`Tel: 571-272-7822
`
`
`
`
`
`
`
`
`
`
`
` Paper 23
`
`
` Entered: February 24, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`
`
`IBG LLC, INTERACTIVE BROKERS LLC,
`TRADESTATION GROUP, INC., TRADESTATION SECURITIES, INC.,
`TRADESTATION TECHNOLOGIES, INC.,
`IBFX, INC., CQG, INC., and CQGT, LLC,
`Petitioner,
`
`v.
`
`TRADING TECHNOLOGIES INTERNATIONAL, INC.,
`Patent Owner.
`____________
`
`CBM 2015-00179
`Patent 7,533,056 B2
`_______________
`
`
`
`Before SALLY C. MEDLEY, MEREDITH C. PETRAVICK, and
`JEREMY M. PLENZLER, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`DECISION
`Institution of Covered Business Method Patent Review
`37 C.F.R. § 42.208
`
`
`
`
`
`
`
`Page 1 of 32
`
`TRADING TECH EXHIBIT 2108
`IBG ET AL. v. TRADING TECH
`CBM2016-00032
`
`
`
`CBM2015-00179
`Patent 7,533,056 B2
`
`
`I. INTRODUCTION
`IBG LLC, Interactive Brokers LLC, TradeStation Group, Inc.,
`TradeStation Securities, Inc., TradeStation Technologies, Inc., IBFX, Inc.,
`CQG, Inc., and CQGT, LLC, (collectively, “Petitioner”) filed a Petition
`requesting a covered business method patent review of claims 1–15 of
`U.S. Patent No. 7,533,056 B2 (Ex. 1001, “the ’056 patent”). Paper 9
`(“Pet.”). In response, Trading Technologies International, Inc. (“Patent
`Owner”) filed a Patent Owner Preliminary Response. Paper 21 (“Prelim.
`Resp.”). We have jurisdiction under 35 U.S.C. § 324, which provides that a
`post-grant review may not be instituted “unless . . . the information
`presented in the petition . . . would demonstrate that it is more likely than not
`that at least 1 of the claims challenged in the petition is unpatentable.”
`For the reasons that follow, we institute a covered business method
`patent review of claims 1–15 of the ’056 patent.
`A. Related Matters
`The ’056 patent is involved in the following lawsuit: TT v. BGC
`Partners, Inc., et al., No. 1:10-cv-00715 (N.D. Ill.). Pet. 3. In compliance
`with 37 C.F.R. § 42.302(a), Petitioner certifies that it has been sued for
`infringement of the ’056 patent. Id. Patent Owner does not challenge
`Petitioner’s certification that it has been sued for infringement of the ’056
`patent.
`
`B. The ’056 Patent
`The Specification of the ’056 patent describes a user interface for an
`electronic trading system that allows a remote trader to view trends for an
`
`
`
`2
`
`
`
`Page 2 of 32
`
`
`
`CBM2015-00179
`Patent 7,533,056 B2
`
`item, which assists the trader to anticipate demand for an item. Ex. 1001,
`2:8–26.
`
`C. Illustrative Claim
`Claim 1 of the ’056 patent is the only independent claim:
`1.
` A method of operation used by a computer for
`displaying transactional information and facilitating trading
`in a system where orders comprise a bid type or an offer
`type, the method comprising:
`
`
`
`receiving bid and offer information for a product from an
`electronic exchange, the bid and offer information
`indicating a plurality of bid orders and a plurality of offer
`orders for the product;
`
`displaying a plurality of bid indicators representing
`quantity associated with the plurality of bid orders, the
`plurality of bid indicators being displayed at locations
`corresponding to prices of the plurality of bid orders
`along a price axis;
`
`displaying a plurality of offer indicators representing
`quantity associated with the plurality of offer orders, the
`plurality of offer indicators being displayed at locations
`corresponding to prices of the plurality of offer orders
`along the price axis;
`
`receiving a user input indicating a default quantity to be
`used to determine a quantity for each of a plurality of
`orders to be placed by the user at one or more price
`levels;
`
`receiving a user input indicating a desired price for an
`order to be placed by the user, the desired price being
`specified by selection of one of a plurality of locations
`corresponding to price levels along the price axis; and
`3
`
`
`
`
`
`Page 3 of 32
`
`
`
`CBM2015-00179
`
`Patent 7,533,056 B2
`
`sending the order for the default quantity at the desired
`price to the electronic exchange.
