Paper No.
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` Filed: May 19, 2016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
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`IBG LLC; INTERACTIVE BROKERS LLC;
`TRADESTATION GROUP, INC.; and
`TRADESTATION SECURITIES, INC.
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`
`Petitioners
`
`
`
` v.
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`TRADING TECHNOLOGIES INTERNATIONAL, INC.
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` Patent Owner
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`
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`
`
` Case CBM2016-00032
` U.S. Patent 7,212,999
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`PATENT OWNER'S PRELIMINARY RESPONSE
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` Filed: May 19, 2016
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
`
`
`
`
`
`
`
`IBG LLC; INTERACTIVE BROKERS LLC;
`TRADESTATION GROUP, INC.; and
`TRADESTATION SECURITIES, INC.
`
`
`Petitioners
`
`
`
` v.
`
`TRADING TECHNOLOGIES INTERNATIONAL, INC.
`
` Patent Owner
`
`
`
`
`
` Case CBM2016-00032
` U.S. Patent 7,212,999
`
`
`
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`PATENT OWNER'S PRELIMINARY RESPONSE
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`CBM2016-00032
`U.S. Patent 7,212,999
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`Table of Contents
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`INTRODUCTION ........................................................................................... 1
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`I.
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`II. OVERVIEW OF THE CLAIMED INVENTION ........................................... 4
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`III. PETITIONERS’ OBVIOUSNESS GROUNDS FAIL FOR
`MULTIPLE, INDEPENDENT REASONS .................................................... 8
`
`A.
`
`The Obviousness Grounds, All Based on the TSE Document,
`Fail Because Petitioners Have Not Met Their Burden of
`Showing That the TSE Document Qualifies as Prior Art ..................... 8
`
`1.
`
`The Kawashima Testimony—Petitioners’ Sole
`“Evidence”—Is Legally Insufficient Because It Is Biased
`And Uncorroborated .................................................................11
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`2. Mr. Kawashima’s Testimony Is Hearsay And It Should
`Not Be Admitted Or Given Any Weight In Deciding
`Whether the TSE Document Qualifies as Prior Art ..................15
`
`3.
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`Even If Taken as True, the Kawashima Testimony Fails
`To Establish That the TSE Document Qualifies as a Prior
`Art Printed Publication .............................................................17
`
`B.
`
`Even if the TSE Document Qualified as Prior Art (Which it
`Does Not), the Obviousness Grounds Also Fail Because None
`of the Cited References Render Obvious “Selecting the Order
`Icon And Moving the Order Icon With a Pointer of a User Input
`Device to a Location Associated With a Price Along the First
`Scaled Axis of Prices” .........................................................................29
`
`1.
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`2.
`
`3.
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`The TSE Document Does Not Disclose an “Order Icon
`Associated With an Order By the User” ...................................30
`
`None of the Cited References Discloses Movement of
`Anything to a Location Along a Price Axis ..............................34
`
`A POSITA would not modify TSE as proposed by
`Petitioners because doing so would disrupt all
`outstanding orders in the market ...............................................37
`i
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`
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`IV. PETITIONERS’ SUBJECT MATTER ELIGIBILITY GROUNDS
`ARE FATALLY FLAWED ..........................................................................38
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`CBM2016-00032
`U.S. Patent 7,212,999
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`A.
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`B.
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`Alice Prong I: The Claims Are Not Directed to “Graphing Bids
`And Offers to Help a Trader Make an Order” in the Abstract. ...........38
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`Alice Prong II: Being Known And Routine And Conventional
`Are Different Concepts, And § 101 is a Different Test Than
`Anticipation or Obviousness. ..............................................................41
`
`V.
`
`THE PETITION FAILS TO ESTABLISH THAT THE CLAIMS
`COVER SIGNALS ........................................................................................43
`
`VI. THE ’999 PATENT IS NOT A CBM PATENT ...........................................45
`
`A.
