`IBG ET AL. v. TRADING TECH
`CBM2015-00181
`
`
`
`Cogc___urggt Proceedings
`
`>:< The patent is currentty the subject of the following ooncurrent prooeedlng(s);
`Copending litigation styled:
`
`
`
`Correspondence Address
`
`8 The name and address of the person requesting reexamination is:
`
`James L. Katz ‘Reg. No. 42,711}
`uite 36 0
`Hofe G‘ o &Lione BC 0 er
`455 Northc
`n Pl
`Dri e
`h
`o Ilinois 60611 312
`
`21-42
`
`8 Correspondence Address: Direct all communltion about the reexamination to:
`C stomer
`u
`r: 7 7
`
`Certificate of Service
`
`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:
`
`Foley 8. Lardner, Attn: William T. Etlis, 3.
`Washington Harbour, 3000 K Street NW, Suite 500
`Washington, DC 2007-5109
`
`Date of Service: Mag 25, gqoz
`
`Date
`
`Page 2 of
`
`BRINKS HOFER GlLSON & LIONE
`NBC Tower— SURE 3600, 455 N. Cilyfront H322 DING. CNCEQO, IL 60611-5599
`
`-2.
`
`
`
`
`
`.........7.....|r....l.3loO.xIA<K_.l!.¢5lK..t~.\....5..|...u.:.1:.
`
`Page 3 of 185
`
`W
`
`
`
`
`
`
`
`
`
`
`
`REEXAMINATION CONTROL NO. 90/008,576
`
`
`
`
`
`
`BHGL REF. NO. 95549/99997
`
`
`
`
`DETAILED RE UEST - CORRECTED
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`This is a corrected request for Ex Parte Reexamination of Kemp, I] et al. U.S. Patent
`
`
`
`
`
`
`
`
`
`
`
`6,772,132, issued August 3, 2004, hereinafter the “Kemp ’132 patent”.
`
`
`
`
`
`
`
`
`
`
`RESPONSE TO DECISION 5'04 SPO/VIEVACATING E/I’PA1?7E
`
`
`
`
`
`REEXAMINATION FILING DATE
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`This is a response to the Decision Sua Sponte Vacating Ex Parte Reexamination
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Filing Date mailed May 10, 2007. With this response, a corrected request for Ex Parte
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Reexamination of Kemp, I] et al. U.S. Patent 6,772,132, issued August 3, 2004, is provided.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`The corrected request complies with 37 CFR 1.510(b)(2) by providing an explanation of the
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`manner and pertinence of applying each cited document to the patent claims for which
`
`
`
`
`
`
`
`
`
`
`
`
`
`reexamination is requested. Where references are applied in combination, each combination
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`is individually identified, and the basis for forming each combination is supplied.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Service of this corrected request has been made on the Agent/Attorney/Firm identified as the
`
`
`
`
`correspondent, as specified below.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`As this corrected request is being filed within thirty (30) days of the mailing date of
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`the Decision Sua Sponte Vacating Ex Parte Reexamination Filing Date, it is believed that no
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`additional fees are due. The Director is hereby authorized to charge any additional fees to
`
`
`
`
`
`
`Deposit Account No. 23-1925.
`
`
`
`
`
`THE PATENT OWNER
`
`
`
`
`
`
`
`
`
`
`
`
`The Kemp ’ 132 patent identifies Trading Technologies International, Inc., 1603
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Orrington Avenue, Suite 1300, Evanston, IL 60201 as the assignee of the patent. An
`
`
`
`
`
`
`
`
`
`
`
`
`
`assignment search indicates that the application for the Kemp ’132 patent (Serial No.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`09/590,692, filed June 9, 2000) was assigned by the inventors to Trading Technologies
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`International, Inc. by an assignment recorded at Reel 011188, Frame 0355 on October 2,
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`2000. No later assignments have been found. The Patent Owner of record (which is
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`believed to be the current Patent Owner) is therefore Trading Technologies International, Inc.
