IBG 1004
`CBM of U.S. Pat. No. 6,772,132
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`

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`district including: Trading Technologies International, Inc. v. FatarePath Trading LLC, Civil
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`Action No. 05C 5164; Trading Technologies International, Inc. v. CQG et al., Civil Action No.
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`05C 4811; and Rosenthal Collins Group, LLC v. Trading Technologies International, Inc., Civil
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`Action No. 05C 4088.
`
`Yet another action concerning the ‘132 patent went to trial in the same district, Trading
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`Technologies International, Inc. v. eSpeed Inc., et al., Civil Action No. 04C 5312. The Federal
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`Circuit affirrned the trial court’s final judgment. Trading Technologies International Inc. V.
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`eSpeed Inc., 595 F.3d 1340, 93 U.S.P.Q.2d 1805 (Fed. Cir. 2010).
`
`II.
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`Reexamination is Requested for Claims 1-2, 8, 14, 20, 22-23, 25, 27-28, 30, 32-
`33, 37-38, 40, 42-43, 47-48, and 53 of the ’132 Patent
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`Reexamination is requested herein for Claims 1-2, 8, 14, 20, 22-23, 25, 27-28, 30, 32-33,
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`37-38, 40, 42-43, 47-48, and 53 of the ’ 132 patent.1 The third party Requestor submits that there
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`is a substantial new question of patentability with respect to each of these claims — independent
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`and dependent — of the ’132 patent. Specifically, and as discussed in more detail below, each of
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`these claims is invalid as anticipated by, or obvious in view of, Gutterrnan, Friesen, LIFFE
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`CONNECT, and SWX, alone or in combination.
`
`III.
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`Statement of Substantive New Questions of Patentability
`
`A.
`
`The Claimed Subject Matter
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`The ’ 132 patent has three (3) independent claims — specifically Claims 1, 8, and 14 — and
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`fifty-three (53) dependent claims. Twenty-one (21) of the dependent claims depend directly, or
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`indirectly, from Independent Claim 1. Sixteen (16) of the dependent claims depend directly, or
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`indirectly, from Independent Claim 8 and the remaining sixteen (16) dependent claims depend
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`directly, or indirectly, from Independent Claim 14.
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`1 The ’ 132 patent matured from U.S. Application Serial No: 09/590,692 (hereinafter the “’692 application”).
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`

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`1.
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`Claim 1 and its Dependent Claims
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`Claim 1 is a method claim which is directed to a method of placing a trade order on an
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`electronic exchange that has an inside market (a best bid and ask) using a graphical user interface
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`and user input device. The method in Claim 1 has four steps: (1) setting a preset parameter; (2)
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`displaying the market depth of a commodity through a dynamic display of bids and asks
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`quantities aligned with a static display of prices; (3) displaying an order entry region aligned
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`with the static display prices; and (4) sending the trade order to an electronic exchange through a
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`single action of the user input device by selecting a particular area of the graphical user interface.
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`Claim 1 recites:
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`A method ofplacing a trade order for a commodity on an electronic exchange having an
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`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, said method comprising.‘
`
`setting a preset parameterfor the trade order;
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`displaying market depth of the commodity,
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`through a dynamic display of a
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`plurality of bids and a plurality of asks in the market for the commodity, including at
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`least a portion of the bid and ask quantities of the commodity, the dynamic display being
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`aligned with a static display ofprices corresponding thereto, wherein the static display of
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`prices does not move in response to a change in the inside market;
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`displaying an order entry region aligned with the static display prices comprising
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`a plurality of areas for receiving commands from the user input devices to send trade
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`orders, each area corresponding to a price ofthe static display ofprices; and
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`selecting a particular area in the order entry region through single action of the
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`user input device with a pointer of the user input device positioned over the particular
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`