`
`The ’999 Patent Does Not Claim “Data Processing” or “Other
`Operation” (e.g., a Business Method). ................................................47
`
`1.
`
`2.
`
`3.
`
`The Petition Is Completely Silent As to Whether the ’999
`Patent Is Directed to “Data Processing” or “Other
`Operations.” ..............................................................................47
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`The ’999 Patent Does Not Claim “Data Processing” ...............48
`
`The ’999 Patent Falls Under the Technological Exception ......53
`
`B.
`
`Legislative History Confirms that the Claimed Invention is Not
`a CBM .................................................................................................57
`
`VII. CONCLUSION ..............................................................................................60
`
`ii
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`CBM2016-00032
`U.S. Patent 7,212,999
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`I.
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`INTRODUCTION
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`Trading Technologies International, Inc. (“TT”) is an operating company
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`headquartered in Chicago and owes its initial (and most substantial) capital
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`investment to its patent portfolio. TradeStation and Interactive Brokers, both
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`market place competitors of TT, have filed twelve (12) CBM petitions against
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`TT’s patent portfolio. Of those twelve petitions, eight (8) have been instituted and
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`four (4) are pending institution decisions.
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`While many of the arguments in TT’s previous preliminary responses have
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`been similar, this paper presents new arguments and takes a different approach. In
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`preparing this paper, TT reviewed the eight (8) previous institution decisions and
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`has attempted to specifically respond on the merits to preliminary viewpoints and
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`conclusions set forth in the Board’s institution decisions—even if those arguments
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`were not presented by Petitioners.
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`While some of the high-level arguments (e.g., a specific GUI tool is not a
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`CBM and is eligible under §101) have been presented previously, this paper goes
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`to the next level and provides a more detailed response to the Board’s previous
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`conclusions and reasoning. In fact, in some instances, after reviewing the previous
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`institution decisions and TT’s prior arguments, TT recognizes that its previous
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`arguments may not have addressed the preliminary conclusions, which may have
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`1
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`been based on giving substantial benefit of the doubt to allegations made by
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`U.S. Patent 7,212,999
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`Petitioners. This paper attempts to clarify TT’s arguments and positions and shed
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`new light on these arguments in light of recent developments.
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`For example, additional information has come to light that shows Petitioners
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`cannot meet their burden of establishing that the TSE document (the primary
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`reference for the obviousness grounds in the petition) qualifies as prior at. The sole
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`support for the TSE document qualifying as prior art is the same testimony of Mr.
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`Kawashima (a TSE representative) that Petitioners relied upon in previous
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`petitions. This testimony by itself is insufficient to establish that the TSE document
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`qualifies as prior art for several reasons. In addition, as the Board has previously
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`ruled, Petitioners need to produce Mr. Kawashima for a deposition by TT. In a
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`recent filing (request for rehearing), Petitioners stated that they will not be able to
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`produce Mr. Kawashima for deposition. For this reason alone, Petitioners have not
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`established that it is “more likely than not” that they will succeed on the merits.
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`This new information was unknown when the Board rendered its previous
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`institution decisions. Moreover, Petitioners are no longer entitled to any benefit of
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`the doubt regarding their ability to obtain further evidence to bolster their position
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`on the TSE document. Since the previous institution decisions, it has become clear
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`that any such bolstering is unlikely to happen. Not only are Petitioners unable to
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`obtain a deposition of Mr. Kawashima, it is unlikely they will be able to offer any
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`2
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`supplemental evidence as they were relying on discovery being pursued in the
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`U.S. Patent 7,212,999
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`district court litigation—which has now been stayed at Petitioners’ request.
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`Therefore, the obviousness grounds, all based on the TSE document, fail because
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`Petitioners cannot meet the more likely than not burden of establishing that the
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`TSE document qualifies as prior art.
