit 4 Japanese version", see pages "TSE"
`
`628 to 643]
`
`EPO Form 2906 01.91TRI
`
`

`

`Datum
`Date
`Date
`
`30 .09 . 2010
`
`Ellatt
`Sheet
`Feuille
`
`3
`
`Anrnelde-Nr:
`Application No:
`Demande rt":
`
`0 l
`
`9 2 U
`
`l 83 . 9
`
`06a
`
`Partial English translation of D6 provided by Opponents l and V,
`
`translation of the following pages of 06:
`
`cover page, pages 5-2 to 5-19, 6-3 to 6-10, 6-24, 6-25, 7-13 to
`
`7-20, 7-23, 7-24, 9-1 to 9-4, 9-6 to 9-32
`
`[in 0P1: part of "Exhibit 2", from page "TSE" 647 to page "TSE"
`
`810; in OPS: "D1(2)"]
`
`Dfib
`
`Partial English translation of D6 provided by Opponents | and II,
`
`translation of the pages of D6 comprised in D6':
`
`cover page, table of contents pages 1 to 4, pages 2-1, 3-6, 5-1,
`
`7-1, 7-17, 7-21, 7-22, 7-25, 7-26, 9-5, appendix page 4-1
`
`[in 0P1 : part of "Exhibit 4 English version", see pages "TSE" 628
`
`to 643; in 0P2: "E4 translation"]
`
`D60
`
`Partial English translation of D6 provided by Opponent V,
`
`translation of the pages of DB comprised in 06':
`
`cover page, table of contents pages 1 to 4, pages 2-1, 3-6, 5-1,
`
`7-1, 7-17, 7-21, 7-22, 7-25, 7-26, 9-5, appendix page 4-1
`
`[in 0P5: "D1(3)"]
`
`D?
`
`Tokyo Stock Exchange, "Orientation Materials for Particirpants -
`
`New Future Options Trading System", original Japanese version,
`
`September 1997
`
`[in OP1 : part of "Exhibit 4 Japanese version", see pages "TSE"
`
`609 to 627; in 0P2: "E5"]
`
`D7'a
`
`D8
`
`English translation of D7 provided by Opponents l and II
`
`[in 0P1: part of "Exhibit 4 English version", see pages "TSE" 609
`
`to 627; in 0P2: "E5 translation"]
`
`Tokyo Stock Exchange, "Voiume: Systems - Coiiected Records
`
`and Data, 50-Year History of the Tokyo Stock Exchange”, original
`
`Japanese version, 31 July 2000
`
`[in 0P1 : part of "Exhibit 4 Japanese version", see pages "TSE"
`
`644 to 646]
`
`D861
`
`English translation of D8 provided by Opponent |
`
`[in OP1: part of "Exhibit 4 English version", see pages "TSE" 644
`
`to 646]
`
`EPO Form 2906 01.91TRI
`
`

`

`Datum
`Date
`Date
`
`30 .09 . 2010
`
`Ellatt
`Sheet
`Feuille
`
`4
`
`Anmelde-Nr:
`Application No:
`Demande n”:
`
`0 l
`
`9 2 U
`
`l 83 . 9
`
`09
`
`Notice of opposition by Tokyo Stock Exchange inc. filed on 18
`
`April 2005 at the Japanese Patent Office, original Japanese
`version
`
`[in 0P1 : part of "Exhibit 4 Japanese version", see pages "TSE"
`
`982 to 995]
`
`09a
`
`English translation of 09 provided by Opponent | in "Exhibit 4
`
`English version"
`
`[in 0P1 : part of "Exhibit 4 English version", see pages "TSE" 982
`
`to 995]
`
`09b
`
`D10
`
`D11
`
`D12
`
`D13
`
`D14
`
`D15
`
`English translation of D7 provided by Opponent I in "Exhibit 2"
`
`[in 0P1 : part of "Exhibit 2", see pages "TSE" 982 to 995]
`
`Transcript of deposition of Mr. Atsushi Kawashima on 21
`November 2005 in Case No. 04—6-5312 in The United States
`
`District Court for the Northern District of Illinois between Trading
`
`Technologies International, Inc. (Plaintiff) and eSpeed, Inc.
`
`(Defendant)
`
`[in 0P1: "Exhibit3"]
`
`LIFFE, "The Application Program interface (AP!) Reference
`
`Manuat - For LiFFE CONNECT, Reiease 2.7, September 1998"
`
`[in 0P1: "Exhibit5"]
`
`LIFFE, "The Appiication Program interface (APi) Reference
`
`Manuai - For LtFFE CONNECT, Reiease 3.0, September 1998"
`
`[in 0P1: "Exhibit 6"]
`
`LIFFE, "The Appiication Program interface (AP!) Reference
`
`Manuai - For LiFFE CONNECT, Reiease 3. 1, September 1998"
`
`[in 0P1: "Exhibit7A"]
`
`LIFFE, "The Appiication Program interface (AP!) Reference
`
`Manuai - For LtFFE CONNECT, Reiease 3.2, December 1998"
`
`[in 0P1: "Exhibit?B"]
`
`LIFFE, "The Appiication Program interface (APi) Reference
`
`Manuai - For LiFFE CONNECT, Release 3.3, January 1999"
`
`[in 0P1: "Exhibit?C"]
`
`EPO Form 2906 01.91TRI
`
`

