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`Paper No.
`Filed: March 6, 2015
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`TD AMERITRADE HOLDING CORP., TD AMERITRADE, INC.,
`AND TD AMERITRADE ONLINE HOLDINGS CORP.
`Petitioners
`
`v.
`
`TRADING TECHNOLOGIES INTERNATIONAL, INC.
`Patent Owner
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`Case CBM2014-00133
`Patent 7,676,411
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`Patent Owner’s Response
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`I. 
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`II. 
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`Case No. CBM2014-00133
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`TABLE OF CONTENTS
`
`INTRODUCTION ....................................................................................................... 1 
`
`THE CLAIMS ARE DIRECTED TO PATENTABLE
`TECHNOLOGY–A GUI TOOL .............................................................................. 4 
`
`A. 
`
`The Patented Invention Solved Technical Problems with Prior
`GUIs .................................................................................................................... 4 
`
`1. 
`
`2. 
`
`3. 
`
`The Conventional GUIs ....................................................................... 4 
`
`The Problem with Conventional GUIs: Missing
`Intended Prices ....................................................................................... 6 
`
`The Claimed Solution to the Problem: A New GUI
`That Improved Speed, Accuracy, and Usability ................................ 7 
`
`B. 
`
`The Claimed Features and Functionality of the Improved GUI
`Are an Inventive Concept, Not Conventional ............................................ 17 
`
`1. 
`
`The Claimed GUI Features Were the Inventive
`Contribution .......................................................................................... 20 
`
`C. 
`
`A New GUI Is New Technology .................................................................. 25 
`
`III.  THE CURRENT § 101 FRAMEWORK ................................................................ 27 
`
`IV.  THE CLAIMS ARE PATENT ELIGIBLE BECAUSE THERE IS
`NO PREEMPTION CONCERN ........................................................................... 29 
`
`A. 
`
`The Claims Fail to Impermissibly Preempt Because There Is
`Evidence that Other Ways to Practice the Abstract Idea Using
`a Computer Exist ............................................................................................. 29 
`
`1. 
`
`2. 
`
`3. 
`
`Non-Infringing TT Product that Allows Placing a Trade
`Order in Response to Observing Market Data ............................... 30 
`
`Non-Infringing TD Product that Allows Placing a
`Trade Order in Response to Observing Market Data .................... 31 
`
`Non-Infringing CQG Product that Allows Placing a
`Trade Order in Response to Observing Market Data. ................... 33 
`
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`i
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`V. 
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`Case No. CBM2014-00133
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`4. 
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`Non-Infringing ORC Product that Allows Placing a
`Trade Order in Response to Observing Market Data .................... 35 
`
`UNDER A PROPER OF THE ALICE TEST, THE CLAIMS ARE
`ELIGIBLE UNDER 35 U.S.C. 101. ........................................................................ 36 
`
`A. 
`
`B. 
`
`The Claims Are Not Directed To the Abstract Idea Adopted
`In the Institution Decision ............................................................................. 37 
`
`The Claims Recite an Inventive Concept Other Than An
`Abstract Idea. .................................................................................................... 41 
`
`VI.  THE PTAB SHOULD NO LONGER ADOPT THE PETITION’S
`§ 101 ANALYSIS ........................................................................................................ 43 
`
`A. 
`
`B. 
`
`C. 
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`There Is No Evidence That the Claims Recite a Conventional
`GUI or an Abstract Idea ................................................................................. 43 
`
`Software Inventions Are Patentable Even If Performed On a
`Generic Computer ........................................................................................... 45 
`
`New Case Law Confirms That the Claims are Patent Eligible ................. 47 
`
`VII.  THE PTAB SHOULD DISMISS THE PROCEEDING BECAUSE
`IT LACKS JURISDICTION .................................................................................... 50 
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`D. 
`
`The Decision Misapplied the Technological Invention Test .................... 54 
`
`1. 
`
`2. 
`
`The Claim Limitations Recite Novel and Nonobvious
`Technology ............................................................................................ 54 
`
`a. 
