TRADING TECH EXHIBIT 2047
`IBG ET AL. v. TRADING TECH
`CBM2015-00181
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`Cogc___urggt Proceedings
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`>:< The patent is currentty the subject of the following ooncurrent prooeedlng(s);
`Copending litigation styled:
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`Correspondence Address
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`8 The name and address of the person requesting reexamination is:
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`James L. Katz ‘Reg. No. 42,711}
`uite 36 0
`Hofe G‘ o &Lione BC 0 er
`455 Northc
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`21-42
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`8 Correspondence Address: Direct all communltion about the reexamination to:
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`Certificate of Service
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`E It is certified that a copy of this response (if filed by other than the patent owner) has been served in its entirety
`on the patent owner as provided in 37 CFR 1.33 (c).
`The name and address of the party sewed and the date of service are:
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`Foley 8. Lardner, Attn: William T. Etlis, 3.
`Washington Harbour, 3000 K Street NW, Suite 500
`Washington, DC 2007-5109
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`Date of Service: Mag 25, gqoz
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`Date
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`Page 2 of
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`BRINKS HOFER GlLSON & LIONE
`NBC Tower— SURE 3600, 455 N. Cilyfront H322 DING. CNCEQO, IL 60611-5599
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`REEXAMINATION CONTROL NO. 90/008,576
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`BHGL REF. NO. 95549/99997
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`DETAILED RE UEST - CORRECTED
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`This is a corrected request for Ex Parte Reexamination of Kemp, I] et al. U.S. Patent
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`6,772,132, issued August 3, 2004, hereinafter the “Kemp ’132 patent”.
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`RESPONSE TO DECISION 5'04 SPO/VIEVACATING E/I’PA1?7E
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`REEXAMINATION FILING DATE
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`This is a response to the Decision Sua Sponte Vacating Ex Parte Reexamination
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`Filing Date mailed May 10, 2007. With this response, a corrected request for Ex Parte
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`Reexamination of Kemp, I] et al. U.S. Patent 6,772,132, issued August 3, 2004, is provided.
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`The corrected request complies with 37 CFR 1.510(b)(2) by providing an explanation of the
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`manner and pertinence of applying each cited document to the patent claims for which
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`reexamination is requested. Where references are applied in combination, each combination
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`is individually identified, and the basis for forming each combination is supplied.
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`Service of this corrected request has been made on the Agent/Attorney/Firm identified as the
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`correspondent, as specified below.
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`As this corrected request is being filed within thirty (30) days of the mailing date of
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`the Decision Sua Sponte Vacating Ex Parte Reexamination Filing Date, it is believed that no
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`additional fees are due. The Director is hereby authorized to charge any additional fees to
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`Deposit Account No. 23-1925.
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`THE PATENT OWNER
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`The Kemp ’ 132 patent identifies Trading Technologies International, Inc., 1603
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`Orrington Avenue, Suite 1300, Evanston, IL 60201 as the assignee of the patent. An
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`assignment search indicates that the application for the Kemp ’132 patent (Serial No.
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`09/590,692, filed June 9, 2000) was assigned by the inventors to Trading Technologies
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`International, Inc. by an assignment recorded at Reel 011188, Frame 0355 on October 2,
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`2000. No later assignments have been found. The Patent Owner of record (which is
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`believed to be the current Patent Owner) is therefore Trading Technologies International, Inc.
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`Page 4 of 185
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`Corrected Request for Ex Pane Re—Examination of US. Patent No. 6,772,i32
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`Reexamination Control No. 90/008,576
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`95549/99997
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`The Kemp ’132 patent identifies “Foley & Lardner” as the “Attorney, Agent or Firm”
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`that prosecuted it. According to the Power of Attorney filed with the application, as reflected
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`by the correspondence address shown in PAIR, the current correspondence address for the
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`Kemp ’l32 patent is “Foley & Lardner LLP, Suite 500, 3000 K Street NW, Washington, DC
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`20007.” The assignment recordation shows a correspondence address of “Foley & Lardner,
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`William T. Ellis, Washington Harbour, 3000 K Street NW, Suite 500, Washington, DC
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`20007-5109.” Accordingly, service of this Corrected Reexamination Request has been made
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`on the Agent/Attorney/Firm identified above by first class mail.