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`area to set a plurality of additional parameters for the trade order and send the trade
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`order to the electronic exchange.
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`Claims 2, 20-29, 53, and 55-56 depend directly from Claim 1. Claims 3-7 and 50 depend
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`from Claim 2, and Claim 54 depends from Claim 53.
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`2.
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`Claim 8 and its Dependent Claims
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`Claim 8 is directed to an article of manufacture, namely a computer readable medium
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`having four program codes.
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`Claim 8 recites:
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`A computer readable medium having program code recorded thereon, for execution on a
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`computer having a graphical user interface and a user input device, to place a trade order for a
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`commodity on an electronic exchange having an inside market with a highest bid price and a
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`lowest ask price, comprising.‘
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`a first program code for setting a preset parameterfor the trade order;
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`a second program code displaying market depth of a commodity,
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`through a
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`dynamic display of a plurality of bids and a plurality of asks in the market for the
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`commodity, including the bid and ask quantities of the commodity, aligned with a static
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`display of prices corresponding thereto, wherein the static display of prices does not
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`move in response to a change in the inside market;
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`a third program code for displaying an order entry region comprising a plurality
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`of areas for receiving commands from the user input device to send trade orders, aligned
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`with the static display ofprices, each area corresponding to a price of the static display
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`ofprices; and
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`a fourth program code for receiving a command as a result of a selection of a
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`particular area in the order entry region by a single action of the user input device with a
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`

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`pointer of the user input device positioned over the particular area, to set a plurality of
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`additional parameters for the trade order and send the trade order to the electronic
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`exchange.
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`The article claimed — computer readable medium — is in a Beauregard form2 and has four
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`functional — but no structural — limitations:
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`(1) code for setting a preset parameter; (2) code for
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`displaying market depth; (3) code for displaying an order entry region; and (4) code for receiving
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`an order command.
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`Claims 9 and 30-39 depend directly from Claim 8; Claims l0-l2 and 51 depend from
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`Claim 9; and Claim 13 depends from Claim 12.
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`3.
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`Claim 14 and its Dependent Claims
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`Claim 14 is also directed to an article of manufacture, namely a client system for placing
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`a trade order. The claimed client system has four constituent structural parts, namely (1) a
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`parameter setting component; (2) a display device; (3) a user input device; and (4) a trade order
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`sending component.
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`Claim 14 recites:
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`A client system for 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, the system comprising.‘
`
`a parameter setting componentfor setting a preset parameterfor the trade order;
`
`a display device for displaying market depth of a commodity, through a dynamic
`
`display of a plurality of bids and a plurality of asks in the market for the commodity,
`
`including the bid and ask quantities of the commodity, aligned with a static display of
`
`prices corresponding thereto, wherein the static display ofprices does not move when the
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`2 In re Beauregard; 53 F.3d l583, 35 U.S.P.Q.2d l383 (Fed. Cir. l995).
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`

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`inside market changes, and for displaying an order entry region aligned with the static
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`display ofprices, comprising a plurality of areas for receiving commands to send trade
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`orders, each area corresponding to a price ofthe static display ofprices;
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`a user input device for positioning a pointer thereof over an area in the order
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`entry region; and
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`a trade order sending component for receiving a command as a result of a
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`selection of the area in the order entry region by a single action of the user input device
`
`with a pointer of the user input device positioned over the area,
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`to set a plurality of
`
`additional parameters for the trade order and send the trade order to the electronic
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`exchange.
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`Claims 15 and 40-49 depend directly from Claim 14; Claims 16-18 and 52 depend
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`directly from Claim 15; and Claim 19 depends directly from Claim 18.
`
`B.
`
`Summary of the Prosecution History of the ’132 Patent
`
`The underlying ’692 application that matured into the ’132 patent was filed on June 9,
`
`2000, and claimed priority from a provisional application dated March 2, 2000 (“March2
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`Provisional”). On August 21, 2000, the applicants filed a Petition to Make Special which was
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`granted on April 27, 2001. The Examiner issued an Office Action on June 8, 2001. Among
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`other things,
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`the June 8, 2001 Office Action indicates that
`
`in response to a restriction
`
`requirement,
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`the applicants elected to prosecute claims 22-40. On October 11, 2001,
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`the
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`applicants filed a response and amendment to the June 8, 2001 Office Action. The Examiner
`
`then issued Notice of Allowability, which was received by the applicants on July 31, 2002.
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`Thereafter, on November 12, 2002,
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`the applicants
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`submitted a Request
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`for Continued
`
`Examination under 37 C.F.R. § 1.114 seeking consideration of some previously undisclosed
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`prior art references. During continued examination, the applicants submitted a supplemental
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`

