`
`
` Paper No. ____
` Filed: March 30, 2017
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`__________________
`
`IBG LLC; INTERACTIVE BROKERS LLC;
`TRADESTATION GROUP, INC.; TRADESTATION SECURITIES, INC.;
`TRADESTATION TECHNOLOGIES, INC.; and
`IBFX, INC.
`
`Petitioners
`
`v.
`
` TRADING TECHNOLOGIES INTERNATIONAL, INC.
`
`Patent Owner
`_________________
`
`Case CBM2015-00181
`U.S. Patent 7,676,411
`_________________
`
`PATENT OWNER’S REQUEST FOR REHEARING
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`I.
`
`II.
`
`TABLE OF CONTENTS
`
`INTRODUCTION ........................................................................................... 1
`
`CONTROLLING PRECEDENT IS CLEAR THAT PUBLIC
`ACCESSIBILITY REQUIRES THAT THE REFERENCE BE
`DISSEMINATED OR OTHERWISE MADE AVAILABLE
`SUCH THAT A PERSON OF ORDINARY SKILL IN THE
`ART COULD REASONABLY LOCATE IT ................................................. 2
`
`III. HERE, THE BOARD INCORRECTLY FOUND THAT
`PUBLIC ACCESSIBILITY ONLY REQUIRES THAT THE
`REFERENCE BE DISSEMINATED (OR OTHERWISE
`MADE AVAILABLE) TO ANY INTERESTED MEMBER OF
`THE PUBLIC .................................................................................................. 3
`
`IV. APPLYING THIS INCORRECT TEST, THE BOARD
`FOUND IT SUFFICIENT THAT TSE WAS DISTRIBUTED
`OR OTHERWISE AVAILABLE TO TRADERS AND
`TECHNICAL PERSONNEL .......................................................................... 4
`
`V.
`
`THIS CASE IS STRIKINGLY SIMILAR TO THE FINAL
`WRITTEN DECISIONS IN GOPRO ............................................................. 5
`
`VI. PATENT OWNER RESPECTFULLY SUGGESTS AN
`EXPANDED PANEL ...................................................................................... 7
`
`VII. CONCLUSION ..............................................................................................10
`
`
`
`i
`
`
`
`CBM2015-00181
`U.S. Patent 7,676,411
`
`I.
`
`INTRODUCTION
`
`Patent Owner respectfully requests rehearing to address the legal standard of
`
`whether a reference qualifies as prior art under 35 U.S.C. § 102. Here, the Board
`
`applied the incorrect standard in ruling that the TSE manual qualified as prior art,
`
`misapprehending controlling precedent establishing that a reference is “publicly
`
`accessible” under § 102 only if it was disseminated or otherwise made available to
`
`the extent that persons interested and ordinarily skilled in the subject matter or art
`
`exercising reasonable diligence can locate it. Instead, the Board held that
`
`dissemination to any “interested” member of the public is sufficient to show public
`
`accessibility. As demonstrated below, however, this is not correct, and resulted in
`
`the Board arriving at the erroneous conclusion that the TSE reference qualified as
`
`prior art under § 102.
`
`In sum, Patent Owner respectfully requests that this Board reconsider its
`
`decision and find that Petitioners have failed to show, by a preponderance of the
`
`evidence, that the TSE qualifies as prior art under § 102. Further, because the
`
`panel decision here is at odds with other decisions of the Board, e.g., GoPro, Inc.,
`
`v. Contour IP Holding, LLC, IPR2015-01080, Paper 55 (PTAB Oct. 26, 2016),
`
`Patent Owner suggests that an expanded panel be convened to consider this
`
`rehearing request and maintain consistency among panels of the Board.
`
`1
`
`
`
`CBM2015-00181
`U.S. Patent 7,676,411
`
`II. CONTROLLING PRECEDENT IS CLEAR THAT PUBLIC
`ACCESSIBILITY REQUIRES THAT THE REFERENCE BE
`DISSEMINATED OR OTHERWISE MADE AVAILABLE SUCH
`THAT A PERSON OF ORDINARY SKILL IN THE ART COULD
`REASONABLY LOCATE IT
`
`The Federal Circuit, in Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331,
`
`1348 (Fed. Cir. 2016), made clear that for a reference to be considered publically
`
`accessible, the reference must be disseminated (or otherwise made available) such
`
`that a person of ordinary skill in the art (POSA) (and not just any interested
`
`person) exercising reasonable diligence can locate it:
`
`A reference will be considered publicly accessible if it was
`
`disseminated or otherwise made available to the extent that persons
`
`interested and skilled in the subject matter or art exercising
`
`reasonable diligence, can locate it.