`
`The Claims Recite a Technological Feature That
`Is Novel and Nonobvious ................................................ 55 
`
`The Claims Solve Technical Problems with a Technical
`Solution .................................................................................................. 58 
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`ii
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`Cases
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`Case No. CBM2014-00133
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`TABLE OF AUTHORITIES
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` Page(s)
`
`Alice Corp. Pty. v. CLS Bank Int'l,
`134 S. Ct. 2347 (2014) ................................................................................................. passim
`
`Bancorp Servs., L.L.C. v. Sun Life Assur. Co. of Canada (U.S.),
`687 F.3d 1266 (Fed. Cir. 2012) ........................................................................................ 37
`
`In re Bilski,
`545 F.3d 943 (Fed. Cir. 2008)(en banc), aff’d on other grounds, Bilski v.
`Kappos, 130 S. Ct. 3218 (2010) ......................................................................................... 37
`
`Bilski v Kappos,
`561 U.S. 593 (2010) ........................................................................................................... 45
`
`DDR Holdings LLC v. Hotels.com, L.P.,
`773 F.3d 1245 (Fed. Cir. 2014) .................................................................................. passim
`
`Diamond v. Chakrabarty,
`447 U.S. 303 (1980) ........................................................................................................... 27
`
`Mayo Collaborative Servs. v. Prometheus Labs.,
`132 S. Ct. 1289 (2012) ................................................................................... 27, 28, 37, 38
`
`MCM Portfolio LLC v. Hewlett-Packard Co.,
`No. 15-1091 (Fed. Cir.) ..................................................................................................... 51
`
`OpenTV, Inc. v. Netflix Inc.,
`No. 14-cv-01525-RS, 2014 WL 7185921 (N.D. Cal. Dec. 16, 2014) ......................... 49
`
`Parker v. Flook,
`437 U.S. 584 (1978) ........................................................................................................... 45
`
`Smartflash LLC v. Apple, Inc.,
`Dkt. 423 at 18, 20 (E.D. Tex. Jan. 21, 2015) ................................................................. 49
`
`Trading Techs. Inst’l, Inc. v. eSpeed, Inc.,
`595 F.3d 1340 (Fed. Cir. 2010) ........................................................................................ 25
`
`iii
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`

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`Trading Techs. Int’l. Inc., v. eSpeed, Inc. et al.,
`Case No. 04-cv-5312, Dkt. 1140 (Jan. 3, 2008) ...................................................... passim
`
`Case No. CBM2014-00133
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`Ultramercial v. Hulu, LLC,
`772 F.3d 709 (2014) .................................................................................................... 28, 46
`
`Statutes
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`AIA § 18 ............................................................................................................................... 3, 50
`
`35 U.S.C. § 101 ................................................................................................................... passim
`
`35 U.S.C. § 326(e) .................................................................................................................... 44
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`Other Authorities
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`79 Fed. Reg. 241, 74635 (Dec. 16, 2014) ............................................................................. 30
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`U.S. Const. Art. III, § 1 .......................................................................................................... 50
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`iv
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`I.
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`INTRODUCTION
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`Case No. CBM2014-00133
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`The claimed invention is directed to patent-eligible subject matter—the
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`technical features of an innovative graphical user interface (GUI). Claims to such
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`technological improvements are eligible under both steps of the two-part test set forth
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`in Alice. First, the claimed technical features are directed to a specific tool, not the
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`purported abstract idea of “placing an order for a commodity based on observed
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`market information, as well as updating the market information.” 1 Indeed, there are
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`hundreds—if not thousands—of other ways to place a trade order in response to
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`observing market data without utilizing the claimed invention, making clear that the
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`purported abstract idea is not preempted by the claims. As such, the claimed
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`invention is not directed to an abstract idea. Second, the claimed elements, either
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`individually or as a combination, ensure that the claims in practice amount to
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`significantly more than a patent on the purported abstract idea. As such, the claimed
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`invention sets forth the inventive concept to satisfy the second prong of the two-part
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`Alice test.
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`A district court recently concluded that the claims of the ’411 patent’s parent,
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`U.S. Patent No. 6, 7722,132 (“the ’132 patent”) are eligible under both prongs of the
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`1 For purposes of this response, TT will use the purported abstract idea set forth by
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`the district court and PTAB, but any analysis and conclusions apply equally to the
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`more general abstract idea set forth by the Petitioner.