`
`D. Asserted Grounds of Unpatentabilily
`
`Petitioner contends that claims 1—15 of the ’056 patent are
`
`unpatentable based on the following specific grounds:
`
`
`
`Challenged
`
`Claim(s)
`
`References
`
`§101
`TSE‘, Togherz, Schott3, and Cooper4
`§ 103
`Silverrpani Togher, Cooper, and
`§ 103
`
`Ho an
`
`E. Expanded Panel Request and Procedural Issues
`
`Patent Owner suggests that this decision be made by an expanded
`
`panel of administrative patent judges. Prelim. Resp. 75-77. Discretion to
`
`expand a panel rests with the Chief Judge, who, on behalf of the Director,
`
`may act to expand a panel on a suggestion from a judge or panel. AOL Inc.
`
`v. Coho Licensing LLC, Case IPR2014-00771, slip op. at 2 (PTAB Mar. 24,
`
`‘TOKYO STOCK EXCHANGE OPERATION SYSTEM DIVISION, FUTURES/OPTION
`
`PURCHASING SYSTEM TRADING TERMINAL OPERATION GUIDE (1998) (Ex.
`1004) (“TSE”).
`2 U.S. Patent No. 5,375,055, issued Dec. 20, 1994 (Ex. 1008) (“Togher”).
`3 U.S. Patent No. 5,619,631, issued Apr. 8, 1997 (Ex. 1009) (“Schott”).
`4A1an Cooper, ABOUT FACE: THE ESSENTIALS OF USER INTERFACE DESIGN,
`First Edition (1995) (Ex. 1015) (“Cooper”).
`5 U.S. Patent No. 5,136,501, issued Aug. 4, 1992 (Ex. 1010) (“Silvennan”).
`6 U.S. Patent No. 5,414,809, issued May 9, 1995 (Ex. 1011) (“Hogan”).
`4
`
`Page 4 of 32
`
`
`
`CBM2015-00179
`Patent 7,533,056 B2
`
`2015) (Paper 12) (informative). Patent Owner’s suggestion was considered
`by the Acting Chief Administrative Patent Judge, who declined to expand the
`panel.
`The parties urge us to defer to prior Board decisions in related
`covered business method patent review proceedings and decisions of district
`courts in related proceedings. Here, we do not give much, if any, deference
`to the prior Board decisions and the decisions of the district courts that we
`are directed to in determining whether to institute a covered business
`method patent review in this proceeding. The prior decisions were based on
`different patents, different claims, different parties, different evidence, and
`in the case of the district court proceedings, different standards of proof and
`different claim construction standards. Additionally, we give no
`consideration to the arguments Patent Owner presents in letters sent to the
`Director of the United States Patent and Trademark Office.
`F. Covered Business Method Patent
`A covered business method patent is “a patent that claims a method or
`corresponding apparatus for performing data processing or other operations
`used in the practice, administration, or management of a financial product or
`service, except that the term does not include patents for technological
`inventions.” Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125
`Stat. 284, 329 (2011) (“AIA”) § 18(d)(1); see 37 C.F.R. § 42.302. To
`determine whether a patent is for a technological invention, we consider
`“whether the claimed subject matter as a whole recites a technological
`feature that is novel and unobvious over the prior art; and solves a technical
`problem using a technical solution.” 37 C.F.R. § 42.301(b). For purposes of
`5
`
`
`
`
`
`Page 5 of 32
`
`
`
`CBM2015-00179
`Patent 7,533,056 B2
`
`determining whether a patent is eligible for a covered business method
`patent review, the focus is on the claims. A patent need have only one claim
`directed to a covered business method to be eligible for review.
