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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`IBG LLC, INTERACTIVE BROKERS LLC,
`TRADESTATION GROUP INC., and
`TRADESTATION SECURITIES, INC.,
`Petitioners
`
`v.
`
`TRADING TECHNOLOGIES INTERNATIONAL, INC.,
`Patent Owner
`___________________
`
`Case CBM2016-00032
`Patent 7,212,999
`___________________
`
`
`
`PETITIONERS’ REQUEST FOR REHEARING
`
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
`
`
`
`CBM2016-00032
`U.S. Patent No. 7,212,999
`
`TABLE OF CONTENTS
`
`Statement of Relief Requested ........................................................................ 1
`
`Arguments ........................................................................................................ 1
`
`I.
`
`II.
`
`A.
`
`B.
`
`The Board overlooks the Petition’s arguments and supporting
`evidence that the proposed combination would increase the
`efficiency of order entry. ....................................................................... 4
`
`The Board misapprehends and overlooks the Petition’s arguments
`and supporting evidence that the proposed combination would
`decrease the complexity of order entry. ................................................ 5
`
`1.
`
`2.
`
`3.
`
`The Petition posits displaying order icons as part of the
`simple substitution; it is not an additional modification. ............ 7
`
`The Petition explains that the proposed combination would
`decrease the complexity of order entry from the user’s
`perspective, not from the system’s perspective. ......................... 8
`
`The Decision overlooks the extensive evidence presented in
`the Petition to show that the proposed combination would
`decrease the complexity of order entry from the user’s
`perspective. ................................................................................. 9
`
`C.
`
`The Board was misled by TT’s arguments; the Petition never
`suggests using TSE’s aggregate quantity of orders as order icons. .... 11
`
`III. Conclusion ..................................................................................................... 14
`
`
`
`
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`- i -
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`
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`CBM2016-00032
`U.S. Patent No. 7,212,999
`
`I.
`
`Statement of Relief Requested
`
`The Board should rehear and reverse its Decision (Paper 16, “Decision”) to
`
`not institute CBM review of claims 1-35 of U.S. Patent No. 7,212,999 (“’999
`
`patent”) as obvious over the TSE combinations. The Decision misapprehends and
`
`overlooks key arguments and evidence presented in the Petition (Paper 1, “Pet.”).
`
`Thus, Petitioners request rehearing under 37 C.F.R. § 42.71.
`
`II. Arguments
`The Petition demonstrates that claim 1 is more likely than not obvious over
`
`the combination of TSE, Schott, and Subler (Exhibits 1016, 1019, and 1020,
`
`respectively). Pet. 36-56. The Board disagrees, holding that the proposed
`
`combination fails to teach “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,” as recited in claim 1. Decision 25-26.
`
`Despite recognizing that “selecting and moving an icon to place an order is a
`
`well-understood, routine, conventional activity,” id. at 18, the Decision takes issue
`
`with the Petition’s motivation to combine Subler’s drag-and-drop order entry
`
`technique with TSE’s GUI-based order entry system, id. at 25-26. But “[w]hether
`
`an ordinarily skilled artisan would have been motivated to modify the teachings of
`
`a reference is a question of fact.” WBIP, LLC v. Kohler Co., ---F.3d ---- (Fed. Cir.
`
`- 1 -
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`
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`CBM2016-00032
`U.S. Patent No. 7,212,999
`2016). And the Petition presents expansive arguments and supporting evidence to
`
`prove this fact and to meet its initial burden for trial institution. Pet. 46-54.
`
`Indeed, the Petition devotes 8 pages to explaining how the combination of
`
`TSE, Schott, and Subler teaches the disputed limitation and why a person of
`
`ordinary skill in the art (“POSITA”) would have combined the prior art as
`
`proposed. Id. Those reasons include: swapping TSE’s well-known, click-based
`
`order entry for Subler’s equally well-known, drag-and-drop order entry since it is
`
`nothing more than a simple substitution that yields predictable results; increasing
`
`the efficiency of order entry; and decreasing the complexity of order entry. Id. at
`
`48-54. Mr. Román’s testimony (Exhibit 1012) and the Cooper and Shneiderman
`
`GUI treatises (Exhibits 1029 and 1030, respectively) support and corroborate the
`
`Petition’s arguments.