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`THE REEXAMINATION RE UESTER
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`Requester James L. Katz acts in an individual capacity, relying on information
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`obtained from a third party.
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`CLAIMS TO BE REEXAMINED
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`Reexamination of all claims (Claims 1-56) of the Kemp ’132 patent is requested.
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`REFERENCES CITED
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`The references that are relied upon for reexamination are the following:
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`A.
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`“Orientation Materials for Participants: New Future Options Trading System,”
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`September 1997, Operation System Development Section, Tokyo Stock
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`Exchange (in Japanese with accompanying English translation). Denoted by
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`Bates numbers TSE0000O00609-TSE0000000627 (“TSE Orientation
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`Materials” or “TSE A”);
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`B.
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`“Futures and Options Trading System: Transaction Terminal Operation
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`Procedures,” August 1998, Operation System Development Section, Tokyo
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`Stock Exchange (in Japanese with accompanying English translation).
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`Denoted by Bates numbers TSE0000000628-TSE0000000643 (“TSE
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`Operation Procedures” or “TSE B”);’
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`‘ Ail citations herein to specific pages within the TSE Orientation Materials and TSE Operation Procedures references will refer
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`to the particular Bates number added to each page of the English translation.
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`Page 5 of 185
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`Page 5 of 185
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`Corrected Request for Ex Parte Re—Examination of U.S. Patent No. 6,772,132
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`Reexamination Control No. 90/008,576
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`95549/99997
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`C.
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`U.S. Patent Application Publication No. 2003/0097325, entitled “USER
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`INTERFACE FOR AN ELECTRONIC TRADING SYSTEM,” filed April 9,
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`1999 and published May 22, 2003, to Friesen et al. (“Friesen”); and
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`D.
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`U.S. Patent No. 5,960,411, entitled “METHOD AND SYSTEM FOR
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`PLACING A PURCHASE ORDER VIA A COMMUNICATION
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`NETWORK,” filed September 12, 1997 and issued September 28, 1999 to
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`Amazon.com, Inc. (“Amazon”).
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`Paper copies of these references and a PTO-1449 form listing these references are
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`enclosed, so that the Examiner may consider them and acknowledge their consideration by
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`initialing the form.
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`The TSE Orientation Materials and TSE Operation Procedures references are each
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`available as a statutory bar reference against the Kemp ‘I32 patent, under
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`35 U.S.C. § 102(b), as a printed publication published in a foreign country more than one
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`year prior to the June 9, 2000 filing date of the Kemp ’132 patent, and more than one year
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`prior to the March 2, 2000 claimed priority date.2
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`Friesen is available as a reference against the Kemp ’l32 patent, under
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`35 U.S.C. § 102(e), as an application for patent, published under 35 U.S.C. § 122(b), by
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`another filed in the United States before the invention by the applicant for patent. Friesen is
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`presently owned by Trading Technologies International, Inc. However, for the purposes of
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`2 The TSE Orientation Materials reference was cited in a Notice ofOpposition to a European Patent filed against European Patent
`No. 1 319 21] by DEUTSCHE BORSE AG on January 32. 2006 (TAB A). The TSE Operation Procedures reference was cited
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`in a Notice of Opposition to a European Patent tiled against European Patent No. 1 319 21 l by Eccoware Limited on January 13.
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`2006 (TAB B). European Patent No. l 319 211 was filed based on a PCT Application, Publication No. W0 Ol/65403, which
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`claims priority to U.S. Provisional Application No. 60/186,322 to which the Kemp ’ 132 patent aiso claims priority. These
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`Opposition documents, as well as several other Oppositions and supporting documentation filed against European Patent No.