`

`Datum
`Date
`Date
`
`30 .09 . 2010
`
`Ellatt
`Sheet
`Feuille
`
`5
`
`Anmelde-Nr:
`Application No:
`Demande n”:
`
`0 l
`
`9 2 U
`
`l 83 . 9
`
`D16
`
`D17
`
`D18
`
`D19
`
`D20
`
`D21
`
`D22
`
`D23
`
`D24
`
`D25
`
`D25'
`
`LIFFE, "Directory of Software Soiutions - For Lit-"FE CONNECT",
`
`Issue 1, October 1998
`
`[in 0P1: "Exhibit8A"]
`
`LIFFE, "Directory of Software Soiutions - For LiFFE CONNECT",
`
`Issue 2, February 1999
`
`[in 0P1: "Exhibit88"]
`
`LIFFE, "Directory of Software Soiutions - For LiFFE CONNECT",
`Issue 3, June 1999
`
`[in 0P1: "Exhibit80"]
`
`Slides of a presentation "LiFFE's New Eiectronic Trading Piatforrn
`
`for Futures", ISV Developers Conference, 24 September 1998
`
`[in 0P1: "Exhibit8[)"]
`
`Promotional material "iFtiS investment Support Systems "
`
`[in 0P1: "Exhibit10"]
`
`Transcript of deposition of Mr. Paui MacGregor on 1 November
`2005 in Case No. 04-0-5312 in The United States District Court
`
`for the Northern District of Illinois between Trading Technologies
`
`International, Inc. (Plaintiff) and eSpeed, Inc. (Defendant)
`
`[in 0P1: "Exhibit 9N]
`
`LIFFE, "APT Trading Procedures (Atom version) of the London
`
`internationai Financial Futures Exchange", 28 March 1991
`
`[in 0P1: "Exhibit9B"]
`
`LIFFE, "APT User Guide", January 1994
`
`[in 0P1: "Exhibit90"]
`
`'Udittacnment to Generai Notice No. 788 - APT‘J’“S Trading
`LIFFE,
`Procedures", 28 December 1995
`
`[in 0P1: "Exhibit9D"]
`
`GL Trade, "Gt. TRADE - User Guide V4.51 - LIFFE CONNECTfor
`
`Futures by GL TRADE", June 1999
`
`[in 0P1: "Exhibit11"]
`
`Collection of pages of D25 comprising: cover page, pages 28, 29
`and 31 to 35
`
`[in 0P5: "D2"]
`
`EPO Form 2906 01.91TRI
`
`