`Petitioner has shown that the ’056 patent is a patent that claims a
`method for performing data processing or other operations used in the
`practice, administration, or management of a financial product or service.
`Pet. 4–5. Claim 1, the sole independent claim, recites a method of receiving
`bid and offer information of a product from an electronic exchange,
`displaying the bid and offer information, receiving a user input indicating a
`default quantity and price for an order(s), and sending the order(s) to an
`electronic exchange. As such, claim 1 is directed to a method for
`performing data processing or other operations used in the practice,
`administration, or management of a financial service (facilitating trading in
`an electronic exchange).
`Patent Owner argues that none of the claims are directed to a method
`for performing data processing or other operations used in the practice,
`administration, or management of a financial product or service—a method
`of doing business. The claims, Patent Owner argues, are directed to features
`and functionality embodied in a graphical user interface (“GUI”) tool, and
`not in any business method or practice, directing attention to legislative
`history in support of Patent Owner’s arguments. Prelim. Resp. 8–15. We
`are not persuaded by Patent Owner’s arguments. Claim 1 is directed to “[a]
`method . . . for displaying transactional information and facilitating trading
`in a system.” (Emphasis added.) Patent Owner has not explained why a
`method of facilitating trading in a system is not a method of doing business.
`6
`
`
`
`
`
`Page 6 of 32
`
`
`
`CBM2015-00179
`Patent 7,533,056 B2
`
` Instead, Patent Owner’s general emphasis on features and functionality that
`are embodied in a GUI tool is misplaced, because such features and
`functionality are not claimed. Method claim 1 recites a method for
`displaying transactional information and facilitating trading in a system
`using a computer. Claim 1 does not recite specific hardware or software for
`performing the steps of method claim 1, or a GUI tool.
`As indicated above, even if a patent includes claims that would
`otherwise be eligible for treatment as a covered business method, review of
`the patent is precluded if the claims cover only “technological invention[s],”
`as defined by 37 C.F.R. § 42.301(b). Petitioner asserts that the ’056 patent
`claims fail to recite any technological feature that is novel and unobvious
`over the prior art, and do not solve a technical problem with a technical
`solution. Pet. 5–9. In particular, Petitioner argues that the claims recite
`trading software that is implemented using conventional computer hardware,
`servers, and networks, directing attention to a description in the ’056 patent
`that generically refers to “personal computers, terminals as part of a
`network, or any other computing device” and no specific hardware to carry
`out the invention. Id. at 6–7 (citing Ex. 1001, 4:34–36). Petitioner also
`argues that electronic trading was well known as of the filing date. Id.; Ex.
`1006.
`
`We agree with Petitioner that the claims are directed to well-
`understood, routine, and conventional steps of receiving market information,
`displaying it graphically to a trader, who uses the information to facilitate
`trading a commodity. Id.
`
`
`
`7
`
`
`
`Page 7 of 32
`
`
`
`CBM2015-00179
`Patent 7,533,056 B2
`
`
`For example, the “BACKGROUND OF THE INVENTION” section
`of the ’056 patent explains that it was well known for an exchange to record
`all transactions for a particular item and to replay or post to the individual
`traders outstanding bids with the highest values and outstanding offers with
`the lowest value, along with a quantity specified for each order, to facilitate
`trading a commodity. Ex. 1001, 1:37–41. There is no indication in the ’056
`patent that the inventors invented gathering market information, displaying it
`to a trader, and using the information to facilitate trading a commodity. The
`use of a computer to perform these functions also was known in the art at the
`time of the invention, and the ’056 patent does not claim any improvement
`of a computing device.
