Datum
`Date
`Date
`
`3 0 . 0 9 . 2 0 1 0
`
`Blatt
`Sheet
`Feuille
`
`1
`
`Anmelde-Nr:
`Application No:
`Demande no:
`
`0 1 9 2 0 18 3 . 9
`
`SUMMARY OF FACTS AND SUBMISSIONS
`
`1.
`
`European Patent No. 1 319 211 entitled "Click-based trading with intuitive grid
`display of market depth" is based on European Patent Application
`No. 01920183.9 which was filed as International Patent Application No. PCT/
`US2001 /006792 on 2 March 2001. The International Patent Application was
`published as WO 01/65403. The patent claims rights of priority from
`
`P1
`
`US Provisional Application for Patent No. 60/186,322, filed on 2
`March 2000,
`
`P2
`
`US Patent Application No. 09/590,692, filed on 9 June 2000.
`
`The grant of the patent was mentioned on 13 April 2005 in European Patent
`Bulletin 2005/15.
`
`The Proprietor of the patent is:
`
`Trading Technologies International, Inc
`Chicago, Illinois 60606 (US)
`
`A notice of opposition was filed on 12 January 2006 by a group of common
`opponents:
`
`Opponent 1:
`Rosenthal Collins Group LLC
`Chicago, Illinois 60606 (US)
`
`Peregrine Financial Group Inc
`Chicago, Illinois 60603 (US)
`
`GL Trade SA
`75002 Paris (FR)
`
`CQG Inc
`Denver, Colorado 80265 (US)
`
`Further notices on oppositions were filed on 12 and 13 January 2006 by:
`
`Opponent II:
`Deutsche Borse AG
`60487 Frankfurt am Main (DE)
`
`Opponent Ill:
`tick-IT GmbH
`40210 Dusseldorf (DE)
`
`EPO Form 2906 01.91 TRI
`
`TDA 1027
`TD Ameritrade v. TT
`CBM2014-00137
`
`

`

`Datum
`Date
`Date
`
`3 0 . 0 9 . 2 0 1 0
`
`Blatt
`Sheet
`Feuille
`
`2
`
`Anmelde-Nr:
`Application No:
`Demande no:
`
`0 1 9 2 0 18 3 . 9
`
`Opponent IV:
`Anitra Medienprojekte GmbH
`81677 Munchen (DE)
`
`Opponent V:
`Eccoware Limited
`London EC2N 2LS (UK)
`
`The notices of oppositions will hereinafter be referred to as OP1 to OPS,
`respectively.
`
`II.
`
`The following evidences were indicated in the notices of oppositions; the
`numbering is introduced by the opposition division and will be adhered to in
`the rest of the procedure:
`
`D1
`
`D2
`
`D3
`
`D4
`
`D5
`
`D6
`
`D6'
`
`WO 99/19821 A 1 (Derivatives Net Inc.) 22 April 1999
`[in OP1: "D1 ";in OP3: "E1 ";in OP5: "D4"]
`
`WO 99/53424 A1 (lmpink) 21 October 1999
`[in OP1: "D2"]
`
`WO 98/49639 A 1 (Lawrie) 5 November 1998
`[in OP1: "D3"]
`
`US 5 297 031 (Gutterman et al.) 22 March 1994
`[in OP1: "D4"]
`
`WO 91/14231 A 1 (Chicago Board of Trade) 19 September 1991
`[in OP2: "E1 "; in OP4: "A2"]
`
`Tokyo Stock Exchange, "Futures and Options Trading System(cid:173)
`Transaction Terminal Operation Procedures" (title also translated
`as "System for Buying and Selling Futures and Options -
`Transaction Terminal Operational Guidelines'), original Japanese
`version, August 1998
`[in OP1: "Exhibit 1 "; in OP2: "E4"; in OP5: "D1 (1 )"]
`
`Collection of pages of D6, original Japanese version, comprising:
`cover page, table of contents pages 1 to 4, pages 2-1, 3-6, 5-1,
`7-1, 7-17, 7-21, 7-22, 7-25, 7-26, 9-5, appendix page 4-1 of D6
`[in OP1: part of "Exhibit 4 Japanese version", see pages "TSE"
`628 to 643]
`
`EPO Form 2906 01.91 TRI
`
`