`

`Datum
`Date
`Date
`
`30 .09 .2010
`
`Ellatt
`Sheet
`Feuille
`
`6
`
`Anmelde-Nr:
`Application No:
`Demands n”:
`
`0 l
`
`9 2 U
`
`l 83 . 9
`
`D26
`
`D27
`
`028
`
`D29
`
`D30
`
`D30'
`
`D31
`
`D32
`
`D33
`
`D34
`
`D35
`
`GL Trade, brochure "Trading Pad" (8 pages}
`
`[in 0P2: "E2"]
`
`GL Trade, "Guide d'utiiisation GL WiN et Logicieis
`
`compie’meniaires", collection of 8 pages
`
`[in 0P2: "E3"]
`
`Print-out dated 10 January 2006 of webpage with URL:
`http:X/web.archive.org/web/l9980629135037//
`
`
`
`
`
`h:tp://www.L1””e.or.jp/e_hmtl/new_on.html
`
`[in 0P3: "E2"]
`
`OM Gruppen AB, "OM CLICK Trade User's Guide for Windows
`
`NT", October 1998
`
`[in 0P1: "Exhibit 14"]
`
`Research & Trade AB, "OFtC Instructions for Use - Version 2.2.8",
`1999
`
`[in 0P4: "A3" (complete document)]
`
`Collection of pages of D30, comprising: cover page, table of
`
`contents, pages 1-16 and 147, index
`
`[in 0P4: "A3"]
`
`F. Maguire, "Firms rush to make Liffe Connect decision", Banking
`
`Technology 8, 4 December 1998
`
`[in 0P2: "E6"]
`
`Trading Technologies brochure
`
`[in 0P2: "E7"]
`
`"Data Broadcasting Partners with Aii- Tech investment Group to
`
`provide Customers with integrated Oniine Trading", PR Newswire,
`
`25 February 1999
`
`[in 0P2: "E8"]
`
`"MiNEX Service Outiine (User Test/Orientation)", November 1992
`
`[in 0P2: "E9"]
`
`US 5 960 411 (Hartman et al.) 28 September 1999
`
`[in 0P5: "D3"]
`
`EPO Form 2906 01.91TRI
`
`

`

`Datum
`Date
`Date
`
`30.09.2010
`
`Ellatt
`Sheet
`Feuille
`
`7
`
`Anrnelde-Nr:
`ApplicationNo:
`Demands n ”z
`
`01 920 183.9
`
`D36
`
`Memorandum Opinion and Order of Senior Judge J.B. Moran in
`Case No. 04-0-5312 in The United States District Court for the
`
`Northern District of Illinois between Trading Technologies
`
`International, Inc. (Plaintiff) and eSpeed, Inc. (Defendant), 9
`
`February 2005
`
`[in 0P1: "Exhibit12", in 0P5: "D5"]
`
`D37
`
`J. Sandman, "Trading Technologies upgrades software for its
`
`platform", Securities Industry News, 28 August 2000
`
`[in 0P5: "D6"]
`
`D38
`
`Figure 2 of WO 01765403, i.e. the International Patent Application
`
`on which the patent is based
`
`[in 0P1: "Exhibit13A"]
`
`D39
`
`US Provisional Application for Patent No. 60/186,322, i.e. P1
`
`[in 0P1: "Exhibit13l3"]
`
`Opponent III offered in 0P4 witness proof (Mr. Kenichiro Ohara, Tokyo
`
`Financial eXchange Inc., Tokyo, Japan) for facts relating to the "TIFFE"
`
`system shown in D28 and used at the Tokyo International Financial Futures
`
`Exchange in 1996-1998.
`
`III.
`
`Opponent I requested in 0P1 the revocation of the patent in its entirety based
`
`on the grounds that the subject-matter of the patent is excluded from
`
`patentability, is not new and does not involve an inventive step (Articles 100
`
`(a), 52(1), 52(2)(c) and (d), 54 and 56 EPC 1973) and that the subject-matter
`
`of the patent extends beyond the content of the application as filed (Article
`
`100(0) EPC 1973).
`
`More particularly, Opponent I argued in 0P1 that the subject-matters of all
`
`claims extended beyond the content of the application as filed (Article 100(c)
`
`EPC 1973) by pointing to specific features and terms of the independent
`
`claims. Decision T 33178? was cited in this respect.
`
`The subject-matters of all claims were considered to be excluded from
`
`patentability by Article 52(2)(c) and (d) EPC 1973 as presentations of
`
`information, methods of doing business andror programs for computers.
`
`The claims to priority from P1 and P2 were considered to be invalid.
`
`Opponent I argued that the subject-matters of independent claims 1 and 29
`were:
`
`- not new over D1
`
`EPO Form 2906 01.91TRI
`
`