`Patent Owner argues that the ’056 patent is for a technological
`invention because the claims, previously allowed by the Office, are directed
`to a novel and nonobvious GUI tool that improves, and transforms, a
`computer so it can perform functions it previously could not. Prelim. Resp.
`17–18. We disagree that claim 1, for example, is directed to a novel and
`nonobvious GUI tool that improves, and transforms, a computer so it can
`perform functions it previously could not. Patent Owner’s arguments in that
`regard are conclusory, not directed to any specific language from the claims
`themselves. As explained above, claim 1 is directed to gathering market
`information, displaying it to a trader, and the trader using the information to
`facilitate trading a commodity, features that were well known at the time of
`the invention. Moreover, there is no specific computer, program, or
`processing described in the ’056 patent beyond what was known in the art at
`the time of the invention. To the extent that the Patent Owner urges us to
`8
`
`
`
`
`
`Page 8 of 32
`
`
`
`CBM2015-00179
`Patent 7,533,056 B2
`
`give deference to the decisions the Examiner made in allowing the claims
`before us, we do not, because the record before us now is quite different that
`it was before the Examiner.
`Petitioner argues that the claimed subject matter does not solve a
`technical problem using a technical solution, because the problem is a
`financial one and the solution is to rearrange available market data on a
`display. Pet. 8–9. In contrast, Patent Owner argues that the claimed subject
`matter recites a new GUI design (a new technology) that addressed the
`problem with the old GUI design, and, thus, is directed to solving a technical
`problem using a technical solution. Prelim. Resp. at 18–23.
`We agree with Petitioner that the problem noted in the Specification
`of the ’056 patent is not a technical one. The ’056 patent Specification
`highlights the problem and importance of informing a trader of certain stock
`market events so that the trader may use such information to facilitate
`trading a commodity. Ex. 1001, 2:19–26. However, informing a trader of
`certain stock market trends or events is more of a financial problem than a
`technical problem. We also are not persuaded by Patent Owner’s arguments
`that the claims are directed to solving a technical problem using a technical
`solution because Patent Owner’s arguments, in that regard are not directed to
`what is claimed.
`For all of the foregoing reasons, the subject matter of claim 1 is not a
`“technological invention” under 37 C.F.R. § 42.301(b), and the ’056 patent
`is eligible for a covered business method patent review.
`
`
`
`9
`
`
`
`Page 9 of 32
`
`
`
`CBM2015-00179
`Patent 7,533,056 B2
`
`
`II. ANALYSIS
`
`A. Claim Construction
`In a covered business method patent review, claim terms in an
`unexpired patent are given their broadest reasonable construction in light of
`the specification of the patent in which they appear. 37 C.F.R. § 42.300(b).
`See In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1278–79 (Fed. Cir.
`2015), cert. granted sub nom. Cuozzo Speed Techs., LLC v. Lee, 84
`U.S.L.W. 3218 (U.S. Jan. 15, 2016) (No. 15-446). Under the broadest
`reasonable construction standard, claim terms are given their ordinary and
`customary meaning, as would be understood by one of ordinary skill in the
`art in the context of the entire disclosure. In re Translogic Tech., Inc., 504
`F.3d 1249, 1257 (Fed. Cir. 2007). Any special definition for a claim term
`must be set forth with reasonable clarity, deliberateness, and precision. In re
`Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
`Petitioner proposes constructions for the following claim terms: “price
`axis,” “offer and bid indicators representing quantity,” “default,” “indicators,
`icons and tokens,” “receiving a user input indicating a desired price for an
`order . . . by selection of one of a plurality of locations . . . along the price
`axis,” “the desired price,” and “the default quantity working at the electronic
`exchange,” which are recited at least in claims 1, 5, and 15. Pet. 13–20. At
`this juncture, Patent Owner does not challenge Petitioner’s proposed claim
`constructions.