`

`Datum
`Date
`Date
`
`3 0 . 0 9 . 2 0 1 0
`
`Blatt
`Sheet
`Feuille
`
`3
`
`Anmelde-Nr:
`Application No:
`Demande no:
`
`0 1 9 2 0 18 3 . 9
`
`06a
`
`06b
`
`06c
`
`07
`
`07a
`
`08
`
`08a
`
`Partial English translation of 06 provided by Opponents I and V,
`translation of the following pages of 06:
`cover page, pages 5-2 to 5-19, 6-3 to 6-1 0, 6-24, 6-25, 7-13 to
`7-20, 7-23, 7-24, 9-1 to 9-4, 9-6 to 9-32
`[in OP1: part of "Exhibit 2", from page "TSE" 647 to page "TSE"
`81 0; in OP5: "01 (2)"]
`
`Partial English translation of 06 provided by Opponents I and II,
`translation of the pages of 06 comprised in 06':
`cover page, table of contents pages 1 to 4, pages 2-1, 3-6, 5-1,
`7-1, 7-17, 7-21, 7-22, 7-25, 7-26, 9-5, appendix page 4-1
`[in OP1: part of "Exhibit 4 English version", see pages "TSE" 628
`to 643; in OP2: "E4 translation"]
`
`Partial English translation of 06 provided by Opponent V,
`translation of the pages of 06 comprised in 06':
`cover page, table of contents pages 1 to 4, pages 2-1, 3-6, 5-1,
`7-1, 7-17, 7-21, 7-22, 7-25, 7-26, 9-5, appendix page 4-1
`[in OP5: "01 (3)"]
`
`Tokyo Stock Exchange, "Orientation Materials for Participants(cid:173)
`New Future Options Trading System", original Japanese version,
`September 1997
`[in OP1: part of "Exhibit 4 Japanese version", see pages "TSE"
`609 to 627; in OP2: "E5"]
`
`English translation of 07 provided by Opponents I and II
`[in OP1: part of "Exhibit 4 English version", see pages "TSE" 609
`to 627; in OP2: "E5 translation"]
`
`Tokyo Stock Exchange, "Volume: Systems- Collected Records
`and Data, 50-Year History of the Tokyo Stock Exchange", original
`Japanese version, 31 July 2000
`[in OP1: part of "Exhibit 4 Japanese version", see pages "TSE"
`644 to 646]
`
`English translation of 08 provided by Opponent I
`[in OP1: part of "Exhibit 4 English version", see pages "TSE" 644
`to 646]
`
`EPO Form 2906 01.91 TRI
`
`

`

`Datum
`Date
`Date
`
`3 0 . 0 9 . 2 0 1 0
`
`Blatt
`Sheet
`Feuille
`
`4
`
`Anmelde-Nr:
`Application No:
`Demande no:
`
`0 1 9 2 0 18 3 . 9
`
`D9
`
`D9a
`
`D9b
`
`D1 0
`
`D11
`
`D12
`
`D13
`
`D14
`
`D15
`
`Notice of opposition by Tokyo Stock Exchange Inc. filed on 18
`April 2005 at the Japanese Patent Office, original Japanese
`version
`[in OP1: part of "Exhibit 4 Japanese version", see pages "TSE"
`982 to 995]
`
`English translation of D9 provided by Opponent I in "Exhibit 4
`English version"
`[in OP1: part of "Exhibit 4 English version", see pages "TSE" 982
`to 995]
`
`English translation of D7 provided by Opponent I in "Exhibit 2"
`[in OP1: part of "Exhibit 2", see pages "TSE" 982 to 995]
`
`Transcript of deposition of Mr. Atsushi Kawashima on 21
`November 2005 in Case No. 04-C-5312 in The United States
`District Court for the Northern District of Illinois between Trading
`Technologies International, Inc. (Plaintiff) and eSpeed, Inc.
`(Defendant)
`[in OP1: "Exhibit 3"]
`
`LIFFE, "The Application Program Interface (API) Reference
`Manual- For LIFFE CONNECT, Release 2. 7, September 1998"
`[in OP1: "Exhibit 5"]
`
`LIFFE, "The Application Program Interface (API) Reference
`Manual- For LIFFE CONNECT, Release 3.0, September 1998"
`[in OP1: "Exhibit 6"]
`
`LIFFE, "The Application Program Interface (API) Reference
`Manual- For LIFFE CONNECT, Release 3.1, September 1998"
`[in OP1: "Exhibit 7 A"]
`
`LIFFE, "The Application Program Interface (API) Reference
`Manual- For LIFFE CONNECT, Release 3.2, December 1998"
`[in OP1: "Exhibit 7B"]
`
`LIFFE, "The Application Program Interface (API) Reference
`Manual- For LIFFE CONNECT, Release 3.3, January 1999"
`[in OP1: "Exhibit 7C"]
`
`EPO Form 2906 01.91 TRI
`
`