`

`Datum
`Date
`Date
`
`30.09.2010
`
`Blatt
`Sheet
`Feuille
`
`8
`
`Anmelde-Nr:
`ApplicationNo:
`Demande n ”z
`
`01 920 183.9
`
`- not new over D4
`
`- not new over D6 and related prior use "TSE" (D9 and D10 cited as evidence)
`
`- not new over "LIFFE Connect Prior Art Manuals" D11 to D15 (D21 cited as
`
`evidence)
`
`- not new over the "lRIS system" shown in D20 (D16 to D19 cited in this
`
`context)
`
`- not new over the "APT system" shown in D22 to D24 (D21 cited as
`
`evidence)
`- not new over D25
`
`- not new over a prior use of the invention by Mr. Harris Brumfield, one of the
`
`named inventors (D36 cited as evidence)
`
`- not inventive over "X_Trader", as shown in D38 and D39, combined with D4
`
`- not inventive over a combination of any two of D1, D4 (the reference to "D2"
`
`in point 72 of 0P1 appears to be an error that should be read "D4" in view of
`
`the context), D6 and D11 to D19
`- not inventive over a combination of D29 and D6 and D11 to D19
`
`Furthermore, the subject-matters of all claims were considered not to involve
`
`an inventive step because they do not represent a technical solution to a
`
`technical problem. Decision T 25693 was cited in this respect.
`
`Opponent [ indicated at several occasions in 0P1 that further details and
`
`evidences relating to the prior art would be provided.
`
`IV,
`
`Opponent ll requested in 0P2 the revocation of the patent in its entirety based
`
`on the grounds that the subject-matter of the patent is not new and does not
`
`involve an inventive step (Articles 100(a), 52(1), 54 and 56 EPC 1973), that
`
`the patent does not disclose the invention in a manner sufficiently clear and
`
`complete for it to be carried out by a skilled person (Article 100(b) EPC 1973),
`
`and that the subject-matter of the patent extends beyond the content of the
`
`application as filed (Article 100(0) EPC 1973). Oral proceedings were
`
`requested on an auxiliary basis.
`
`More particularly, Opponent || argued in 0P2 that the subject-matters of all
`
`ctaims extended beyond the content of the application as filed (Article 100(c)
`
`EPC 1973) by pointing to specific features and terms of the independent
`
`claims and of some dependent claims.
`
`It was objected that claims 13 and 28 define subject-matter which the skilled
`
`person is not enabled to carry out (Article 100(b) EPC 1973).
`
`EPO Form 2906 01.91TRI
`
`

`

`Datum
`Date
`Date
`
`30.09.2010
`
`Blatt
`Sheet
`Feuille
`
`9
`
`Anrnelde-Nr:
`ApplicationNo:
`Demande n ”z
`
`01 920 183.9
`
`Opponent ll argued that the subject-matters of the independent claims were:
`- not new over D5
`
`- not new over D26 and D27
`
`- not inventive over D6 or D7
`
`- not inventive over D6 or D? in view of D31 to D34
`
`The subject-matters of all dependent claims were considered to lack novelty
`
`and/or inventive step; reference was made to 05 to D7, D26, D27, D32 and
`D34 for individual features.
`
`V_
`
`Opponent lll requested in OP3 the revocation of the patent in its entirety
`
`based on the grounds that the subject-matter of the patent is excluded from
`
`patentability, is not new and does not involve an inventive step (Articles 100
`
`(a), 52(1), 52(2)(c) and (d), 54 and 56 EPC 1973). It was requested that oral
`
`proceedings be held before the final decision.
`
`More particularly, Opponent III argued in 0P3 that the subject-matters of
`
`independent ciaims 1 and 29 were excluded from patentability by Article 52(2)
`
`(0) and (d) EPC 1973 as presentations of information andfor as methods for
`
`doing business.
`
`Opponent Ill argued that the subject-matters of the independent claims were:
`
`- not new over D28 and related prior use "TIFFE" (witness proof offered)
`- not inventive in view of a combination of 01 and D28
`
`The additional features of the dependent claims were considered to be either
`known from D1 and D28 or obvious.
`
`VI.
`
`Opponent IV requested in 0P4 the revocation of the patent in its entirety
`
`based on the grounds that the subject-matter of the patent is excluded from
`
`patentability. is not new and does not involve an inventive step (Articles 100
`
`(a), 52(1), 52(2) and (3), 54 and 56 EPC 1973) and that the subject-matter of
`
`the patent extends beyond the content of the application as filed (Article 100
`
`(c) EPC 1973). Oral proceedings were requested on an auxiliary basis.
`
`More particularly, Opponent IV argued in 0P4 that the subject-matters of all
`
`claims extended beyond the content of the application as filed (Article 100(0)
`
`EPC 1973) by pointing to a specific feature of independent claim 1.
`
`The subject-matters of ail claims were considered to be excluded from
`
`patentability by Article 52(2) and (3) EPC 1973 as they relate to methods of
`
`doing business and lack a technical character. Decisions T 11739? and
`
`T 76992 were cited in this respect.
`
`EPO Form 2906 01.91TRI
`
`

