UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`TD AMERITRADE HOLDING CORPORATION,
`TD AMERITRADE, INC.,
`TD AMERITRADE ONLINE HOLDINGS CORP.
`Petitioners
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`v.
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`TRADING TECHNOLOGIES INTERNATIONAL, INC.
`Patent Owner
`____________________
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`Case CBM2014-00136
`Patent No. 6,766,304 B2
`____________________
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`
`PETITIONERS’ REQUEST FOR REHEARING
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`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
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`TD AMERITRADE HOLDING CORPORATION,
`TD AMERITRADE, INC.,
`TD AMERITRADE ONLINE HOLDINGS CORP.
`Petitioners
`
`v.
`
`TRADING TECHNOLOGIES INTERNATIONAL, INC.
`Patent Owner
`____________________
`
`Case CBM2014-00136
`Patent No. 6,766,304 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
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`I.
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`II.
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`
`
`CBM2014-00136
`U.S. Patent No. 6,766,304 B2
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`Table of Contents
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`Relief Requested .............................................................................................. 1
`
`Introduction ...................................................................................................... 1
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`III. The Board should have instituted review of the asserted grounds that claims
`1-40 are unpatentable over the TSE grounds and over the
`Silverman/Gutterman grounds. ........................................................................ 2
`
`A.
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`B.
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`The Board misapprehended the scope of the “selection of a particular
`location” limitation recited in the independent claims. ......................... 3
`
`The Board misapprehended the Petition as relying on Gutterman
`alone to meet the “selection of a particular location” limitation, and
`overlooked the Petition’s arguments that the combination GUI of
`Silverman and Gutterman meets the “selection of a particular
`location” limitation. ............................................................................... 6
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`IV. Conclusion ..................................................................................................... 13
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`- i -
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`I.
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`Relief Requested
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`
`
`CBM2014-00136
`U.S. Patent No. 6,766,304 B2
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`Petitioners and real parties-in-interest, TD Ameritrade Holding Corp., TD
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`Ameritrade, Inc., and TD Ameritrade Online Holdings Corp., (“TD Ameritrade”)
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`respectfully ask the Board to reconsider its decision to not institute review of U.S.
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`Patent No. 6,766,304 B2 (“the ’304 patent”) (Ex. 1001), owned by Trading
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`Technologies International, Inc. (“TTI”), on the asserted grounds that claims 1-40
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`are unpatentable under 35 U.S.C. §§ 102 & 103 over the TSE grounds and the
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`Silverman/Gutterman grounds.
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`II.
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`Introduction
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`TD Ameritrade petitioned (paper 4) (“Pet.”) the Board seeking CBM Review
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`of the ’304 patent on the following grounds:
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`
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`Claims
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`1-40
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`Ground
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`§ 101
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`1
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`2
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`3
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`4
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`5
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`6
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`1-3, 5-9, 11-15, 20-23, 26-40 § 102 TSE (Ex. 1002/1003)
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`4, 10
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`16-19, 24, 25
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`1-25, 27-40
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`26
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`§ 103 TSE
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`§ 103 TSE, Gutterman (Ex. 1007)
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`§ 103 Silverman (Ex. 1008), Gutterman
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`§ 103 Silverman, Gutterman, Paal (Ex. 1009)
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`Pet. 8.
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`- 1 -
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`In its Decision (paper 19), the Board denied instituting review of all
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`grounds. Decision 21. TD Ameritrade therefore seeks rehearing of the Board’s
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`decision to not institute review on the asserted grounds 2- 6, i.e., that claims 1-40
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`are unpatentable over the TSE grounds (grounds 2-4), and that claims 1-40 are
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`unpatentable over the Silverman/Gutterman grounds (grounds 5 and 6).
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`III. The Board should have instituted review of the asserted grounds that
`claims 1-40 are unpatentable over the TSE grounds and over the
`Silverman/Gutterman grounds.
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`In denying review of claims 1-40 over the TSE grounds and over the
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`Silverman/Gutterman grounds, the Board misapprehended the scope of the
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`“selection of a particular location” limitation, applying an overly-narrow
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`interpretation that required a single action that: selects a particular location, sets a
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`plurality of parameters for a trade order, and sends the trade order to the electronic
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`exchange. The Board also misapprehended the asserted Silverman/Gutterman
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`grounds as relying on Gutterman alone to meet the “selection of a particular
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`location” limitation, and thus overlooked the Petition’s arguments that the
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`graphical user interface (“GUI”) produced by combining Silverman and Gutterman
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`meets the limitations of independent claim 1 and 27.