`
`
`
`Page 4 of 185
`
`Page 4 of 185
`
`
`
`
`
`
`
`
`
`
`
`
`
`Corrected Request for Ex Pane Re—Examination of US. Patent No. 6,772,i32
`
`
`
`
`Reexamination Control No. 90/008,576
`
`
`
`95549/99997
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`The Kemp ’132 patent identifies “Foley & Lardner” as the “Attorney, Agent or Firm”
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`that prosecuted it. According to the Power of Attorney filed with the application, as reflected
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`by the correspondence address shown in PAIR, the current correspondence address for the
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Kemp ’l32 patent is “Foley & Lardner LLP, Suite 500, 3000 K Street NW, Washington, DC
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`20007.” The assignment recordation shows a correspondence address of “Foley & Lardner,
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`William T. Ellis, Washington Harbour, 3000 K Street NW, Suite 500, Washington, DC
`
`
`
`
`
`
`
`
`
`
`
`
`
`20007-5109.” Accordingly, service of this Corrected Reexamination Request has been made
`
`
`
`
`
`
`
`
`
`
`
`
`on the Agent/Attorney/Firm identified above by first class mail.
`
`
`
`
`
`THE REEXAMINATION RE UESTER
`
`
`
`
`
`
`
`
`
`
`
`
`
`Requester James L. Katz acts in an individual capacity, relying on information
`
`
`
`
`
`
`
`obtained from a third party.
`
`
`
`
`
`
`CLAIMS TO BE REEXAMINED
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Reexamination of all claims (Claims 1-56) of the Kemp ’132 patent is requested.
`
`
`
`
`REFERENCES CITED
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`The references that are relied upon for reexamination are the following:
`
`
`A.
`
`
`
`
`
`
`
`
`
`“Orientation Materials for Participants: New Future Options Trading System,”
`
`
`
`
`
`
`
`
`
`
`September 1997, Operation System Development Section, Tokyo Stock
`
`
`
`
`
`
`
`
`
`
`
`Exchange (in Japanese with accompanying English translation). Denoted by
`
`
`
`
`
`
`
`Bates numbers TSE0000O00609-TSE0000000627 (“TSE Orientation
`
`
`
`
`
`
`Materials” or “TSE A”);
`
`
`
`B.
`
`
`
`
`
`
`
`
`
`
`“Futures and Options Trading System: Transaction Terminal Operation
`
`
`
`
`
`
`
`
`
`
`Procedures,” August 1998, Operation System Development Section, Tokyo
`
`
`
`
`
`
`
`
`
`
`Stock Exchange (in Japanese with accompanying English translation).
`
`
`
`
`
`
`
`
`Denoted by Bates numbers TSE0000000628-TSE0000000643 (“TSE
`
`
`
`
`
`Operation Procedures” or “TSE B”);’
`
`
`
`
`‘ Ail citations herein to specific pages within the TSE Orientation Materials and TSE Operation Procedures references will refer
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`to the particular Bates number added to each page of the English translation.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Page 5 of 185
`
`
`
`Page 5 of 185
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Corrected Request for Ex Parte Re—Examination of U.S. Patent No. 6,772,132
`
`
`
`
`Reexamination Control No. 90/008,576
`
`95549/99997
`
`
`
`
`C.
`
`
`
`
`
`
`
`
`U.S. Patent Application Publication No. 2003/0097325, entitled “USER
`
`
`
`
`
`
`
`
`
`
`
`INTERFACE FOR AN ELECTRONIC TRADING SYSTEM,” filed April 9,
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`1999 and published May 22, 2003, to Friesen et al. (“Friesen”); and
`
`
`
`
`D.
`
`
`
`
`
`
`
`
`
`
`U.S. Patent No. 5,960,411, entitled “METHOD AND SYSTEM FOR
`
`
`
`
`
`
`
`
`
`PLACING A PURCHASE ORDER VIA A COMMUNICATION
`
`
`
`
`
`
`
`
`
`
`
`
`
`NETWORK,” filed September 12, 1997 and issued September 28, 1999 to
`
`
`
`
`
`Amazon.com, Inc. (“Amazon”).
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Paper copies of these references and a PTO-1449 form listing these references are
`
`
`
`
`
`
`
`
`
`
`
`
`
`enclosed, so that the Examiner may consider them and acknowledge their consideration by
`
`
`
`
`
`
`initialing the form.