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`The obviousness grounds also fail because the cited references do not render
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`obvious the independent claims at least due to the following elements relating to
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`involving an order icon: “displaying an order icon associated with an order by the
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`user for a particular quantity of the item,” and “selecting the order icon and moving
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`the order icon with a pointer of a user input device to a location associated with a
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`price along the first scaled axis of prices.” These elements differ from those
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`previously addressed by the Board, so TT presents new arguments directly
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`addressing them.
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`Finally, with respect to Petitioners’ CBM and § 101 allegations, TT
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`addresses Petitioners’ mistaken focus on the claimed invention’s ability to be
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`performed on a general purpose or conventional computer. The Federal Circuit, in
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`Enfish, LLC v. Microsoft Corp., recently made clear that this is the wrong focus for
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`determining what claims are “directed to.” Instead, the Federal Circuit instructs
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`that the proper focus is on what the specification purports the invention or
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`improvement to be.
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`3
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`II. OVERVIEW OF THE CLAIMED INVENTION
`The ’999 patent claims specific features and functionality of a GUI tool for
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`U.S. Patent 7,212,999
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`electronic trading. The claimed features improve the functioning of a computer
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`because the claimed invention improves the display of information to a user and
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`facilitates data entry (the placement of an order on an electronic exchange) using
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`the GUI tool. Ex. 1001, Abstract; 2:1-21. In contrast to prior art GUIs, the claimed
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`GUI displays all outstanding offers and bids in an intuitive format in relation to a
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`price axis and also displays order icons that each represent a particular user’s own
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`order for a quantity of an item, also in relation to the price axis, alongside all
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`outstanding offers and bids for that item. Id. at 10:44-11:4. The claimed GUI
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`further permits a user to select and move the order icon to a location that
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`corresponds to a value along the price axis and send an order message associated
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`with the order icon at the price corresponding to the location to which the order
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`icon was moved. Id. This GUI differs from prior art GUIs for various reasons,
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`including that (a) prior GUI tools did not display indicators of a user’s particular
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`order alongside bid and offer data relative to the same price levels and (b) prior
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`GUI tools did not provide order icons, which could be selected and moved along a
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`price axis to cause an order to be sent at a particular price value associated with the
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`price axis.
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`4
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`Independent claim 1 is illustrative of the claimed invention:
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`U.S. Patent 7,212,999
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`A computer based method for facilitating the placement
`of an order for an item and for displaying transactional
`information to a user regarding the buying and selling of
`items in a system where orders comprise a bid type or an
`offer type, and an order is generated for a quantity of the
`item at a specific value, the method comprising:
`
`displaying a plurality of bid indicators, each
`corresponding to at least one bid for a quantity of the
`item, each bid indicator at a location along a first scaled
`axis of prices corresponding to a price associated with the
`at least one bid;
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`displaying a plurality of offer indicators, each
`corresponding to at least one offer for a quantity of the
`item, each offer indicator at a location along the first
`scaled axis of prices corresponding to a price associated
`with the at least one offer;
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`receiving market information representing a new order to
`buy a quantity of the item for a specified price, and in
`response to the received market information, generating a
`bid indicator that corresponds to the quantity of the item
`bid for and placing the bid indicator along the first scaled
`axis of prices corresponding to the specified price of the
`bid;
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`5
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`U.S. Patent 7,212,999
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`receiving market information representing a new order to
`sell a quantity of the item for a specified price, and in
`response to the received market information, generating
`an offer indicator that corresponds to the quantity of the
`item for which the offer is made and placing the offer
`indicator along the first scaled axis of prices
`corresponding to the specified price of the offer;
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`displaying an order icon associated with an order by the
`user for a particular quantity of the item;
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`selecting the order icon and moving the order icon with a
`pointer of a user input device to a location associated
`with a price along the first scaled axis of prices; and
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`sending an order associated with the order icon to an
`electronic trading exchange, wherein the order is of a bid
`type or an offer type and the order has a plurality of order
`parameters comprising the particular quantity of the item
`and the price corresponding to the location at which the
`order icon was moved.