`

`Datum
`Date
`Date
`
`3 0 . 0 9 . 2 0 1 0
`
`Blatt
`Sheet
`Feuille
`
`5
`
`Anmelde-Nr:
`Application No:
`Demande no:
`
`0 1 9 2 0 18 3 . 9
`
`D16
`
`D17
`
`D18
`
`D19
`
`D20
`
`D21
`
`D22
`
`D23
`
`D24
`
`D25
`
`D25'
`
`LIFFE, "Directory of Software Solutions- For LIFFE CONNECT",
`Issue 1, October 1998
`[in OP1: "Exhibit 8A"]
`
`LIFFE, "Directory of Software Solutions- For LIFFE CONNECT",
`Issue 2, February 1999
`[in OP1: "Exhibit 8B"]
`
`LIFFE, "Directory of Software Solutions- For LIFFE CONNECT",
`Issue 3, June 1999
`[in OP1: "Exhibit 8C"]
`
`Slides of a presentation "LIFFE's New Electronic Trading Platform
`for Futures", ISV Developers Conference, 24 September 1998
`[in OP1: "Exhibit 8D"]
`
`Promotional material "IRIS Investment Support Systems"
`[in OP1: "Exhibit 1 0"]
`
`Transcript of deposition of Mr. Paul MacGregor on 1 November
`2005 in Case No. 04-C-5312 in The United States District Court
`for the Northern District of Illinois between Trading Technologies
`International, Inc. (Plaintiff) and eSpeed, Inc. (Defendant)
`[in OP1: "Exhibit 9A"]
`
`Ll FFE, ''APT Trading Procedures (Atom version) of the London
`International Financial Futures Exchange", 28 March 1991
`[in OP1: "Exhibit 9B"]
`
`LIFFE, ''APT User Guide", January 1994
`[in OP1: "Exhibit 9C"]
`
`Ll FFE, ''Attachment to General Notice No. 788 - APJP1us Trading
`Procedures", 28 December 1995
`[in OP1: "Exhibit 9D"]
`
`GL Trade, "GL TRADE- User Guide V4.51 - LIFFE CONNECT for
`Futures by GL TRADE", June 1999
`[in OP1: "Exhibit 11 "]
`
`Collection of pages of D25 comprising: cover page, pages 28, 29
`and 31 to 35
`[in OP5: "D2"]
`
`EPO Form 2906 01.91 TRI
`
`

`

`Datum
`Date
`Date
`
`3 0 . 0 9 . 2 0 1 0
`
`Blatt
`Sheet
`Feuille
`
`6
`
`Anmelde-Nr:
`Application No: 0 1 9 2 0 18 3 . 9
`Demande no:
`
`026
`
`027
`
`028
`
`029
`
`030
`
`030'
`
`031
`
`032
`
`033
`
`034
`
`035
`
`GL Trade, brochure "Trading Pad" (8 pages)
`[in OP2: "E2"]
`
`GL Trade, "Guide d'utilisation GL WIN et Logiciels
`complementaires", collection of 8 pages
`[in OP2: "E3"]
`
`Print-out dated 10 January 2006 of webpage with URL:
`http:/!web.archive.org/web/19980629135037//
`http://www.tiffe.or.jp/e_hmtl/new_on.html
`[in OP3: "E2"]
`
`OM Gruppen AB, "OM CLICK Trade User's Guide for Windows
`NT", October 1998
`[in OP1: "Exhibit 14"]
`
`Research & Trade AB, "ORC Instructions for Use- Version 2.2.8",
`1999
`[in OP4: "A3" (complete document)]
`
`Collection of pages of 030, comprising: cover page, table of
`contents, pages 1-16 and 1-17, index
`[in OP4: "A3"]
`
`F. Maguire, "Firms rush to make Liffe Connect decision", Banking
`Technology 8, 4 December 1998
`[in OP2: "E6"]
`
`Trading Technologies brochure
`[in OP2: "E7"]
`
`"Data Broadcasting Partners with All-Tech Investment Group to
`provide Customers with Integrated Online Trading': PR Newswire,
`25 February 1 999
`[in OP2: "E8"]
`
`"MIN EX Service Outline (User Test/Orientation)", November 1992
`[in OP2: "E9"]
`
`US 5 960 411 (Hartman et al.) 28 September 1999
`[in OP5: "03"]
`
`EPO Form 2906 01.91 TRI
`
`

