ROBERT E. SOKOHL
`(202) 772-8677
`RSOKOHL@SKGF.COM
`
`December 18, 2014
`
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`Stow Kessler
`Goldstein Fox
`
`Mall Stop PATENT BOARD
`
`Re: (cid:9)
`
`Petitioners’ Requests for Rehearing
`U.S. Patent No. 7,676,411 II CBM2014-00133
`U.S. Patent No. 6,772,132/I CBM2014-00135
`U.S. Patent No. 7,685,055/I CBM2014-00137
`
`Dear PTAB:
`
`Due to the PRPS service outage on December 16, 2014, counsel for Petitioners in the
`
`above-captioned Covered Business Method Review proceedings were instructed by Maria
`
`Vignone, a paralegal at the USPTO, to submit filings (Requests for Rehearing) due on December
`16, 2014, via e-mail to tria1s(uspto.gov . Counsel for Petitioners filed and served the Requests
`for Rehearing in the above-captioned proceedings via email on December 16, 2014, as
`
`instructed. Ms. Vignone authorized Counsel via email to file the Requests for Rehearing via
`
`PRPS on December 17, 2014, once PRPS was operational.
`
`Respectfully submitted,
`
`S, SSLER, GOLDSTEIN & Fox P.L.L.C.
`
`Robert B. Sokohl (Reg. No. 36,013)
`Attorney for Petitioners, TD Ameritrade Holding
`Corp., TD Ameritrade, Inc., and TD Ameritrade
`Online Holdings Corp.
`
`1945872_i .DOCX
`
`SKGF.COM
`
`
`(202) 772-8677
`RSOKOHL@SKGF.COM
`
`December 18, 2014
`
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`Stow Kessler
`Goldstein Fox
`
`Mall Stop PATENT BOARD
`
`Re: (cid:9)
`
`Petitioners’ Requests for Rehearing
`U.S. Patent No. 7,676,411 II CBM2014-00133
`U.S. Patent No. 6,772,132/I CBM2014-00135
`U.S. Patent No. 7,685,055/I CBM2014-00137
`
`Dear PTAB:
`
`Due to the PRPS service outage on December 16, 2014, counsel for Petitioners in the
`
`above-captioned Covered Business Method Review proceedings were instructed by Maria
`
`Vignone, a paralegal at the USPTO, to submit filings (Requests for Rehearing) due on December
`16, 2014, via e-mail to tria1s(uspto.gov . Counsel for Petitioners filed and served the Requests
`for Rehearing in the above-captioned proceedings via email on December 16, 2014, as
`
`instructed. Ms. Vignone authorized Counsel via email to file the Requests for Rehearing via
`
`PRPS on December 17, 2014, once PRPS was operational.
`
`Respectfully submitted,
`
`S, SSLER, GOLDSTEIN & Fox P.L.L.C.
`
`Robert B. Sokohl (Reg. No. 36,013)
`Attorney for Petitioners, TD Ameritrade Holding
`Corp., TD Ameritrade, Inc., and TD Ameritrade
`Online Holdings Corp.
`
`1945872_i .DOCX
`
`SKGF.COM
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`TD AMERITRADE HOLDING CORP.,
`TD AMERITRADE, INC.,
`TD AMERITRADE ONLINE HOLDINGS CORP.
`Petitioners
`
`v.
`
`TRADING TECHNOLOGIES INTERNATIONAL, INC.
`Patent Owner
`____________________
`
`Case CBM2014-00133
`Patent No. 7,676,411 B2
`____________________
`
`
`PETITIONERS’ REQUEST FOR REHEARING
`
`
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
`
`
`
`
`I.
`
`II.
`
`
`
`CBM2014-00133
`U.S. Patent No. 7,676,411 B2
`
`Table of Contents
`
`Relief Requested .............................................................................................. 1
`
`Introduction ...................................................................................................... 1
`
`III. The Board should have decided to institute review on the asserted grounds
`that claims 1-28 are obvious over the Silverman combinations. ..................... 2
`
`A.
`
`B.
`
`The Board misapprehended the Petition’s discussion of Gutterman as
`addressing the “single action” limitations. ............................................ 3
`
`The Board overlooked key arguments in the Petition that Togher
`meets the “single action” limitations. .................................................... 5
`
`IV. Conclusion ....................................................................................................... 9
`
`
`
`
`
`
`
`
`
`
`- i -
`
`
`
`
`
`I.