`
`Id. (emphasis added). The PTAB in other cases have confirmed that
`
`“dissemination” requires dissemination to a POSA and that dissemination to the
`
`public in general is not sufficient to show public accessibility. For example, the
`
`petitioners in GoPro advanced a theory that:
`
`there are
`
`two different standards depending on
`
`the factual
`
`circumstances of the case: for “catalog” cases like a thesis stored as a
`
`university, the standard is accessibility to person interested and skilled
`
`2
`
`
`
`CBM2015-00181
`U.S. Patent 7,676,411
`
`in the art, but for “dissemination [cases], like at a tradeshow,” the
`
`standard is only accessibility to the interested public.
`
`GoPro, Inc., v. Contour IP Holding, LLC, IPR2015-01080, Paper 55, pp. 19-20
`
`(PTAB Oct. 26, 2016). In GoPro, the PTAB rejected that theory based on the clear
`
`language in Blue Calypso (set forth above) and held that dissemination requires
`
`accessibility to a POSA. Id. at 21.
`
`III. HERE, THE BOARD INCORRECTLY FOUND THAT PUBLIC
`ACCESSIBILITY ONLY REQUIRES THAT THE REFERENCE BE
`DISSEMINATED (OR OTHERWISE MADE AVAILABLE) TO ANY
`INTERESTED MEMBER OF THE PUBLIC
`
`In its Final Written Decision, the Board stated:
`
`The determination of whether a document is a “printed publication”
`
`under 35 U.S.C. § 102 involves a case-by-case inquiry into the facts
`
`and circumstances surrounding its disclosure to members of the
`
`public. In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004).
`
`Paper 138 (“FWD”), p. 34 (emphasis added). Other parts of the Final Written
`
`Decision make clear that the Board was focusing not on POSAs (e.g., GUI
`
`designers), but instead on other members of the “interested” public such as traders
`
`and technical support personnel (such as computer scientists or engineers):
`
`Thus, the securities companies [that allegedly received the TSE
`
`reference] would have included computer scientists or engineers, as
`
`well as traders. We find that all such persons who worked at the
`
`3
`
`
`
`CBM2015-00181
`U.S. Patent 7,676,411
`
`securities companies would have been interested members of the
`
`relevant public.
`
`Id. at 37 (emphasis added). In other parts of the Final Written Decision, the Board
`
`stated that public accessibility is satisfied when a reference is disseminated (or
`
`otherwise made available) to any interested member of the public or a POSA. For
`
`example, the Board stated:
`
`Patent Owner has not shown sufficiently that such a contractual
`
`provision would have prevented persons interested or even ordinary
`
`skilled in the subject matter from receiving copies of TSE.
`
`Id. at 42 (emphasis added). As set forth above, this not correct. Again, the correct
`
`test is whether TSE was accessible to a POSA. Blue Calypso, 815 F.3d at 1348.
`
`IV. APPLYING THIS INCORRECT TEST, THE BOARD FOUND IT
`SUFFICIENT THAT TSE WAS DISTRIBUTED OR OTHERWISE
`AVAILABLE TO TRADERS AND TECHNICAL PERSONNEL
`
`The Board found that the TSE members that allegedly received the TSE
`
`manual would have employed (1) traders and (2) technical personnel (such as
`
`computer scientists or engineers). FWD at 37, 41. And based on the incorrect
`
`legal test, the Board concluded that this was sufficient to establish that TSE was
`
`publically accessible. Id. Because the Board misapprehended the correct legal test
`
`for public accessibility, it erred in this finding.
`
`4
`
`
`
`CBM2015-00181
`U.S. Patent 7,676,411
`
`Indeed, neither traders nor technical personnel qualify as POSAs. As set
`
`forth above, Petitioners’ entire obviousness case hinged on the POSA being a GUI
`
`designer, not a trader, computer scientist, or engineer. If the POSA were now
`
`somehow determined to be a trader (or technical personnel) and not a GUI
`
`designer, then Petitioners’ entire Petition would have been doomed from the outset.