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`l 319 21 1, available from the file history thereof, establish that the TSE Orientation Materials and TSE Operation Procedures
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`references were publicly available documents available more than one year prior to the June 9, 2000 filing date of the Kemp ’ l 32
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`patent, and more than one year prior to the March 2, 2000 claimed priority date. See TAB B, Notice of Opposition to a European
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`Patent filed against European Patent No. 1 319 21 1 by Eccoware Limited, page 6 (indicating that the Futures/Options Trading
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`System — Guidelines for Operating the Trading Terminals, Tokyo Stock Exchange (August 1998) was distributed to around 200
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`companies without restriction in August 1998); see also Deposition of Atsushi Kawashima from Trading Tech. lntn’l, Inc. v.
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`eSpeed, Inc. Case No. 04 C 5312, United States District Court oflllinois, Eastern Division (TAB H) (obtained from the file
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`history of EP 1 319 211), pages 9-15 (indicating that the Tokyo Stock Exchange’s Manual entitled, “System for Buying and
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`Selling Futures and Options: transaction Terminal Operation Guidelines,” denoted by Bates numbers TSE0000O00647-
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`TSE0000O008lO, referred to herein as TSE C (TAB F). was distributed in 1998 to around 200 companies that carry out futures
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`trading at the Tokyo Stock Exchange) and pages 60-62 (indicating that the TSE Orientation Materials reference (TSE A) was
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`publicly distributed in September 1997 without restriction to participants that carry out futures trading at the Tokyo Stock
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`Exchange).
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`Corrected Request for Ex Parte Re—Examination of U.S. Patent No. 6,772,132
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`Reexamination Control No. 90/008,576
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`95549/99997
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`35 U.S.C. § 103(a), Friesen is not disqualified under 35 U.S.C. § 103(c) as being owned by
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`the same person, or subject to an obligation of assignment to the same person, who owns the
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`claimed invention of the Kemp ’132 patent at the time the claimed invention was made. As
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`shown in the assignment records of the U.S. Patent Office, included herewith, Trading
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`Technologies International, Inc., the owner of the Kemp ’ 132 patent, did not acquire
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`ownership of Friesen until November 19, 2003, well after the April 9, 1999 filing date of
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`Friesen.
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`Amazon is available as a reference against the Kemp ’132 patent, under
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`35 U.S.C. § l02(e), as a patent granted on an application for patent by another filed in the
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`United States before the invention by the applicant for patent. For the purposes of
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`35 U.S.C. § 103(a), Amazon is not disqualified under 35 U.S.C. § 103(c) as being owned by
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`the same person, or subject to an obligation of assignment to the same person, who owns the
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`claimed invention of the Kemp ’132 patent at the time the claimed invention was made. As
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`shown in the assignment records of the U.S. Patent Office, included herewith, Amazon is
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`presently owned by Amazon.com, Inc.
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`The TSE Orientation Materials, TSE Operation Procedures, Friesen and Amazon
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`references are applied below to the claims of the Kemp ’132 patent.
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`STATEMENT OF SUBSTANTIAL NEW UESTION OF PATENTABILITY
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`The TSE Orientation Materials, TSE Operation Procedures, Friesen and Amazon
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`references were not cited to, nor considered by, the Examiner in the original prosecution that
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`Procedures, Friesen and Amazon references important in deciding whether or not the claims
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`are patentable. Accordingly, whether the issued claims of the Kemp ‘132 patent are
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`patentable over the teachings of the TSE Orientation Materials, TSE Operation Procedures,
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`Friesen and Amazon references, as applied below, is a substantial new question of
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`Corrected Request for Ex Parte Re—Examination of U.S. Patent No. 6,772,132
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`Reexamination Control No. 90/008,576
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`95549/99997
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`APPLICATION OF TSE ORIENTATION MATERIALS, TSE OPERATION
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`PROCEDURES, FRIESEN AND AMAZON TO THE CLAIMS
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`Claims 1-56 of the Kemp ’132 patent would be deemed by the Examiner to be
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`anticipated under 35 U.S.C. § 102(b), or obvious under 35 U.S.C. § 103(a) as described
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`below, and further summarized in the accompanying claim charts and annotated Figure 1,
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`taken from the TSE Orientation Materials reference. For the convenience of the Examiner,
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`similar claims of the Kemp ’132 patent have been grouped together and are further discussed
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`in order of their dependent relationship.
