`(202) 772-8677
`RSOKOHL@SKGF.COM
`
`December 18, 2014
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`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`Stow Kessler
`Goldstein Fox
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`Mall Stop PATENT BOARD
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`Re: (cid:9)
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`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
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`Dear PTAB:
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`Due to the PRPS service outage on December 16, 2014, counsel for Petitioners in the
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`above-captioned Covered Business Method Review proceedings were instructed by Maria
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`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
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`instructed. Ms. Vignone authorized Counsel via email to file the Requests for Rehearing via
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`PRPS on December 17, 2014, once PRPS was operational.
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`Respectfully submitted,
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`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.
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`1945872_i .DOCX
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`SKGF.COM
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`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 CBM2014-00137
`Patent No. 7,685,055 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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`I.
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`II.
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`CBM2014-00137
`U.S. Patent No. 7,685,055 B2
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`Table of Contents
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`Relief Requested .............................................................................................. 1
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`Introduction ...................................................................................................... 1
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`III. The Board should have instituted on the asserted grounds that claim 16 is
`obvious over TSE and is obvious over the Silverman combination. .............. 2
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`A.
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`B.
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`The Board misapprehended the scope of the “selection of a particular
`location” limitation. ............................................................................... 2
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`The Board misapprehended the Petition as relying on Gutterman
`alone to meet the limitations of claim 16, and overlooked the
`Petition’s arguments that the combination “GUI of Silverman and
`Gutterman” meets the limitations of claim 16. ..................................... 6
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`IV. Conclusion ..................................................................................................... 11
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`I.
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`Relief Requested
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`CBM2014-00137
`U.S. Patent No. 7,685,055 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. 7,685,055 B2 (“the ’055 patent”) (Ex. 1001), owned by Trading
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`Technologies International, Inc. (“TTI”), on the asserted grounds that claim 16 is
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`unpatentable under 35 U.S.C. § 103 over TSE, and on the asserted ground that
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`claim 16 is unpatentable under 35 U.S.C. § 103 over Silverman, Gutterman, and
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`TSE.
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`II.
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`Introduction
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`TD Ameritrade petitioned (paper 1) (“Pet.”) the Board seeking CBM Review
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`of the ’055 patent on the following grounds:
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`1
`2
`3
`4
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`Claims
`1-19
`1, 3, 4, 6-19
`2, 5
`1-19
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`Pet. at 7-8.
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`Ground
`§ 101
`§ 103 TSE (Ex. 1007/1008)
`§ 103 TSE and Gutterman (Ex. 1006)
`§ 103 Silverman (Ex. 1005), Gutterman, and TSE
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`In its Decision (paper 19), the Board instituted Review on § 101 and § 103
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`of claims 1, 3, 4, 6-15, and 17-19 over TSE, and claims 2 and 5 over TSE and
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`Gutterman. Decision 27. The Board did not, however, institute review on § 103 of
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`claim 16 over TSE or claims 1-19 over the Silverman combination (i.e., ground 4).
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`Id. TD Ameritrade therefore seeks rehearing of the Board’s decision to not institute
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`review on the asserted ground that TSE renders claim 16 unpatentable under § 103,
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`and on the asserted ground that the Silverman, Gutterman, and TSE renders claim
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`16 unpatentable under § 103.
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`III. The Board should have instituted on the asserted grounds that claim 16
`is obvious over TSE and is obvious over the Silverman combination.
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`In denying review of claim 16 as obvious over TSE and over the Silverman
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`combination, the Board misapprehended the scope of the “in response to a
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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 ground based on
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`Silverman, Gutterman, and TSE as relying on Gutterman alone to meet the
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`limitations of claim 16, 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 claim 16.
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`A. The Board misapprehended the scope of the “selection of a
`particular location” limitation.
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`Claim 16 of the ’055 patent recites, “in response to a selection of a particular
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`location of the order entry region by a single action of a user input device, setting a
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`plurality of parameters for a trade order relating to the commodity and sending the
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`trade order to the electronic exchange.” ’055 patent 35:56-60. The Board
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`interpreted this limitation to mean that a single action selects the particular
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`location, sets a plurality of parameters for a trade order, and sends the trade order
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`to the electronic exchange. See Decision 25-26 (holding that Gutterman’s
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`disclosure of selecting an order icon to set trade parameters followed by selecting
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`another button to send the trade order does not meet this limitation).1 The Board
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`misapprehended the scope of this limitation.