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`amendment on March 21, 2003. A second Notice of Allowability was mailed on February 10,
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`2004, and the ’692 application issued as the ’ l32 patent on August 3, 2004.
`
`1.
`
`The combination of a “dynamic display” of bids and asks, and a
`“static display” of prices
`
`In the Petition to Make Special dated August 2l, 2000, the applicants stated that the
`
`combination of the dynamic display of bids and asks with a static display of prices was novel and
`
`rendered the invention patentable over the prior art references. The Petition to Make Special
`
`stated, for example, when distinguishing the alleged invention over the prior art reference:
`
`“[t]here being no static display of prices, the references also do not disclose that the pluralities of
`
`bids and asks are dynamically displayed in alignment with the prices corresponding thereto.”
`
`See Petition to Make Special of August 2l, 2000 at 5.
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`Then again, on October 9, 2001, in response to the June 8, 2001 Office Action rejecting
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`certain claims as anticipated under 35 U.S.C. § l02(e), applicants stated that the identified
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`anticipatory reference “did not contain a dynamic display of bids or asks in alignment with a
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`static display of prices corresponding thereto.”
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`’l32 prosecution history, Amendment of
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`October 9, 2001 at 16.
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`After receiving a number of communications from applicants’ counsel, the Examiner
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`accepted applicants’ statements that the combination of a static price display and a dynamic
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`display of bids and asks made their invention patentable.
`
`See, e.g., Emails between Steve
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`Borsand and Examiner Weisberger, attached to the August ll, 2006 “Affidavit” in the ’l32
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`patent image file wrapper. In the Notice of Allowance, the Examiner stated:
`
`the prior art fails to teach a method of placing a trade order, computer readable
`medium with instructions for placing a trade order, and/or a client system for
`placing a trade order comprising a dynamic display and a static display.
`L116
`static display, directed to the commodity price, does not change.
`In contrast, the
`values of the bid/ask,
`reflecting the market depth for the commodity, are
`dflamically displayed and are aligped with the corresponding static price values.
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`

`
`These features in combination with the claim features of claims 22, 29 and/or 35
`render the claims allowable.
`
`Examiner’s Amendment of July 3 l, 2002 (emphasis added).
`
`Thus,
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`the ’l32 patent was allowed over the prior art on grounds that the claimed
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`invention allegedly possessed the combination of a dynamic display of bid/ask values that are
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`aligned with the corresponding static price values in the static display that “does not change.”
`
`Id.3
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`2.
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`Setting the pre-set order parameters was not included within the
`definition of “single action.”
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`The specification of the ’ l32 patent states with respect to sending a trade order that “any
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`action by a user within a short period of time, whether comprising one or more clicks of a mouse
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`button or other input device, is considered a single action of the user for the purposes of the
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`present invention.” ’l32 patent, Col. 4, lines l4-l9. This “single action,” as made clear by the
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`prosecution history, is a distinct action from the setting of any “pre-set” parameters.
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`As stated in TT’s Petition to Make Special, TT stated:
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`[t]rade orders of the commodity are initiated through a single action of a user
`input device with a pointer of the user input device positioned over an area in the
`dynamic displays of bids and asks. The contents of the trade order are based in
`part upon the preset parameters and the position of the pointer at the time of the
`single action.
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`Petition to Make Special at 5.
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`3.
`
`Reexamination No. 90/008,576
`
`A complete third party Request for Reexamination of the ’ 132 patent was filed on June 6,
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`2006 by attorney J. L. Katz (hereinafter “the ‘8756 Reexamination”).
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`This Request
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`for
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`The broadest reasonable construction of “does not change” must recognize that the price axis does change
`3
`under some circumstances. For instance, when the system is initiated at the beginning of a trading session, one of
`ordinary skill in the art would anticipate that the system of the ’l32 patent centers the price axis about the then
`current inside market. Additionally, the ’l32 patent expressly describes re-centering in response to a manual
`command. E.g., Col. 7: 46 — 48.
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`