`

`Datum
`Date
`Date
`
`3 0 . 0 9 . 2 0 1 0
`
`Blatt
`Sheet
`Feuille
`
`7
`
`Anmelde-Nr:
`Application No:
`Demande no:
`
`0 1 9 2 0 18 3 . 9
`
`D36
`
`D37
`
`D38
`
`D39
`
`Memorandum Opinion and Order of Senior Judge J.B. Moran in
`Case No. 04-C-5312 in The United States District Court for the
`Northern District of Illinois between Trading Technologies
`International, Inc. (Plaintiff) and eSpeed, Inc. (Defendant), 9
`February 2005
`[in OP1: "Exhibit 12", in OP5: "D5"]
`
`J. Sandman, "Trading Technologies upgrades software for its
`platform", Securities Industry News, 28 August 2000
`[in OP5: "D6"]
`
`Figure 2 of WO 01/65403, i.e. the International Patent Application
`on which the patent is based
`[in OP1: "Exhibit 13A"]
`
`US Provisional Application for Patent No. 60/186,322, i.e. P1
`[in OP1: "Exhibit 138"]
`
`Opponent Ill offered in OP4 witness proof (Mr. Kenichiro Ohara, Tokyo
`Financial eXchange Inc., Tokyo, Japan) for facts relating to the "TIFFE"
`system shown in D28 and used at the Tokyo International Financial Futures
`Exchange in 1996-1998.
`
`Ill.
`
`Opponent I requested in OP1 the revocation of the patent in its entirety based
`on the grounds that the subject-matter of the patent is excluded from
`patentability, is not new and does not involve an inventive step (Articles 100
`(a), 52(1 ), 52(2)(c) and (d), 54 and 56 EPC 1973) and that the subject-matter
`of the patent extends beyond the content of the application as filed (Article
`1 OO(c) EPC 1973).
`
`More particularly, Opponent I argued in OP1 that the subject-matters of all
`claims extended beyond the content of the application as filed (Article 1 OO(c)
`EPC 1973) by pointing to specific features and terms of the independent
`claims. Decision T 331/87 was cited in this respect.
`
`The subject-matters of all claims were considered to be excluded from
`patentability by Article 52(2)(c) and (d) EPC 1973 as presentations of
`information, methods of doing business and/or programs for computers.
`
`The claims to priority from P1 and P2 were considered to be invalid.
`
`Opponent I argued that the subject-matters of independent claims 1 and 29
`were:
`- not new over D1
`
`EPO Form 2906 01.91 TRI
`
`

`

`Datum
`Date
`Date
`
`3 0 . 0 9 . 2 0 1 0
`
`Blatt
`Sheet
`Feuille
`
`8
`
`Anmelde-Nr:
`Application No:
`Demande no:
`
`0 1 9 2 0 18 3 . 9
`
`- not new over 04
`- not new over 06 and related prior use "TSE" (09 and 010 cited as evidence)
`-not new over "LIFFE Connect Prior Art Manuals" 011 to 015 (021 cited as
`evidence)
`-not new over the "IRIS system" shown in 020 (016 to 019 cited in this
`context)
`- not new over the "APT system" shown in 022 to 024 (021 cited as
`evidence)
`- not new over 025
`- not new over a prior use of the invention by Mr. Harris Brumfield, one of the
`named inventors (036 cited as evidence)
`- not inventive over "X_ Trader", as shown in 038 and 039, combined with 04
`- not inventive over a combination of any two of 01, 04 (the reference to "02"
`in point 72 of OP1 appears to be an error that should be read "04" in view of
`the context), 06 and 011 to 019
`- not inventive over a combination of 029 and 06 and 011 to 019
`
`Furthermore, the subject-matters of all claims were considered not to involve
`an inventive step because they do not represent a technical solution to a
`technical problem. Decision T 258/03 was cited in this respect.
`
`Opponent I indicated at several occasions in OP1 that further details and
`evidences relating to the prior art would be provided.
`
`Opponent II requested in OP2 the revocation of the patent in its entirety based
`on the grounds that the subject-matter of the patent is not new and does not
`involve an inventive step (Articles 1 OO(a), 52(1 ), 54 and 56 EPC 1973), that
`the patent does not disclose the invention in a manner sufficiently clear and
`complete for it to be carried out by a skilled person (Article 1 OO(b) EPC 1973),
`and that the subject-matter of the patent extends beyond the content of the
`application as filed (Article 1 OO(c) EPC 1973). Oral proceedings were
`requested on an auxiliary basis.
`
`More particularly, Opponent II argued in OP2 that the subject-matters of all
`claims extended beyond the content of the application as filed (Article 1 OO(c)
`EPC 1973) by pointing to specific features and terms of the independent
`claims and of some dependent claims.
`
`It was objected that claims 13 and 28 define subject-matter which the skilled
`person is not enabled to carry out (Article 1 OO(b) EPC 1973).
`
`IV.
`
`EPO Form 2906 01.91 TRI
`
`