`

`Datum
`Date
`Date
`
`30.09.2010
`
`Blatt
`Sheet
`Feuille
`
`10
`
`Anmelde-Nr:
`Applicationhlo:
`Demande n ”z
`
`01 920 183.9
`
`Opponent IV argued that the subject-matters of the independent claims were:
`- not new over D5
`
`- not inventive over a combination of D5 and 030'
`
`The subject-matters of all dependent claims were considered to lack novelty
`
`and/or inventive step.
`
`VII.
`
`Opponent V requested in 0P5 the revocation of the patent in its entirety
`
`based on the grounds that the subject-matter of the patent is excluded from
`
`patentability, is not new and does not involve an inventive step (Articles 100
`
`(a), 52(1), 52(2)(c) and (d), 54 and 56 EPC 1973) and that the subject-matter
`
`of the patent extends beyond the content of the application as filed (Article
`
`100(c) EPC 1973). Oral proceedings were requested on an auxiliary basis.
`
`More particularly, Opponent V argued in OPS that the subject-matters of all
`
`claims extended beyond the content of the application as filed (Article 100(c)
`
`EPC 1973) by pointing to specific features and terms of the independent
`ciaims.
`
`The subject-matters of all claims were considered to be excluded from
`
`patentability by Article 52(2)(c) and (d) EPC 1973 because independent claim
`
`29 was directed to presentation of information and methods for doing
`
`business, independent claim 1 to means for implementing such methods, and
`
`independent claim 53 to a program for computers, and because the
`
`dependent claims did not add technical character. Decision T 258f03 was
`
`cited in this respect.
`
`The claims to priority from P1 and P2 were considered to be invalid.
`
`Opponent V argued that the subject-matters of the independent claims were:
`- not new over D6
`
`- not new over D25'
`
`- not new over D1
`
`- not new over a prior use of the invention by Mr. Harris Brumfield, one of the
`
`named inventors (D36 and D37 cited as evidence; decisions T 270/90 and T
`
`743/89 cited)
`
`- not inventive over the prior art cited in the patent and common general
`
`knowledge (decisions T 541700, T 2587133 and T 125f04 cited)
`
`» not inventive over D6, D25' or D1 combined with common general
`
`knowledge or D35
`
`Several additional features of the dependent claims were considered to be
`
`anticipated by D6 andfcr D25'.
`
`EPO Form 2906 01.91TRI
`
`

`

`Datum
`Date
`Date
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`30.09.2010
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`Blatt
`Sheet
`Feuille
`
`11
`
`Anrnelde-Nr:
`ApplicationNo:
`Demands h ”z
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`01 920 183.9
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`It was indicated that D6 and 025' as well as the systems described therein
`
`were made availabte to the public before 2 March 2000 and that further facts,
`
`evidence and arguments in relation to D6 and D25' and to prior uses of the
`
`systems disclosed therein would be provided in due course.
`
`Opponent V suggested that the Opposition Division should consider which
`
`steps could be made to further investigate the prior use of the invention by Mr.
`
`Brumfield on the basis of Article 117(3) EPC 1973 and Rule 72(1) EPC 1973.
`
`VIII.
`
`In a communication dated 21 February 2006, the Opposition Division invited
`
`the Proprietor to file observations and, where appropriate, amendments to the
`
`patent within a period of 4 months.
`
`IX.
`
`In a letter dated 5 April 2006 and received at the EPO on 10 April 2006
`
`(hereinafter referred to as 0P1-1), the common representative of Opponent I
`
`indicated that common opponent Peregrine Financial Group Inc. wished to
`
`withdraw from the opposition proceedings. Additionally, oral proceedings were
`
`requested on an auxiliary basis on behalf of Opponent l.
`
`Following requests by the Proprietor dated 3 July 2006 and 3 August 2006,
`
`the time limit for replying to the communication dated 21 February 2006 was
`
`extended from 4 months to 7 months (communication dated 11 August 2008).
`
`XI.
`
`In a fax received at the EPO on 3 October 2006 (hereinafter referred to as
`
`PA1), the Proprietor replied to the notices of oppositions and requested the
`
`maintenance of the patent as granted. Oral proceedings were requested on
`
`an auxiliary basis.
`
`As regards the ground of opposition under Articie 100(b) EPC 1973,
`
`arguments were given as to why none of the objected claims extended
`
`beyond the content of the application as filed.
`
`As regards the ground of opposition under Article 100(b) EPC 1973, it was
`
`contested that claims 13 and 28 could not be carried out by a skilled person.
`
`As regards the ground of opposition under Article 100(a) EPC 1973, it was
`
`submitted that the patent was not excluded from patentabiiity by Article 52(2)
`
`and (3) EPC 1973 because it was directed to a trading tool that provides a
`
`technical solution to a technical problem, namely that of ensuring not only that
`
`the speed of order entry can be improved but that this increase in speed is not
`
`achieved at the expense of accuracy.
`
`EPO Form 2906 01.91TRI
`
`