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`Reexamination was based on certain documents published by the Tokyo Stock Exchange
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`(“TSE”) alone or in combination with Friesen (Exhibit B) and/or the Amazon.com one click
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`patent. Reexamination was ordered on August 1, 2007.
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`While the patent owner did not submit a “Patent Owner’s Statement,” the patent owner
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`did submit to the PTO certain information and materials. However, the patent owner did not
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`provide the PTO with any statement(s) as to the pertinence or relevance of any one or more of
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`these submitted materials. The patentability of the claims of the’132 patent confirmed.
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`In
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`particular, the Examiner stated:
`
`“TSE (Orientation) A and TSE (Operation) B clearly teach that the display of
`prices is automatically updated every three seconds so as to keep the ‘center
`price’ in the middle of the screen. This teaching is directly counter to the static
`display of U.S. Patent No. 6, 772,132, which uses the static display of prices so
`that the user does not accidentally place an order at the unintended price .
`.
`. .”
`
`Notice of Intent to Issue Ex parte Reexamination Certificate at 2 (Jan. 16, 2008).
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`Because there was no rejection or any other written consideration of any of the references
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`submitted during the ’85 76 Reexamination, those references can support a finding that there is a
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`substantial new question of patentability.
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`In re Swanson, 540 F.3d 1368, 88 U.S.P.Q.2d 1196
`
`(Fed. Cir. 2008).
`
`C.
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`Construction of the Claims
`
`In reexamination, as with all proceedings before the PTO, the terms and phrases of a
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`claim are given their broadest reasonable construction. See, In re American Academy 0fScz'ence
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`Tech Center, 367 F.3d 1359 (Fed. Cir. 2004) (“During examination, ‘claims .
`
`.
`
`. are to be given
`
`their broadest reasonable interpretation ...”’ quoting In re Bond, 910 F.2d 831, 833 (Fed. Cir.
`
`1990)).
`
`Giving the terms and phrases of the claims of the ’ 132 patent their broadest reasonable
`
`construction:
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`

`
`Claim 1 broadly encompasses methods4 of:
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`(1) setting a pre-set parameter; (2) displaying
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`market depth; (3) displaying an order entry region; and (4) selecting an area of the order entry
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`region.
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`Claim 8 broadly encompasses an article of manufacture having four program codes
`
`identified only by their functions. Because claim 8 is directed to an article of manufacture — a
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`computer readable medium having program code recorded thereon, only structural or means-
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`plus-function limitations in this claim can define can define subject matter that is patentable over
`
`the prior art. E.g., Haliburton Oil Well Cementing Co. v. Walker, 329 U.S. l (l946); see also,
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`Ex Parte Miyazaki, 89 U.S.P.Q.2d l207, l2l6-l7 (Bd. Pat. App. & Int. 2008) (precedential).
`
`In
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`short, the patentability of an article of manufacture is determined based upon whether the
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`structural elements — and not the prospective use — of the claim satisfy the requirements for
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`patentability. Ansonia Brass & Copper Co. v. Elec. Supply Co., 144 U.S. ll, l8 (l892) (“[T]he
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`application of an old process or machine to a similar or analogous subject, with no change in the
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`manner of application and no result substantially distinct in its nature, will not sustain a patent
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`even if the new form of result had not before been contemplated.”)
`
`The Requestor also notes that “a computer readable medium having program code
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`recorded thereon” encompasses “paper or another suitable medium upon which the program is
`
`printed, as the program can be electronically captured Via for instance optical scanning of the
`
`paper or other medium, then compiled, interpreted or otherwise processed in a suitable manner
`
`.
`
`. ..” Ex parte Barber, No. 2007-1536 at 4 (BPAI October 10, 2007) (emphasis added), see also
`
`page 13.
`
`4 The Requestor notes that the language of the preamble does not normally form a claim limitation. E.g., Intirtool
`Ltd. v. Texar Corp. d/b/a ToolPr0 Inc., 369 F.3d l289 (Fed. Cir. 2004).
`
`10
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`