`
`Relief Requested
`
`
`
`CBM2014-00133
`U.S. Patent No. 7,676,411 B2
`
`Petitioners and real parties-in-interest, TD Ameritrade Holding Corp., TD
`
`Ameritrade, Inc., and TD Ameritrade Online Holdings Corp., (“TD Ameritrade”)
`
`respectfully ask the Board to reconsider its decision to not institute review of U.S.
`
`Patent No. 7,676,411 B2 (“the ’411 patent”) (Ex. 1001), owned by Trading
`
`Technologies International, Inc. (“TTI”), on the ground that claims 1-28 are
`
`unpatentable under 35 U.S.C. § 103 over Silverman, Gutterman, and Togher.
`
`II.
`
`Introduction
`
`TD Ameritrade petitioned (paper 1) (“Pet.”) the Board seeking CBM
`
`Review of the ’411 patent on the following grounds:
`
`
`
`1
`2
`
`3
`4
`
`Claims
`1-28
`1-10, 12-28
`
`11
`1-28
`
`
`Pet. at 7-9.
`
`Ground
`§ 101
`§ 103 Silverman (Ex. 1003), Gutterman (Ex. 1004), Togher
`(Ex. 1005)
`§ 103 Silverman, Gutterman, Togher, and Paal (Ex. 1018)
`§ 103 TSE (Ex. 1006/1007) and Togher
`
`In its Decision (paper 19), the Board instituted review on the § 101 ground,
`
`but denied instating review of all the § 103 grounds. Decision at 22. TD
`
`Ameritrade seeks rehearing of the Board’s decision to not institute review under
`
`§ 103 based on the Silverman combinations (i.e., grounds 2 and 3).
`
`
`
`
`
`
`- 1 -
`
`
`
`
`
`III. The Board should have decided to institute review on the asserted
`grounds that claims 1-28 are obvious over the Silverman combinations.
`
`Independent claim 1 of the ’411 patent requires,
`
`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
`
`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.
`’411 patent 13:7-16.
`
`Independent claim 26 requires similar limitations. Id. at 16:7-16. The
`
`Petition relied on Togher, combined with Silverman and Gutterman, to meet the
`
`“single action” limitations. Pet. 21-22, 40-44. The Board erred when it denied
`
`instituting review of claims 1-28 over the Silverman, Gutterman, and Togher
`
`combination because it misapprehended the Petition as relying on Gutterman alone
`
`to disclose the “single action” limitations, Decision 17, and overlooked key
`
`arguments in the Petition that Togher meets the “single action” limitations.
`
`
`
`
`
`
`
`
`
`
`- 2 -
`
`
`
`
`
`A. The Board misapprehended the Petition’s discussion of
`Gutterman as addressing the “single action” limitations.
`
`Before addressing specific claim limitations, the Petition presented a
`
`discussion describing the graphical user interface (“GUI”) disclosed by Gutterman
`
`for displaying market information. Pet. 19-20 (Gutterman’s “deck pane”).
`
`Specifically, the Petition highlighted that “[o]rders in the deck pane … are
`
`represented by order icons” that are arranged along a vertically-oriented price axis.
`
`Id. at 19 (internal quotations omitted). The Petition further explained that the order
`
`icons of Gutterman are “active. That is, when the user selects the order icon, the
`
`system performs one or more actions” related to placing a trade order. Id. (internal
`
`quotations omitted).
`
`Petitioner also explained in the Petition that, under the proper construction
`
`of the term “single action,” see Pet. 10 (construing “single action”); Decision 13
`
`(adopting the Petition’s construction of “single action”), selecting an order icon
`
`followed by selecting a “SEND FILL” button in rapid succession qualifies as a
`
`“single action.” Pet. 20. The Board misapprehended this discussion as addressing
`
`the specific “single action” limitations at issue:
`
`Petitioner relies upon Gutterman’s disclosure of a trader selecting an
`order icon, which causes the system to populate an electronic message
`with the trade information, and, then, selecting a ‘SEND FILL’ button
`to transmit the message, to meet the claim limitation of selecting a
`
`
`
`
`
`
`- 3 -
`
`
`
`
`
`particular area through a single action to set parameters and to send
`the trade order.
`Decision 17 (citing pp. 19-20 of the Petition – the discussion of Gutterman).