`
`
`
`
`
`
`
`
`
`
`
`The TSE Orientation Materials and TSE Operation Procedures references are each
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`available as a statutory bar reference against the Kemp ‘I32 patent, under
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`35 U.S.C. § 102(b), as a printed publication published in a foreign country more than one
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`year prior to the June 9, 2000 filing date of the Kemp ’132 patent, and more than one year
`
`
`
`
`
`
`
`
`
`
`
`prior to the March 2, 2000 claimed priority date.2
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Friesen is available as a reference against the Kemp ’l32 patent, under
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`35 U.S.C. § 102(e), as an application for patent, published under 35 U.S.C. § 122(b), by
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`another filed in the United States before the invention by the applicant for patent. Friesen is
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`presently owned by Trading Technologies International, Inc. However, for the purposes of
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`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
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`in a Notice of Opposition to a European Patent tiled against European Patent No. 1 319 21 l by Eccoware Limited on January 13.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`2006 (TAB B). European Patent No. l 319 211 was filed based on a PCT Application, Publication No. W0 Ol/65403, which
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`claims priority to U.S. Provisional Application No. 60/186,322 to which the Kemp ’ 132 patent aiso claims priority. These
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Opposition documents, as well as several other Oppositions and supporting documentation filed against European Patent No.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`l 319 21 1, available from the file history thereof, establish that the TSE Orientation Materials and TSE Operation Procedures
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`references were publicly available documents available more than one year prior to the June 9, 2000 filing date of the Kemp ’ l 32
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`patent, and more than one year prior to the March 2, 2000 claimed priority date. See TAB B, Notice of Opposition to a European
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Patent filed against European Patent No. 1 319 21 1 by Eccoware Limited, page 6 (indicating that the Futures/Options Trading
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`System — Guidelines for Operating the Trading Terminals, Tokyo Stock Exchange (August 1998) was distributed to around 200
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`companies without restriction in August 1998); see also Deposition of Atsushi Kawashima from Trading Tech. lntn’l, Inc. v.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`eSpeed, Inc. Case No. 04 C 5312, United States District Court oflllinois, Eastern Division (TAB H) (obtained from the file
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`history of EP 1 319 211), pages 9-15 (indicating that the Tokyo Stock Exchange’s Manual entitled, “System for Buying and
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Selling Futures and Options: transaction Terminal Operation Guidelines,” denoted by Bates numbers TSE0000O00647-
`
`
`
`
`
`
`
`
`
`
`
`
`TSE0000O008lO, referred to herein as TSE C (TAB F). was distributed in 1998 to around 200 companies that carry out futures
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`trading at the Tokyo Stock Exchange) and pages 60-62 (indicating that the TSE Orientation Materials reference (TSE A) was
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`publicly distributed in September 1997 without restriction to participants that carry out futures trading at the Tokyo Stock
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Exchange).
`
`
`
`
`
`
`
`
`
`Page 6 of 185
`
`
`
`Page 6 of 185
`
`
`
`
`
`
`
`
`
`
`
`
`
`Corrected Request for Ex Parte Re—Examination of U.S. Patent No. 6,772,132
`
`
`
`
`Reexamination Control No. 90/008,576
`
`
`
`95549/99997
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`35 U.S.C. § 103(a), Friesen is not disqualified under 35 U.S.C. § 103(c) as being owned by
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`the same person, or subject to an obligation of assignment to the same person, who owns the
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`claimed invention of the Kemp ’132 patent at the time the claimed invention was made. As
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`shown in the assignment records of the U.S. Patent Office, included herewith, Trading
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Technologies International, Inc., the owner of the Kemp ’ 132 patent, did not acquire
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`ownership of Friesen until November 19, 2003, well after the April 9, 1999 filing date of
`
`
`
`Friesen.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Amazon is available as a reference against the Kemp ’132 patent, under
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`35 U.S.C. § l02(e), as a patent granted on an application for patent by another filed in the
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`United States before the invention by the applicant for patent. For the purposes of
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`35 U.S.C. § 103(a), Amazon is not disqualified under 35 U.S.C. § 103(c) as being owned by
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`the same person, or subject to an obligation of assignment to the same person, who owns the
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`claimed invention of the Kemp ’132 patent at the time the claimed invention was made. As
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`shown in the assignment records of the U.S. Patent Office, included herewith, Amazon is
`
`
`
`
`
`
`
`presently owned by Amazon.com, Inc.