`We have reviewed Petitioner’s proposed constructions and determine,
`on this record, that they are consistent with the broadest reasonable
`
`
`
`10
`
`
`
`Page 10 of 32
`
`
`
`CBM2015-00179
`
`Patent 7,533,056 B2
`
`construction. For purposes of this Decision, we adopt the following claim
`
`constructions:
`
`price axis
`
`a reference line for plotting prices,
`including labeled, unlabeled, visible,
`and invisible reference lines
`
`re resentin uanti
`
`indicators
`
`indicators, icons, and tokens
`
`receiving a user input indicating a
`desired price for an order .
`.
`. by
`selection of one of a plurality of
`locations .
`.
`. along the price axis
`
`entered Value
`
`a symbol such as an alphanumeric
`character or a graphic representation
`of an item
`
`adjusting an order after it has been
`created
`
`the desired price
`
`a price that is specified for an order
`placed by user
`
`The default quantity working at the
`electronic exchange (claim 7)
`
`the unfilled portion of an order
`placed in claim 1
`
`B. 35 US. C. § 101 Asserted Ground of Unpatentabilily
`
`Petitioner contends that claims 1—15 of the ’056 patent are directed to
`
`non-statutory subject matter under 35 U.S.C. § 101. Pet. 24-38. Patent
`
`Owner disagrees. Prelim. Resp. 31-57. Upon reviewing the claims before
`
`us, Petitioner’s analysis, and Patent Owner’s arguments, we determine that
`
`11
`
`Page 11 of 32
`
`
`
`CBM2015-00179
`Patent 7,533,056 B2
`
`Petitioner has established that claims 1–15 more likely than not are directed
`to non-statutory subject matter under § 101.
`Section 101 of Title 35, United States Code, provides: “Whoever
`invents or discovers any new and useful process, machine, manufacture, or
`composition of matter, or any new and useful improvement thereof, may
`obtain a patent therefor, subject to the conditions and requirements of this
`title.”
`The Supreme Court recognizes three exceptions to these statutory
`classes: laws of nature, natural phenomena, and abstract ideas. Alice Corp.
`Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347, 2354 (2014); Mayo
`Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1293
`(2012). Although an abstract idea by itself is not patentable, a practical
`application of an abstract idea may be deserving of patent protection. Alice,
`134 S. Ct. at 2355. We must “consider the elements of each claim both
`individually and ‘as an ordered combination’ to determine whether the
`additional elements ‘transform the nature of the claim’ into a patent-eligible
`application.” Id. (citing Mayo, 132 S. Ct. at 1298, 1297). The claim must
`contain elements or a combination of elements that are “‘sufficient to ensure
`that the patent in practice amounts to significantly more than a patent upon
`the [abstract idea] itself.’” Id. (citing Mayo, 132 S. Ct. at 1294).
`Claim 1, the sole independent claim, recites in the preamble a method
`for displaying transactional information and facilitating trading in a system.
`The method steps include receiving bid and offer information of a product
`from an electronic exchange, displaying the bid and offer information,
`
`
`
`12
`
`
`
`Page 12 of 32
`
`
`
`CBM2015-00179
`Patent 7,533,056 B2
`
`receiving a user input indicating a default quantity and price for an order,
`and sending the order to the electronic exchange.
`Petitioner argues that claim 1 encompasses the abstract idea of
`graphing (or displaying) bids and offers to assist a trader to make an order.
`Pet. 27. Petitioner argues that the steps of receiving bid and offer
`information, receiving an order including a default quantity and a selected
`price, and sending the order to an exchange to be executed were well-
`understood, routine, and conventional activity that adds nothing significant
`to the abstract idea. Id. 30–31. Petitioner argues that dependent claims 2–15
`add only well-understood, routine, conventional post-solution activity to the
`abstract idea of claim 1, such as displaying a sent order (claim 5), displaying
`bids, offers, and an order with different characteristics (claim 6), and
`displaying the quantity of an order (claim 7).
