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 CBM2014-00135
`Patent No. 6,772,132 B1
`____________________
`
`
`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.
`
`
`
`CBM2014-00135
`U.S. Patent No. 6,772,132 B1
`
`Table of Contents
`
`Relief Requested .............................................................................................. 1
`
`Introduction ...................................................................................................... 1
`
`III. The Board should have decided to institute review on the asserted grounds
`that claims 1-56 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. .................................................... 6
`
`IV. Conclusion ..................................................................................................... 10
`
`
`
`
`
`
`
`
`
`
`- i -
`
`
`
`
`
`I.
`
`Relief Requested
`
`
`
`CBM2014-00135
`U.S. Patent No. 6,772,132 B1
`
`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. 6,772,132 B1 (“the ’132 patent”) (Ex. 1001), owned by Trading
`
`Technologies International, Inc. (“TTI”), on the ground that claims 1-56 are
`
`unpatentable under 35 U.S.C. § 103 over Silverman, Gutterman, and Togher.
`
`II.
`
`Introduction
`
`TD Ameritrade petitioned (paper 4) (“Pet.”) the Board seeking CBM Review
`
`of the ’132 patent on the following grounds:
`
`Claims
`1-56
`1-56
`1-3, 5-8, 9, 10, 13-16, 18-20, 22, 23,
`25-28, 30, 32, 33, 35-38, 40-43, 45-
`48, & 50-56
`4, 11, & 17
`
`24, 34, & 44
`
`1-3, 6-10, 13-15, 16, 19-22, 25, 27-
`28, 30-32, 35, 37-38, 40-42, 45, 47-
`48, 50-54, & 56
`5, 6, 12, 13, 18, 19, 23, 26, 33, 36,
`43, 46, & 55
`4, 11, 17
`
`
`- 1 -
`
`1
`2
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`
`
`
`
`
`
`Ground
`§ 101
`§ 112
`§ 103 Silverman (Ex. 1007),
`Gutterman (Ex. 1008), Togher (Ex.
`1009)
`§ 103 Silverman, Gutterman, Togher,
`May (Ex. 1010)
`§ 103 Silverman, Gutterman, Togher,
`Paal (Ex. 1011)
`§ 103 TSE (Ex. 1012/1013),Togher
`
`§ 103 TSE, Togher, Gutterman
`
`§ 103 TSE, Togher, May
`
`
`
`
`
`
`Pet. at 8-9.
`
`In its Decision (paper 19), the Board instituted review on the § 101 ground,
`
`but denied instating review of all the § 103 grounds. Decision 22. TD Ameritrade
`
`seeks rehearing of the Board’s decision to not institute review under § 103 based
`
`on the Silverman combinations (i.e., grounds 3-5 highlighted above).
`
`III. The Board should have decided to institute review on the asserted
`grounds that claims 1-56 are obvious over the Silverman combinations.
`
`Independent claim 1 of the ’132 patent requires,
`
`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
`
`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 send the trade order to the
`electronic exchange.
`’132 patent 12:16-26.
`
`Independent claims 8 and 14 require similar limitations. Decision 17. The
`
`Petition relied on Togher, combined with Silverman and Gutterman, to meet the
`
`“single action” limitations. Pet. 21-22, 30, 37-38. The Board erred when it denied
`
`instituting review of claims 1-56 over the Silverman, Gutterman, and Togher
`
`
`
`
`
`
`- 2 -
`
`
`
`
`
`combination because it misapprehended the Petition as relying on Gutterman alone
`
`to disclose the “single action” limitations, Decision 17 (citing only p. 20 of the
`
`Petition), and overlooked key arguments in the Petition that Togher meets the
`
`“single action” limitations.
`
`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. at 20
`
`(internal quotations omitted).
`
`Petitioner also explained in the Petition that, under the proper construction
`
`of the term “single action,” see Pet. 11 (construing “single action”); Decision 12
`
`(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
`
`
`
`
`
`
`- 3 -
`
`
`
`
`
`“single action.”1 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
`particular area through a single action to set parameters and to send
`the trade order.
`Decision 17 (citing only p. 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. at 21-22, 30, 37-38 (omitting the
`
`1 Patent Owner admitted in a CBM proceeding of a related patent that
`
`“single action” trading was prior art. CBM2014-00136, paper 18 (Patent Owner’s
`
`Preliminary Response), 7 (admitting that conventional trading tools “permitted
`
`‘single action’ order entry that consisted of a trader presetting 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)).
`
`
`
`
`
`
`- 4 -
`
`
`
`
`
`discussion of Gutterman’s “SEND FILL” button). Instead, the very next page of
`
`the Petition after the page cited in the Decision, the Petition explicitly stated that
`
`Togher, not Gutterman, discloses the “single action” limitations:
`
`[T]he combination of Silverman and Gutterman fails to disclose
`selecting an area of the GUI through 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.” The use of default
`values and automatic entry of information (e.g., price) was a well-
`known technique in the field of GUIs well before the earliest possible
`priority of the ’132 patent. Togher describes such a system and
`method that is in the same field as Silverman and Gutterman.