`
`The Decision dismisses the Petition’s arguments and evidence with little
`
`explanation and no support. Decision 25-26. Contrary to the considerable amount
`
`of evidence presented in the Petition, the Decision finds that substituting Subler’s
`
`drag-and-drop ordering for TSE’s click-based ordering would increase the
`
`complexity of the interface. Id. But the Decision does not point to any evidence to
`
`support this factual finding. Id. The Decision also asserts that the Petition suggests
`
`using an aggregate order quantity as an order icon. But the Petition makes no such
`
`suggestion; the Board was misled by TT’s baseless arguments in its Preliminary
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`- 2 -
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`
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`CBM2016-00032
`U.S. Patent No. 7,212,999
`
`Response (Paper 12, “POPR”).
`
`The Decision misapprehends and overlooks the Petition’s arguments and
`
`supporting evidence in at least three ways: First, the Decision overlooks the
`
`Petition’s arguments and supporting evidence that the proposed combination would
`
`increase the efficiency of order entry. Indeed, the Decision does not even address
`
`these arguments and evidence.
`
`Second, the Decision misapprehends and overlooks the Petition’s arguments
`
`and supporting evidence that the proposed combination would decrease the
`
`complexity of order entry. The Petition points to evidence showing that the
`
`combination would decrease the complexity of order entry from the user’s
`
`perspective—i.e., make the interface easier to learn, understand, and use. Pet. 49-
`
`54. The Decision, on the other hand, appears to consider the complexity from the
`
`system’s perspective, asserting that displaying order icons makes the system more
`
`complex. Decision 25-26. But, even if true, the Petition’s proposed motivation to
`
`combine focuses on the user, not the system.
`
`Third, the Board was misled by TT’s arguments in its POPR. The Petition
`
`never suggests using TSE’s aggregate quantity of orders as order icons. The
`
`Petition highlights an example of order entry in TSE where pointing-and-clicking
`
`in the “order quantity” column (12) automatically sets all required order
`
`information except for the order volume. Pet. 38, 47. And then it merely proposes
`
`- 3 -
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`
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`CBM2016-00032
`U.S. Patent No. 7,212,999
`substituting TSE’s click-based ordering with drag-and-drop ordering that uses
`
`icons that represent quantity (or volume) so that the trader does not have to key in
`
`the quantity. Pet. 49-54. TSE’s aggregate quantity of orders has no involvement
`
`whatsoever in the proposed combination.
`
`For at least these reasons, the Board should revisit and reverse its Decision.
`
`This Request does not present new arguments. Each of the arguments identified
`
`above (and described in more detail below) are fully supported by the Petition.
`
`A. The Board overlooks the Petition’s arguments and supporting
`evidence that the proposed combination would increase the
`efficiency of order entry.
`
`The Board overlooks the Petition’s arguments and supporting evidence that
`
`a POSITA would have been motivated to combined TSE, Schott, and Subler to
`
`increase the efficiency of order entry. The Petition asserts that “the proposed
`
`combination would have been nothing more than combining prior elements
`
`according to known methods to yield predictable and desirable results, such as
`
`increasing the efficiency and decreasing the complexity of order entry in TSE.”
`
`Pet. 52 (emphasis added). But the Decision only addresses the “decreasing the
`
`complexity” rationale, overlooking the “increasing the efficiency” rationale. See
`
`Decision 25-26.
`
`The Petition presents the “increasing the efficiency” rationale as an
`
`independent reason that a POSITA would have been motivated to combine the
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`- 4 -
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`CBM2016-00032
`U.S. Patent No. 7,212,999
`prior art. Pet. 52-53. (“Combining Subler’s drag-and-drop order entry with TSE’s
`
`GUI would increase order entry efficiency.”). And, the Petition cites ample
`
`evidence to support this position, including Mr. Román’s testimony and the Cooper
`
`and Schneiderman GUI treatises. Id.