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`1 TD Ameritrade notes that Patent Owner admitted in a CBM proceeding of
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`a related patent that this type of “single action” trading was prior art. CBM2014-
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`00136, paper 18 (Patent Owner’s Preliminary Response), 7 (admitting that
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`conventional trading tools “permitted ‘single action’ order entry that consisted of a
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`trader presenting a default quantity and then clicking on a cell in the screen (i.e.,
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`pressing a button on the tool) to cause a trade order message to be sent to the
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`exchange at the preset quantity and at the price value associated with that cell”);
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`CBM2014-00136, paper 19 (Institution Decision), 11 (“Patent Owner describes
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`this prior art GUI tool as ‘conventional’ and states that [s]ome of these types of
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`tools permitted ‘single action’ order entry.” (internal citations omitted)).
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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 that the selection of a particular location of the order entry
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`region to be achieved by a single action. The selection of the particular location
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`then 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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`For example, claim 16 covers 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 claim 16 does not require that
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`the setting and sending be performed in response to a single action. Rather, the
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`single action is only associated with the step of selecting.2
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`2 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 ’055 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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`Under the correct interpretation of claim 16, TSE’s disclosure of selecting a
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`specific area of the Board/Quotation screen, which sets certain trade parameters,
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`followed by selecting a send button satisfies the disputed limitation. Pet. 33-34.
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`Likewise, Gutterman’s disclosure of selecting an order icon, which sets certain
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`trade parameters, followed by selecting a send button satisfies the disputed
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`limitation. Pet. 38 (describing an overview of Gutterman, but not relied on to
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`address the specific limitations of claim 16). Thus, the Board should reconsider its
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`decision to deny review of claim 16 as obvious over TSE and over the Silverman
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`combination. But even if the Board rejects this interpretation, it should reconsider
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`its decision to deny review of claim 16 because it misapprehended or overlooked
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`key arguments in the Silverman combination.
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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 claim 16 of the ’055
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`patent have different meanings. To interpret these two clauses the same is legally
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`and grammatically incorrect.
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`B.
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`The Board misapprehended the Petition as relying on Gutterman
`alone to meet the limitations of claim 16, and overlooked the
`Petition’s arguments that the combination “GUI of Silverman and
`Gutterman” meets the limitations of claim 16.
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`Before addressing the specific limitations of claim 16, the Petition presented
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`an overview that first described the teachings of Silverman and Gutterman
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`individually, Pet. 35-37 (describing Silverman), 37-39 (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 39. Of particular importance, this overview described the deck
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`pane that is disclosed by Gutterman. Id. at 38. It explained that Gutterman’s order
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`icons are “‘active.’ That is, when a user selects the order icon, the system performs
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`one or more actions” related to placing a trade – such as setting trade parameters.
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`Id. But this overview of Gutterman’s deck pane did not mention the term “single
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`action,’ nor was it relied on to address the specific limitations of claim 16. See id.
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`at 60-62 (omitting the discussion of Gutterman’s “SEND” button).
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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 39-42,
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`and applied this combination “GUI of Silverman and Gutterman” to the limitations
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`of claim 16, id. at 60-62. The Petition reproduced FIG. C of Mr. Román’s
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`Declaration (Ex. 1003), which illustrates the GUI produced by combining
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`Silverman’s keystation with certain aspects of Gutterman’s deck pane:
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`Pet. 39.
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`Addressing the specific limitations of claim 16, the Petition explained that
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`“Silverman discloses that traders enter orders using conventional input devices
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`based on observing … market information” that is displayed by the keystations. Id.
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`at 61. And Gutterman discloses a GUI having “[o]rder icons [that] are arranged
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`along a price ‘column 136,’” where “each order icon … is ‘active.’ That is, when
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`the user selects the order icon [e.g., using a mouse], the system performs one or
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`more actions” related to placing a trade. Id. at 61. So “a PHOSITA would have
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`been motivated to use the ‘active’ order icons of Gutterman in the keystation
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`display of Silverman to permit a trader to send orders.” Id. at 61-62.
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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 limitations of claim 16.
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`The Decision overlooked these arguments. See Decision 24-26. 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 24; see also id. at 25 (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), 26 (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 limitations of claim 16, or any other claim limitation.
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`In fact, the Petition does not even mention Gutterman’s “SEND FILL” button. See
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`Pet. 38 (mentioning the “SEND” button, but not the claim term “single action”).