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`As recited in independent claim 1, the ’999 patent provides a new GUI tool
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`that includes offer and bid indicators displayed on different portions of the GUI
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`screen with graphical locations corresponding to price levels along a price axis. Ex.
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`1001, FIG. 3A (showing an exemplary embodiment where indicators 300 represent
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`bids and indicators 304 represent offers along a value axis 332); 1:15-25; 6:6-37.
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`6
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`The size (e.g., length or height) of an indicator represents the quantity of an order.
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`Id. at 6:26-28.
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`The claimed GUI also allows users to place orders (i.e., bids and offers) on
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`remote client terminals that are routed to a transaction server, which matches the
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`bids and offers. Id. at 2:6-15. Trading information from the transaction server is
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`communicated back to the client terminals and the GUI screen is updated to reflect
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`the transactional information. Id.
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`To facilitate placement of orders, the invention of claim 1 also provides: (i)
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`order icons corresponding to a user’s own offer or bid; and (ii) the ability to select
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`and move an order icon to a location corresponding to a price level along the price
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`axis, and thereby specify a desired price for an order. See, e.g., id at 8:10-20
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`(referring to Figure 3A, while offers 304 can correspond to the claimed offer
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`indicators, only offers 304(3) and 304(7) can correspond to the claimed order
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`icons, because only offers 304(3) and 304(7) “are the trader’s own offers 304.”).
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`7
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`U.S. Patent 7,212,999
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`III. PETITIONERS’ OBVIOUSNESS GROUNDS FAIL FOR MULTIPLE,
`INDEPENDENT REASONS
`A. The Obviousness Grounds, All Based on the TSE Document, Fail
`Because Petitioners Have Not Met Their Burden of Showing That
`the TSE Document Qualifies as Prior Art
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`Unlike a patent publication or a peer-reviewed journal article that itself
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`shows indisputable evidence of publication, the mere presence of a date1 (August,
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`1998) printed on the TSE document does not itself establish that it qualifies as a
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`“printed publication” because it says nothing about whether it was publicly
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`accessible. In re Wyer, 655 F.2d 221, 227 (C.C.P.A .1981); see also M.P.E.P.
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`§ 2128 (a reference is a “printed publication” if it is accessible to the public).
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`Although the Board may have previously given Petitioners the benefit of the doubt
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`in finding Petitioners’ met 35 U.S.C. § 324’s “more likely than not” threshold for
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`institution in related proceedings (see, e.g., CBM2015-00179, February 24, 2016,
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`Institution Decision, Paper 23, at 20), TT respectfully submits that Petitioners are
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`no longer entitled to any benefit of the doubt and that based on new information it
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`is now clear that Petitioners cannot meet the “more likely than not” standard in
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`proving that the TSE document qualifies as a prior art printed publication. The
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`sole basis of Petitioners’ argument that the TSE document qualifies as prior art is
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`the testimony of Mr. Kawashima (a TSE representative). However, Petitioners
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`1 Page 5 of TSE provides a date of August, 1998.
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`8
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`recently informed the Board that Mr. Kawashima will not be available for
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`deposition, so it is very unlikely that there will be any further evidence from him.
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`Ex. 2110 at 4. TT respectfully submits that if it is not provided the opportunity to
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`depose and cross examine Mr. Kawashima, his testimony should be given no
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`weight, which would cause all of the obviousness grounds to fail. See Ex. 2109 at
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`3. Moreover, given the stay of the related district court litigation (which Petitioners
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`requested), Ex. 2113, it is also very unlikely that there will be any further
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`supplemental evidence relating to the TSE document despite Petitioners’ attempts
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`to get such evidence through the use of discovery there, Ex. 2114, which was
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`initially granted by the district court, Ex. 2117, because all further discovery has
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`been halted now because of the stay, Ex. 2118.2
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`Here, the record is thus very unlikely to change and it does not currently
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`contain evidence sufficient to show that the TSE document was publicly
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`2 Moreover, even if Petitioners could obtain such evidence, it would be too late.