`
`Cooper is particularly probative. As the Petition explains, “Cooper instructs
`
`GUI designers to use ‘click-and-drag idioms’ instead of ‘dialog boxes with edit
`
`fields’ because the click-and-drag idioms make ‘input clearer and easier.’” Pet. 53
`
`(citing Cooper at 0415-16). The Petition also points to Cooper’s teaching that
`
`“[a]ny mouse action is very efficient because it combines two command
`
`components in a single user action: a geographical location and a specific action.
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`Drag-and-drop is doubly efficient because, in a single, smooth action, it adds a
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`second graphical location.” Pet. 53 (citing Cooper at 0259) (emphasis added).
`
`The Decision overlooks these arguments and evidence. These un-refuted
`
`arguments and evidence show that a POSITA would have combined the prior art as
`
`proposed. Thus, the Petition meets its initial burden for trial institution.
`
`B.
`
`The Board misapprehends and overlooks the Petition’s arguments
`and supporting evidence that the proposed combination would
`decrease the complexity of order entry.
`
`The Board misapprehends and overlooks the Petition’s arguments and
`
`supporting evidence that the proposed combination would decrease the complexity
`
`of order entry. The Board found that “the proposed combination results in a more
`
`- 5 -
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`
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`CBM2016-00032
`U.S. Patent No. 7,212,999
`complex order entry system because it requires not merely the substitution of a
`
`point-and-click technique for a drag-and-drop technique but the addition of a
`
`window, such as Subler’s Viewer window 334, having the order icons to drag-and-
`
`drop.” Decision 25-26.
`
`These findings misapprehend the Petition’s arguments in at least two ways:
`
`First, the Petition posits displaying order icons as part of the simple substitution; it
`
`is not an additional modification. In other words, instead of providing for an area
`
`where the user must key in a quantity, Petitioners proposed displaying order icons
`
`that represent numerical quantities that can be selected and moved with a drag-and-
`
`drop technique. Second, the Petition explains that the proposed combination would
`
`decrease the complexity of order entry from the user’s perspective—that is, ease of
`
`use; not from the perspective of any supposed complexity that might be added in
`
`programming the modified interface.
`
`Finally, the Decision overlooks the extensive evidence presented in the
`
`Petition to show that the proposed combination would decrease the complexity of
`
`order entry from the user’s perspective. Instead, the Decision substitutes its own,
`
`unsupported analysis in place of the evidence and arguments appearing in the
`
`Petition.
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`- 6 -
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`
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`CBM2016-00032
`U.S. Patent No. 7,212,999
`The Petition posits displaying order icons as part of the
`simple substitution; it is not an additional modification.
`
`1.
`
`The Petition posits displaying order icons (such as in Subler’s View
`
`window) as part of the simple substitution. It is not an additional modification that
`
`is required after the proposed substitution. Pet. 49-50. The Petition states, “Since
`
`Subler teaches displaying a plurality of order icons that can be selected and moved
`
`in placing an order (Subler, FIG. 10 (icons in ‘Category/Package Viewer’)), the
`
`combined TSE-Schott-Subler GUI displays a plurality of order icons . . . that a
`
`trader can drag-and-drop next to a desired price along the axis in TSE’s Board
`
`Screen to initiate placing an order.” Id. (emphasis added).
`
`Indeed, without such a display of order icons a trader would have nothing to
`
`drag-and-drop. Thus, displaying the order icons is a necessary part of the
`
`substitution. And, TSE is ripe to be improved with the notoriously well-known
`
`drag-and-drop technique as a substitute for data entry via a keyboard. The GUI
`
`described in TSE operates unaltered in all other regards. This is exactly the type of
`
`simple substitution of known elements the Supreme Court discussed in KSR Intern.
`
`Co. v. Teleflex Inc., 550 U.S. 416, 417 (2007) (the claimed subject matter involves
`
`no more than “the simple substitution of one known element for another or the
`
`mere application of a known technique to a piece of prior art ready for the
`
`improvement”). The Decision misapprehends the Petition and prior art to find
`
`otherwise.
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`- 7 -
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`
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`2.
`
`CBM2016-00032
`U.S. Patent No. 7,212,999
`The Petition explains that the proposed combination would
`decrease the complexity of order entry from the user’s
`perspective, not from the system’s perspective.
