Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`Paper 21
`Entered: February 2, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`TD AMERITRADE HOLDING CORP., TD AMERITRADE, INC., and
`TD AMERITRADE ONLINE HOLDINGS CORP.,
`Petitioner,
`
`v.
`
`TRADING TECHNOLOGIES INTERNATIONAL, INC.,
`Patent Owner.
`_______________
`
`Case CBM2014-00136
`Patent No. 6,766,304 B2
`_______________
`
`
`
`Before SALLY C. MEDLEY, MEREDITH C. PETRAVICK, and
`PHILIP J. HOFFMANN, Administrative Patent Judges.
`
`PETRAVICK, Administrative Patent Judge.
`
`DECISION ON REQUEST FOR REHEARING
`37 C.F.R. § 42.71
`
`
`
`
`
`
`
`
`
`
`Tel: 571-272-7822
`
`
`
`
`Paper 21
`Entered: February 2, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`TD AMERITRADE HOLDING CORP., TD AMERITRADE, INC., and
`TD AMERITRADE ONLINE HOLDINGS CORP.,
`Petitioner,
`
`v.
`
`TRADING TECHNOLOGIES INTERNATIONAL, INC.,
`Patent Owner.
`_______________
`
`Case CBM2014-00136
`Patent No. 6,766,304 B2
`_______________
`
`
`
`Before SALLY C. MEDLEY, MEREDITH C. PETRAVICK, and
`PHILIP J. HOFFMANN, Administrative Patent Judges.
`
`PETRAVICK, Administrative Patent Judge.
`
`DECISION ON REQUEST FOR REHEARING
`37 C.F.R. § 42.71
`
`
`
`
`
`
`
`
`
`
`
`CBM2014-00136
`Patent No. 6,766,304 B2
`
`
`I. INTRODUCTION
`TD Ameritrade Holding Corp., TD Ameritrade, Inc., and TD
`Ameritrade Online Holdings Corp. (collectively, “Petitioner”) filed a
`Petition (Paper 4, “Pet.”) on May 20, 2014, which requested review under
`the transitional program for covered business method patents of U.S. Patent
`No. 6,766,304 B2 (Ex. 1001, “the ’304 patent”). Trading Technologies
`International, Inc. (“Patent Owner”) filed a Preliminary Response (Paper 18,
`“Prelim. Resp.”) on September 3, 2014. The Board denied institution of a
`covered business method patent review of claims 1–40 based upon the
`following grounds:
`Ground Prior Art
`§ 101
`n/a
`TSE1
`§ 102
`§ 103
`TSE
`TSE and Gutterman2
`§ 103
`Silverman3 and Gutterman
`§ 103
`§ 103
`Silverman, Gutterman, and
`Paal4
`
`Challenged Claim(s)
`1–40
`1–3, 5–9, 11–15, 20–23, and 26–40
`4 and 10
`16–19, 24, and 25
`1–25 and 27–40
`26
`
`
`
`1 TOKYO STOCK EXCHANGE OPERATION SYSTEM DIVISION, FUTURES/OPTION
`PURCHASING SYSTEM TRADING TERMINAL OPERATION GUIDE (1998) (Ex.
`1003).
`2 Gutterman et al., U.S. Patent No. 5,297,031 (issued Mar. 22, 1994) (Ex.
`1007).
`3 Silverman et al., U.S. Patent No. 5,077,665 (issued Dec. 31, 1991) (Ex.
`1008).
`4 Paal et al., U.S. Patent No. 5,263,134 (issued Nov. 16, 1993) (Ex. 1009).
`
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`CBM2014-00136
`Patent No. 6,766,304 B2
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`Paper 19 (“Decision”).
`Petitioner filed a Request for Rehearing asking that the Board
`reconsider its Decision and institute on the grounds based upon 35 U.S.C. §§
`102, 103. Paper 20 (“Req. Reh’g”). We have considered the Request for
`Rehearing, but decline to modify the Decision.