`
`
`
`
`
`
`
`
`
`
`
`
`The TSE Orientation Materials, TSE Operation Procedures, Friesen and Amazon
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`references are applied below to the claims of the Kemp ’132 patent.
`
`
`
`
`
`
`
`
`
`STATEMENT OF SUBSTANTIAL NEW UESTION OF PATENTABILITY
`
`
`
`
`
`
`
`
`
`
`
`
`The TSE Orientation Materials, TSE Operation Procedures, Friesen and Amazon
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`references were not cited to, nor considered by, the Examiner in the original prosecution that
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`led to the allowance and issuance of the Kemp ’ 132 patent and are both non-cumulative and
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`more pertinent than the cited references. Therefore, there is a substantial likelihood that a
`
`
`
`
`
`
`
`
`
`
`reasonable examiner would consider the TSE Orientation Materials, TSE Operation
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Procedures, Friesen and Amazon references important in deciding whether or not the claims
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`are patentable. Accordingly, whether the issued claims of the Kemp ‘132 patent are
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`patentable over the teachings of the TSE Orientation Materials, TSE Operation Procedures,
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Friesen and Amazon references, as applied below, is a substantial new question of
`
`
`
`patentability.
`
`
`
`Page 7 of 185
`
`
`
`Page 7 of 185
`
`
`
`
`
`
`
`
`
`
`
`
`
`Corrected Request for Ex Parte Re—Examination of U.S. Patent No. 6,772,132
`
`
`
`
`Reexamination Control No. 90/008,576
`
`
`
`95549/99997
`
`
`
`
`
`
`
`
`
`APPLICATION OF TSE ORIENTATION MATERIALS, TSE OPERATION
`
`
`
`
`
`
`
`
`
`PROCEDURES, FRIESEN AND AMAZON TO THE CLAIMS
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Claims 1-56 of the Kemp ’132 patent would be deemed by the Examiner to be
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`anticipated under 35 U.S.C. § 102(b), or obvious under 35 U.S.C. § 103(a) as described
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`below, and further summarized in the accompanying claim charts and annotated Figure 1,
`
`
`
`
`
`
`
`
`
`
`
`
`
`taken from the TSE Orientation Materials reference. For the convenience of the Examiner,
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`similar claims of the Kemp ’132 patent have been grouped together and are further discussed
`
`
`
`
`
`
`
`
`in order of their dependent relationship.
`
`
`
`
`A.
`
`
`
`
`
`
`Independent Claims 1, 8 and 14
`
`
`
`
`
`1.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Claim 1 Would be Deemed by the Examiner to be Anticipated by the TSE
`
`
`
`Orientation Materials Reference
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Whether claim 1 of the Kemp ‘I32 patent is patentable over the teachings of the TSE
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Orientation Materials reference is a substantial new question of patentability as the TSE
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Orientation Materials reference was not cited to, nor considered by, the Examiner in the
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`original prosecution that led to the allowance and issuance of the Kemp ’132 patent and is
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`both non—cumulative and more pertinent than the cited references and there is a substantial
`
`
`
`
`
`
`
`
`
`
`
`
`
`likelihood that a reasonable examiner would consider this reference important in deciding
`
`
`
`
`
`
`
`
`
`whether or not the claim is patentable.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Claim 1 of the Kemp ’ 132 patent would be deemed by the Examiner to be anticipated
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`under 35 U.S.C. § 102(b) by the TSE Orientation Materials reference. The TSE Orientation
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Materials reference teaches all of the elements of claim 1 of the Kemp ’132 patent including:
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`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
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`and a user input device (See TSE A at 613-614); setting a preset parameter for the trade order
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`(See TSE A at 613-614, 616); displaying market depth of the commodity, through a dynamic
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`display of a plurality of bids and a plurality of asks in the market for the commodity,
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`including at least a portion of the bid and ask quantities of the commodity, the dynamic
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`display being aligned with a static display of prices corresponding thereto, wherein the static
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`display of prices does not move in response to a change in the inside market (See TSE A at
`
`Page 8 of 185
`
`
`
`Page 8 of 185
`
`
`
`
`
`
`
`
`
`
`
`
`Corrected Request for Ex Parte Re—Examination of U.S. Patent No. 6,772,132
`
`
`
`
`Reexamination Control No. 90/008,576
`
`
`
`95549/99997
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`613-714); displaying an order entry region aligned with the static display prices comprising a
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`plurality of areas for receiving commands from the user input devices to send trade orders,
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`each area corresponding to a price of the static display of prices (See TSE A at 616); and
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`selecting a particular area in the order entry region through single action of the user input
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`device with a pointer of the user input device positioned over the particular area to set a
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`plurality of additional parameters for the trade order and send the trade order to the electronic
`
`
`
`
`
`
`
`
`exchange (See TSE A at 616).