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`Claim 14 is another article of manufacture claim. Again, only structural — or means-plus-
`
`function — limitations can define can define subject matter that is patentable over the prior art.5
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`In this context, Claim 14 broadly encompasses an article of manufacture having: (1) a parameter
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`setting component; (2) a display device; (3) a user input device; and (4) a trade order sending
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`component. Moreover, because Claim 14 is directed to an article of manufacture, any intended
`
`use, or alleged property, of the article is ignored in determining the patentability of such a claim.
`
`E.g., In re Wilder, 429 F.2d 447, 1665 U.S.P.Q. 545 (C.C.P.A. 1970); Titanium Metals Corp. v.
`
`Banner, 778 F.2d 775, 227 U.S.P.Q. 773 (Fed. Cir. 1985).6
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`D.
`
`Newly Cited Prior Art
`
`The Requestor begins by noting that
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`the ’132 patent matured from a U.S. patent
`
`application filed June 9, 2000, which claims priority fiom a provisional application filed
`
`March 2, 2000. While the Requestor, for various reasons, does not believe that the claims of the
`
`’132 patent are entitled to the benefit of the March 2, 2000 filing date of the provisional
`
`application, for the purpose of this request, the Requestor will, nevertheless, suppose that the
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`5 There is “a judicially created ‘dead zone’ for claims using purely functional language to define a structural
`component.” Sanada v. Reynolds, 67 U.S.P.Q.2d 1459 (Bd. Pat. App. & Int. 2003) (unpublished) citing Halliburton
`Oil Well Cementing Co. v. Walker, 329 U.S. 1, 71 U.S.P.Q. 175 (1946).
`
`6 See Also Manual of Patent Examining Procedures, 2114 (E8r8) at 2100-53 which states that:
`
`A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be
`employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art
`apparatus teaches all the structural limitations of the claim. Ex parte Maslzam, 2 USPQ2d 1647 (Bd. Pat.
`App. & Inter. 1987) (The preamble of claim 1 recited that the apparatus was “for mixing flowing
`developer material” and the body of the claim recited “means for mixing ..., said mixing means being
`stationary and completely submerged in the developer material”. The claim was rejected over a reference
`which taught all the structural limitations of the claim for the intended use of mixing flowing developer.
`However, the mixer was only partially submerged in the developer material. The Board held that the
`amount of submersion is immaterial to the structure of the mixer and thus the claim was properly
`rejected.).
`
`11
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`