`
`But the Petition did not rely on this discussion of Gutterman to meet the
`
`specific “single action” limitations. See Pet. 21-22, 40-44 (omitting the discussion
`
`of Gutterman’s “SEND FILL” button). Instead, the Petition explicitly stated that
`
`Togher, not Gutterman, discloses the “single action” limitations:
`
`[T]he combination of Silverman and Gutterman does not explicitly
`disclose a single action “to both set a price for the trade order and
`send the trade order having a default quantity to the electronic
`exchange.” However, Togher discloses this limitation.
`Id. at 42 (emphasis added); see also id. at 21-22.
`
`Patent Owner’s Preliminary Response (paper 18) (“POPR”)
`
`mischaracterized the Petition and led to the Board’s misapprehension of this issue.
`
`See Decision 18 (“we are persuaded by Patent Owner that Gutterman does not
`
`meet the ‘single action’ limitation”). Specifically, Patent Owner mischaracterized
`
`Grounds 2 and 3 of the Petition as the “Silverman/Gutterman combinations”
`
`(notably omitting Togher), and mischaracterized the Petition as relying on
`
`Gutterman to disclose the “single action” limitations. POPR 62-64. The
`
`Preliminary Response also failed to address the Petition’s arguments that Togher,
`
`when combined with Silverman and Gutterman, discloses the “single action”
`
`
`
`
`
`
`- 4 -
`
`
`
`
`
`limitations. Id. Patent Owner’s mischaracterizations and omissions led the Board to
`
`overlook key arguments in the Petition that Togher meets the “single action”
`
`limitations.
`
`B.
`
`The Board overlooked key arguments in the Petition that Togher
`meets the “single action” limitations.
`
`The Petition relied on the combination of Silverman, Gutterman, and Togher
`
`to meet the limitations of claims 1 and 26 of the ’411 patent. Pet. 15-57. It
`
`explained that Silverman teaches a trader using a standard input device (e.g.,
`
`mouse) to place a trade in a market that he/she is observing on a display – the
`
`“keystation” display. Pet. 17-19, 42. And Gutterman teaches a market display that
`
`has “active” icons that have certain parameters (price, quantity) built into their
`
`appearance, and that perform some market-related action when selected. Id. at 19-
`
`20, 41-42.
`
`The Petition reasoned that applying Gutterman’s active icons to Silverman’s
`
`keystation display would allow a trader to select an icon using a standard input
`
`device to place a trade that has certain parameters already set. Id. at 20, 42 (“a
`
`PHOSITA would have been motivated to use the ‘active’ order icons of Gutterman
`
`in the keystation display of Silverman to permit a trader to send orders”). FIG. A of
`
`Mr. Román’s declaration (Ex. 1019) illustrates the GUI produced by combining
`
`Silverman’s keystation with certain aspects of Gutterman’s deck pane:
`
`
`
`
`
`
`- 5 -
`
`
`
`
`
`
`
`Pet. 21; see also id. at 24-26 (providing five reasons a skilled artisan would have
`
`combined Silverman and Gutterman as suggested).
`
`But the Petition recognized that “the combination of Silverman and
`
`- 6 -
`
`
`
`
`
`
`
`
`
`Gutterman does not explicitly disclose a single action ‘to both set a price for the
`
`trade order and send the trade order having a default quantity to the exchange,’” id.
`
`at 42 (emphasis omitted), and relied on Togher to meet the “single action”
`
`limitations, id. at 42-44.
`
`Togher discloses a trading tool that allows traders to establish default values,
`
`such as trade quantity, that can be used when making trades via a GUI. Id.
`
`Togher’s GUI displays a trade price, and allows a trader to select a particular
`
`location using a conventional input device (e.g., a mouse) to place an order at the
`
`displayed price using the default values. Id. That is, Togher discloses selecting a
`
`particular location of an order entry region to both set trade parameters (i.e., the
`
`default values) and send the trade to the market. The Petition summarized:
`
`A PHOSITA would have understood that a trader using Togher’s
`GUI could select a particular location of Togher’s GUI (e.g, “Buy”
`or “Sell” button) via a single action of a conventional user input
`device (e.g., touch-sensitive display, mouse) to establish a trade
`price and type of order (e.g., the “new Dealable Bid or offer price”),
`set default values (e.g., quantity), and send the order to market.