`
`
`
`
`
`Kemp ’132 patent
`
`Claim 1
`
`
`
`
`
`
`TSE Orientation Materials
`
`
`
`
`
`
`
`
`
`
`Referred to below as “TSE A” and referred to by the
`
`
`
`
`
`
`Bates numbers on the English translation
`
`
`
`
`
`
`1. A method of
`
`
`
`
`
`
`
`
`
`
`
`
`placing a trade order3 for a commodity on an
`
`
`
`
`
`
`
`electronic exchange having an inside market4 with a
`
`
`
`
`
`
`
`
`highest bid price and a lowest ask price,
`
`
`
`
`
`
`
`
`
`
`
`using a graphical user interface and a user input
`device,
`
`
`
`
`
`
`
`
`
`
`The disclosed system relates to a Transaction Terminal
`
`
`
`
`
`
`
`featuring a divided board/quotation screen. The board
`
`
`
`
`
`
`
`
`screen displays a given instrument and market depth for
`
`
`
`
`
`
`
`
`
`
`that instrument in the central pane. The abutment of the
`
`
`
`
`
`
`
`
`
`
`best bid (right hand column, highest price) and best ask
`
`
`
`
`
`
`
`
`
`(left hand column, lowest price) is the inside market. The
`
`
`
`
`
`
`
`
`
`
`bid and ask columns flank a common price axis. See TSE
`
`
`A at 613-614.
`
`
`
`
`
`
`
`said method comprising:
`
`
`
`(1)
`
`
`
`
`
`
`
`Functions of the Transaction Terminal
`
`
`
`
`
`
`
`Basic screen design and operations
`
`
`
`
`a.
`
`
`
`
`
`
`
`
`
`Windows NT is employed as the OS and hence,
`+
`
`
`
`
`
`
`
`
`
`
`the screen design is the same as that ofWindows.
`
`
`
`
`
`
`
`
`All operations are performed by selecting an item
`*
`in the menu on the screen.
`
`
`
`
`
`
`
`To select an item on the menu bar:
`*
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`~
`When you are using a mouse, select the item by
`
`
`
`
`
`clicking it with the mouse.
`
`
`
`
`
`
`
`
`When you are using a keyboard, press the key
`-
`
`
`
`
`
`which corresponds to the item.