`

`Datum
`Date
`Date
`
`3 0 . 0 9 . 2 0 1 0
`
`Blatt
`Sheet
`Feuille
`
`9
`
`Anmelde-Nr:
`Application No:
`Demande no:
`
`0 1 9 2 0 18 3 . 9
`
`Opponent II argued that the subject-matters of the independent claims were:
`- not new over 05
`- not new over 026 and 027
`- not inventive over 06 or 07
`- not inventive over 06 or 07 in view of 031 to 034
`
`The subject-matters of all dependent claims were considered to lack novelty
`and/or inventive step; reference was made to 05 to 07, 026, 027, 032 and
`034 for individual features.
`
`V.
`
`Opponent Ill requested in OP3 the revocation of the patent in its entirety
`based on the grounds that the subject-matter of the patent is excluded from
`patentability, is not new and does not involve an inventive step (Articles 100
`(a), 52(1 ), 52(2)(c) and (d), 54 and 56 EPC 1973). It was requested that oral
`proceedings be held before the final decision.
`
`VI.
`
`More particularly, Opponent Ill argued in OP3 that the subject-matters of
`independent claims 1 and 29 were excluded from patentability by Article 52(2)
`(c) and (d) EPC 1973 as presentations of information and/or as methods for
`doing business.
`
`Opponent Ill argued that the subject-matters of the independent claims were:
`- not new over 028 and related prior use "TI FFE" (witness proof offered)
`- not inventive in view of a combination of 01 and 028
`
`The additional features of the dependent claims were considered to be either
`known from 01 and 028 or obvious.
`
`Opponent IV requested in OP4 the revocation of the patent in its entirety
`based on the grounds that the subject-matter of the patent is excluded from
`patentability, is not new and does not involve an inventive step (Articles 100
`(a), 52(1 ), 52(2) and (3), 54 and 56 EPC 1973) and that the subject-matter of
`the patent extends beyond the content of the application as filed (Article 100
`(c) EPC 1973). Oral proceedings were requested on an auxiliary basis.
`
`More particularly, Opponent IV argued in OP4 that the subject-matters of all
`claims extended beyond the content of the application as filed (Article 1 OO(c)
`EPC 1973) by pointing to a specific feature of independent claim 1.
`
`The subject-matters of all claims were considered to be excluded from
`patentability by Article 52(2) and (3) EPC 1973 as they relate to methods of
`doing business and lack a technical character. Decisions T 1173/97 and
`T 769/92 were cited in this respect.
`
`EPO Form 2906 01.91 TRI
`
`

`

`Datum
`Date
`Date
`
`3 0 . 0 9 . 2 0 1 0
`
`Blatt
`Sheet
`Feuille
`
`10
`
`Anmelde-Nr:
`Application No:
`Demande no:
`
`0 1 9 2 0 18 3 . 9
`
`VII.
`
`Opponent IV argued that the subject-matters of the independent claims were:
`- not new over 05
`- not inventive over a combination of 05 and 030'
`
`The subject-matters of all dependent claims were considered to lack novelty
`and/or inventive step.
`
`Opponent V requested in OP5 the revocation of the patent in its entirety
`based on the grounds that the subject-matter of the patent is excluded from
`patentability, is not new and does not involve an inventive step (Articles 100
`(a), 52(1 ), 52(2)(c) and (d), 54 and 56 EPC 1973) and that the subject-matter
`of the patent extends beyond the content of the application as filed (Article
`1 OO(c) EPC 1973). Oral proceedings were requested on an auxiliary basis.
`
`More particularly, Opponent V argued in OP5 that the subject-matters of all
`claims extended beyond the content of the application as filed (Article 1 OO(c)
`EPC 1973) by pointing to specific features and terms of the independent
`claims.
`
`The subject-matters of all claims were considered to be excluded from
`patentability by Article 52(2)(c) and (d) EPC 1973 because independent claim
`29 was directed to presentation of information and methods for doing
`business, independent claim 1 to means for implementing such methods, and
`independent claim 53 to a program for computers, and because the
`dependent claims did not add technical character. Decision T 258/03 was
`cited in this respect.
`
`The claims to priority from P1 and P2 were considered to be invalid.
`
`Opponent V argued that the subject-matters of the independent claims were:
`- not new over 06
`- not new over 025'
`- not new over 01
`- not new over a prior use of the invention by Mr. Harris Brumfield, one of the
`named inventors (036 and 037 cited as evidence; decisions T 270/90 and T
`7 43/89 cited)
`- not inventive over the prior art cited in the patent and common general
`knowledge (decisions T 641/00, T 258/03 and T 125/04 cited)
`-not inventive over 06, 025' or 01 combined with common general
`knowledge or 035
`
`Several additional features of the dependent claims were considered to be
`anticipated by 06 and/or 025'.
`
`EPO Form 2906 01.91 TRI
`
`