`

`Datum
`Date
`Date
`
`30.09.2010
`
`Blatt
`Sheet
`Feuille
`
`12
`
`Anmelde-Nr:
`ApplicationNo:
`Demande n ”z
`
`01 920 183.9
`
`As regards the objection of lack of inventive step linked to the issue of
`
`technical character, it was argued that the features of the invention
`
`contributing to the solution of that technical problem could not be disregarded.
`
`Reference was also made to decision T 49r’04 to support the technical
`character of features of the invention.
`
`It was submitted that the claims to priority from P1 and P2 were valid;
`
`reference was thereby made to G 298.
`
`As regards the prior art relied upon in the notices of oppositions, the
`
`Proprietor contested that documents D6, D7, D25fD25', D26, D27, D30fD30'
`
`and the systems disclosed therein belong to the state of the art as no
`
`satisfactory proof therefor had been provided by the opponents. In the
`
`absence of such proof, these disclosures should not be considered
`
`admissible. In particular, Mr. Kawashima's deposition (D10) is not considered
`
`a sufficient proof for the allegation that D6 and the associated system form
`
`part of the prior art.
`
`It was pointed out that Mr. MacGregor's deposition (D21) is not prior art and
`cannot be used as such.
`
`As regards the alleged prior use "TIFFE" (related to D28), the Proprietor
`
`further requested that Opponent III provides as soon as possible the
`
`substance of the testimony of their witness, Mr. Ohara.
`
`As regards the alleged prior use by Mr. Brumfieid, it was submitted that the
`
`burden of proof was on the opponents and that in any case Mr. Bru mfield's
`
`use of a prototype of the invention was confidential and did therefore not
`
`constitute a prior public use.
`
`The Proprietor gave detailed reasons as to why the invention was new and
`
`inventive over the (alleged) prior art relied upon by the opponents.
`
`The Proprietor noted finally that several opponents indicated that further
`
`evidence relating to cited documents and systems would be provided in due
`course and submitted that such further evidence should not be admitted.
`
`XII.
`
`With a letter dated 26 September 2006 and received at the EPO on 10
`
`October 2006 (hereinafter referred to as 0P1-2), Qpporlemt submitted new
`evidences:
`
`EPO Form 2906 01.91TRI
`
`