`
`
`
`
`
`
`
`
`
`When an item is selected, an input window
`*
`
`
`
`
`
`
`
`
`
`
`corresponding to the item opens up. See TSE A at 613.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`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
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`parameters of a desired trade." See Trading Tech. Intn'1, Inc. v. eSpeed, Inc, Case No. 04 C 5312, United States District Court,
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Northem District of Illinois. Eastem Division ("Trading Technologies Litigation”), Memorandum Opinion and Order, October
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`31, 2006 (TAB D). This construction is consistent with the disclosure ofthe references relied upon herein.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`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.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Page 9 of 185
`
`
`
`Page 9 of 185
`
`
`
`
`
`
`
`
`
`
`
`
`
`Corrected Request for Ex Parte Re—Examination of U.S. Patent No. 6,772,132
`
`
`
`
`Reexamination Control No. 90/008,576
`
`
`
`95549/99997
`
`
`
`
`
`Kemp ’l32 patent
`Claim 1
`
`
`
`
`TSE Orientation Materials
`
`
`
`
`
`
`
`
`
`
`
`
`
`Referred to below as “TSE A” and referred to by the
`
`
`
`
`
`
`Bates numbers on the English translation
`
`
`
`
`setting a preset parameter5 for the trade order;°
`
`
`
`
`
`
`
`
`displaying market depth of the commodity, through a
`
`
`
`
`
`
`
`
`dynamic display7 of a plurality of bids and a plurality
`
`
`
`
`
`
`
`
`
`of asks8 in the market for the commodity, including
`
`
`
`
`
`
`
`
`
`
`
`
`at least a portion of
`
`
`
`the bid and ask quantities of the commodity,
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Board screens are commodity specific. Setting the
`
`
`
`
`
`
`
`
`
`commodity type for the board screen, i.e. bringing up a
`
`
`
`
`
`
`
`board screen for a particular commodity, defines a pre—set
`
`
`
`
`
`
`
`parameter which is then automatically populated into
`
`
`
`
`
`
`
`
`subsequently invoked order screens. See TSE A at 613-
`614.
`
`
`
`
`
`
`
`
`
`
`
`
`
`When a designated section on a board or quotation screen is
`
`
`
`
`
`
`
`
`double-clicked with a mouse, a window for inputting new
`
`
`
`
`
`
`
`
`
`
`orders opens up, and information which is relevant to the
`
`
`
`
`
`
`
`
`
`
`
`
`
`section (such as an issue, sell or buy, a price and so forth) is
`
`
`
`
`
`
`
`
`automatically inputted into the board or quotation screen.
`See TSE A at 616.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`The disclosed board screen features right hand column
`
`
`
`
`
`
`
`
`
`where bid order quantities at various prices are displayed in
`
`
`
`
`
`
`
`
`
`
`relation to a price axis commonly shared with the left hand
`
`
`
`
`
`
`
`
`
`column where ask order quantities at various prices are
`displayed. Scroll buttons are also disclosed which scroll
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`the display and prevent movement though the data
`
`
`
`
`
`
`
`
`
`
`presented is still permitted to update. See TSE A at 614.
`
`
`
`
`
`
`
`
`
`
`the dynamic display being
`
`
`
`IO
`
`aligned with a static display9 of prices
`
`
`
`
`
`
`
`
`
`
`
`corresponding thereto, wherein the static display of
`
`
`
`
`prices does not move
`
`
`
`
`
`
`
`in response to a change in the inside market;
`
`
`
`
`
`
`
`
`
`
`
`
`Board screen is automatically refreshed every three .
`seconds. See TSE A at 613.
`
`
`
`
`
`
`
`
`
`The disclosed board screen features left hand column where
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`ask order quantities at various prices are displayed in
`
`
`
`
`
`
`
`
`
`
`relation to a price axis commonly shared with the right
`
`
`
`
`
`
`
`
`hand column where bid order quantities at various prices
`
`
`
`
`
`
`
`are displayed. See TSE A at 614.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`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
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`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
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`with one click. The trader could also add or subtract a preset quantity from the quantities outstanding in the market. If the trader
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`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
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`on which mouse button he clicks and what preset values he set.” See the Kemp ‘I32 patent, Col. 9, lines 50-60. For reference
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`purposes herein, it is noted that the United States District Court, Northem District of Illinois, Eastem Division, consistent with
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`the specification of the Kemp ’ 132 patent, construed the phrase “parameter” to mean "an element of a trade order including, but
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`not limited to, quantity, price, type of order and the identity of the commodity." See Trading Tech. lntn'l, Inc. v. eSpeed, lnc.,
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Case No. 04 C 5312, United States District Court, Northern District of Illinois, Eastem Division ("Trading Technologies
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Litigation”), Memorandum Opinion and Order, October 31, 2006 (TAB D).