`

`Datum
`Date
`Date
`
`3 0 . 0 9 . 2 0 1 0
`
`Blatt
`Sheet
`Feuille
`
`11
`
`Anmelde-Nr:
`Application No:
`Demande no:
`
`0 1 9 2 0 18 3 . 9
`
`VIII.
`
`IX.
`
`X.
`
`XI.
`
`It was indicated that D6 and D25' as well as the systems described therein
`were made available to the public before 2 March 2000 and that further facts,
`evidence and arguments in relation to D6 and D25' and to prior uses of the
`systems disclosed therein would be provided in due course.
`
`Opponent V suggested that the Opposition Division should consider which
`steps could be made to further investigate the prior use of the invention by Mr.
`Brumfield on the basis of Article 117(3) EPC 1973 and Rule 72(1) EPC 1973.
`
`In a communication dated 21 February 2006, the Opposition Division invited
`the Proprietor to file observations and, where appropriate, amendments to the
`patent within a period of 4 months.
`
`In a letter dated 5 April 2006 and received at the EPO on 10 April 2006
`(hereinafter referred to as OP1-1 ), the common representative of Opponent I
`indicated that common opponent Peregrine Financial Group Inc. wished to
`withdraw from the opposition proceedings. Additionally, oral proceedings were
`requested on an auxiliary basis on behalf of Opponent I.
`
`Following requests by the Proprietor dated 3 July 2006 and 3 August 2006,
`the time limit for replying to the communication dated 21 February 2006 was
`extended from 4 months to 7 months (communication dated 11 August 2008).
`
`In a fax received at the EPO on 3 October 2006 (hereinafter referred to as
`PA1 ), the Proprietor replied to the notices of oppositions and requested the
`maintenance of the patent as granted. Oral proceedings were requested on
`an auxiliary basis.
`
`As regards the ground of opposition under Article 1 OO(c) EPC 1973,
`arguments were given as to why none of the objected claims extended
`beyond the content of the application as filed.
`
`As regards the ground of opposition under Article 1 OO(b) EPC 1973, it was
`contested that claims 13 and 28 could not be carried out by a skilled person.
`
`As regards the ground of opposition under Article 1 OO(a) EPC 1973, it was
`submitted that the patent was not excluded from patentability by Article 52(2)
`and (3) EPC 1973 because it was directed to a trading tool that provides a
`technical solution to a technical problem, namely that of ensuring not only that
`the speed of order entry can be improved but that this increase in speed is not
`achieved at the expense of accuracy.
`
`EPO Form 2906 01.91 TRI
`
`

`

`Datum
`Date
`Date
`
`3 0 . 0 9 . 2 0 1 0
`
`Blatt
`Sheet
`Feuille
`
`12
`
`Anmelde-Nr:
`Application No:
`Demande no:
`
`0 1 9 2 0 18 3 . 9
`
`As regards the objection of lack of inventive step linked to the issue of
`technical character, it was argued that the features of the invention
`contributing to the solution of that technical problem could not be disregarded.
`Reference was also made to decision T 49/04 to support the technical
`character of features of the invention.
`
`It was submitted that the claims to priority from P1 and P2 were valid;
`reference was thereby made to G 2/98.
`
`As regards the prior art relied upon in the notices of oppositions, the
`Proprietor contested that documents 06, 07, 025/025', 026, 027, 030/030'
`and the systems disclosed therein belong to the state of the art as no
`satisfactory proof therefor had been provided by the opponents. In the
`absence of such proof, these disclosures should not be considered
`admissible. In particular, Mr. Kawashima's deposition (01 0) is not considered
`a sufficient proof for the allegation that 06 and the associated system form
`part of the prior art.
`
`It was pointed out that Mr. MacGregor's deposition (021) is not prior art and
`cannot be used as such.
`
`As regards the alleged prior use "TI FFE" (related to 028), the Proprietor
`further requested that Opponent Ill provides as soon as possible the
`substance of the testimony of their witness, Mr. Ohara.
`
`As regards the alleged prior use by Mr. Brumfield, it was submitted that the
`burden of proof was on the opponents and that in any case Mr. Brumfield's
`use of a prototype of the invention was confidential and did therefore not
`constitute a prior public use.
`
`The Proprietor gave detailed reasons as to why the invention was new and
`inventive over the (alleged) prior art relied upon by the opponents.
`
`The Proprietor noted finally that several opponents indicated that further
`evidence relating to cited documents and systems would be provided in due
`course and submitted that such further evidence should not be admitted.
`
`XII.
`
`With a letter dated 26 September 2006 and received at the EPO on 1 0
`October 2006 (hereinafter referred to as OP1-2), Opponent I submitted new
`evidences:
`
`EPO Form 2906 01.91 TRI
`
`