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`A.
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`Independent Claims 1, 8 and 14
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`1.
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`Claim 1 Would be Deemed by the Examiner to be Anticipated by the TSE
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`Orientation Materials Reference
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`Whether claim 1 of the Kemp ‘I32 patent is patentable over the teachings of the TSE
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`Orientation Materials reference is a substantial new question of patentability as the TSE
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`Orientation Materials reference was not cited to, nor considered by, the Examiner in the
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`original prosecution that led to the allowance and issuance of the Kemp ’132 patent and is
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`both non—cumulative and more pertinent than the cited references and there is a substantial
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`likelihood that a reasonable examiner would consider this reference important in deciding
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`whether or not the claim is patentable.
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`Claim 1 of the Kemp ’ 132 patent would be deemed by the Examiner to be anticipated
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`under 35 U.S.C. § 102(b) by the TSE Orientation Materials reference. The TSE Orientation
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`Materials reference teaches all of the elements of claim 1 of the Kemp ’132 patent including:
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`a method of placing a trade order for a commodity on an electronic exchange having an
`inside market with a highest bid price and a lowest ask price, using a graphical user interface
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`and a user input device (See TSE A at 613-614); setting a preset parameter for the trade order
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`(See TSE A at 613-614, 616); displaying market depth of the commodity, through a dynamic
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`display of a plurality of bids and a plurality of asks in the market for the commodity,
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`including at least a portion of the bid and ask quantities of the commodity, the dynamic
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`display being aligned with a static display of prices corresponding thereto, wherein the static
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`display of prices does not move in response to a change in the inside market (See TSE A at
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`Corrected Request for Ex Parte Re—Examination of U.S. Patent No. 6,772,132
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`Reexamination Control No. 90/008,576
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`95549/99997
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`613-714); displaying an order entry region aligned with the static display prices comprising a
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`plurality of areas for receiving commands from the user input devices to send trade orders,
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`each area corresponding to a price of the static display of prices (See TSE A at 616); and
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`selecting a particular area in the order entry region through single action of the user input
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`device with a pointer of the user input device positioned over the particular area to set a
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`plurality of additional parameters for the trade order and send the trade order to the electronic
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`exchange (See TSE A at 616).
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`Kemp ’132 patent
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`Claim 1
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`Referred to below as “TSE A” and referred to by the
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`Bates numbers on the English translation
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`1. A method of
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`placing a trade order3 for a commodity on an
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`electronic exchange having an inside market4 with a
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`highest bid price and a lowest ask price,
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`using a graphical user interface and a user input
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`The disclosed system relates to a Transaction Terminal
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`featuring a divided board/quotation screen. The board
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`screen displays a given instrument and market depth for
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`that instrument in the central pane. The abutment of the
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`best bid (right hand column, highest price) and best ask
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`(left hand column, lowest price) is the inside market. The
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`bid and ask columns flank a common price axis. See TSE
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`said method comprising:
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`Functions of the Transaction Terminal
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`Basic screen design and operations
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`a.
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`Windows NT is employed as the OS and hence,
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`the screen design is the same as that ofWindows.
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`All operations are performed by selecting an item
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`To select an item on the menu bar:
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`clicking it with the mouse.
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`When you are using a keyboard, press the key
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`When an item is selected, an input window
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`corresponding to the item opens up. See TSE A at 613.
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`3 For reference purposes herein, it is noted that the United States District Court, Northern District of Illinois, Eastern Division
`construed the phrase “trade order” to mean "a single, electronic message in executable form that includes at least all required
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`parameters of a desired trade." See Trading Tech. Intn'1, Inc. v. eSpeed, Inc, Case No. 04 C 5312, United States District Court,
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`Northem District of Illinois. Eastem Division ("Trading Technologies Litigation”), Memorandum Opinion and Order, October
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`31, 2006 (TAB D). This construction is consistent with the disclosure ofthe references relied upon herein.