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`- 2 -
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`A. The Board misapprehended the scope of the “selection of a
`particular location” limitation recited in the independent claims.
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`Independent claims 1 and 27 of the ’304 patent recite, “in response to a
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`selection of a particular location of the order entry region by a single action of a
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`user input device, setting a plurality of parameters for a trade order relating to the
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`commodity and sending the trade order to the electronic exchange.” ’304 patent
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`12:62-13:3, 15:8-16. The Board interpreted this limitation to mean that a single
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`action: selects the particular location, sets a plurality of parameters for a trade
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`order, and sends the trade order to the electronic exchange. See Decision 17 (“The
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`limitation requires that both the setting of the parameters and the sending of the
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`order occur in response to a selection of a particular location of the order entry
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`region by a single action of a user input device.”). The Board misapprehended the
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`scope of this limitation.
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`The explicit language of the claim – “in response to a selection of a
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`particular location of the order entry region by a single action of a user input
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`device” – only requires the selection of a particular location of the order entry
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`region be achieved by a single action. The selection of the particular location then
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`triggers functions of “setting a plurality of parameters for a trade order” and
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`“sending the trade order to the electronic exchange.” But the limitation does not
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`specify that the single action achieves the “setting” and “sending” functions.
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`- 3 -
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`For example, claims 1 and 27 cover the following scenario. A user selects a
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`particular location of a GUI using a mouse click. This results in another button
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`being displayed to allow a user to set a plurality of parameters for a trade order.
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`Then, the user can select yet another button to send the request to an electronic
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`exchange. Simply put, the grammatical structure of the “selection of a particular
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`location” limitation does not require that the setting and sending be performed in
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`response to a single action. Rather, the single action is only associated with the
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`function of selecting.1
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`1 The Patent Owner clearly understood this distinction. For example, claim 1
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`of U.S. Patent No. 7,676,411, which is in the same family as the ’304 patent,
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`recites a similar limitation differently: “selecting a particular graphical area in the
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`order entry region through a single action of the user input device to both set a
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`price for the trade order and send the trade order having a default quantity to the
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`electronic exchange.” The Patent Owner knew exactly how to recite that a price be
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`set and the trade sent to an electronic exchange in response to a single action.
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`Bottom line, the clause in claim 1 from the ’411 patent and claims 1 and 27 of the
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`’304 patent have different meanings. To interpret these two clauses the same is
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`legally and grammatically incorrect.
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`- 4 -
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`Patent Owner’s discussion in its Preliminary Response (paper 18) (“POPR”)
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`of the term “single action” in the district court and Federal Circuit proceedings is a
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`red herring, see POPR 59-60, because the holdings discussed were limited to the
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`term “single action” and addressed issues or applied standards that are not relevant
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`to this CBM. The district court addressed whether certain expert testimony directed
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`to the term “single action” itself – not the “selection of a particular location”
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`limitation – could be presented at trial, and applied the “reasonable jury” standard.
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`Ex. 2004. The Federal Circuit addressed whether the term “single action of a user
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`input device” was indefinite under § 112, and applied the pre-Nautilus “insolubly
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`ambiguous” standard. Trading Tech’s Int’l, Inc. v. eSpeed, Inc., 595 F.3d 1340,
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`1358-59 (Fed. Cir. 2010). But neither the district court nor the Federal circuit
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`construed the “selection of a particular location” limitation of the ’304 patent to
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`determine which functions – selecting, setting, and sending – are required to be
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`achieved by the claimed single action.
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`Under the correct broadest reasonable interpretation of the “selection of a
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`particular location” limitation, in which the single action is only associated with
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`the function of selecting, TSE’s disclosure of selecting a specific area on the
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`Board/Quotation Screen, which sets certain trade parameters, followed by selecting
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`a send button satisfies the disputed limitation. Pet. 16-17 (describing overview of
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`TSE). Likewise, Gutterman’s disclosure of selecting an order icon, which sets
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`- 5 -
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`certain trade parameters, followed by selecting a send button satisfies the disputed
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`limitation. Id. at 47 (describing an overview of Gutterman, but not relied on to
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`address the specific limitations of claims 1 and 27). Thus, the Board should
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`reconsider its decision to deny review of grounds 2-6. But even if the Board rejects
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`this interpretation, it should reconsider its decision to deny review of grounds 5
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`and 6 because it misapprehended or overlooked key arguments in the
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`Silverman/Gutterman combinations.