`Id. at 42-43 (emphasis added).1
`
`1 Patent Owner admitted in a CBM proceeding of a related patent that this
`
`type of “single action” trading was prior art. CBM2014-00136, paper 18 (Patent
`
`Owner’s Preliminary Response), 7 (admitting that conventional trading tools
`
`
`
`
`
`
`- 7 -
`
`
`
`
`
`The Petition also provided several reasons a skilled artisan would have
`
`combined Togher with Silverman and Gutterman. Id. at 26-29. Notably, “Togher’s
`
`entire background section is devoted to describing Silverman’s electronic
`
`exchange. … Togher’s endorsement of Silverman’s electronic exchange is an
`
`explicit suggestion to combine these teachings.” Id. at 28-29. Thus the Petition
`
`addressed the Graham factors, see Decision 16, and demonstrated that claims 1-28
`
`are more likely than not obvious over the combination of Silverman, Gutterman,
`
`and Togher.
`
`The Board completely overlooked these arguments. Like Patent Owner’s
`
`Preliminary Response, the Decision never addressed Togher. Instead, finding that
`
`Gutterman fails to disclose the “single action” limitations, the Decision denied
`
`instituting trial on Grounds 2 and 3 of the Petition. Decision 16-19. But since the
`
`
`“permitted ‘single action’ order entry that consisted of a trader presenting a default
`
`quantity and then clicking on a cell in the screen (i.e., pressing a button on the tool)
`
`to cause a trade order message to be sent to the exchange at the preset quantity and
`
`at the price value associated with that cell”); CBM2014-00136, paper 19
`
`(Institution Decision), 11 (“Patent Owner describes this prior art GUI tool as
`
`‘conventional’ and states that [s]ome of these types of tools permitted ‘single
`
`action’ order entry.” (internal citations omitted)).
`
`
`
`
`
`
`- 8 -
`
`
`
`Petition argued that Togher discloses the "single action" limitations, and the Board
`
`overlooked these arguments in its Decision, Petitioners respectfully request
`
`reconsideration and institution of Grounds 2 and 3 of the Petition.
`
`IV. Conclusion
`
`For these reasons, TD Ameritrade respectfully requests that the Board grant
`
`this Request and institute review of claims 1-10 and 12-28 as obvious over
`
`Silverman, Gutterman, and Togher (i.e., ground 2), and of claim 11 as obvious
`
`over Silverman, Gutterman, Togher, and Paal (i.e., ground 3).
`
`Respectfully submitted,
`
`STERNE, KESSLER, GOLDSTEIN & Fox P.L.L.C.
`
`Robert E. Sokohi (Reg. No. 36,013)
`A ttorney for Petitioners, TD Ameritrade
`
`Date: December 16, 2014
`1100 New York Avenue, N.W.
`Washington, D.C. 20005-3934
`(202) 371-2600
`
`I
`
`
`
`CBM2014-00133
`U.S. Patent No. 7,676,411 B2
`CERTIFICATION OF SERVICE
`
`As required by 37 C.F.R. §§ 42.6(e) and 42.205(a)), the undersigned hereby
`
`certifies that the foregoing PETITIONERS’ REQUEST FOR REHEARING
`
`was served on December 16, 2014, in its entirety via email on the following:
`
`Lead Counsel (cid:9)
`Erika H. Amer (Reg. No. 57,540) (cid:9)
`erika.amer@finnegan.com
`Finnegan, Henderson, Farabow, Garrett
`& Dunner, LLP
`11955 Freedom Drive
`Reston, VA 20190
`Phone: (571) 203-2754
`Fax: (202) 408-4400
`
`Back-Up Counsel
`Steven F. Borsand (Reg. No. 36,752)
`Steve.Borsand@tradingtechnologies.com
`Trading Technologies International, Inc.
`222 South Riverside Plaza, Suite 1100
`Chicago, IL 60606
`Phone: (312) 476-1018
`
`Joshua L. Goldberg (Reg. No. 59,369)
`joshua.goldberg@finnegan.com
`Finnegan, Henderson, Farabow, Garrett &
`Dunner, LLP
`901 New York Avenue, NW
`Washington, DC 20001-4413
`Phone: (202) 408-6092
`Fax: (202) 408-4400
`
`STERNE, KESSLER, GOLDSTEiN & Fox P.L.L.C.
`
`By:’
`
`Robert E. Sokohi (Reg. No. 36,013)
`A ttorney for Petitioners, TD Ameritrade
`
`Date: December 16, 2014
`1100 New York Avenue, N.W.
`Washington, D.C.20005-3934
`(202) 371-2600
`
`1944357_i .DOCX
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