`Patent Owner argues that the recitation of a price axis makes the
`claims patent eligible. Prelim. Resp. 39. We disagree. Claim 1
`recites displaying bid and offer indicators along a price axis. There is
`nothing significant about the price axis in the claim. Indeed, as
`explained above, the claims are broad and do not recite using any
`particular features or functions of a GUI tool to perform the broad
`method steps as Patent Owner asserts. We have considered, but are
`not persuaded by, Patent Owner’s arguments that claim 1 does not
`include an abstract idea. We also have considered Patent Owner’s
`arguments that the claims recite an inventive concept rooted in
`computer technology. Prelim. Resp. 46–55. We are not persuaded by
`these arguments because, again, the claims are not directed to
`13
`
`
`
`
`
`Page 13 of 32
`
`
`
`CBM2015-00179
`Patent 7,533,056 B2
`
`particular features or functions of a GUI tool as Patent Owner asserts.
`
`
`The Specification of the ’056 patent does not disclose a particular way
`for receiving market information, displaying that information, accepting a
`user’s order, or sending an order to the exchange, nor does the Specification
`provide or disclose any particular algorithms or rules for performing the
`recited functions of claim 1. All of the method steps of claim 1 are
`performed on a generic computer. Petitioner has shown that it is more likely
`than not that claim 1 is directed to the abstract idea of graphing (or
`displaying) bids and offers to assist a trader to make an order, and that the
`remaining method steps recite no additional substantive limitations so that
`the claim does not preempt the abstract idea itself.
`On this record, we also are persuaded that the recited functions of all
`of claims 2–15 are directed to insignificant post-solution activities (e.g.,
`using the data acquired and manipulating that data to generate different ways
`to display information) that add nothing to the abstract idea recited in claim
`1. In that regard, we are not persuaded by Patent Owner’s arguments that
`claims 5–7 are directed to technological GUI elements. Prelim. Resp. 57.
`Claim 5 depends directly from claim 1 and includes displaying an order icon
`at a location that corresponds to the desired price level along the price axis,
`and that the order icon indicates the user’s order at the electronic exchange.
`Claim 5 does not recite technological GUI elements, but rather recites
`conventional post-solution activity to the abstract idea of claim 1, e.g.,
`displaying a user’s sent order.
`
`
`
`14
`
`
`
`Page 14 of 32
`
`
`
`CBM2015-00179
`Patent 7,533,056 B2
`
`
`Unlike the claimed combination of elements in DDR Holdings, LLC v.
`Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014), the claimed method of the
`’056 patent combines the claim elements according to their known functions
`to achieve routine and conventional results. See DDR Holdings¸ 773 F.3d at
`1257–58. On this record, we are not persuaded that the combination of the
`claimed elements transforms the nature of the claim into a patent-eligible
`application.
`Based on the record before us, we determine that Petitioner has
`demonstrated that claims 1–15 are more likely than not patent ineligible
`under 35 U.S.C. § 101.
`
`C. Obviousness of Claims 1–15 over TSE, Togher, Schott, and Cooper
`Petitioner contends that claims 1–15 are unpatentable under 35 U.S.C.
`§ 103 over TSE, Togher, Schott, and Cooper. To support its contentions,
`Petitioner provides explanations as to how the prior art meets each claim
`limitation. Pet. 38–60. Petitioner also cites the Declaration of Kendyl A.
`Román for support. See Ex. 1032 ¶¶ 114–120.
`Patent Owner argues that Petitioner fails to establish that TSE was
`publically accessible, and, thus, prior art. Prelim. Resp. 58. Patent Owner
`also argues that if TSE is determined to be prior art, we should deny
`institution on this ground for claims 5–7 because TSE does not meet the
`“order icon” limitation for those claims. Id. at 62.
`TSE as prior art
`Petitioner argues that TSE is prior art under 35 U.S.C. § 102(a).