`

`Datum
`Date
`Date
`
`3 0 . 0 9 . 2 0 1 0
`
`Blatt
`Sheet
`Feuille
`
`13
`
`Anmelde-Nr:
`Application No:
`Demande no:
`
`0 1 9 2 0 18 3 . 9
`
`D40
`
`D41
`
`D42
`
`Slides of a presentation "Wit Digital Stock Market" (29 slides)
`[in OP1-2: "Exhibit 15"]
`
`Collection of pages from a book by A.D. Klein, "Wai!Street.com(cid:173)
`Fat Cat Investing at the Click of a Mouse- How Andy Klein and
`the Internet Can Give Everyone a Seat on the Exchange", Henry
`Bolt and Company, 1998
`[in OP1-2: "Exhibit 16"]
`
`Declaration of Walter D. Buist dated 26 April 2006 in Case No. 05-
`CV-4088 in The United States District Court for the Northern
`District of Illinois between Rosenthal Collins Group, LLC (Plaintiff)
`and Trading Technologies International, Inc. (Defendant)
`[in OP1-2: "Exhibit 17"]
`
`Opponent I submitted that "Wit Digital Stock Market" was a computer program
`which had been available in 1999 and anticipates the subject-matter of claim
`1. D40 corresponds to a presentation compiled in February 1999. D40 to D42
`are presented as providing detai Is of Wit Digital Stock Market and are
`provided to the Opposition Division to assess the relevance of these
`evidences to the claims. Opponent I indicated that further evidence regarding
`the public availability of Wit Digital Stock Market would be provided.
`
`XIII.
`
`Following several enquiries by the Proprietor and the Opposition Division
`noting that "Exhibit 17" (D42) as submitted with OP1-2 was incomplete, a
`complete copy of "Exhibit 17" (D42) was finally submitted by Opponent I with
`a letter dated 19 April 2007 and received at the EPO on 26 April 2007.
`
`XIV.
`
`In a letter dated 16 October 2008 and received at the EPO on 18 October
`2008, Opponent Ill notified the change of its name and address to
`
`Tick Trading Software Aktiengesellschaft
`40212 Dusseldorf (DE)
`
`PRELIMINARY OPINION OF THE OPPOSITION DIVISION
`
`1
`
`Admissibility of the oppositions
`
`The oppositions are considered to be admissible because they comply with
`the requirements of Articles 99(1) and 100 EPC 1973 as well as of Rules 1 (1)
`and 55 EPC 1973 and, in respect of Opponent I, of Rule 1 00(1 ), last
`sentence, EPC 1973 (the provisions of EPC 1973 apply to the issue of
`admissibility because the notices of opposition were filed before the date of
`
`EPO Form 2906 01.91 TRI
`
`

`

`Datum
`Date
`Date
`
`3 0 . 0 9 . 2 0 1 0
`
`Blatt
`Sheet
`Feuille
`
`14
`
`Anmelde-Nr:
`Application No:
`Demande no:
`
`0 1 9 2 0 18 3 . 9
`
`entry into force of EPC 2000, see T 1279/05, point 2.1, T 1194/07, point 2 and
`T 25/08, point 3). The admissibility of the oppositions has not been disputed
`by the proprietor.
`
`2
`
`Opponent I - Withdrawal of Peregrine Financial Group Inc.
`
`Following the statement made in OP1-1 by the common representative of
`Opponent I, Peregrine Financial Group Inc. does no longer belong to the
`group of common opponents referred to as Opponent I (although remaining in
`principle subject to any decision yet to be taken under Article 104 EPC, see G
`3/99, point 15).
`
`Article 100(c) EPC 1973- Added subject-matter
`
`3
`
`Opponents I. II. IV and V oppose the patent on the ground that the subject(cid:173)
`matters of all claims of the patent extend beyond the content of the application
`as filed (Article 1 OO(c) EPC 1973).
`
`The International Patent Application published as WO 01/65403 represents
`the application as filed.
`
`The Opposition Division notes that the Proprietor cites paragraphs of the
`published patent to support features of the granted claims in view of
`objections raised by the Opponents under Article 1 OO(c) EPC 1973. Basis for
`these features should however be found in the application as filed. In the
`following, the Opposition Division converts therefore the references to
`passages of the published patent provided by the Proprietor in response to
`the objections under Article 1 OO(c) EPC 1973 into references to the
`corresponding passages of the application as filed.
`
`In the following, all the issues raised the Opponents are addressed.
`
`4
`
`Article 100(c) EPC 1973- Independent claim 1
`
`Independent claim 1 as granted, which is directed to a client device for
`receiving commands relating to a commodity being traded on an electronic
`exchange, appears to be based on original independent claim 35, which is
`directed to a client system for placing a trade order for a commodity on an
`electronic exchange.
`
`EPO Form 2906 01.91 TRI
`
`