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`4 According to the Kemp ’ 132 patent, for a commodity being traded, the "inside market" is the highest bid price and the lowest
`ask price. See the Kemp ’l32 patent, Col. 4, lines 58—60.
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`Page 9 of 185
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`Page 9 of 185
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`Corrected Request for Ex Parte Re—Examination of U.S. Patent No. 6,772,132
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`Reexamination Control No. 90/008,576
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`95549/99997
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`Kemp ’l32 patent
`Claim 1
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`TSE Orientation Materials
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`Referred to below as “TSE A” and referred to by the
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`Bates numbers on the English translation
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`setting a preset parameter5 for the trade order;°
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`displaying market depth of the commodity, through a
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`dynamic display7 of a plurality of bids and a plurality
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`of asks8 in the market for the commodity, including
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`at least a portion of
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`the bid and ask quantities of the commodity,
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`Board screens are commodity specific. Setting the
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`commodity type for the board screen, i.e. bringing up a
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`board screen for a particular commodity, defines a pre—set
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`parameter which is then automatically populated into
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`subsequently invoked order screens. See TSE A at 613-
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`When a designated section on a board or quotation screen is
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`double-clicked with a mouse, a window for inputting new
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`orders opens up, and information which is relevant to the
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`section (such as an issue, sell or buy, a price and so forth) is
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`automatically inputted into the board or quotation screen.
`See TSE A at 616.
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`The disclosed board screen features right hand column
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`where bid order quantities at various prices are displayed in
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`relation to a price axis commonly shared with the left hand
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`column where ask order quantities at various prices are
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`the display and prevent movement though the data
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`presented is still permitted to update. See TSE A at 614.
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`the dynamic display being
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`aligned with a static display9 of prices
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`corresponding thereto, wherein the static display of
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`prices does not move
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`in response to a change in the inside market;
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`Board screen is automatically refreshed every three .
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`The disclosed board screen features left hand column where
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`ask order quantities at various prices are displayed in
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`relation to a price axis commonly shared with the right
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`hand column where bid order quantities at various prices
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`are displayed. See TSE A at 614.
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`5 With respect to the phrase “preset parameter,” according to the Kemp ’ l 32 patent, “[o]rders can also be sent to market for
`quantities that vary according to the quantities available in the market; quantities preset by the trader; and which mouse button
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`the trader clicks. Using this feature, a trader can buy or sell all of the bids or asks in the market at or better than a chosen price
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`with one click. The trader could also add or subtract a preset quantity from the quantities outstanding in the market. If the trader
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`clicks in a trading celI~-i.e. in the BidQ or AskQ column, he will enter an order in the market. The parameters ofthe order depend
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`on which mouse button he clicks and what preset values he set.” See the Kemp ‘I32 patent, Col. 9, lines 50-60. For reference
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`purposes herein, it is noted that the United States District Court, Northem District of Illinois, Eastem Division, consistent with
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`the specification of the Kemp ’ 132 patent, construed the phrase “parameter” to mean "an element of a trade order including, but
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`not limited to, quantity, price, type of order and the identity of the commodity." See Trading Tech. lntn'l, Inc. v. eSpeed, lnc.,
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`Case No. 04 C 5312, United States District Court, Northern District of Illinois, Eastem Division ("Trading Technologies
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`Litigation”), Memorandum Opinion and Order, October 31, 2006 (TAB D).
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`6 In the EP Oppositions referenced above, Trading Technologies argued that the cited reference, System for Buying and Selling
`Futures and Options: Transaction Terminal Operational Guidelines, referred to herein as TSE C (TAB F), which funher describes
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`the trading interface disclosed in the TSE A and TSE B references, failed to disclose a claimed order entry feature because, in
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`using the disclosed trading interface, after a new order window is displayed, “a user must fill in one or more fields of data and
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`then drag[] the cursor to ‘send’ to place an order.” (TAB 0) However, this argument is not applicable to the current re-
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`examination request as the limitations of the Kemp ' 132 patent differ from those of the European patent at issue, is. the subject
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`limitation of Trading Technologies’ argument is not present in the claims of the Kemp ‘l32 patent.
