throbber
ROBERT E. SOKOHL
`(202) 772-8677
`RSOKOHL@SKGF.COM
`
`December 18, 2014
`
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`Stow Kessler
`Goldstein Fox
`
`Mall Stop PATENT BOARD
`
`Re: (cid:9)
`
`Petitioners’ Requests for Rehearing
`U.S. Patent No. 7,676,411 II CBM2014-00133
`U.S. Patent No. 6,772,132/I CBM2014-00135
`U.S. Patent No. 7,685,055/I CBM2014-00137
`
`Dear PTAB:
`
`Due to the PRPS service outage on December 16, 2014, counsel for Petitioners in the
`
`above-captioned Covered Business Method Review proceedings were instructed by Maria
`
`Vignone, a paralegal at the USPTO, to submit filings (Requests for Rehearing) due on December
`16, 2014, via e-mail to tria1s(uspto.gov . Counsel for Petitioners filed and served the Requests
`for Rehearing in the above-captioned proceedings via email on December 16, 2014, as
`
`instructed. Ms. Vignone authorized Counsel via email to file the Requests for Rehearing via
`
`PRPS on December 17, 2014, once PRPS was operational.
`
`Respectfully submitted,
`
`S, SSLER, GOLDSTEIN & Fox P.L.L.C.
`
`Robert B. Sokohl (Reg. No. 36,013)
`Attorney for Petitioners, TD Ameritrade Holding
`Corp., TD Ameritrade, Inc., and TD Ameritrade
`Online Holdings Corp.
`
`1945872_i .DOCX
`
`SKGF.COM
`
`

`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`TD AMERITRADE HOLDING CORPORATION,
`TD AMERITRADE, INC.,
`TD AMERITRADE ONLINE HOLDINGS CORP.
`Petitioners
`
`v.
`
`TRADING TECHNOLOGIES INTERNATIONAL, INC.
`Patent Owner
`____________________
`
`Case CBM2014-00137
`Patent No. 7,685,055 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
`
`
`
`
`
`
`

`
`
`
`I. 
`
`II. 
`
`
`
`CBM2014-00137
`U.S. Patent No. 7,685,055 B2
`
`Table of Contents
`
`Relief Requested .............................................................................................. 1 
`
`Introduction ...................................................................................................... 1 
`
`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 
`
`A. 
`
`B. 
`
`The Board misapprehended the scope of the “selection of a particular
`location” limitation. ............................................................................... 2 
`
`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 
`
`IV.  Conclusion ..................................................................................................... 11 
`
`
`
`
`
`
`
`
`
`
`- i -
`
`

`
`
`
`I.
`
`Relief Requested
`
`
`
`CBM2014-00137
`U.S. Patent No. 7,685,055 B2
`
`Petitioners and real parties-in-interest, TD Ameritrade Holding Corp., TD
`
`Ameritrade, Inc., and TD Ameritrade Online Holdings Corp., (“TD Ameritrade”)
`
`respectfully ask the Board to reconsider its decision to not institute review of U.S.
`
`Patent No. 7,685,055 B2 (“the ’055 patent”) (Ex. 1001), owned by Trading
`
`Technologies International, Inc. (“TTI”), on the asserted grounds that claim 16 is
`
`unpatentable under 35 U.S.C. § 103 over TSE, and on the asserted ground that
`
`claim 16 is unpatentable under 35 U.S.C. § 103 over Silverman, Gutterman, and
`
`TSE.
`
`II.
`
`Introduction
`
`TD Ameritrade petitioned (paper 1) (“Pet.”) the Board seeking CBM Review
`
`of the ’055 patent on the following grounds:
`
`
`
`1
`2
`3
`4
`
`Claims
`1-19
`1, 3, 4, 6-19
`2, 5
`1-19
`
`
`Pet. at 7-8.
`
`Ground
`§ 101
`§ 103 TSE (Ex. 1007/1008)
`§ 103 TSE and Gutterman (Ex. 1006)
`§ 103 Silverman (Ex. 1005), Gutterman, and TSE
`
`In its Decision (paper 19), the Board instituted Review on § 101 and § 103
`
`of claims 1, 3, 4, 6-15, and 17-19 over TSE, and claims 2 and 5 over TSE and
`
`Gutterman. Decision 27. The Board did not, however, institute review on § 103 of
`
`
`
`
`
`
`- 1 -
`
`