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`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
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`the trading interface disclosed in the TSE A and TSE B references, failed to disclose a claimed order entry feature because, in
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`using the disclosed trading interface, after a new order window is displayed, “a user must fill in one or more fields of data and
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`then drag[] the cursor to ‘send’ to place an order.” (TAB 0) However, this argument is not applicable to the current re-
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`examination request as the limitations of the Kemp ' 132 patent differ from those of the European patent at issue, is. the subject
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`limitation of Trading Technologies’ argument is not present in the claims of the Kemp ‘l32 patent.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Page 10 of 135
`
`
`
`Page 10 of 185
`
`
`
`
`
`
`
`
`
`
`
`
`
`Corrected Request for Ex Parte Re—Examination of U.S. Patent No. 6,772,132
`
`
`
`
`Reexamination Control No. 90/008,576
`
`
`
`95549/99997
`
`
`
`
`
`Kemp ’132 patent
`
`Claim 1
`
`
`
`
`
`
`TSE Orientation Materials
`
`
`
`
`
`
`
`
`
`
`Referred to below as “TSE A” and referred to by the
`
`
`
`
`
`
`Bates numbers on the English translation
`
`
`
`
`
`
`
`
`displaying an order entry region"
`
`
`
`
`
`
`aligned with the static display prices
`
`
`
`
`
`
`
`
`comprising a plurality” of areas for receiving
`commands
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`When a designated section on a board or quotation screen is
`
`
`
`
`
`
`
`
`
`double—cIicked with a mouse, a window for inputting new
`
`
`
`
`
`
`
`
`
`
`orders opens up, and information which is relevant to the
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`section (such as an issue, sell or buy, a price and so forth) is
`
`
`
`
`
`
`
`
`automatically inputted into the board or quotation screen.
`See TSE A at 616.
`
`
`
`
`
`
`
`
`
`
`from the user input devices
`
`
`
`
`
`
`to send trade orders,
`
`
`
`
`
`
`
`
`
`
`each area corresponding to a price of the static
`
`
`
`display of prices;
`
`
`
`and
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`From the given example at TSE A at 6l 6, the price at
`
`
`
`
`
`
`
`which the double—click was effected is automatically
`
`
`
`
`
`
`
`entered into the order screen. This implies:
`
`
`
`
`
`
`
`
`
`
`each price is a different location such that the price where
`
`
`
`
`
`
`
`you double—click is what is entered; or
`
`
`
`
`
`
`
`
`
`clicking anywhere in the region creates an order for the
`
`
`best price
`The distinction between the bid and ask sides, which must
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`be present for the system to “know” the difference between
`
`
`
`
`
`
`
`
`
`
`
`
`buy and sell, as well as the appropriate price for the order,
`
`
`
`
`
`
`
`represents “a plurality of locations for receiving
`commands.”
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`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
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`market information such that the bids and asks change positions relative to the static display of prices when the market changes."
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`See Trading Tech. Intn'l, Inc. v. eSpeed. Inc, Case No. 04 C 5312, United States District Court. Northern District of Illinois,
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Eastern Division ("Trading Technologies Litigation”), Memorandum Opinion and Order, October 31, 2006 (TAB D). This
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`constmction is consistent with the disclosure of the references relied upon herein.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`3 For reference purposes herein, it is noted that the United States District Court, Northern District of Illinois. Eastern Division
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`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
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`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.
`
`
`
`
`
`
`
`
`
`
`
`
`
`9 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 further describes
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`the trading interface disclosed in the TSE A and TSE B references, failed to disclose a static screen or a dynamic display based
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`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
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`to address how the disclosed features of the TSE device, namely that while in the scroll mode, “the display positions for the
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`prices do not change automatically,” (see Trading Technologies Response to the EP Opposition, Annex B, page 7 (TAB G),
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`citing TSE C at page 7-25) and that “when scrolling is performed the board information still updates automatically,” (see Trading
`
`Technologies Response to the EP Opposition, Annex B, page 7 (TAB G), citing TSE C at page 7-26 ) do not satisfy these
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`limitations.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`‘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