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`Page 10 of 135
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`Page 10 of 185
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`Corrected Request for Ex Parte Re—Examination of U.S. Patent No. 6,772,132
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`Reexamination Control No. 90/008,576
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`95549/99997
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`Kemp ’132 patent
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`Claim 1
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`TSE Orientation Materials
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`Referred to below as “TSE A” and referred to by the
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`Bates numbers on the English translation
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`displaying an order entry region"
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`aligned with the static display prices
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`comprising a plurality” of areas for receiving
`commands
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`When a designated section on a board or quotation screen is
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`double—cIicked with a mouse, a window for inputting new
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`orders opens up, and information which is relevant to the
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`section (such as an issue, sell or buy, a price and so forth) is
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`automatically inputted into the board or quotation screen.
`See TSE A at 616.
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`from the user input devices
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`to send trade orders,
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`each area corresponding to a price of the static
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`display of prices;
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`and
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`From the given example at TSE A at 6l 6, the price at
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`which the double—click was effected is automatically
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`entered into the order screen. This implies:
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`each price is a different location such that the price where
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`you double—click is what is entered; or
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`clicking anywhere in the region creates an order for the
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`best price
`The distinction between the bid and ask sides, which must
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`be present for the system to “know” the difference between
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`buy and sell, as well as the appropriate price for the order,
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`represents “a plurality of locations for receiving
`commands.”
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`7 For reference purposes herein, it is noted that the United States District Court, Northern District of Illinois, Eastern Division
`construed the phrase “dynamic display” to mean "a display of a plurality of bids and asks that are updated in response to new
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`market information such that the bids and asks change positions relative to the static display of prices when the market changes."
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`See Trading Tech. Intn'l, Inc. v. eSpeed. Inc, Case No. 04 C 5312, United States District Court. Northern District of Illinois,
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`Eastern Division ("Trading Technologies Litigation”), Memorandum Opinion and Order, October 31, 2006 (TAB D). This
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`constmction is consistent with the disclosure of the references relied upon herein.
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`3 For reference purposes herein, it is noted that the United States District Court, Northern District of Illinois. Eastern Division
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`construed the phrase “display of a plurality of bids and a plurality of asks” to mean "a display of more than one bid and more than
`one ask." See Trading Tech. Intn'l, Inc. v. eSpeed, Inc., Case No. 04 C 5312, United States District Court, Northern District of
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`Illinois, Eastern Division ("Trading Technologies Litigation”), Memorandum Opinion and Order, February 2] , 2007 (TAB E).
`This construction is consistent with the disclosure of the references relied upon herein.
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`9 In the EP oppositions referenced above, Trading Technologies argued that the cited reference, System for Buying and Selling
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`Futures and Options: Transaction Terminal Operational Guidelines, referred to herein as TSE C (TAB F), which further describes
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`the trading interface disclosed in the TSE A and TSE B references, failed to disclose a static screen or a dynamic display based
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`on speculation that, while in scroll mode, board information is updated in a memory but not on the actual display. See Trading
`Technologies Response [0 the EP Opposition, Annex B, pages 6-7 (TAB G). However, Trading Technologies’ argiment failed
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`to address how the disclosed features of the TSE device, namely that while in the scroll mode, “the display positions for the
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`prices do not change automatically,” (see Trading Technologies Response to the EP Opposition, Annex B, page 7 (TAB G),
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`citing TSE C at page 7-25) and that “when scrolling is performed the board information still updates automatically,” (see Trading
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`Technologies Response to the EP Opposition, Annex B, page 7 (TAB G), citing TSE C at page 7-26 ) do not satisfy these
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`limitations.
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`‘O For reference purposes herein, it is noted that the United States District Court, Northern District of Illinois, Eastern Division, in
`an early ruling denying a preliminary injunctio