`
`
`
`claim 16 over TSE or claims 1-19 over the Silverman combination (i.e., ground 4).
`
`Id. TD Ameritrade therefore seeks rehearing of the Board’s decision to not institute
`
`review on the asserted ground that TSE renders claim 16 unpatentable under § 103,
`
`and on the asserted ground that the Silverman, Gutterman, and TSE renders claim
`
`16 unpatentable under § 103.
`
`III. The Board should have instituted on the asserted grounds that claim 16
`is obvious over TSE and is obvious over the Silverman combination.
`
`In denying review of claim 16 as obvious over TSE and over the Silverman
`
`combination, the Board misapprehended the scope of the “in response to a
`
`selection of a particular location” limitation, applying an overly-narrow
`
`interpretation that required a single action that: selects a particular location, sets a
`
`plurality of parameters for a trade order, and sends the trade order to the electronic
`
`exchange. The Board also misapprehended the asserted ground based on
`
`Silverman, Gutterman, and TSE as relying on Gutterman alone to meet the
`
`limitations of claim 16, and thus overlooked the Petition’s arguments that the
`
`graphical user interface (“GUI”) produced by combining Silverman and Gutterman
`
`meets the limitations of claim 16.
`
`A. The Board misapprehended the scope of the “selection of a
`particular location” limitation.
`
`Claim 16 of the ’055 patent recites, “in response to a selection of a particular
`
`location of the order entry region by a single action of a user input device, setting a
`
`
`
`
`
`
`- 2 -
`
`

`
`
`
`plurality of parameters for a trade order relating to the commodity and sending the
`
`trade order to the electronic exchange.” ’055 patent 35:56-60. The Board
`
`interpreted this limitation to mean that a single action selects the particular
`
`location, sets a plurality of parameters for a trade order, and sends the trade order
`
`to the electronic exchange. See Decision 25-26 (holding that Gutterman’s
`
`disclosure of selecting an order icon to set trade parameters followed by selecting
`
`another button to send the trade order does not meet this limitation).1 The Board
`
`misapprehended the scope of this limitation.
`
`
`1 TD Ameritrade notes that Patent Owner admitted in a CBM proceeding of
`
`a related patent that this type of “single action” trading was prior art. CBM2014-
`
`00136, paper 18 (Patent Owner’s Preliminary Response), 7 (admitting that
`
`conventional trading tools “permitted ‘single action’ order entry that consisted of a
`
`trader presenting a default quantity and then clicking on a cell in the screen (i.e.,
`
`pressing a button on the tool) to cause a trade order message to be sent to the
`
`exchange at the preset quantity and at the price value associated with that cell”);
`
`CBM2014-00136, paper 19 (Institution Decision), 11 (“Patent Owner describes
`
`this prior art GUI tool as ‘conventional’ and states that [s]ome of these types of
`
`tools permitted ‘single action’ order entry.” (internal citations omitted)).
`
`
`
`
`
`
`- 3 -
`
`

`
`
`
`The explicit language of the claim – “in response to a selection of a
`
`particular location of the order entry region by a single action of a user input
`
`device” only requires that the selection of a particular location of the order entry
`
`region to be achieved by a single action. The selection of the particular location
`
`then triggers functions of “setting a plurality of parameters for a trade order” and
`
`“sending the trade order to the electronic exchange.” But the limitation does not
`
`specify that the single action achieves the “setting” and “sending” functions.
`
`For example, claim 16 covers the following scenario. A user selects a
`
`particular location of a GUI using a mouse click. This results in another button
`
`being displayed to allow a user to set a plurality of parameters for a trade order.
`
`Then, the user can select yet another button to send the request to an electronic
`
`exchange. Simply put, the grammatical structure of claim 16 does not require that
`
`the setting and sending be performed in response to a single action. Rather, the
`
`single action is only associated with the step of selecting.2
`
`
`2 The Patent Owner clearly understood this distinction. For example, claim 1
`
`of U.S. Patent No. 7,676,411, which is in the same family as the ’055 patent,
`
`recites a similar limitation differently: “selecting a particular graphical area in the
`
`order entry region through a single action of the user input device to both set a
`
`price for the trade order and send the trade order having a default quantity to the
`
`
`
`
`
`
`- 4 -
`
`