`
`V. THIS CASE IS STRIKINGLY SIMILAR TO THE FINAL WRITTEN
`DECISIONS IN GOPRO
`
`As set forth above, the PTAB’s GoPro decisions, which correctly applied
`
`the Federal Circuit’s Blue Calypso case, make clear that “dissemination” sufficient
`
`to show public accessibility to satisfy § 102 requires a showing of dissemination to
`
`POSAs, and that showing dissemination to select members of the general public is
`
`not sufficient to render a document a printed publication. GoPro, IPR2015-01080,
`
`Paper 55 at 18-28; Blue Calypso, 815 F3d at 1348; Cf. Pet. 11, 13. The facts of
`
`GoPro, which found no “dissemination” because there was no evidence showing
`
`dissemination to POSAs, are virtually identical to the facts at issue here.
`
`In GoPro, hundreds of copies of a GoPro catalog were distributed, without
`
`restriction, at a tradeshow (that was not advertised or open to the public) having
`
`approximately 150 vendors and “over 1000” attendees. GoPro, IPR2015-01080,
`
`Paper 55 at 23. The PTAB ruled that the GoPro Catalog did not qualify as prior art
`
`because the Petitioner failed to provide any evidence “that the GoPro Catalog was
`
`disseminated or otherwise made available at the 2009 Tucker Rocky Dealer Show
`
`5
`
`
`
`CBM2015-00181
`U.S. Patent 7,676,411
`
`to persons skilled in the art.” Id. at 25-28. Importantly, the PTAB found no proof
`
`that POSAs attended the show:
`
`Certainly, it is possible that such [POSAs] could have been in
`
`attendance, but speculation is insufficient for Petitioner to meet its
`
`burden.
`
`* * *
`
`Further, we agree with Patent Owner that, even assuming that “those
`
`interested in buying [Petitioner’s] devices” were in attendance in the
`
`show, that does not establish that any of those individuals were
`
`ordinary skilled in the art.
`
`Id. at 26-27 (bold-italics added, italics in original).
`
`The facts here mirror GoPro because even assuming the TSE manual was
`
`actually distributed to TSE members (which Patent Owner disputes), Petitioners
`
`have failed to show that the TSE manual was disseminated or otherwise made
`
`available to POSAs. As set forth, above, traders and technical personnel such as
`
`computer scientists or engineers are not POSAs. And Petitioners have failed to
`
`provide any evidence that the TSE member employed GUI designers. To say that
`
`the TSE members actually employed GUI designers would be nothing more than
`
`pure speculation.
`
`6
`
`
`
`CBM2015-00181
`U.S. Patent 7,676,411
`
`Finally, in GoPro, the PTAB found that the petitioners failed to provide any
`
`“evidence that the 2009 Tucker Rocky Dealer Show was advertised or announced
`
`to the public, such that a person ordinarily skilled in the art from the public would
`
`have known about it and could have obtained a copy of the GoPro Catalog there.”
`
`GoPro, IPR2015-01080, Paper 55 at 23. Likewise, here, Petitioners have failed to
`
`show that the Tokyo Stock Exchange publicized (by, for example, advertising,
`
`posting on a website, etc.) that the TSE manual was allegedly being made available
`
`to members. See POPR, p. 54-57; POR, p. 63-64. As such, in addition to there
`
`being no evidence of dissemination to POSAs, there is no evidence that the TSE
`
`manual was “otherwise made available” such that a POSA exercising reasonable
`
`diligence could locate it.
`
`VI. PATENT OWNER RESPECTFULLY SUGGESTS AN EXPANDED
`PANEL
`
`Patent Owner respectfully suggests, pursuant to PTAB Standard Operating
`
`Procedure 1, Rev. 14 (“SOP”), Section III.C, that this Request for Rehearing be
`
`decided by an expanded panel of judges. Expanding a panel is appropriate when
`
`the proceeding “involves an issue of exceptional importance, such as where . . . a
`
`panel of the Board renders a decision that conflicts with . . . an authoritative
`
`decision of the Board’s reviewing courts.” SOP at § III.A.1. Expanding a panel is
`
`also appropriate where “[c]onsideration by an expanded panel is necessary to
`
`7
`
`
`
`secure and maintain uniformity of the Board’s decisions.” Id. at § III.A.2; see also
`
`CBM2015-00181
`U.S. Patent 7,676,411
`
`id. at Section III.D.