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`1
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`Case No. CBM2014-00133
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`Alice framework because the claims are not directed to an abstract idea and, even if
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`they were, the claims recite an inventive concept that ensures that the patent is
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`directed to more than the abstract idea itself. The district court used the same
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`purported abstract idea in this analysis as the Board. The district court found TT’s
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`claims not directed to an “abstract idea”, but technological in nature, “solv[ing]
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`problems of prior graphical user interface devices (GUIs), in the context of
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`computerized trading, relating to speed, accuracy and usability.” Ex. 2200, Trading
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`Techs. Int’l, Inc. v. CQG, 05-cv-4811 (N.D. Ill. Feb. 24, 2015) (Dkt. 1073). The district
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`court held that TT’s claims are rooted in computer technology—particular features
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`and functionality of a specialized GUI (i.e., a graphical device/tool) that happens to
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`be used for placing trade orders and displaying market information. Id. at 5-7. There
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`is no material difference between the claims of the ’132 patent and the ’411 patent for
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`the purposes of 35 U.S.C. § 101. Indeed, the distinguishing features relied upon by the
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`PTAB to deny the prior art grounds were similar:
`
`’132 Patent
`displaying an order entry region aligned
`with the static display prices
`comprising a plurality of areas for receiving
`commands from the user input devices
`to send trade orders, each area
`corresponding to a price of the static
`display of prices; and
`
`’411 Patent
`displaying, via the computing device, an
`order entry region comprising a
`plurality of graphical areas for receiving single
`action commands to set trade order prices and
`send trade orders, each graphical area
`corresponding to a different price
`level along the price axis; and
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`2
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`Case No. CBM2014-00133
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`selecting a particular area in the order
`entry region through single action of the
`user input device with a pointer of the
`user input device positioned over the
`particular area to set a plurality of
`additional parameters for the trade
`order and [to] send the trade order to the
`electronic exchange.
`
`CBM2014-00135, Paper 19, ’132 Inst.
`Dec. at 17 (emphasis in original).
`
`
`selecting a particular graphical area in the
`order entry region through a single action
`of the user input device to both set a
`price for the trade order and [to] send
`the trade order having a default quantity
`to the electronic exchange.
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`
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`Inst. Dec. at 17 (emphasis in original).
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`TD’s assertion that TT’s claims in both patents are directed to the abstract idea
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`of “placing a trade order in response to observing market data” is false because the
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`claims do not preempt placing trade orders in response to observing market data.
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`Instead, TT’s claims are rooted in computer technology—particular features and
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`functionality of a specialized GUI (i.e., a graphical device/tool) that happens to be
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`used for placing trade orders and displaying market information. As such, the claims
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`have no issues of eligibility under § 101.
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`Moreover, because the claimed technology improves prior technology by
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`solving problems of prior GUIs, in the context of computerized trading, relating to
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`speed, accuracy and usability,” there is no standing to challenge the patent under AIA
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`Section 18.
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`3
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`Case No. CBM2014-00133
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`II.
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` THE CLAIMS ARE DIRECTED TO PATENTABLE
`TECHNOLOGY–A GUI TOOL
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`TT’s claims are directed to patentable subject matter in the form of technical
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`features of an innovative GUI tool. The claimed GUIs are highly specialized tools
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`used for mission-critical applications. Ex. 2201, Thomas Report, ¶¶ 19-31. Although
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`inventiveness is not required to be eligible under § 101, the inventiveness in all of the
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`claims rests upon the combination of particular features of a GUI tool, not practicing
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`a method of doing business or data processing. While the claimed tool could be used
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`to implement trading strategies (e.g., buy low/sell high), the claims are not directed to
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`any trading strategy. Instead, the record is clear that the claims are directed to a
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`specific improvement to GUIs used to conduct a trade on a computer. These types of
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`improvements are patent eligible under 35 U.S.C. § 101.
`
`A.
`
`The Patented Invention Solved Technical Problems with Prior
`GUIs
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`The claims are directed to a technological improvement. The inventor, using
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`the conventional trading GUIs, identified a problem (an order entered at an
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`unintended price). Then, he created a new GUI to solve that problem. Id.
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`1.