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`Instead, as discussed above, the Petition relied on the GUI produced by
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`combining Silverman’s keystation – which displays market information and
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`accepts trade orders using conventional input devices (e.g., mouse) – with
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`Gutterman’s “active” order icons – which are selectable using conventional input
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`devices – and other aspects of Gutterman’s GUI to meet the limitations of claim
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`16. Pet. 60-62. And again, the Petition provided five reasons that a skilled artisan
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`would have combined Silverman’s keystation with certain aspects of Gutterman’s
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`GUI to produce the combination GUI that was applied to claim 16. Id. at 39-42.
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`The Board overlooked all of these arguments when it denied instituting trial on
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`claim 16 as obvious over Silverman, Gutterman, and TSE.
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`Patent Owner’s Preliminary Response (paper 17) (“POPR”)
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`mischaracterized the Petition and led to the Board’s misapprehension of this issue.
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`See Decision 25 (“we are persuaded by Patent Owner that Gutterman does not
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`meet the ‘single action’ limitation”). Specifically, Patent Owner argued that
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`“Gutterman does not disclose or render obvious the single action elements of the
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`independent claims.” POPR 50. But “[n]on-obviousness cannot be established by
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`attacking references individually where [obviousness] is based upon the teachings
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`of a combination of references.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed.
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`Cir. 1986); MPEP § 2145. Gutterman “must be read, not in isolation, but for what
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`it fairly teaches in combination with the prior art as a whole,” id., including Patent
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`Owner’s admission that single action trading was prior art. CBM2014-00136,
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`paper 18, 7 (admitting that conventional trading tools “permitted ‘single action’
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`order entry that consisted of a trader presetting a default quantity and then clicking
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`on a cell in the screen (i.e., pressing a button on the tool) to cause a trade order
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`message to be sent to the exchange at the preset quantity and at the price value
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`associated with that cell”). As described throughout the Petition, the combination
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`GUI of Silverman and Gutterman discloses the “single action” limitations of the
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`’055 patent.
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`And, perhaps most importantly, the combination of Silverman, Gutterman
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`and TSE satisfy the narrower interpretation of claim 16 adopted by the Board (i.e.,
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`a single action is required to select a particular location, set parameters, and send a
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`trade) as well as the broadest reasonable interpretation of claim 16 (i.e., a single
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`action is only required to select a particular location) as discussed above. There can
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`be no debate that Silverman, Gutterman, and TSE teach selecting a particular
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`location by a single action (i.e., a mouse click), then, in response to that selection,
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`setting parameters and sending a trade order to an electronic exchange as recited in
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`claim 16.
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`Thus, TD Ameritrade respectfully requests that the Board grant its Request
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`and institute review of claim 16 as obvious over Silverman, Gutterman, and TSE.
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`IV. Conclusion
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`For these reasons, TD Ameritrade respectfully requests that the Board grant
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`this Request and institute review of claim 16 as obvious over TSE and as obvious
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`over Silverman, Gutterman, and TSE.
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`Respectfully submitted,
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`STERNE, KESSLER, GOLDSTEiN & Fox P.L.L.C.
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`Robert E. Sokohi (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
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`- 11 -
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`
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`CBM2014-00137
`U.S. Patent No. 7,685,055 B2
`CERTIFICATION OF SERVICE
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`As required by 37 C.F.R. §§ 42.6(e) and 42.205(a)), the undersigned hereby
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`certifies that the foregoing PETITIONERS’ REQUEST FOR REHEARING
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`was served on December 16, 2014 5 in its entirety via email on the following:
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`Back-Up Counsel
`Lead Counsel
`Steven F. Borsand (Reg. No. 36,752)
`Erika H. Amer (Reg. No. 57,540) (cid:9)
`Steve.Borsand@tradingtechnologies.com
`erika.arner@finnegan.com (cid:9)
`Finnegan, Henderson, Farabow, Garrett Trading Technologies International, Inc.
`222 South Riverside Plaza, Suite 1100
`& Dunner, LLP (cid:9)
`Chicago, IL 60606
`11955 Freedom Drive
`Phone: (312) 476-1018
`Reston, VA 20190
`Phone: (571) 203-2754
`Fax: (202) 408-4400
`
`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
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`STERNE, KESSLER, 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
`1944670_i .DOCX
`
`(cid:9)