`
`“Critical Date” for prior art relevant to the claims of the ’ 132 patent, under 35 U.S.C. §§ 102(b)
`
`and 103(a) is the earlier date, namely, March 2, 1999.7
`
`If a prior patent or publication described the claim subject matter, either expressly or
`
`inherently, before the Critical Date, then a claim reciting such subject matter is invalid as
`
`anticipated. “A person shall be entitled to a patent unless .
`
`.
`
`. the invention was patented or
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`described in a printed publication in this or a foreign country or in public use or on sale in this
`
`country, more than one year prior to the date of the application for patent in the United States
`
`....” 35 U.S.C. § 102(b).
`
`Furthermore, a patent will not be issued “if the differences between the subject matter
`
`sought to be patented and the prior art are such that the subject matter as a whole would have
`
`been obvious at the time the invention was made to a person having ordinary skill in the art to
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`which said subject matter pertains.” 35 U.S.C. § 103(a).
`
`If the subject matter of the claims of
`
`the ’132 patent would have been obvious to one of ordinary skill in the relevant art before
`
`March 2, 1999, the claims are invalid as obvious.
`
`The written record of the ’132 patent, as well as that of the ’8576 Reexamination,
`
`contains no consideration by any Examiner of whether the prior art, as currently presented and
`
`discussed, renders the claimed subject matter anticipated or obvious in view of the following art:
`
`7 An application is not entitled to the benefit of the filing date of a prior provisional application where the prior
`provisional application does not need each ofthe requirements of 35 U.S.C. § 112, 11 1. 35 U.S.C. § 119(e)(1) (“An
`application for patent filed under section 111(a) .
`.
`. of this title for an invention disclosed in the manner provided by
`the first paragraph of section 112 of this title in a provisional application filed under section 111(b) of this title .
`.
`.
`shall have the same effect .
`. ..”).
`
`35 U.S.C. § 112, 11 1 mandates that a U.S. patent application contain a “written description” of the subject matter
`latter claimed. Ariad Pharmaceuticals Inc. v. Eli Lilly & C0., 598 F.3d 1336, 94 U.S.P.Q.2d 1161 (Fed. Cir. 2010).
`
`The Requestor respectfully submits that the prior provisional application, Serial No. 60/186,322, describes a single
`click for placing an order, but does not describe the generic “single action of the user input device” recited in
`Claims 1, 8, and 14. Consequently, the Requestor respectfully submits that the ’692 application is not entitled to an
`effective filing date before the actual filing date of June 9, 2000.
`
`12
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`

`
`l) U.S. Patent Publication No. US 2003-0097325 Al to Friesen
`(“Friesen”), attached as Exhibit B (and U.S. Patent No.
`7,212,999 to Friesen which matured from the Friesen
`application, exhibit B l )8;
`
`2) U.S. Patent No. 5,297,031 to Gutterrnan et al (“Gutterman”),
`attached as Exhibit C;
`
`3) LIFFE CONNECT API User Manual (“LIFFE CONNECT”),
`attached as Exhibit D; and
`
`4) Swiss Exchange SWX TS User Manual (“SWX Manual”),
`attached as Exhibit E.
`
`The Friesen publication was not cited to, or by, the Examiner during the prosecution of
`
`the ’692 application. Though the PCT publication that corresponds to the Friesen publication
`
`was cited, the Friesen PCT publication is not prior art under § l02(e). The Friesen publication is,
`
`however, prior art under § l02(e). Thus, the teachings of the Friesen publication of a graphical
`
`user interface having a dynamic display of a market in a commodity in which a trade order is
`
`placed by a single action of a user input device was not considered. See e.g., Fig. 3b of the
`
`Friesen publication. During the ’8756 Reexamination, the Friesen publication was cited only as
`
`a secondary reference; the Central Reexamination Unit never considered or analyzed the above
`
`referenced teachings of the Friesen publication. Further, the Friesen publication was @ applied
`
`in any rejection of the claims, nor discussed on the record during either the prosecution of
`
`the’692 application, or that of the ’8756 Reexamination.
`
`The Gutterrnan patent was cited by the patent owner in an information disclosure
`
`statement
`
`in the original examination. Although the Examiner initialed the information
`
`disclosure statement, no evidence exists that the Examiner considered any of the technical
`
`teachings of the Gutterrnan patent to a degree greater than documents are generally considered
`
`during a search of Office file records. The Gutterrnan patent teaches a client system for placing a
`
`8 Friesen and the patent which matured from Friesen are used interchangeably herein.
`
`l3
`
`