`

`Datum
`Date
`Date
`
`30.09.2010
`
`Blatt
`Sheet
`Feuille
`
`13
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`Anrnelde-Nr:
`ApplicationNo:
`Demande n ”z
`
`01 920 183.9
`
`D40
`
`Slides of a presentation "Wit Digita.f Stock Market” (29 slides)
`
`[in OP1-2:"Exhibit15"]
`
`D41
`
`Collection of pages from a book by AD. Klein, "WaitStreet.corn -
`
`Fat Cat investing at the Ciick of a Mouse - How Andy Klein and
`
`the internet Can Give Everyone a Seat on the Exchange", Henry
`
`Bolt and Company, 1998
`
`[in OP1-2:"Exhibit16"]
`
`D42
`
`Deciaration of Waiter D. Buistdated 26 April 2006 in Case No. 05-
`CV-4088 in The United States District Court for the Northern
`
`District of Illinois between Rosenthal Collins Group, LLC (Plaintiff)
`
`and Trading Technologies International, Inc. (Defendant)
`
`[in OP1-2:"Exhibit17"]
`
`Opponent I submitted that "Wit Digital Stock Market" was a computer program
`
`which had been available in 1999 and anticipates the subject-matter of claim
`
`1. D40 corresponds to a presentation compiled in February 1999. D40 to D42
`
`are presented as providing details of Wit Digital Stock Market and are
`
`provided to the Opposition Division to assess the relevance of these
`
`evidences to the claims. Opponent | indicated that further evidence regarding
`
`the public availability of Wit Digital Stock Market would be provided.
`
`Xill.
`
`Following several enquiries by the Proprietor and the Opposition Division
`
`noting that "Exhibit 17" (D42) as submitted with OP1-2 was incomplete, a
`
`complete copy of "Exhibit 17" (D42) was finally submitted by gm with
`
`a letter dated 19 April 2007 and received at the EPO on 26 April 2007.
`
`XIV.
`
`In a letter dated 16 October 2008 and received at the EPO on 18 October
`
`2008, Opponent III notified the change of its name and address to
`
`Tick Trading Software Aktiengesellschaft
`
`40212 DUsseldort (DE)
`
`PRELIMINARY OPINION OF THE OPPOSITION DIVISION
`
`1
`
`Admissibiiity of the oppositions
`
`The oppositions are considered to be admissible because they comply with
`
`the requirements of Articles 99(1) and 100 EPC 1973 as well as of Rules 1 (1)
`
`and 55 EPC 1973 and, in respect of Opponent I, of Rule 100(1), last
`
`sentence, EPC 1973 (the provisions of EPC 1973 apply to the issue of
`
`admissibility because the notices of opposition were filed before the date of
`
`EPO Form 2906 01.91TRI
`
`

`

`Datum
`Date
`Date
`
`30.09.2010
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`Blatt
`Sheet
`Feuitle
`
`14
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`Anrnelde-Nr:
`ApplicationNo:
`Demande n ”z
`
`01 920 183.9
`
`entry into force of EPC 2000, see T 1279i05, point 2.1, T 1194i07, point 2 and
`
`T 25i08, point 3). The admissibility of the oppositions has not been disputed
`
`by the proprietor.
`
`2
`
`Opponent! - Withdrawai of Peregrine Financiai Group inc.
`
`Following the statement made in OP1-1 by the common representative of
`
`Opponent l, Peregrine Financial Group inc. does no longer belong to the
`
`group of common Opponents referred to as Opponent | (although remaining in
`
`principle subject to any decision yet to be taken under Article 104 EPC, see G
`
`3i99, point 15).
`
`Article 100(0) EPC 1973 - Added subject-matter
`
`3
`
`Qppgnents I, ll, IV ang V oppose the patent on the ground that the subject
`
`matters of all claims of the patent extend beyond the content of the application
`
`as filed (Article 100(0) EPC 1973).
`
`The International Patent Application published as WO 01265403 represents
`
`the application as filed.
`
`The Opposition Division notes that the Proprietor cites paragraphs of the
`
`published patent to support features of the granted claims in view of
`
`objections raised by the Opponents under Article 100(0) EPC 1973. Basis for
`
`these features should however be found in the appiication as iiied.
`
`In the
`
`following, the Opposition Division converts therefore the references to
`
`passages of the published patent provided by the Proprietor in response to
`
`the objections under Article 100(0) EPC 1973 into references to the
`
`corresponding passages of the application as filed.
`
`In the following, all the issues raised the Opponents are addressed.
`
`4
`
`Article 100(0) EPC 1973 - Independent claim 1
`
`Independent claim 1 as granted, which is directed to a client device for
`
`receiving commands relating to a commodity being traded on an electronic
`
`exchange, appears to be based on original independent claim 35, which is
`
`directed to a client system for ptacing a trade order for a commodity on an
`
`electronic exchange.
`
`EPO Form 2906 01.91TRI
`
`