`
`
`
`Under the correct interpretation of claim 16, TSE’s disclosure of selecting a
`
`specific area of the Board/Quotation screen, which sets certain trade parameters,
`
`followed by selecting a send button satisfies the disputed limitation. Pet. 33-34.
`
`Likewise, Gutterman’s disclosure of selecting an order icon, which sets certain
`
`trade parameters, followed by selecting a send button satisfies the disputed
`
`limitation. Pet. 38 (describing an overview of Gutterman, but not relied on to
`
`address the specific limitations of claim 16). Thus, the Board should reconsider its
`
`decision to deny review of claim 16 as obvious over TSE and over the Silverman
`
`combination. But even if the Board rejects this interpretation, it should reconsider
`
`its decision to deny review of claim 16 because it misapprehended or overlooked
`
`key arguments in the Silverman combination.
`
`
`
`
`
`
`electronic exchange.” The Patent Owner knew exactly how to recite that a price be
`
`set and the trade sent to an electronic exchange in response to a single action.
`
`Bottom line, the clause in claim 1 from the ’411 patent and claim 16 of the ’055
`
`patent have different meanings. To interpret these two clauses the same is legally
`
`and grammatically incorrect.
`
`
`
`
`
`
`- 5 -
`
`

`
`
`
`B.
`
`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.
`
`Before addressing the specific limitations of claim 16, the Petition presented
`
`an overview that first described the teachings of Silverman and Gutterman
`
`individually, Pet. 35-37 (describing Silverman), 37-39 (describing Gutterman), and
`
`then described the GUI that would be produced by combining Silverman and
`
`Gutterman, id. at 39. Of particular importance, this overview described the deck
`
`pane that is disclosed by Gutterman. Id. at 38. It explained that Gutterman’s order
`
`icons are “‘active.’ That is, when a user selects the order icon, the system performs
`
`one or more actions” related to placing a trade – such as setting trade parameters.
`
`Id. But this overview of Gutterman’s deck pane did not mention the term “single
`
`action,’ nor was it relied on to address the specific limitations of claim 16. See id.
`
`at 60-62 (omitting the discussion of Gutterman’s “SEND” button).
`
`Instead, the Petition presented five reasons a skilled artisan would have
`
`combined Silverman and Gutterman to produce the combination GUI, id. at 39-42,
`
`and applied this combination “GUI of Silverman and Gutterman” to the limitations
`
`of claim 16, id. at 60-62. The Petition reproduced FIG. C of Mr. Román’s
`
`Declaration (Ex. 1003), which illustrates the GUI produced by combining
`
`Silverman’s keystation with certain aspects of Gutterman’s deck pane:
`
`
`
`
`
`
`- 6 -
`
`

`
`
`
`
`
`Pet. 39.
`
`Addressing the specific limitations of claim 16, the Petition explained that
`
`“Silverman discloses that traders enter orders using conventional input devices
`
`based on observing … market information” that is displayed by the keystations. Id.
`
`at 61. And Gutterman discloses a GUI having “[o]rder icons [that] are arranged
`
`along a price ‘column 136,’” where “each order icon … is ‘active.’ That is, when
`
`the user selects the order icon [e.g., using a mouse], the system performs one or
`
`more actions” related to placing a trade. Id. at 61. So “a PHOSITA would have
`
`
`
`- 7 -
`
`
`

`
`
`
`been motivated to use the ‘active’ order icons of Gutterman in the keystation
`
`display of Silverman to permit a trader to send orders.” Id. at 61-62.
`
`In other words, Silverman teaches a trader using a standard input device
`
`(e.g., mouse) to place a trade in a market that he/she is observing on a display (a
`
`trader’s display). Gutterman teaches a market display that has “active” icons that
`
`have certain parameters (price, quantity) built into their appearance, and that
`
`perform some market-related action when selected. Applying Gutterman’s active
`
`icons to Silverman’s trading display would allow a trader to select an icon using a
`
`standard input device to place a trade that has certain parameters already set,
`
`meeting the limitations of claim 16.
`
`The Decision overlooked these arguments. See Decision 24-26. It also
`
`misapprehended the Petition as relying on “Gutterman’s disclosure of a trader
`
`selecting an order icon … and, then, selecting a ‘SEND FILL’ button to transmit
`
`the message to meet the limitation of selecting a particular area through a single
`
`action.” Id. at 24; see also id. at 25 (reproducing Gutterman’s workstation screen
`
`rather than the combination GUI of Silverman and Gutterman relied on in the
`
`Petition), 26 (incorrectly stating that “Petitioner does not rely upon Silverman … to
`
`meet this limitation.”). But the Petition did not rely on using Gutterman’s “SEND
`
`FILL” button to address the limitations of claim 16, or any other claim limitation.
`
`
`
`
`
`
`- 8 -
`
`