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`B.
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`The Board misapprehended the Petition as relying on Gutterman
`alone to meet the “selection of a particular location” limitation,
`and overlooked the Petition’s arguments that the combination
`GUI of Silverman and Gutterman meets the “selection of a
`particular location” limitation.
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`Before addressing specific claim limitations, the Petition presented an
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`overview that first described the teachings of Silverman and Gutterman
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`individually, Pet. 43-46 (describing Silverman), 46-47 (describing Gutterman), and
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`then described the GUI that would be produced by combining Silverman and
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`Gutterman, id. at 47-48. Of particular importance, this overview described the deck
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`pane disclosed by Gutterman. Id. at 46-47. The Petition highlighted that “[o]rders
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`in the deck pane … are represented by order icons” that are arranged along a
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`vertically-oriented price axis. Id. at 46 (internal quotations omitted). The Petition
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`further explained that the order icons of Gutterman are “active. That is, when the
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`- 6 -
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`user selects the order icon, the system performs one or more actions” related to
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`placing a trade order. Id. at 47 (internal quotations omitted).
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`TD Ameritrade also explained in the Petition that, under the proper
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`construction of the term “single action,” see Pet. 10-11 (construing “single
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`action”); Decision 11-12 (adopting the Petition’s construction of “single action”),
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`selecting an order icon followed by selecting a “SEND FILL” button in rapid
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`succession qualifies as a “single action.”2 Pet. 47. But TD Ameritrade did not rely
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`on this overview of Gutterman’s deck pane to address “selection of a particular
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`location” limitation of claims 1 and 27. Id. at 63 (relying on “the combination GUI
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`of Silverman and Gutterman”).
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`2 Patent Owner admitted in its Preliminary Response that “single action”
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`trading was prior art. POPR 7 (admitting that conventional trading tools “permitted
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`‘single action’ order entry that consisted of a trader presenting a default quantity
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`and then clicking on a cell in the screen (i.e., pressing a button on the tool) to cause
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`a trade order message to be sent to the exchange at the preset quantity and at the
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`price value associated with that cell”); see also Decision 11 (“Patent Owner
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`describes this prior art GUI tool as ‘conventional’ and states that [s]ome of these
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`types of tools permitted ‘single action’ order entry.” (internal citations omitted)).
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`- 7 -
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`Instead, the Petition presented five reasons a skilled artisan would have
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`combined Silverman and Gutterman to produce the combination GUI, id. at 50-52,
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`and applied this “combination GUI of Silverman and Gutterman” to the limitations
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`of independent claims 1 and 27, id. at 52-64. The Petition reproduced FIGS. A and
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`B of Mr. Román’s Declaration (Ex. 1017), which illustrate the “combination GUI
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`of Silverman and Gutterman”:
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`Id. at 48 (reproducing Román’s FIG. A), 56 (reproducing Román’s FIG. B).
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`As depicted in Mr. Roman’s figures, the keystation display of Silverman is
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`- 8 -
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`combined with features of Gutterman’s deck pane – e.g., the price axis and order
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`icons – to form the combination GUI of Silverman and Gutterman. Pet. 47-48, 56.
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`Addressing the “selection of a particular location” limitation, the Petition
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`explained that “Silverman discloses that traders enter orders using conventional
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`input devices based on observing … market information” that is displayed by the
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`keystations. Id. at 64. And Gutterman discloses a GUI having order icons that are
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`“‘active.’ That is, when the user selects the order icon [e.g., using a mouse], the
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`system performs one or more actions” related to placing a trade. Id. So “a
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`PHOSITA would have been motivated to use the ‘active’ order icons of Gutterman
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`in the keystation display of Silverman to permit a trader to send orders.” Id.
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`(emphasis added).
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`In other words, Silverman teaches a trader using a standard input device
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`(e.g., mouse) to place a trade in a market that he/she is observing on a display (a
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`trader’s display). Gutterman teaches a market display that has “active” icons that
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`have certain parameters (price, quantity) built into their appearance, and that
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`perform some market-related action when selected. Applying Gutterman’s active
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`icons to Silverman’s trading display would allow a trader to select an icon using a
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`standard input device to place a trade that has certain parameters already set,
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`meeting the “selection of a particular location” limitation of claims 1 and 27.