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`Such evidence should have been presented with the petition. Intelligent Bio-Sys.,
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`Inc. v. Illumina Cambridge Ltd., No. 2015-1693, Slip Op. at 16 (Fed. Cir. May 6,
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`2016) (“It is of utmost importance that petitioners in the IPR proceedings adhere to
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`the requirement that the initial petition identify ‘with particularity’ the ‘evidence
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`that supports the grounds for the challenge to each claim.’”).
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`9
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`accessible, which is the touchstone for finding a document qualifies as a printed
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`U.S. Patent 7,212,999
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`publication. Instead, the Petition simply relies on deposition testimony from a
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`November 2005 deposition of a Tokyo Stock Exchange employee, Mr. Atsushi
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`Kawashima (Ex. 1018, “the Kawashima testimony”), an interested witness. See
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`infra, Section A.1.a. The deposition was taken as part of a district court litigation
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`involving different patents, Trading Technologies Int’l v. eSpeed Inc., No. 1:04-cv-
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`05312 (N.D. Ill.), where it was considered and rejected by a jury, which found that
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`the TSE document was not prior art to those patents despite their later priority date.
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`Ex. 2030 at 11; Exs. 2111 and 2116 (showing that U.S. Patent Nos. 6,766,304 and
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`6,772,132, involved in the earlier litigation, have an earliest priority date of May 2,
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`2000, which is later than the priority date of April 9, 1999, for the ’999 patent).
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`Even if the Board considers the Kawashima testimony in this proceeding, it
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`fails to establish that the TSE document qualifies as a prior art printed publication
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`because: (1) the Kawashima testimony is biased and uncorroborated; (2) the
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`Kawashima testimony is hearsay; and (3) even if taken as true and even if the fact
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`that the testimony is uncorroborated is ignored, the Kawashima testimony is
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`insufficient as a matter of law to establish public accessibility of the TSE
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`document. It was Petitioners’ duty to bring evidence of the prior art status of the
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`TSE document with their petition. Petitioners’ failed to provide such evidence, and
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`10
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`it is very unlikely they will be able to do so in the future. Accordingly, the
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`obviousness grounds, all based on the TSE document, should be denied.
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`1.
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`The Kawashima Testimony—Petitioners’ Sole
`“Evidence”—Is Legally Insufficient Because It Is Biased
`And Uncorroborated
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`According to the Federal Circuit, “[c]orroboration is required of any witness
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`whose testimony alone is asserted to invalidate a patent, regardless of his or her
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`level of interest.” Texas Digital Sys., Inc. v. Telegenix, Inc., 308 F.3d 1193, 1217
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`(Fed. Cir. 2002); see also TypeRight Keyboard Corp. v. Microsoft Corp., 374 F.3d
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`1151, 1159 (Fed. Cir. 2004) (The court stated that even “[i]f the jury finds the
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`testimony of [defendant’s] witnesses credible, and sufficient to establish that the
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`[alleged prior art document] was published prior to the critical date, the district
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`court will still have to address whether the legal requirement of corroboration has
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`been met.”). Such corroboration is particularly important where, as here, the
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`testimony of an interested witness alone is relied upon to establish public
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`accessibility of a document. See Netsirv and Local Motion MN v. Boxbee, Inc.,
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`PGR2015-00009, Paper No. 10 (PTAB August 4, 2015) (finding that the testimony
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`of an interested party alone, without any corroboration, is insufficient to establish
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`prior public use, sale, or knowledge); see also Ex parte The Ohio Willow Wood
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`Company, Appeal No. 2011-010158 (B.P.A.I. Sept. 30, 2011) (finding in an appeal
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`from an ex parte reexamination that declaration testimony of an interested witness
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`11
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`regarding a prior art product must be corroborated with sufficient evidence). Mr.