`Prior to the invention, there was well-accepted conventional wisdom regarding
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`The Conventional GUIs
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`the design of an order-entry GUI. Ex. 2201 at ¶¶ 15, 19-27. Electronic order tickets,
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`in which different parameters of the order were filled out by the user, were an
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`4
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`Case No. CBM2014-00133
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`example of one type of conventional GUI that provided a high level of accuracy but
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`required a sacrifice of speed. Id. at ¶ 19.
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`Prior art GUIs, like the one in Figure 2 of the patents (shown below with
`
`annotations), were an example of another type of conventional GUI that performed
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`faster than the order tickets:
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`
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`Id. at ¶ 21. In Figure 2 style screens, the best bid and best ask price are displayed at
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`fixed locations on the screen and those numbers change in response to every change
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`in the inside market. Id. at ¶ 22-23. The other displayed bid and ask prices similarly
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`change based on updates received from the market. Id. Therefore, the displayed prices
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`are constantly changing in response to changes in the market. Id. These types of tools
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`fix the inside market in a specified location. Id. Figure 2 provides an example of one
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`design of such a prior art style screen. Other designs of such style screens (where the
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`inside market is displayed in a fixed location) existed and continue to be developed
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`and commonly used today. Id. at ¶¶ 24-28.
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`Those of ordinary skill in the art at the time of the invention viewed Figure 2
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`5
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`Case No. CBM2014-00133
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`style screens as satisfying well-understood design criteria and providing numerous
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`advantages. Id. at ¶¶ 24-28. For example, fixing the display of the inside market at a
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`designated location allows a user to easily locate and focus on the most important
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`information—the inside market. Id. at ¶ 25. At any given time, a trader could look at
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`the prior art tool and immediately know the current state of the market. Id. These
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`tools also allow the trader to rapidly and accurately enter market orders (orders made
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`at the inside market prices) by clicking on the location for the best bid or best ask
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`prices. Id. Moreover, these tools conserve precious screen real estate. Id. at ¶ 26.
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`2.
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`The Problem with Conventional GUIs: Missing Intended
`Prices
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`One of the inventors (Mr. Brumfield), however, encountered a problem with
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`this type of tool. Id. at ¶ 31. He was focused on entering orders at particular prices, as
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`opposed to market-type orders. Ex. 2011, eSpeed Trial Tr., 682-706. If Mr. Brumfield
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`wanted to use fast single action order entry on the prior art tools to enter an order at a
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`particular price level, he sacrificed accuracy for speed. Id. In particular, he risked
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`missing his intended price as a result of prices changing under his pointer right at the
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`time he clicked on a cell. Id. The following example slide from the tutorial illustrates
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`the problem:
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`Case No. CBM2014-00133
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`Ex. 2202, 101 Hearing Presentation, PTX 6045. This problem with inaccuracy is
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`described in the patent. See, e.g., Ex. 1001, 2:60-67.
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`3.
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`The Claimed Solution to the Problem: A New GUI That
`Improved Speed, Accuracy, and Usability
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`To address this problem, Mr. Brumfield conceived the design of a novel and
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`nonobvious GUI tool (ultimately covered by the claims of the patent) that improved
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`upon the speed and accuracy of the prior art GUIs for orders intended to be sent at
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`particular prices. The independent claims of the ’411 patent claim this solution by
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`requiring the combination of a price axis, bid and ask display regions, dynamically
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`displayed bid/ask indicators in locations of the bid/ask display regions corresponding
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`to levels on the price axis, moving bid/ask indicators relative to the price axis based
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`on market changes, and an order entry region with areas corresponding to price levels
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`7
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`Case No. CBM2014-00133
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`of the price axis that receive single action commands to set a price and send an order.
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`The chart below shows the elements of claim 1 of the ’411 patent and how those map
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`with features of a GUI tool as illustrated in Figures 3 and 4.
