IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In re Appln. of:
`
`Patent No.:
`Reexaminatibn
`Control No.:
`
`Filed:
`
`REQUEST FOR EX P~~--
`REEXAMINATION 0\
`6,772,132
`
`90/008,576
`August 3, 2004
`
`Attorne Docket No:
`
`95549/99997
`
`Customer Serivce Window
`Central Reexamination Unit
`Randolph Building, Lobby Level
`401 Dulany Street
`Alexandria, VA 22314
`
`Sir:
`Attached Is/are:
`181
`Transmittal Letter (in dup); Response to decision Sua Sponte vacating Ex Parte reexamination filing date,
`including a Corrected Request For Ex Parte Reexamination; Copy of the patent to be reexamined, U.S. Pat
`No. 6,772,132; Copy of every patent or printed publication relied upon listed below and on Form PT0-1449;
`Form PT0-1449; Corrected Detailed Reexamination Request (including a color figure on p. 183).
`Fee calculation:
`181
`No additional fee Is required.
`0
`Small Entity.
`0
`An extension fee in an amount of$ __ for a __ -month extensio'n of time under 37 C.F.R. § 1.136(a).
`0
`A petition or processing fee in an amount of$ __ under 37 C.F.R. § 1.17(__).
`0
`An additional filing fee has been calculated as shown below:
`
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`
`Not a Small Entity _
`
`Claims Remaining
`After Amendment
`
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`Previously Paid For Extra
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`Rate
`
`Add'l Fee
`
`Total
`
`lndep.
`
`Minus
`Minus
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`First PresentaUon of Multiple Dep. Claim
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`x$25=
`X 100=
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`+$180=
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`Add'l Fee
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`or Rate
`x$50=
`X $200=
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`+ $360=
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`Fee payment:
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`Please charge Deposit Account No. 23-1925 in the amount of$
`for this purpose.
`(Form PT0-2036 is attached).
`Payment by credit card in the amount of$- -.-
`The Director is hereby authorized to charge payment of any additional filing fees required under 37 CFR § 1.16
`and any patent application processing fees under 37 CFR § 1.17 associated with this paper (including any
`extension fee required to ensure that this paper is timely filed), or to credit any overpayment, to Deposit
`Account No. 23-1925.
`
`. A copy of this Transmittal is enclosed
`
`BRIN'KS
`H ·o F·E: R
`GILSON.·
`~
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`Page 1 of185
`
`BRINKS HOFER GILSON & LIONE
`NBC Tower - Suite 3600, 455 N. Cltyfront Plaza Drive, Chicago, IL 60611-5599
`
`TRADING TECH EXHffiiT 2043
`ffiG ET AL. v. TRADING TECH
`CBM2015-00182
`
`

`
`. .
`
`[81
`
`[81
`
`[81
`
`Concurrent Proceedings
`
`[81 The patent is currently the subject of the following concurrent proceeding(s);
`[81 Copending litigation styled:
`
`Trading Tech. lntn'llnc. v. eSpeed. Inc .. Case No. 04 C 5312.
`United States District Court. Northern District of Illinois. Eastern Division
`
`Correspondence Address
`
`The name and address of the person requesting reexamination is:
`James L. Katz (Reg. No. 42.711)
`Brinks Hofer Gilson & Uone. NBC Tower. Suite 3600
`455 North Citvfront Plaza Drive. Chicago. Illinois 60611 (312) 321-4200
`
`Correspondence Address: Direct all communication about the reexamination to:
`Customer Number: 757
`
`Certificate of Service
`
`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 served and the date of service are:
`Foley & Lardner. Attn: William T. Ellis. Esq.
`Washington Harbour. 3000 K Street NW. Suite 500
`Washington. DC 2007-5109
`Date of Service: May 25. 2007
`
`BRINKS HOFER GILSON & LIONE
`Page 2 of 185 NBC Tower - Suite 3600, 455 N. Cltyfront Plaza Drive, Chicago, IL 60611-5599
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`...
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`TAB
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`Page 3 of185
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`REEXAMINATION CONTROL NO. 90/008,576
`
`BHGL REF. NO. 95549/99997
`
`DETAILED REQUEST- CORRECTED
`
`This is a corrected request for Ex Parte Reexamination of Kemp, II et al. U.S. Patent
`
`6,772,132, issued August3, 2004, hereinafter the "Kemp '132 patent".
`
`RESPONSE TO DECISION Sl/A SPONTEV ACATING EX PARTE
`
`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, II et al. U.S. Patent 6,772,132, issued August 3, 2004, is provided.
`
`The corrected request complies with 37 CFR 1.51 O(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 A venue, 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
`
`b~lieved to be the current Patent Owner) is therefore Trading Technologies International, Inc.
`
`Page 4 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
`
`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 '132 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 REQUESTER
`
`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 TSE0000000609-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"); 1
`
`1 All 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.
`
`2
`
`Page 5 of 185
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`

`
`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. 5,960,41 1, 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 PT0-1449 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 '132 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 '132 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 of Opposition to a European Patent filed against European Patent
`No. I 319 211 by DEUTSCHE BORSE AG on January 12. 2006 (TAB A). The TSE Operation Procedures reference was cited
`in a Notice of Opposition to a European Patent tiled against European Patent No. I 319 211 by Eccoware Limited on January 13,
`2006 (TAB B). European Patent No. I 319 211 was filed based on a PCT Application, Publication No. WO 01/65403, which
`claims priority to U.S. Provisional Application No. 60/186,322 to which the Kemp' 132 patent also claims priority. These
`Opposition documents, as well as several other Oppositions and supporting documentation filed against European Patent No.
`I 319 211, 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 '132
`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. I 319 211 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. Intn'l, Inc. v.
`eSpeed, Inc. Case No. 04 C 5312, United States District Court of Illinois, Eastern Division (TAB H) (obtained from the file
`history of EP I 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 TSE0000000647-
`TSE000000081 0, 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).
`
`3
`
`Page 6 of 185
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`