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`Kawashima was not a disinterested witness, and, therefore, his unreliable
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`testimony must be corroborated to be relied on in this proceeding.
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`a. Mr. Kawashima Was Not a Disinterested Witness
`Mr. Kawashima admitted that his employer (the Tokyo Stock Exchange)
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`challenged the validity of one of TT’s Japanese patent applications corresponding
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`to one of the patents (U.S. Patent No. 6,766,304) at issue in the previous litigation
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`in which Mr. Kawashima was being deposed. Specifically, Mr. Kawashima’s
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`employer provided alleged art, including the TSE document, to the Japanese Patent
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`Office, in an attempt to prevent TT from obtaining a corresponding patent in Japan.
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`See Ex. 1018, 108:1-15, 109:7-15, 111:11-112:5; Ex. 2054 (English translation of
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`submission made to the JPO in April 2005, showing that the TSE document was
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`submitted as one of the references to attempt to invalidate claims of application no.
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`JP20010564025, which became Patent No. JP52300493, and which corresponds to
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`International Appl. No. PCT/US01/06792 and U.S. Patent No. 6,766,304).4 Mr.
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`3 TT’s Japanese application was ultimately allowed over the TSE document and
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`other alleged art despite the TSE’s submission to the JPO.
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`4 U.S. Patent No. 6,766,304 and Japanese Patent No. JP5230049 have the same
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`priority chain; both patents claim priority to a U.S. provisional application
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`12
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`Kawashima further explained that his employer hoped that the Japanese Patent
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`Office would rely on the submitted art. Ex. 1018, 110:10-14. TT attempted to
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`further probe the circumstances surrounding the submission but was precluded
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`from doing so by the Tokyo Stock Exchange attorney. Ex. 1018, 110:15-111:10.
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`Mr. Kawashima followed the attorney’s instructions not to answer. Id. The
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`presence of TSE’s attorney alone calls into question Mr. Kawashima’s testimony,
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`given that it makes crystal clear that Mr. Kawashima’s interests were aligned with
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`his employer’s interest. Therefore, Mr. Kawashima was not a disinterested witness
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`and his testimony must be corroborated if it is to be relied upon.
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`b. Mr. Kawashima’s Testimony Is Uncorroborated
`The record contains no evidence corroborating Mr. Kawashima’s testimony.
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`For example, he admitted that there was no list of who allegedly received the TSE
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`document, or any evidence corroborating the alleged distribution or date of
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`distribution. Ex. 1018, 68:11-16; see Juicy Whip v. Orange Bang, 292 F.3d 728,
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`742 (Fed. Cir. 2002) (the court noted that in the absence of any written
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`60/186,322 filed March 2, 2000 and a U.S. patent application 09/590,692 filed
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`June 9, 2000 (issued as U.S. Patent No. 6,772,132, which was also at issue in the
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`previous litigation). See Exs. 2111 and 2112 (U.S. Patent No. 6,766,304 and
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`Japanese Patent No. JP5230049, respectively, showing the same priority claim).
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`13
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`corroboration and given the length of time between the anticipating events and the
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`trial, oral evidence alone was insufficient to invalidate the patent at issue). In fact,
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`when pressed on what he meant by distributed, Mr. Kawashima said that “a person
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`from the participants [came] to the TSE operating system section to get the
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`manual” (Ex. 1018, 14:21-22)5, but there is no documentary evidence,
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`corroborating or otherwise, that the manual was obtained or distributed to any
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`participants. At best, Mr. Kawashima’s testimony is that someone from a
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`participant could have come to get the document, but he never said whether in fact
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`anyone did. Despite Mr. Kawashima’s allegation that the TSE document was
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`available to 200 participants, the only copy of the TSE document ever to surface in
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`the 11 years since Mr. Kawashima’s testimony is the one that TSE itself provided,
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`from its own files. See Ex. 1018, 101:13-20. The lack of corroborating evidence as
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`to the document’s alleged availability and date of availability are fatal to
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`Petitioners’ assertion that the TSE document qualifies as a prior art printed
`
`
`5 It is important to note that the deposition was taken through translators (there
`
`were three translators present at the deposition) and that it is improper to place too
`
`much weight on any particular answer especially if the import of the answer
`
`depends heavily on the meaning of a term(s) such as “distributed.”