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`- 9 -
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`The Decision overlooked these arguments. See Decision 18-20. It also
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`misapprehended the Petition as relying on “Gutterman’s disclosure of a trader
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`selecting an order icon … and, then, selecting a ‘SEND FILL’ button to transmit
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`the message to meet the limitation of selecting a particular area through a single
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`action.” Id. at 19; see also id. at 20 (reproducing Gutterman’s workstation screen
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`rather than the combination GUI of Silverman and Gutterman relied on in the
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`Petition), 20 (incorrectly stating that “Petitioner does not rely upon Silverman … to
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`meet this limitation.”). But the Petition did not rely on using Gutterman’s “SEND
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`FILL” button to address the “selection of a particular location” limitation. Pet. 63-
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`64.
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`Instead, as discussed above, the Petition relied on the “combination GUI of
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`Silverman and Gutterman” – produced by combining Silverman’s keystation
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`(which displays market information and accepts trade orders using conventional
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`input devices (e.g., mouse)) with Gutterman’s “active” order icons (which are
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`selectable using conventional input devices) and other aspects of Gutterman’s GUI
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`– to meet the “selection of a particular location” limitation. Id. And again, the
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`Petition provided five reasons that a skilled artisan would have combined
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`Silverman’s keystation with certain aspects of Gutterman’s GUI to produce the
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`“combination GUI of Silverman and Gutterman” that was applied to claims 1 and
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`- 10 -
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`27. Id. at 50-52. The Board overlooked all of these arguments when it denied
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`instituting trial on claims 1-40 as obvious over the Silverman/Gutterman
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`combinations.
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`Patent Owner’s Preliminary Response mischaracterized the Petition and led
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`to the Board’s misapprehension of this issue. See Decision 20 (“we are persuaded
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`by Patent Owner that Gutterman does not meet the ‘single action’ limitation”).
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`Specifically, Patent Owner argued that “Gutterman does not disclose or render
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`obvious the single action elements of the independent claims.” POPR 62. But
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`“[n]on-obviousness cannot be established by attacking references individually
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`where [obviousness] is based upon the teachings of a combination of references.”
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`In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986); MPEP § 2145.
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`Gutterman “must be read, not in isolation, but for what it fairly teaches in
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`combination with the prior art as a whole,” Merck, 800 F.2d at 1097, including
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`Patent Owner’s admission that single action trading was prior art, POPR 7
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`(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”). As described throughout the Petition, the combination GUI of
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`- 11 -
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`Silverman and Gutterman discloses the “single action” limitations of the ’304
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`patent.
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`And, perhaps most importantly, the combination of Silverman and
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`Gutterman satisfy the narrower interpretation of the “selection of a particular
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`location” limitation adopted by the Board (i.e., a single action is required to select
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`a particular location, set parameters, and send a trade) as well as its broadest
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`reasonable interpretation (i.e., a single action is only required to select a particular
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`location) as discussed above. There can be no debate that Silverman and
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`Gutterman teach selecting a particular location by a single action (i.e., a mouse
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`click), then, in response to that selection, setting parameters and sending a trade
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`order to an electronic exchange as recited in claims 1 and 27.
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`- 12 -
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`IV. Conclusion
`For these reasons, TD Ameritrade respectfully requests that the Board grant
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`this Request and institute review of the asserted grounds 2- 6, i.e., that claims 1-40
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`are unpatentable over the TSE grounds (grounds 2-4), and that claims 1-40 are
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`unpatentable over the Silverman/Gutterman grounds (grounds 5 and 6).
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`Respectfully submitted,
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`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`
`/Robert Sokohl Reg. No. 36,013/
`
`Robert E. Sokohl (Reg. No. 36,013)
`Attorney for Petitioners, TD Ameritrade
`
`
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`
`
`Date: December 31, 2014
`1100 New York Avenue, N.W.
`Washington, D.C. 20005-3934
`(202) 371-2600
`
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`- 13 -
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`CBM2014-00136
`U.S. Patent No. 6,766,304 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 31, 2014, in its entirety via email on the following:
`
`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 Sokohl Reg. No. 36,013/
`
`
`Robert E. Sokohl (Reg. No. 36,013)
`Attorney for Petitioners, TD Ameritrade
`
`Lead Counsel
`Erika H. Arner (Reg. No. 57,540)
`erika.arner@finnegan.com
`Finnegan, Henderson, Farabow, Garrett
`& Dunner, LLP
`11955 Freedom Drive
`Reston, VA 20190
`Phone: (571) 203-2754
`Fax: (202) 408-4400
`
`
`
`Date: December 31, 2014
`1100 New York Avenue, N.W.
`Washington, D.C.20005-3934
`(202) 371-2600
`1942775_3.DOCX
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