`
`Togher discloses an “electronic brokerage system having a
`communication network connecting traders dealing with financial
`instruments.” The “electronic brokerage system facilitates the buying
`and selling of large blocks of foreign currency by traders.” Togher
`discloses setting default values for trade orders: “As shown in FIG. 4,
`each trader can call up a ‘Trader Profile’ screen 70 … to establish or
`modify his personal default values for normal and maximum trading
`size ….” Setting default values allow a trader to “quickly and
`accurately respond to a new Dealable Bid or offer price by merely
`activating a Buy button 34 or a Sell button 36, respectively on the
`screen, assuming that the display is touch sensitive or is provided
`with a ‘mouse’ or other pointing device.”
`Id. at 21-22 (emphasis added) (internal quotations omitted).
`
`
`
`
`
`
`- 5 -
`
`
`
`
`
`Patent Owner’s Preliminary Response (paper 17) (“POPR”)
`
`mischaracterized the Petition and led to the Board’s misapprehension of this issue.
`
`See Decision 19 (“we are persuaded by Patent Owner that Gutterman does not
`
`meet the ‘single action’ limitation”). Specifically, Patent Owner mischaracterized
`
`Grounds 3-5 of the Petition as the “Silverman/Gutterman combinations” (notably
`
`omitting Togher), POPR 59, and mischaracterized the Petition as relying on
`
`Gutterman to disclose the “single action” limitations, POPR 59-61 (incorrectly
`
`stating that “none of the other references in the identified Silverman/Gutterman
`
`combinations are mentioned in Petitioners’ discussion of the single action
`
`elements”). The Preliminary Response also failed to address the Petition’s
`
`arguments that Togher, when combined with Silverman and Gutterman, discloses
`
`the “single action” 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, 8, and 14 of the ’132 patent. Pet. 16-50. 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
`
`
`
`
`
`
`- 6 -
`
`
`
`
`
`“keystation” display. Id. at 24-25, 29, 34. 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.
`
`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 (“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 place orders”), 29.
`
`FIGS. A and B of Mr. Román’s declaration (Ex. 1005) illustrate the GUI produced
`
`by combining Silverman’s keystation with certain aspects of Gutterman’s deck
`
`pane:
`
`
`
`
`
`
`- 7 -
`
`
`
`
`
`
`
`
`Pet. 21 (FIG. A), 32 (FIG. B); 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
`
`Gutterman fails to disclose selecting an area of the GUI through 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,” Pet. 21 (internal quotations omitted), and
`
`relied on Togher to meet the “single action” limitations, id. at 21-22, 30, 37-38.
`
`
`
`
`
`
`- 8 -
`
`
`
`
`
`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. at 22,
`
`30. 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.2
`
`The Petition provided several reasons a skilled artisan would have combined
`
`Togher with Silverman and Gutterman. Id. at 26-28. 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. Thus the Petition addressed the Graham
`
`factors, see Decision 16-17, and demonstrated that claims 1-56 are more likely
`
`than not obvious over the combination of Silverman, Gutterman, and Togher.
`
`The Board completely overlooked these arguments. Like Patent Owner’s
`
`
`2 TD Ameritrade again notes that 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; CBM2014-
`
`00136, paper 19 (Institution Decision), 11.
`
`
`
`
`
`
`- 9 -
`
`
`
`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 3-5 of the Petition. Decision 17-19. But since the
`
`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 3-5 of the Petition.
`
`IV. Conclusion
`
`For these reasons, TD Ameritrade respectfully requests that the Board grant
`
`this Request and institute review of claims 1-56 as obvious over the Silverman
`
`combinations (i.e., grounds 3-5 of the Petition).
`
`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
`
`-10-
`
`
`
`CBM2014-00135
`U.S. Patent No. 6,772,132 B
`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:
`
`Back-Up Counsel
`Lead Counsel
`Steven F. Borsand (Reg. No. 36,752)
`Erika H. Amer (Reg. No. 57,540) (cid:9)
`Steve.Borsandtradingtechno1ogies.com
`erika.amer@flnnegan.com (cid:9)
`Finnegan, Henderson, Farabow, Garrett Trading Technologies International, Inc.
`& Dunner, LLP (cid:9)
`222 South Riverside Plaza, Suite 1100
`Chicago, IL 60606
`11955 Freedom Drive (cid:9)
`Phone: (312) 476-1018
`Reston, VA 20190 (cid:9)
`Phone: (571) 203-2754
`Fax: (202) 408-4400 (cid:9)
`
`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 ,(1SLER, GOLDSTEiN & Fox P.L.L.C.
`
`By
`
`Robert E. Sokohl (Reg. No. 36,013)
`Attorney for Petitioners, TD Ameritrade
`
`Date: December 16, 2014
`1100 New York Avenue, N.W.
`Washington, D.C.20005-3934
`(202) 371-2600
`
`1944413_i .DOCX
`
`(cid:9)
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