`

`Datum
`Date
`Date
`
`3 0 . 0 9 . 2 0 1 0
`
`Blatt
`Sheet
`Feuille
`
`15
`
`Anmelde-Nr:
`Application No:
`Demande no:
`
`0 1 9 2 0 18 3 . 9
`
`4.1
`
`Display of market depth (deletion)
`
`The client system of original claim 35 comprises a
`
`"display device for displaying the market depth of a commodity traded in a
`market, through a dynamic display of a plurality of bids and a plurality of asks
`in the market for the commodity, including the bid and ask quantities of the
`commodity".
`
`The client device of claim 1 as granted comprises means for displaying a "first
`indicator" and a "second indicator" associated, respectively, with the current
`highest bid price and the current lowest ask price for the commodity. Claim 1
`as granted requires thus means for displaying indicators related to the internal
`market but not necessarily means for displaying the market depth, as in
`original claim 35.
`
`Opponents I. II and V argue that it is not directly and unambiguously derivable
`from the application as filed that displaying only the highest bid price and the
`lowest ask price was intended at the time of filing the application. They argue
`that the feature of displaying the market depth is an essential feature of the
`invention in the application as filed, this feature being included inter alia in all
`the original independent claims and in the section "summary of the invention"
`of the original description. The conditions specified in T 331/87 are therefore
`not met.
`
`The Proprietor contests that displaying the market depth is an essential
`feature of the invention in the application as filed. T 331/87 is therefore
`considered to be irrelevant. The Proprietor points to page 8, lines 13 to 17, of
`the application as filed. The Proprietor further argues that the invention retains
`its benefits even if no market depth is displayed. Reference is made to page
`14, line 29 to page 15, line 5 with reference to figures 3 and 4 of the
`application as filed to show that only the inside market really matters.
`
`The Opposition Division tends to agree with the Proprietor that claim 1 as
`granted does not extend beyond the content of the application as filed in this
`respect.
`
`Reference is made to the paragraph bridging pages 7/8 of the application as
`filed:
`
`"The preferred embodiments of the present invention include the display of
`"Market Depth"[. . .] Market Depth represents the order book with the current
`bid and ask prices and quantities in the market. In other words, market depth
`is each bid and ask that was entered into the market. subject to the limits
`
`EPO Form 2906 01.91 TRI
`
`

`

`Datum
`Date
`Date
`
`3 0 . 0 9 . 2 0 1 0
`
`Blatt
`Sheet
`Feuille
`
`16
`
`Anmelde-Nr:
`Application No:
`Demande no:
`
`0 1 9 2 0 18 3 . 9
`
`noted below. in addition to the inside market. For a commodity being traded,
`the 'inside market' is the highest bid price and the lowest ask price."
`(underlining added)
`
`The limits referred to in this passage are addressed at page 8, lines 13 to 17:
`
`"How far into the market depth the present invention can displav depends on
`how much of the market depth the exchange provides. Some exchanges
`supply an infinite market depth, while others provide no market depth or only a
`few orders away from the inside market. The user of the present invention can
`also chose how far into the market depth to displav on his screen."
`(underlining added)
`
`It appears to follow directly and unambiguously from these two passages of
`the application as filed that the "present invention" may display only the inside
`market without any additional bid or ask.
`
`The assertion of the Opponents that the display of market depth - understood
`as the display of bids and asks that were entered into the market in addition to
`the inside market- is an essential feature of the invention in the application as
`filed is not followed by the Opposition Division in view of the above-mentioned
`passages. This finding is furthermore consistent with the fact that the
`description of the operation of the invention from page 14, line 29 to page 15,
`line 15 in combination with figures 3 and 4 focuses on the display and
`movement of the internal market, as noted by the Proprietor.
`
`4.2
`
`"Field of static prices"
`
`Claim 1 as granted refers to a "field of static prices" whereas original claim 35
`refers to a "static display of prices".
`
`Opponents I and V argue that the expression "field of static prices", with
`emphasis on the term "field", is an impermissible generalisation of what is
`disclosed in the application as filed.
`
`The Proprietor states that this expression is clearly supported by the
`description and refers to the minutes of the