`Pet. 21–22. In support of its showing that TSE qualifies as prior art,
`
`
`
`15
`
`
`
`Page 15 of 32
`
`
`
`CBM2015-00179
`Patent 7,533,056 B2
`
`Petitioner relies on November 21, 2005 deposition testimony of Atsushi
`Kawashima taken during litigation between Patent Owner and a third party
`eSpeed, Inc. Ex. 1007. Patent Owner argues that Petitioner presents
`insufficient evidence to show that TSE was publically accessible, that the
`testimony of Atsushi Kawashima is not reliable, and that a jury already has
`concluded that TSE is not prior art. Prelim. Resp. 58–62. For the reasons
`that follow, we determine that, at this juncture of the proceeding, Petitioner
`has established that TSE is prior art.
`Patent Owner argues that we should give deference to a previous jury
`determination that “TSE is not prior art as of March 2, 2000.” Prelim.
`Resp. 62 (citing Ex. 2030, 11; Ex. 2032). That determination, to the extent
`that Patent Owner has shown sufficiently its relevance to this proceeding, is
`not binding on us. Petitioner was not involved in that case. Moreover,
`Petitioner need only show by a preponderance of the evidence that TSE is
`prior art, not by the higher clear and convincing standard used in district
`court proceedings. 35 U.S.C. § 326(e).
`Nor are we persuaded by Patent Owner’s argument that Mr.
`Kawashima’s testimony is not reliable. In particular, Patent Owner argues
`that Mr. Kawashima admitted that the company he worked for, the Tokyo
`Stock Exchange (TSE), “provided alleged art, including TSE documents, to
`the Japanese patent office to challenge TT’s patent in Japan” making Mr.
`Kawashima an interested witness. Id. at 61. Patent Owner does not explain
`sufficiently what it means by this or how Kawashima’s testimony supports
`the assertion. For example, we cannot discern what patent or proceeding is
`being referred to per Exhibit 1007, and Patent Owner does not direct us to
`16
`
`
`
`
`
`Page 16 of 32
`
`
`
`CBM2015-00179
`Patent 7,533,056 B2
`
`other evidence to support the assertions made. Such vague arguments that
`the company Mr. Kawashima worked for at some time submitted some prior
`art during some Japanese proceeding are insufficient to show that Mr.
`Kawashima is not a disinterested witness and that his testimony is unreliable
`for purposes of this proceeding. At this juncture of the proceeding, we will
`not disregard Mr. Kawashima’s testimony.
`We next turn to the issue of whether Petitioner has established that
`TSE is prior art under 35 U.S.C. § 102(a). Whether a document qualifies as
`a printed publication under 35 U.S.C. § 102(a) is a question of law based on
`underlying findings of fact. See In re Hall, 781 F.2d 897, 899 (Fed. Cir.
`1986). Documents qualify as prior art so long as the interested public has a
`means of accessing them. See, e.g., Hall, 781 F.2d at 899. “Accessibility
`goes to the issue of whether interested members of the relevant public could
`obtain the information if they wanted to.” Constant v. Advanced Micro-
`Devices, Inc., 848 F.2d 1560, 1569 (Fed. Cir. 1988). Moreover, “[i]f
`accessibility is proved, there is no requirement to show that particular
`members of the public actually received the information.” Id.
`TSE is entitled “Futures/Option Purchasing System Trading Terminal
`Operation Guide” of the “Tokyo Stock Exchange Operation System
`Division.” Ex. 1004, 1.7 In the middle of page 5 is the annotation “August,
`1998” above the words “Tokyo Stock Exchange Operation System
`Division.” Id. at 5. Petitioner argues that TSE is prior art under 35 U.S.C.
`§ 102(a) because it was published in August of 1998 by giving two copies to
`
`
`
`17
`
`
`
`Page 17 of 32
`
`
`
`CBM2015-00179
`Patent 7,533,056 B2
`
`each of the about 200 participants in the Tokyo Stock Exchange, who were
`free to do whatever they wanted with their copies of the publication. Pet.
`21–22 (citing Ex. 1007, 0012–33).