`
`
`II. ANALYSIS
`A. Standard of Review
`When rehearing a decision on petition, the Board will review the
`decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of
`discretion may be determined if a decision is based on an erroneous
`interpretation of law, if a factual finding is not supported by substantial
`evidence, or if the decision represents an unreasonable judgment in weighing
`relevant factors. See Arnold Partnership v. Dudas, 362 F.3d 1338, 1340
`(Fed. Cir. 2004).
`The party challenging the decision has the burden of showing a
`decision should be modified, and the request for rehearing must specifically
`identify all matters the party believes the Board misapprehended or
`overlooked. 37 C.F.R. § 42.71(d).
`
`
`B. Petitioner’s Request for Rehearing
`i. Petitioner’s argument regarding the scope of claim 16
`Petitioner argues that the Board misapprehended the scope of the
`following limitation from independent claims 1 and 27:
`in response to a selection of a particular location of the order
`entry region by a single action of a user input device, setting a
`plurality of parameters for a trade order relating to the
`
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`CBM2014-00136
`Patent No. 6,766,304 B2
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`commodity and sending the trade order to the electronic
`exchange.
`See Req. Reh’g 2–6. According to Petitioner, “[t]he Board interpreted this
`limitation to mean that a single action: selects the particular location, sets a
`plurality of parameters for a trade order, and sends the trade order to the
`electronic exchange” and this interpretation is overly narrow. Id. at 3 (citing
`Decision 17). Petitioner argues that the limitation only “requires the
`selection of a particular location of the order entry region be achieved by a
`single action” and, that when given this interpretation, both TSE and
`Gutterman meet the limitation. Id. at 3–6.
`We are not persuaded by Petitioner’s argument that we abused our
`discretion because Petitioner’s argument is based upon a mischaracterization
`of our Decision. We did not interpret the limitation to require that “a single
`action: selects the particular location, sets a plurality of parameters for a
`trade order, and sends the trade order to the electronic exchange” (Id. at 3).
`Our Decision states: “[t]he limitation requires that both the setting of
`the parameters and the sending of the order occur in response to a selection
`of a particular location of the order entry region by a single action of a user
`input device.” Decision 17 (emphases original). In other words, we
`interpreted the limitation to require that one of the responses to the selection
`of a particular location is the sending of the order.
`We, then, determined that neither TSE nor Gutterman taught that
`sending the order occurred in response to the selection of the particular
`location. Id. at 17–20. We stated:
`TSE does not describe that the order is sent in response to the
`selection of the area on the Board/Quotation Screen. In TSE,
`the order is sent if or when the send button on the new order
`
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`CBM2014-00136
`Patent No. 6,766,304 B2
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`entry window is selected
`(Id. at 18 (emphasis added)) and
`Gutterman does not send the order in response to the selection
`of the order icon in deck pane 135 (i.e., the claimed particular
`location of the order entry region). Instead, the order is sent to
`the fill pane 140 and then when the “SEND FILL” button is
`selected, the order is transmitted
`(Id. at 20 (emphasis added)). We determined that neither TSE nor
`Gutterman taught sending the order in response to the selection of the
`particular location, because, in both TSE and Gutterman, the order is sent in
`response to the selection of a send button, not the selection of the particular
`location of the order entry region. In both references, the order is sent to the
`exchange when the send button is selected, if the send button is selected at
`all.
`As can be seen from the above, we did not interpret the limitation at
`
`issue to require that “a single action: selects the particular location, sets a
`plurality of parameters for a trade order, and sends the trade order to the
`electronic exchange” (Req. Reh’g 3). Because Petitioner’s argument is
`based upon this mischaracterization of our Decision, we are not persuaded
`that we abused our discretion and decline to modify our Decision.
`
`
`ii. Petitioner’s argument regarding the patentability of the
`claims over the combination of Silverman and Gutterman
`
`Petitioner argues that we overlooked that the Petition relied upon the
`combination of Silverman and Gutterman, and not Gutterman alone, to meet
`the limitation of independent claims 1 and 27 reproduced above. Req. Reh’g
`6–12. In particular, Petitioner argues that the Petition did not rely upon
`
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`CBM2014-00136
`Patent No. 6,766,304 B2
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`Gutterman’s teaching of using a “SEND FILL” button to meet the “sending
`the trade order to the electronic exchange” aspect of the limitation. Id. at 10.