`

`Datum
`Date
`Date
`
`30.09.2010
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`Blatt
`Sheet
`Feuille
`
`15
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`Anrnelde-Nr:
`ApplicationNo:
`Demande h ”z
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`01 920 183.9
`
`4,1
`
`Display of market depth (deletion)
`
`The client system of original claim 35 comprises a
`
`"display device for displaying the market depth of a commodity traded in a
`
`market, through a dynamic display of a plurality of bids and a plurality of asks
`
`in the market for the commodity, including the bid and ask quantities of the
`
`commodity".
`
`The client device of claim 1 as granted comprises means for displaying a "first
`
`indicator" and a "second indicator" associated, respectively, with the current
`
`highest bid price and the current lowest ask price for the commodity. Claim 1
`
`as granted requires thus means for displaying indicators related to the internal
`
`market but not necessarily means for displaying the market depth, as in
`
`original claim 35.
`
`Opponents l,
`
`[I and V argue that it is not directly and unambiguously derivable
`
`from the application as filed that displaying only the highest bid price and the
`
`lowest ask price was intended at the time of filing the application. They argue
`
`that the feature of displaying the market depth is an essential feature of the
`
`invention in the application as filed, this feature being included inter alia in all
`
`the original independent claims and in the section "summary of the invention"
`
`of the original description. The conditions specified in T 331l87 are therefore
`not met.
`
`The Proprietor contests that displaying the market depth is an essential
`
`feature of the invention in the application as filed. T 331l87 is therefore
`
`considered to be irrelevant. The Proprietor points to page 8, lines 13 to 17, of
`
`the application as filed. The Proprietor further argues that the invention retains
`
`its benefits even if no market depth is displayed. Reference is made to page
`
`14, line 29 to page 15, line 5 with reference to figures 3 and 4 of the
`
`application as filed to show that only the inside market really matters.
`
`The Opposition Division tends to agree with the Proprietor that claim 1 as
`
`granted does not extend beyond the content of the application as filed in this
`
`respect.
`
`Reference is made to the paragraph bridging pages 7l8 of the application as
`filed:
`
`"The preferred embodiments of the present invention include the display of
`
`"Market Depth " [...] Market Depth represents the order book with the current
`
`bid and ask prices and quantities in the market. in other words, market depth
`
`is each bid and ask that was entered into the market, subiect to the limits
`
`EPO Form 2906 01.91TRI
`
`

`

`Datum
`Date
`Date
`
`30.09.2010
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`Blatt
`Sheet
`Feuitle
`
`16
`
`Anmelde-Nr:
`ApplicationNo:
`Demande n ”z
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`01 920 183.9
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`
`noted beiow in addition to the inside market. For a commodity being traded,
`
`the 'inside market' is the highest bid price and the iowest ask price. "
`
`(underlining added)
`
`The limits referred to in this passage are addressed at page 8, lines 13 to 17:
`
`"How far into the market depth the present invention can dispiay depends on
`
`how much of the market depth the exchange provides. Some exchanges
`
`suppiy an infinite market depth, white others provide no market depth or oniy a
`
`few orders away from the inside market. The user of the present invention can
`
`aiso chose how far into the market depth to dispiaz on his screen. "
`
`(underlining added)
`
`It appears to follow directly and unambiguously from these two passages of
`
`the application as filed that the "present invention" may display only the inside
`
`market without any additional bid or ask.
`
`The assertion of the Opponents that the display of market depth - understood
`
`as the display of bids and asks that were entered into the market in addition to
`
`the inside market- is an essential feature of the invention in the application as
`
`filed is not followed by the Opposition Division in view of the above-mentioned
`
`passages. This finding is furthermore consistent with the fact that the
`
`description of the operation of the invention from page 14, line 29 to page 15,
`
`line 15 in combination with figures 3 and 4 focuses on the display and
`
`movement of the internal market, as noted by the Proprietor.
`
`42
`
`"Fieid of static prices "
`
`Claim 1 as granted refers to a "field of static prices" whereas original claim 35
`
`refers to a ”static display of prices”.
`
`Opponents | and V argue that the expression "fietd of static prices", with
`
`emphasis on the term "field", is an impermissible generalisation of what is
`
`disclosed in the application as filed.
`
`The Proprietor states that this expression is clearly supported by the
`
`description and refers to the minutes of the oral proceedings before the
`
`Examining Division, in which it is indicated that the Examining Division
`
`suggested the last paragraph of page 12 as a possible basis for an
`amendment.
`
`The Opposition Division considers that claim 1 as granted does not extend
`
`beyond the content of the application as filed in this respect.
`
`EPO Form 2906 01.91TRI
`
`

`

`Datum
`Date
`Date
`
`30.09.2010
`
`Blatt
`Sheet
`Feuille
`
`1?
`
`Anrnelde-Nr:
`Applicationth:
`Demande n ”z
`
`01 920 183.9
`
`As regards the use of the term "field" in respect of the display of prices, it is
`
`noted that the description refers mainly to a "column of prices" or to a "price
`
`column" because this is how prices are displayed in the