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`Graphical User Interface Elements
`
`Claim Elements
`1. A method of displaying
`market information relating to
`and facilitating trading of a
`commodity being traded on
`an electronic exchange, the
`method comprising:
`
`Display
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`8
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`Case No. CBM2014-00133
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`
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`receiving, by a computing
`device, market
`information
`for a commodity from an
`electronic
`exchange,
`the
`market
`information
`comprising an inside market
`with a current highest bid
`price and a current lowest ask
`price;
`
`displaying, via the computing
`device, a bid display region
`comprising a plurality of
`graphical
`locations,
`each
`graphical location in the bid
`display region corresponding
`to a different price level of a
`plurality of price levels along
`a price axis;
`
`Graphical
`location
`
`Bid
`Display
`Region
`
`Corresponding
`Price Level of
`Axis
`
`
`
`Axis of corresponding price levels
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`9
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`Case No. CBM2014-00133
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`
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`displaying, via the computing
`device, an ask display region
`comprising a plurality of
`graphical
`locations,
`each
`graphical location in the ask
`display region corresponding
`to a different price level of
`the plurality of price levels
`along the price axis;
`
`Ask Display Region
`
`Graphical
`Location
`
`Corresponding
`Price Level
`
`
`Axis of Corresponding Price Levels
`
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`10
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`Case No. CBM2014-00133
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`dynamically displaying, via the
`computing device, a
`first
`indicator
`representing
`quantity associated with at
`least one trade order to buy
`the commodity at the current
`highest bid price in a first
`graphical
`location of
`the
`plurality of graphical locations
`in the bid display region, the
`first graphical location in the
`bid
`display
`region
`corresponding to a price level
`associated with the current
`highest bid price;
`
`First
`Graphical
`Location
`
`Dynamically
`Displayed
`First Indicator
`
`Corresponding
`Price Level of
`Axis
`
`
`
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`11
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`Case No. CBM2014-00133
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`receipt of market
`upon
`information comprising a new
`highest bid price, moving the
`first indicator relative to the
`price
`axis
`to
`a
`second
`graphical
`location of
`the
`plurality of graphical locations
`in the bid display region, the
`second
`graphical
`location
`corresponding to a price level
`of the plurality of price levels
`associated with
`the new
`highest bid price, wherein the
`second graphical location is
`different
`from
`the
`first
`graphical location in the bid
`display region;
`
`Second
`Graphical
`Location
`
`Moved First
`Indicator
`
`New
`Corresponding
`Price Level of
`Axis
`
`
`
`
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`12
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`

`

`
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`
`
`Dynamically
`Displayed
`Second
`Indicator
`
`First Graphical
`Location
`
`
`
`dynamically displaying, via the
`computing device, a second
`indicator
`representing
`quantity associated with at
`least one trade order to sell
`the commodity at the current
`lowest ask price in a first
`graphical
`location of
`the
`plurality of graphical locations
`in the ask display region, the
`first graphical location in the
`ask
`display
`region
`corresponding to a price level
`associated with the current
`lowest ask price;
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`Case No. CBM2014-00133
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`Corresponding
`Price Level of
`Axis
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`13
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`Case No. CBM2014-00133
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`Moved
`
`Second
`
`Indicator
`
`Second
`Graphical
`Location
`
`
`
`receipt of market
`upon
`information comprising a new
`lowest ask price, moving the
`second indicator relative to
`the price axis to a second
`graphical
`location of
`the
`plurality of graphical locations
`in the ask display region, the
`second
`graphical
`location
`corresponding to a price level
`of the plurality of price levels
`associated with
`the new
`lowest ask price, wherein the
`second graphical location is
`different
`from
`the
`first
`graphical location in the ask
`display region;
`
`New
`Corresponding
`Price Level of
`Axis
`
`
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`14
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`Case No. CBM2014-00133
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`Order Entry Region
`
`
`
`displaying, via the computing
`device, an order entry region
`comprising a plurality of
`graphical areas for receiving
`single action commands to set
`trade order prices and send
`trade orders, each graphical
`area
`corresponding
`to
`a
`different price level along the
`price axis; and
`
`Plurality of
`Graphical
`Areas for
`Receiving
`Single
`Action
`Commands
`
`
`
`Corresponding
`Price Levels of
`Axis
`
`
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`15
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`Case No. CBM2014-00133
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`selecting a particular graphical
`area in the order entry region
`through a single action of the
`user input device to both set a
`price for the trade order and
`send the trade order having a
`default
`quantity
`to
`the
`electronic exchange.