`
`The Petition explained that the proposed combination decreases the
`
`complexity of order entry from the user’s perspective—i.e., make the interface
`
`easier to learn, understand, and use. Pet. 49-54. It explains, for example, that
`
`“[d]rag-and-drop was also recognized as a simple, easy-to-use, and easy-to-learn
`
`GUI operation.” Id. at 53. It further explains that a POSITA would have been
`
`“motivated to modify TSE’s GUI to support Subler’s drag-and-drop order entry
`
`technique in order to decrease the complexity (e.g., make it easier to learn and
`
`use) of order entry in TSE.” Id. at 54 (emphasis added); see also id. at 52 (“The
`
`user is provided with a powerful, easy-to-use interface to . . . place the order
`
`. . . .”), 53 (“the click-and-drag idioms make ‘input clearer and easier’”; “Direct
`
`manipulation is simple, straightforward, easy to use and easy to remember.”), 53-
`
`54 (discussing Shneiderman’s usability study).
`
`The Decision, on the other hand, appears to consider the complexity from
`
`the system’s perspective, asserting that displaying order icons makes the system
`
`more complex, presumably implying that a programmer modifying the interface to
`
`display order icons would encounter added complexity. Decision 25-26. Petitioners
`
`- 8 -
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`
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`CBM2016-00032
`U.S. Patent No. 7,212,999
`disagree that displaying order icons would make the system more complex.1 As
`
`explained above, displaying order icons is necessary in a drag-and-drop interface.
`
`But even if displaying order icons made the system more complex, which
`
`there is no evidence to support, it misses the point of the arguments in the Petition.
`
`Again, the Petition focuses on the user’s ability to learn, understand, and use the
`
`interface; not the complexity of the system. And, the Petition presents ample
`
`evidence to support and corroborate its position, which the Decision overlooks.
`
`3.
`
`The Decision overlooks the extensive evidence presented in
`the Petition to show that the proposed combination would
`decrease the complexity of order entry from the user’s
`perspective.
`
`The Petition presents a considerable amount of evidence to support its
`
`position that a POSITA would have been “motivated to modify TSE’s GUI to
`
`support Subler’s drag-and-drop order entry technique in order to decrease the
`
`complexity (e.g., make it easier to learn and use) of order entry in TSE.” Pet. 54.
`
`This evidence includes Mr. Román’s testimony, the express teachings of the Schott
`
`and Subler prior art references, and the comprehensive GUI treatises by Cooper
`
`
`1 The substitution of an order icon that can be dragged-and-dropped avoids
`
`having to populate an area with a quantity via a keyboard, i.e., one notoriously
`
`well-known technique (data entry) is substituted for another notoriously well-
`
`known technique (icons that can be dragged-and-dropped).
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`- 9 -
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`
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`CBM2016-00032
`U.S. Patent No. 7,212,999
`and Shneiderman. Id. at 48-54. The Board overlooked this evidence—indeed, the
`
`Decision makes no mention of any of this evidence.
`
` Shneiderman’s usability study, which is presented on pages 53-54 of the
`
`Petition, is particularly probative. This study analyzed four touchscreen designs for
`
`a VCR scheduling application. Id. at 53. The results of the study indicated that the
`
`drag-and-drop design was the easiest to understand and use. Id. at 53-54. As the
`
`Petition explains, “Specifically, this design allowed users to perform scheduling by
`
`dragging-and-dropping ON and OFF icons (displayed on the screen) to a 24-hour
`
`time line (i.e., an axis), as shown in Figure 6.13 of Shneiderman (reproduced
`
`below).” Id. at 54.
`
`Based on Shneiderman’s usability study, as well as other evidence, the
`
`Petition argued that a POSITA would have been “motivated to modify TSE’s GUI
`
`to support Subler’s drag-and-drop order entry technique in order to decrease the
`
`complexity (e.g., make it easier to learn and use) of order entry in TSE.” Id. Again,
`
`the Decision overlooks all of this evidence, substituting its own unsupported
`
`findings in place of the presented evidence. And, importantly, this substitution is
`
`in line with KSR since the Petition merely posits applying a known technique,
`
`drag-and-drop, to TSE’s GUI, which is ready for an improvement. Id. Thus, the
`
`Board should revisit the Petition’s arguments and evidence and reverse the
`
`Decision.