`
`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. § 102(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 QUESTION 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.
`
`4
`
`Page 7 of 185
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`

`
`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 '132 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
`
`5
`
`Page 8 of 185
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`

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`Corrected Request for Ex Parte Re-Examination ofU.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
`
`I . 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 of Windows.
`*
`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. lntn'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 construction is consistent with the disclosure of the references relied upon herein.
`~ 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 '132 patent, Col. 4, lines 58-60.
`
`6
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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
`Reexamination Control No. 90/008,576
`
`95549/99997
`
`Kemp '132 patent
`Claim I
`
`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;6
`
`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
`displaying market depth of the commodity, through a
`dynamic display7 of a plurality of bids and a plurality where bid order quantities at various prices are displayed in
`of asks8 in the market for the commodity, including
`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 bid and ask quantities of the commodity,
`
`at least a portion of
`
`the dynamic display being
`
`aligned with a static displa/ of prices 10
`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' 132 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 cell--i.e. in the BidQ or AskQ column, he will enter an order in the market. The parameters of the order depend
`on which mouse button he clicks and what preset values he set." See the Kemp' 132 patent, Col. 9, lines 50-60. For reference
`purposes herein, it is noted that the United States District Court, Northern District of Illinois, Eastern 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, 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 (f AB 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 further 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 till in one or more fields of data and
`then drag[] the cursor to 'send' to place an order.'' (TAB G) However, this argument is not applicable to the current re(cid:173)
`examination request as the limitations of the Kemp '132 patent differ from those of the European patent at issue, i.e. the subject
`limitation ofTrading Technologies' argument is not present in the claims of the Kemp '132 patent.
`
`7
`
`Page 10 of 185
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`

`
`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 11
`
`aligned with the static display prices
`
`comprising a plurality 12 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;
`
`and
`
`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.
`
`From the given example at TSE A at 616, 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
`construction is consistent with the disclosure of the references relied upon herein.
`8 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. lntn'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 21, 2007 (TAB E).
`This construction is consistent with the disclosure ofthe 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 to the EP Opposition, Annex B, pages 6-7 (TAB G). However, Trading Technologies' argument 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 8, page 7 (TAB G),
`citing TSE Cat page 7-25) and that "when scrolling is performed the board information still updates automatically," (see Trading
`Technologies Response to the EP Opposition, Annex 8, page 7 (TAB G), citing TSE C at page 7-26 ) do not satisfy these
`limitations.
`10 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 injunction, initially construed the phrase "static display of prices" to mean "a display of
`prices which has price levels or rows that do not normally change positions in response to new market information." See Trading
`Tech. lntn'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 9, 2005 (TAB C). In a later ruling directed to
`construction of the claims, the court further construed this phrase to mean "a display of prices comprising price levels that do not
`change positions unless a manual re-centering command is received." See Trading Technologies Litigation, Memorandum
`Opinion and Order, October 31. 2006 (TAB D). This construction is consistent with the disclosure of the references relied upon
`herein.
`11 For reference purposes herein. it is noted that the United States District Court, Northern District of Illinois, Eastern Division
`construed the phrase "order entry region" to mean "an area comprising a plurality of locations where users may enter commands
`
`8
`
`Page 11 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
`
`selecting
`
`a particular
`
`area in the order entry region
`
`through
`
`single action 13 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.
`
`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. See TSE A at 616
`
`From the given example at TSE A at 616, 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"
`
`2.
`
`Claim 1 Would be Deemed by the Examiner to be Obvious in View of the
`Combination of the TSE Orientation Materials and TSE Operation
`Procedures References
`Whether claim 1 of the Kemp·' 13 2 patent is patentable over the teachings of the TSE
`
`Orientation Materials and TSE Operation Procedures references is a substantial new question
`
`of patentability as the TSE Orientation Materials and TSE Operation Procedures references
`
`to send trade orders, and that each location corresponds to a price level along the common static price axis," where "price level"
`means "a level on which a designated price or price representation resides." See Trading Tech. lntn'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 construction is consistent with the disclosure of the
`references relied upon herein.
`12 For reference purposes herein, it is noted that, consistent with the accepted meaning, the United States District Court, Northern
`District of Illinois, Eastern Division construed the phrase "plurality" to mean "more than one," "at least two," and "two or more."
`See Trading Tech. lntn'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 21, 2007 (TAB E).
`13 According to the Kemp '132 patent, " ... the specification refers to a single click of a mouse as a means for user input and
`interaction with the terminal display as an example of a single aCtion of the user. While this describes a preferred mode of
`interaction, the scope of the present invention is not limited to the use of a mouse as the input device or to the click of a mouse
`button as the user's single action. Rather, any action by a user within a short period of time, whether comprising one or more
`clicks of a mouse button or other input device, is considered a single action of the user for the purposes of the present invention."
`See the Kemp '132 patent, CoL 4, lines 9-19. For reference purposes herein, it is noted that the United States District Court.
`Northern District of Illinois, Eastern Division, consistent with the specification of the Kemp '132 patent,