`
`In addition, the inventive GUI tool provided an unexpected benefit of solving
`
`
`
`another technical problem with the prior art GUIs—the usability of such GUIs. The
`
`interaction of the price axis and dynamic indicator elements of the new tool better
`
`represented the market and changes in the market than prior art style GUIs. Ex. 2011
`
`at pp. 703-706; Ex. 2201 at ¶ 33. For example, allowing the market indicators to move
`
`up and down relative to the price axis (which results from the claimed juxtaposing of
`
`the dynamic indicators and the price axis) allowed a user to enter orders more quickly
`
`and accurately at desired prices than prior tools and provided more intuitive market
`
`visualization. Id. This improved visualization is described in the patents (see, e.g., Ex.
`
`1001, 7:35-63), and is seen by comparing Figures 3 and 4.
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`16
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`Case No. CBM2014-00133
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`Over an extensive period, Mr. Brumfield spent significant resources working
`
`with technical consultants from TT to develop a working prototype. Ex. 2011 at 696-
`
`99. Like a physical device, the GUI tool needs to be built—but from code as opposed
`
`to physical materials. While a physical device with segmented readouts for display and
`
`buttons to accept inputs to place orders might have been constructed, a computer is
`
`the modern “raw material” from which new tools can more efficiently be made. While
`
`a tool can be built on a conventional computer, the tool itself, here an improved
`
`GUI—is hardly conventional. It improves the functioning of the computer, if not
`
`transforms it.
`
`B. The Claimed Features and Functionality of the Improved GUI Are
`an Inventive Concept, Not Conventional
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`Importantly, TD does not address the details of the claims. Rather, TD only
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`generalizes the claims. Pet., pp. 12-14. TD ignores the substantive elements of the
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`body of the claims, which set forth detailed requirements for the structural and
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`functional features of the claimed GUI tool instead of merely a generic, non-particular
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`GUI. For example, TD’s assertions, at best, only address the highlighted portions of
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`claim 1 below, resulting in a phantom claim that ignores the GUI improvement at the
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`heart of the ’411 patent:
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`Addressed Elements
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`Phantom Claim
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`The fact that the claims are directed to an improved GUI, rather than a generic
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`GUI, shows that the claims are not directed to an abstract idea and recite an inventive
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`concept beyond an abstract idea. The claims do not recite a generic GUI because all
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`claims of the ’411 patent recite the features of the improved GUI. Supra at II.A. None
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`of the claims are merely directed to a method of placing an order or to display market
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`data. Instead, the novel and nonobvious elements of all of the claims are directed to
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`the structure and makeup of a particular, improved GUI tool. A novel and
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`nonobvious GUI is not conventional.
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`As shown below, the combination of structural and functional GUI features is
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`why the claims were allowed over the prior art. Further, the claims not only recite
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`structural components, they also recite the make-up and placement of these features
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`relative to each other. TD fails to address any of these claim elements, alone or in
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`combination. For this reason alone, TD fails to meet its burden of proving the claims
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`ineligible under § 101.
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`Moreover, the dependent claims require additional GUI features that provide
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`additional support for patent eligibility. For example, some dependent claims are
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`directed to dynamically displaying an entered or working order indicator, or a last
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`traded quantity in alignment with price levels (e.g., Ex. 1001, claims 9 and 10). Other
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`dependent claims are directed to displaying bid/ask order entry regions that overlap
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`the bid/ask display regions (e.g., Ex. 1001, claim 4).
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`1.
`The PTAB has the benefit of numerous decisions confirming the nature of the
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`The Claimed GUI Features Were the Inventive Contribution
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`invention was a specific, innovative GUI that improved prior GUIs—not trading
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`using a GUI in the abstract. During prosecution of the ’411 patent, the claims were
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`allowed because they recite novel technology—a GUI combining a price axis,
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`dynamic displays aligned with the price axis, displaying best bid/ask indicators that
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`move relative to the price axis when the market changes and an order entry region
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`with areas corresponding to price levels on the axis for receiving single action
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`commands to set a price and send an order at the corresponding price level. During
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`prosecution, the claims where allowed by adding the axis, movement of indicators
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`relative to the axis, and the order entry region with areas for receiving single action
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`commands, see Ex. 1002, pp. 132-133 (showing the claim amendment) and pp.