`In support of its arguments regarding TSE as prior art, Petitioner
`directs us to portions of Mr. Kawashima’s testimony. At the time of his
`testimony, Mr. Kawashima testified that TSE “is the current TSE futures
`options trading system terminal document, manual” that was prepared
`August of 1998 by the Tokyo Stock Exchange. Ex. 1007, 0010. He further
`testified that the purpose of the manual was that “in 1998 we replaced the
`futures options trading system and so this new manual was prepared because
`there were changes to the way the trading terminals were operating.” Id. at
`0012. Kawashima further testified that the manual was distributed to
`participants who were “securities companies for banks who are able to carry
`out futures options trading at the TSE” and that the “manual was given to
`explain those changes” made with respect to the operation of the TSE
`trading system and terminals. Id. at 0012, 0014.
`Contrary to Patent Owner’s assertions, Petitioner does not assert that
`“TSE was distributed to traders.” Prelim. Resp. 60. Rather, Petitioner
`asserts that TSE was distributed to participants in the Tokyo Stock
`Exchange. Pet. 21. Based on the evidence before us, the participants were
`securities companies for banks. The purpose of the manual was to alert the
`securities companies of changes to the way the trading terminals of the
`Tokyo Stock Exchange operated. Ex. 1007, 0012, 0014. Indeed, TSE is a
`
`
`7 References are to pages located at center bottom of the English translation.
`18
`
`
`
`
`
`Page 18 of 32
`
`
`
`CBM2015-00179
`Patent 7,533,056 B2
`
`manual that includes for example, in Chapter 2, instructions for terminal
`system configuration to enable a participant, such as a security company to
`connect to the Tokyo Stock Exchange. Ex. 1004, 10–25. Chapter 15,
`entitled “Response To A Problem” provides detailed explanations should a
`problem arise with terminal equipment, communication circuit difficulties,
`central system recovery difficulties, etc., along with in-house procured
`terminal problem handling instructions. Id. at 5. Thus, TSE is a manual that
`covers how to electronically connect to the Tokyo Stock Exchange.
`The evidence before us supports us finding that TSE was made
`accessible to securities companies who would have employed technical
`support personnel, such as computer scientists and engineers, who would
`have needed a copy of the TSE manual to configure their own system to
`electronically communicate, and to continue to trade securities, with the
`Tokyo Stock Exchange. Thus, the securities companies would have
`included computer scientists and engineers as well as traders. We find that
`such persons who worked at the securities companies would have been
`“interested members of the relevant public.”
`Patent Owner’s narrow focus on whether a GUI designer actually
`received TSE is misplaced. Prelim. Resp. 60. Our reviewing court has
`explained that the inquiry is whether interested members of the relevant
`public could obtain the information if they wanted to; not whether such
`interested members actually received the information. Constant, 848 F.2d at
`1569. As explained above, we do not find that interested members of the
`
`
`of TSE (Ex. 1004).
`
`19
`
`
`
`
`
`Page 19 of 32
`
`
`
`CBM2015-00179
`Patent 7,533,056 B2
`
`relevant public are limited to GUI designers, and Patent Owner has not
`shown sufficiently why we should find otherwise.
`In any event, even assuming that interested members of the relevant
`public is limited to GUI designers, we find Mr. Kawashima’s testimony that
`the securities companies were free to do whatever they wanted with their
`copies of the publication to be probative. Ex. 1007, 0015. Based on the
`record before us, we find that such GUI designers could have located the
`TSE manual through reasonable diligence. No restrictions were placed on
`the 200 company recipients of the manual, such that they could freely share
`the document upon inquiry. That is all the law requires. It does not require
`a showing that interested members of the relevant public actually received
`the document. Thus, we are not persuaded by Patent Owner’s arguments
`that Mr. Kawashima’s testimony is suspect and not reliable because there is
`no corroborating evidence that TSE was obtained by, or distributed to,
`participants. See, e.g.