`
`
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`14
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`
`
`publication based on the current state of the evidence, especially given Mr.
`
`CBM2016-00032
`U.S. Patent 7,212,999
`
`
`Kawashima’s bias.
`
`Although the Board may have previously given Petitioners the benefit of the
`
`doubt and instituted TSE grounds despite the deficiencies in Mr. Kawashima’s
`
`testimony, the Board need not do so here, where, as previously discussed, it is very
`
`unlikely that there will be any new corroborating evidence on the matter.
`
`2. Mr. Kawashima’s Testimony Is Hearsay And It Should Not
`Be Admitted Or Given Any Weight In Deciding Whether
`the TSE Document Qualifies as Prior Art
`
`Mr. Kawashima’s testimony is hearsay under Fed. R. Evid. 801 because it
`
`was not made in this proceeding and does not fall under any of the exceptions in
`
`Fed. R. Evid. 804.6 For this reason alone, it should not be admitted or given any
`
`
`6 Although Petitioners have argued in other proceedings that admitting such
`
`testimony would not be prejudicial to TT because TT attended Mr. Kawashima’s
`
`deposition, admission of such testimony would be highly prejudicial to TT because
`
`TT was not provided a full and fair opportunity to depose him on the issues related
`
`to the previous litigation, much less those here. The deposition was strictly limited.
`
`TT was not allowed to cross-examine Mr. Kawashima on issues relevant here, e.g.,
`
`his bias. Ex. 1018 at 110:15-111:10. Moreover, Mr. Kawashima was made
`
`available only for a short period of time, which had to be split between TT and the
`
`
`
`
`
`15
`
`
`
`weight unless TT is allowed to depose Mr. Kawashima in this proceeding. To that
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`CBM2016-00032
`U.S. Patent 7,212,999
`
`
`end, the Board already found in a related proceeding involving Kawashima in the
`
`same way as this one that the Kawashima testimony “is a pivotal part of
`
`Petitioner’s challenges based on TSE. … Based on the facts of these cases, we
`
`determine that it is Petitioner’s responsibility to secure the availability of Mr.
`
`Kawashima …. To the Extent that Petitioner is unable to produce Mr. Kawashima
`
`for cross examination, we will consider his unavailability in weighing his original
`
`testimony in our Final Written Decisions.” Ex. 2109 at 3. The Board need not wait
`
`to do so in this proceeding. Petitioners already informed the Board that Mr.
`
`Kawashima will not be available for deposition. Ex. 2110 at 4. Accordingly, the
`
`Board should give Mr. Kawashima’s testimony no weight. Without the Kawashima
`
`testimony—Petitioners’ sole evidence supporting the assertion that the TSE
`
`document qualifies as a prior art printed publication—Petitioners cannot meet their
`
`
`defendant in previous litigation, precluding TT from asking all the questions it had
`
`because the defendant went first. Id. at 119:12-13. TT could not spend all of its
`
`time on issues related to the prior art status of the TSE document, because it
`
`needed to depose Mr. Kawashima on many other issues. Accordingly, there are
`
`still many open questions, which are highly relevant to these proceedings, that
`
`need to be answered.
`
`
`
`16
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`
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`burden of establishing by a preponderance of the evidence that the TSE document
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`CBM2016-00032
`U.S. Patent 7,212,999
`
`
`qualifies as a prior art printed publication, so all their obviousness grounds should
`
`be denied.