`
`
`
`In fact, the Petition does not even mention Gutterman’s “SEND FILL” button. See
`
`Pet. 38 (mentioning the “SEND” button, but not the claim term “single action”).
`
`Instead, as discussed above, the Petition relied on the GUI produced by
`
`combining Silverman’s keystation – which displays market information and
`
`accepts trade orders using conventional input devices (e.g., mouse) – with
`
`Gutterman’s “active” order icons – which are selectable using conventional input
`
`devices – and other aspects of Gutterman’s GUI to meet the limitations of claim
`
`16. Pet. 60-62. And again, the Petition provided five reasons that a skilled artisan
`
`would have combined Silverman’s keystation with certain aspects of Gutterman’s
`
`GUI to produce the combination GUI that was applied to claim 16. Id. at 39-42.
`
`The Board overlooked all of these arguments when it denied instituting trial on
`
`claim 16 as obvious over Silverman, Gutterman, and TSE.
`
`Patent Owner’s Preliminary Response (paper 17) (“POPR”)
`
`mischaracterized the Petition and led to the Board’s misapprehension of this issue.
`
`See Decision 25 (“we are persuaded by Patent Owner that Gutterman does not
`
`meet the ‘single action’ limitation”). Specifically, Patent Owner argued that
`
`“Gutterman does not disclose or render obvious the single action elements of the
`
`independent claims.” POPR 50. But “[n]on-obviousness cannot be established by
`
`attacking references individually where [obviousness] is based upon the teachings
`
`of a combination of references.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed.
`
`
`
`- 9 -
`
`
`

`
`
`
`Cir. 1986); MPEP § 2145. Gutterman “must be read, not in isolation, but for what
`
`it fairly teaches in combination with the prior art as a whole,” id., including Patent
`
`Owner’s admission that single action trading was prior art. CBM2014-00136,
`
`paper 18, 7 (admitting that conventional trading tools “permitted ‘single action’
`
`order entry that consisted of a trader presetting a default quantity and then clicking
`
`on a cell in the screen (i.e., pressing a button on the tool) to cause a trade order
`
`message to be sent to the exchange at the preset quantity and at the price value
`
`associated with that cell”). As described throughout the Petition, the combination
`
`GUI of Silverman and Gutterman discloses the “single action” limitations of the
`
`’055 patent.
`
`And, perhaps most importantly, the combination of Silverman, Gutterman
`
`and TSE satisfy the narrower interpretation of claim 16 adopted by the Board (i.e.,
`
`a single action is required to select a particular location, set parameters, and send a
`
`trade) as well as the broadest reasonable interpretation of claim 16 (i.e., a single
`
`action is only required to select a particular location) as discussed above. There can
`
`be no debate that Silverman, Gutterman, and TSE teach selecting a particular
`
`location by a single action (i.e., a mouse click), then, in response to that selection,
`
`setting parameters and sending a trade order to an electronic exchange as recited in
`
`claim 16.
`
`
`
`
`
`
`- 10 -
`
`

`
`Thus, TD Ameritrade respectfully requests that the Board grant its Request
`
`and institute review of claim 16 as obvious over Silverman, Gutterman, and TSE.
`
`IV. Conclusion
`
`For these reasons, TD Ameritrade respectfully requests that the Board grant
`
`this Request and institute review of claim 16 as obvious over TSE and as obvious
`
`over Silverman, Gutterman, and TSE.
`
`Respectfully submitted,
`
`STERNE, KESSLER, GOLDSTEiN & Fox P.L.L.C.
`
`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
`
`- 11 -
`
`

`
`CBM2014-00137
`U.S. Patent No. 7,685,055 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 16, 2014 5 in its entirety via email on the following:
`
`Back-Up Counsel
`Lead Counsel
`Steven F. Borsand (Reg. No. 36,752)
`Erika H. Amer (Reg. No. 57,540) (cid:9)
`Steve.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
`
`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)

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