`
`As explained, the Board’s decision on public accessibility conflicts with
`
`long-established Federal Circuit and Court of Customs and Patent Appeals
`
`precedent. E.g., Blue Calypso, 815 F.3d at 1348-50 (“there was no evidence that
`
`the ordinarily skilled artisan would know of [the alleged prior art]” and “[t]he
`
`published article does not provide a skilled artisan with a sufficiently definite
`
`roadmap leading to [the alleged prior art]”) (emphasis added); Suffolk Techs., LLC
`
`v. AOL Inc., 752 F.3d 1358, 1365 (Fed. Cir. 2014) (“we conclude the Post was
`
`sufficiently disseminated to those of ordinary skill in the art to be considered
`
`publically accessible”); In re Lister, 583 F.3d 1307, 1311, 1315 (Fed. Cir. 2009)
`
`(“our inquiry is whether it could be located by persons interested and ordinarily
`
`skilled in the subject matter or art exercising reasonable diligence”) (internal
`
`quotations and emphasis omitted); In re Wyer, 655 F.2d 221, 226 (C.C.P.A. 1981)
`
`(“we are convinced that the contents of the application were sufficiently accessible
`
`to the public and to persons skilled in the pertinent art to qualify as a ‘printed
`
`publication’”).
`
`The Board’s decision also conflicts with several recent Board decisions,
`
`which correctly held that the legal requirement for public accessibility includes one
`
`of ordinary skill in the art – not just members of the interested public. E.g., HTC
`
`8
`
`
`
`CBM2015-00181
`U.S. Patent 7,676,411
`
`Corp. et al. v. Cellular Communications Equipment LLC, IPR2016-01503, Paper 7,
`
`p. 18 (PTAB Feb. 13, 2017) (JJ. Arbes, Moore, Anderson concluding “we are not
`
`persuaded that . . . the documents were disseminated or otherwise made available
`
`to the extent that interested persons of ordinary skill in the art, exercising
`
`reasonable diligence, could have located them”); Coalition For Affordable Drugs
`
`VIII, LLC v. The Trustees of the Univ. of Penn., IPR2015-01835, Paper 56, pp. 18-
`
`19 (PTAB Mar. 6, 2017) (JJ. Tierney, Oberman, Green finding “there is nothing in
`
`the press release suggesting that the ordinary artisan . . . should attend the
`
`presentation,” and “Petitioner does not provide any evidence establishing that the
`
`target audience would have been an ordinary artisan in the relevant field”); GoPro,
`
`IPR2015-01080, Paper 60, p. 4 (JJ. Arbes, Fitzpatrick, Powell denying Petitioner’s
`
`request for rehearing, concluding that “the majority of cases define the standard as
`
`accessibility to persons interested and ordinarily skilled in the art. We remain
`
`persuaded that the appropriate standard is that set forth in Blue Calypso.”) (some
`
`citations omitted, emphasis added).
`
`The Board’s decision here is inconsistent with these decisions. An expanded
`
`panel would ensure that the Board’s decisions are consistent. The public is best
`
`served when the Board’s decisions are consistent and rely on correct legal
`
`precedent. Inconsistent decisions provide no certainty to parties and increase the
`
`costs of engaging in PTAB trials.
`
`9
`
`
`
`CBM2015-00181
`U.S. Patent 7,676,411
`
`VII. CONCLUSION
`
`For the foregoing reasons, Patent Owner respectfully requests that this Board
`
`reconsider its Decision and find that Petitioners have failed to show, by a
`
`preponderance of the evidence, that the TSE qualifies as prior art under § 102.
`
`Respectfully submitted,
`
`
`
`
`
`Date: March 30, 2017
`
`MCDONNELL BOEHNEN HULBERT &
`BERGHOFF LLP
`
`/Michael D. Gannon/
`
`Michael D. Gannon,
`Back-Up Counsel, Reg. No. 36,807
`
`Counsel for Patent Owner
`
`300 South Wacker Drive
`Chicago, Illinois 60606
`(312) 913-0001
`
`
`
`
`10
`
`
`
`CERTIFICATION OF SERVICE
`
`CBM2015-00181
`U.S. Patent 7,676,411
`
`Pursuant to 37 CFR §§ 42.6(s)(4) and 42.205(b), the undersigned certified
`
`that on March 24, 2017, a complete and entire copy or this PATENT OWNER’S
`
`REQUEST FOR REHEARING was provided via email to the Petitioners by
`
`serving correspondence address of record as follows
`
`Robert E. Sokohl
`rsokohl-PTAB@skgf.com
`
`Lori A. Gordon
`lgordon-PTAB@skgf.com
`
`Richard M. Bemben
`rbemben-PTAB@skgf.com
`
`John C. Phillips
`phillips@fr.com
`
`
`
`
`
`
`/Cole B. Richter/
`Cole B. Richter,
`Counsel for Patent Owner,
`Reg. No. 65,398
`
`
`
`Dated: March 30, 2017
`
`By:
`
`
`
`
`
`
`
`11
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