`
`trade order having a parameter setting component, a display device, a user input device, and a
`
`trade order sending component,
`
`z'.e.,
`
`the subject matter of Claim 8.
`
`E.g., col. 7: 19-27.
`
`Furthermore, the Gutterrnan patent was Q applied in any rejection of the claims, or discussed
`
`on the record during either the prosecution of the ’692 application, or that of the ’8756
`
`Reexamination.
`
`The LIFFE CONNECT publication was Q cited to, or by, the Examiner during the
`
`prosecution of the ’692 application. Thus, the teachings of the LIFFE CONNECT publication of
`
`a graphical user interface having a dynamic display of a market in a commodity were not
`
`considered.
`
`See e.g., LIFFE CONNECT publication at F-65.
`
`The LIFFE CONNECT
`
`publication was cited in an information disclosure statement during the’8756 Reexamination, but
`
`the Central Reexamination Unit never considered the above-referenced teachings of the LIFFE
`
`CONNECT publication. Furthermore, the LIFFE CONNECT publication was @ applied in any
`
`rejection of the claims, or discussed on the record during either the prosecution of the ’692
`
`application, or that of the ’8756 Reexamination.
`
`The SWX Manual publication was not cited to, or by,
`
`the Examiner during the
`
`prosecution of the ’692 application. Thus, the teachings of the SWX Manual publication of a
`
`graphical user interface having a dynamic display of a market in a commodity in which a trade
`
`order is placed by the use of a single action of a user input device was not considered. See e.g.,
`
`SWX Manual publication at 6-14. The SWX Manual publication was cited in an information
`
`disclosure statement during the ’8756 Reexamination, but the Central Reexamination Unit never
`
`considered the above-referenced teachings of the SWX Manual publication. Furthermore, the
`
`SWX Manual publication was Q applied in any rejection of the claims, or discussed on the
`
`record during either the prosecution of the ’692 application, or that of the ’8756 Reexamination.
`
`l4
`
`

`
`The Requestor respectfully submits that, with the exception of Friesen, the above-listed
`
`art was publicly accessible before March 2, 1999, and taught, or suggested, the subject matter of
`
`Claims 1-2, 8, 14, 20, 22-23, 27-28, 30, 32-33, 37-38, 40, 42-43, and 47-48 of the ’l32 patent.
`
`In addition, as discussed fully below, Friesen, while not publicly accessible before March 2,
`
`1999, is prior art under 35 U.S.C. § l02(e), and also taught or suggested the subject matter of
`
`Claims 1-2, 8, 14, 20, 22-23, 25, 27-28, 30, 32-33, 37-38, 40, 42-43, 47-48, and 53 of the ’l32
`
`patent.
`
`Indeed, the Requestor submits that the above-listed art, analyzed below, alone or in
`
`combination, anticipated, or at least rendered the subject matter of Claims l-2, 8, l4, 20, 22-23,
`
`25, 27-28, 30, 32-33, 37-38, 40, 42-43, 47-48, and 53 obvious to one of ordinary skill in the
`
`relevant art.
`
`In addition, the above-listed references have never been fully considered by the PTO with
`
`respect to the ’l32 patent and thus raise a substantial new question of patentability. Nothing
`
`prevents these references from now being the basis of, and raising, a substantial new question of
`
`patentability.
`
`In In re Swanson, the Federal Circuit held that despite the fact the Examiner expressly
`
`cited the Deutsch et al. patent as a secondary reference in an obviousness rejection, the Deutsch
`
`et al. patent when subsequently submitted as part of a Request for Reexamination, raised a
`
`substantial new question of patentability sufficient to declare a reexamination (and rejection of
`
`claims) ofthe Swanson Patent. 540 F.3d 1368, 1381, 88 U.S.P.Q.2d ll96 (Fed. Cir. 2008). This
`
`substantial new question of patentability existed despite the fact that the Federal Circuit had
`
`previously affirmed a district court decision that held that the Deutsch et al. patent did not render
`
`the Swanson Patent invalid. Id. at l378.
`
`l5
`
`