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`157-160 (allowing the application in the next action).
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`The extensive examination histories (both in original examination and then in
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`reexaminations) of the ’132 and ’304 patents are relevant to the ’411 patent. When the
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`Office examined the ‘132/’304 claims originally (including during second set of eyes
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`quality review) and on reexamination, it was using the broadest reasonable
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`interpretation of the term “static”—price levels do not normally move unless a
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`re-centering command is received. This construction is met by a GUI with a price axis
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`in which the best bid and ask indicators move relative to the price axis based on
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`market changes. In other words, when the Office examined the ‘132 and ‘304 claims
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`to assess whether the combination of a “static” price axis, dynamic indicators and
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`single action order entry was novel and nonobvious, it was looking at the same issue
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`that it assessed in allowing the ’411 patent claims.
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`The main reason TT pursued the ’411 patent claims was the fact that the term
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`“static” in the ‘132/’304 patents was construed more narrowly in litigation as “price
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`levels do not move unless a manual re-positioning command is received.” Trading
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`Techs., 728 F.3d at 1315. The Examiner agreed that TT was entitled to a patent
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`without the term “static” as construed, because he viewed the new claims (with
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`relative movement) to be of the same scope. Ex. 1002, pp. 84-88 (10/06/08 Office
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`Action) (Making double patenting rejection stating the ’411 claims (that do not use the
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`word “static,” but instead recite “relative movement” of the best bid/ask indicators
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`relative to a price axis) were, in the Examiner’s eyes, “commensurate in scope” with
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`the claims of the ’132 patent (which recite “static”)).2 In the end, the same Examiner
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`allowed the ’411 claims over the same art considered in the ’132/’304 patents both
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`originally and on reexamination.
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`2 The Office Action actually cites to the wrong application number for the ’132
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`patent, but that it is clear from office action response and the reference to claims 1-56
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`in the office action (the ’132 patent has claims 1-56), that the Examiner was referring
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`to the ’132 patent. Ex. 1002, p. 140.  
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`Moreover, the prosecution history of related cases in the family of the
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`‘132/’304/’411 patents makes clear that the Examiner did not agree with this
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`narrower construction of “static.” For example, in a response to an office action in
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`Application No. 11/585,966 (which ultimately issued as U.S. Patent No. 7,725,382),
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`there is an interview summary explaining that an amendment adding the term “static”
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`to a claim that provided for updating bid/ask indicators to move relative to a price
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`axis in response to receipt of new market data was merely a clarifying amendment. Ex.
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`2063, pp. 7-8. The office action response makes clear that this amendment did not
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`“substantively narrow” the claim and that the “amendment was agreed upon with the
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`understanding that ‘static’ means what is stated in the specification – that the price
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`levels ‘do not normally change positions unless a recentering command is received.’”
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`Id., p. 8. Similarly, in the comments on allowance for Application No. 11/415,163 (the
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`direct parent of the ’411 patent and which ultimately issued as U.S. Patent No.
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`7,813,996), applicant notes that the claims in that case, the ’132 patent, as well as other
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`applications in the family recite a “static” price axis. Ex. 2064., p. 1. The comments
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`make clear that
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`both Applicant and Examiner interpreted the term ‘static’
`broader when prosecuting and examining the present
`application and other related cases … than the courts did in
`the litigation of the ’132 patent . . . . it has been understood,
`as confirmed by various discussions with the Examiner
`throughout the examination of this family of cases,
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`including the present application, that a ‘static’ price axis
`may include a mode or condition in which there is as
`possibility
`that
`the price
`levels change positions
`automatically…This understanding
`is founded on the
`specification, which states that the price levels ‘do not
`normally change positions unless a recentering command is
`received,’ and provides a visual comparison of the display
`between a time 1 (FIG. 3) and a subsequent time 2 (FIG.
`4), which by itself demonstrates the operation of a static
`price axis …. Indeed, the fact that a price axis can be re-
`centered is indicative that the price axis is static, but a static
`price axis is not defined by how it is re-centered.
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`Id. at pp. 1-2.
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`In the related ’132 patent, the same Examiner allowed the claims because they
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`recite novel and non-obvious technology—a GUI combining static and dynamic
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`d