`
`3.
`
`Even If Taken as True, the Kawashima Testimony Fails To
`Establish That the TSE Document Qualifies as a Prior Art
`Printed Publication
`
`Even assuming that copies of the TSE document were made available and
`
`distributed to participants of the Tokyo Stock Exchange, and even ignoring the
`
`corroboration requirement, the record, which is very unlikely to change, contains
`
`no evidence that the TSE document was made available to “persons interested and
`
`ordinarily skilled” in the subject matter of GUI design and/or programming prior to
`
`the effective filing date of the ’999 patent.
`
`A reference must be accessible to the public to be proven to be a “printed
`
`publication.” In re Wyer, 655 F.2d 221, 227 (C.C.P.A .1981); M.P.E.P. § 2128.
`
`“Because there are many ways in which a reference may be disseminated to the
`
`interested public, ‘public accessibility’ has been called the touchstone in
`
`determining whether a reference constitutes a ‘printed publication’ bar under 35
`
`U.S.C. § 102(b).” SRI Int’l, Inc. v. Internet Sec. Sys. Inc., 511 F.3d 1186, 1194
`
`(Fed. Cir. 2008) (citing In re Hall, 781 F.2d 897, 898-99 (Fed.Cir.1986)). A
`
`reference is publicly accessible “upon a satisfactory showing that such document
`
`has been disseminated or otherwise made available to the extent that persons
`
`
`
`17
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`
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`CBM2016-00032
`U.S. Patent 7,212,999
`
`interested and ordinarily skilled in the subject matter or art exercising reasonable
`
`diligence, can locate it.” Kyocera Wireless Corp. v. Int’l Trade Comm’n, 545 F.3d
`
`1340, 1350 (Fed. Cir. 2008) (internal quotation marks and citation omitted)
`
`(emphasis added).
`
`Despite the Board’s failure to find in a related proceeding “that interested
`
`members of the relevant public are limited to GUI designers,” Ex. 2108 at 19-20,
`
`long-standing Federal Circuit precedent clearly states that public accessibility
`
`requires that a document be disseminated or made available to “persons interested
`
`and ordinarily skilled in the subject matter or art.” E.g., Kyocera, 545 F.3d at 1350;
`
`Wyer, 655 F.2d at 226; SRI Int’l, 511 F.3d at 1194-95. Here, TT agrees with
`
`Petitioners that a person of ordinary skill in this case is a person having experience
`
`in designing and/or programming GUIs for electronic trading. Therefore, in order
`
`for the TSE document to qualify as a prior art printed publication, the evidence
`
`presented by Petitioners must establish that the TSE document was disseminated or
`
`made available to “persons interested or ordinarily skilled” in the subject matter of
`
`GUI design and/or programming prior to the effective filing date of the ’999
`
`patent. Because the only evidence presented by Petitioners—the Kawashima
`
`testimony—fails to do so, the TSE document is not a prior art printed publication
`
`and cannot be relied upon in this proceeding.
`
`
`
`18
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`
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`a.
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`CBM2016-00032
`U.S. Patent 7,212,999
`
`
`No Evidence Shows That The 200 Recipients To
`Whom the TSE Document Was Allegedly Made
`Available Were “Interested” And “Ordinarily
`Skilled” In The Subject Matter Of Design And/Or
`Programming Of GUIs For Electronic Trading.
`
`The Federal Circuit has held that ‘[d]issemination and public accessibility
`
`are the keys to the legal determination whether a prior art reference was
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`‘published.’” Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1569
`
`(Fed. Cir 1988). The dissemination, however, has to be to “persons interested and
`
`ordinarily skilled in the subject matter or art.” See Kyocera, 545 F.3d at 1350.
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`Here, Petitioners’ only purported evidence of dissemination/public availability is a
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`single statement by Mr. Kawashima, a biased witness, that in August
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