`
`In marked contrast
`
`to the facts in Swanson, during the initial examination of the
`
`application that matured into the ’132 patent, as well as during the prior reexamination,
`
`Gutterrnan was never expressly relied upon to reject any claim as set forth below. The same is
`
`true for the Friesen, LIFFE CONNECT, and SWX references during the previous reexamination
`
`ofthe ’ 132 patent.
`
`In sum, the written record of the ’ 132 patent is free of any consideration of whether any
`
`of the above cited references either (1) anticipate the claimed subject matter or (2) render it
`
`obvious in the manner described below. As a result, and at a minimum, the issue of whether any
`
`of the above-noted references renders any claim of the ’132 patent obvious is a substantial new
`
`question of patentability. Thus, the previously cited references, relied upon and applied herein,
`
`raise substantial new questions of patentability and reexamination should be Ordered.
`
`E.
`
`Basis for Substantial New Questions of Patentability
`
`The claims of the ’ 132 patent do not patentably distinguish the alleged invention over the
`
`above-noted, newly cited references, alone or in combination.
`
`Invalidity for lack of novelty under 35 U.S.C. § 102 requires that each and every element
`
`of the claimed invention be disclosed expressly or inherently in a single prior art reference. See,
`
`e.g., In re Paulson, 30 F.3d 1475, 1478-79, 31 U.S.P.Q.2d 1671 (Fed. Cir. 1994). With respect
`
`to invalidity under 35 U.S.C. § 103, the Supreme Court identified three (3) factors that must be
`
`addressed when determining whether or not an item is unpatenable on account of obviousness.
`
`Under § 103, [1] the scope and content of the prior art are to be determined; [2]
`differences between the prior art and the claims at issue are to be ascertained; and
`[3]
`the level of ordinary skill
`in the pertinent art resolved. Against
`this
`background,
`the obviousness or nonobviousness of the subject matter
`is
`determined.
`
`Graham v. John Deere C0., 383 U.S. 1, 17, 148 U.S.P.Q. 459 (1966).
`
`16
`
`

`
`The Supreme Court reaffirrned the Graham analysis in KSR v. Teleflex, 550 U.S. 398, 82
`
`U.S.P.Q.2d 1385 (2007). As stated by the Supreme Court, “[t]he combination of familiar
`
`elements according to know methods is likely to be obvious when it does no more than yield
`
`predictable results. Id. at 416.
`
`Based on this review of the Graham factors, it is clear that the prior art taught, or at least
`
`suggested, the subject matter of claims 1-2, 8, 14, 20, 22-23, 25, 27-28, 30, 32-33, 37-38, 40, 42-
`
`43, 47-48, and 53 prior to the Critical Date. Consequently, the PTO must, at a minimum, find
`
`that the subject matter of these claims was obvious to one of ordinary skill at the time of its
`
`alleged invention. Therefore, the PTO must order reexamination and reject claims l-2, 8, l4, 20,
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`22-23, 25, 27-28, 30, 32-33, 37-38, 40, 42-43, 47-48, and 53 ofthe ’l32 patent.
`
`1.
`
`Friesen
`
`The Requestor notes that Friesen published on May 22, 2003 based upon U.S. Patent
`
`Application No. 09/289,550 (the “’550 Application”)
`
`filed on April 9, 1999.
`
`The ’550
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`Application matured into U.S. Patent No. 7,212,999 (the “’999 patent”) on Mayl, 2007.
`
`Because April 9,
`
`l999 is before any filing date to which any application for the ’l32 patent
`
`might be entitled, Friesen is prior art to the above-identified patent under 35 U.S.C. § l02(e).
`
`Unlike the PCT publication WO 00/62187 which is listed on the face of the ’l32 patent,
`
`WO 00/62187 does not qualify to be used as prior art whereas Friesen can.9 That difference in
`
`whether the reference can be prior art makes Friesen non-cumulative.
`
`PCT publication WO 00/62187 published on October 19, 2000, with an International
`
`Filing Date of April 7, 2000, and a U.S. priority filing date of April 9, l999. Because the filing
`
`date of this International Patent Application was prior to November 29, 2000, this reference
`
`9 The Requestor notes the drawings in the published PCT application differ from the drawings in the published U.S.
`application.
`
`l7
`
`

`
`cannot be prior art under § l02(e). U.S. Patent
`
`law limits the prior art effect of certain
`
`International Patent Applications. Specifically, all International Patent Applications filed prior
`
`to November 29, 2000, are not prior art under