`We are not persuaded by Petitioner’s argument that we abused our
`discretion because Petitioner’s argument is based upon a mischaracterization
`of the Petition. The Petition alleges that independent claims 1 and 27 are
`unpatentable under 35 U.S.C. § 103 over Silverman, Gutterman, and TSE.
`Pet. 43–64. The Petition contains the following:
`In Silverman, a trader places an order “through data entry
`using a conventional keyboard, pointing device such as a mouse
`or any other conventional data entry tool.” (Silverman, 5:25–
`32.) Silverman does not provide any further details on order
`entry. Gutterman provide a graphical user interface (“GUI”)
`displaying order icons representing bids or asks at a specific
`price level.
`. . .
`Each order icon in Gutterman is “active.” That is, when
`the user selects the order icon, the system performs one or more
`actions – such as populating an electronic message with an
`“order’s quantity, price and time stamp.” (Id. at 13:29-31.) A
`trader may immediately transmit this electronic message to
`another party by pressing another “active” button – the
`“SEND” button (Id. at 13:29-43 (“In periods of heavy market
`activity . . . .”)[)]. . . .
`As described in further detail below, 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.
`Pet. 46–48 (emphases added). See also Pet. 64 (similarly discussing
`that the use of Gutterman’s “active” order icons in the display of
`Silverman permits a trader to send trade orders, and, therefore, ‘the
`selection of the “active” order icon sends a trade order to the
`electronic exchange’).
`
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`CBM2014-00136
`Patent No. 6,766,304 B2
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`As can be seen from the above, the Petitioner’s argument
`mischaracterizes the ground as presented in the Petition. The Petition states
`that Silverman does not describe any details of order entry other than
`through the use of conventional data entry tool. Id. at 46. The Petition
`explains that Gutterman discloses using active order icons to place orders
`and that selection of an active order icon populates an electronic message,
`which can be sent by pressing a “SEND” button. Id. at 47. The Petition
`cites to column 13, lines 29–43 of Gutterman for support. Id. Column 13,
`lines 29–43 of Gutterman describes the trader pressing the “SEND FILL”
`button on the pop-up fill pane 140 to send an order to an electronic clearing
`house. Ex. 1007, col. 13, ll. 29–43. Contrary, to Petitioner’s argument the
`Petition relies upon Gutterman’s disclosure to meet the limitation at issue,
`including the “sending the trade order to the electronic exchange” aspect.
`As stated in our Decision and discussed above, Gutterman does not
`meet this limitation because Gutterman does not teach sending the order in
`response to the selection of the active order icon. Decision 20. In
`Gutterman, the order is sent not in response to the selection of the active
`order icon, but in response to the selection of the “SEND FILL” button. Id.
`Because Petitioner’s argument is based upon a mischaracterization of
`the Petition, we are not persuaded that we abused our discretion and decline
`to modify our Decision.
`
`
`
`
`III. CONCLUSION
`We are not persuaded of an abuse of discretion by Petitioner.
`
`
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`CBM2014-00136
`Patent No. 6,766,304 B2
`
`
`IV. ORDER
`
`Accordingly, it is
`ORDERED that the Request for Rehearing is denied.
`
`FOR PETITIONER:
`
`Lori Gordon
`Jonathan Strang
`Robert E. Sokohl
`STERN, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`lgordon-ptab@skgf.com
`jstrang-ptab@skgf.com
`rsokohl-ptab@skgf.com
`
`FOR PATENT OWNER:
`
`Erika H. Arner
`Joshua L. Goldberg
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
`erika.arner@finnegan.com
`joshua.goldberg@finnegan.com
`
`Steven F. Borsand
`TRADING TECHNOLOGIES INTERNATIONAL, INC.
`Steve.Borsand@tradingtechnologies.com
`
`
`
` 8
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