`
`- 10 -
`
`
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`CBM2016-00032
`U.S. Patent No. 7,212,999
`C. The Board was misled by TT’s arguments; the Petition never
`suggests using TSE’s aggregate quantity of orders as order icons.
`
`The Petition never suggests “us[ing] the aggregate quantity of orders in the
`
`market place as the order icons, which are dragged-and-dropped onto the
`
`Board/Quotation Screen to place an order.” Decision 26. The Board was misled by
`
`TT’s arguments, see POPR 37, and thus misapprehended the Petition’s position.
`
`The Petition highlights the Board Screen and order-entry example discussed
`
`on page 137 of TSE. Pet. 38, 43, 49. The Decision highlights the same example.
`
`Decision 22. This particular example teaches order entry by double clicking a
`
`location in the “order quantity” column (12) of TSE’s Board Screen,2 which
`
`automatically sets certain information, such as price, for the order. Pet. 38, 43;
`
`Decision 22. But as the Petition and the Decision both recognize, the trader
`
`manually enters order volume into the New Order Input window in this particular
`
`example. Pet. 38, 43; Decision 22. Thus, it is undisputed that TSE teaches that
`
`double clicking on column (12) results in a New Order Input window being
`
`
`2 There is no dispute that the “order quantity” column (12) of TSE’s Board
`
`Screen may display an aggregate of orders working at a certain price when there is
`
`more than one order at that price. That said, TSE permits traders to place orders at
`
`locations in column (12) without canceling or replacing existing orders. Pet. 38
`
`(citing TSE 0137).
`
`- 11 -
`
`
`
`CBM2016-00032
`U.S. Patent No. 7,212,999
`displayed that is populated with trading data. The substitution suggested by
`
`Petitioners results in the exact same window being displayed, albeit with a quantity
`
`value automatically populated.
`
`Accordingly, the Petition proposes substituting TSE’s click-based ordering
`
`with drag-and-drop ordering that uses icons that represent quantity so that the
`
`trader does not have to key in the desired quantity. Pet. 49-54. The Petition
`
`presents evidence—such as Cooper and Shneiderman—that support this proposal,
`
`teaching the use of “click-and-drag idioms” instead of “dialog boxes with edit
`
`fields,” and the desirability of reducing the number of operator actions such as
`
`keystrokes. Id. at 52-53. And given the fact that TSE’s Board Screen displays data
`
`alphanumerically (including quantity or volume data), the Petition correctly notes
`
`that it would have been obvious to display the icons alphanumerically.3 Id. at 50.
`
`But to be clear, the Petition never suggests using the aggregate quantity of
`
`orders in the market place as the order icons. In fact, the aggregate quantity shown
`
`in column (12) is not relevant to the substitution, other than to demonstrate that
`
`TSE’s Board Screen displays market data alphanumerically. TT seems to suggest
`
`otherwise, presenting a contorted argument that “dragging-and-dropping a new
`
`
`3 The Petition also explains that the icons could be represented graphically,
`
`as in Schott. Pet. 50 n.5. The Decision does not address this argument.
`
`- 12 -
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`
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`CBM2016-00032
`U.S. Patent No. 7,212,999
`order to column 12 would … cancel or replace existing aggregate orders at that
`
`location.” POPR 37. TT’s argument is incorrect and misled the Board.
`
`As the example on page 137 of TSE demonstrates, TSE permits traders to
`
`place orders at locations in the “order quantity” column (12). See Pet. 38. So
`
`whether the order-placement operation involves double clicking or dragging-and-
`
`dropping, performing such operation at a location in the “order quantity” column
`
`(12) would merely pop-up TSE’s New Order Input window and automatically set
`
`certain information. See id. It would not cancel or replace existing orders, as TT
`
`suggests. TT’s arguments are inconsistent with TSE’s teachings and are
`
`nonsensical.
`
`The Petition devotes 8 pages to explaining how the combination of TSE,
`
`Schott, and Subler teaches the disputed limitation and why a POSITA would have
`
`combined the prior art as proposed. Pet. 46-54. This explanation includes a
`
`thorough analysis as to why a POSITA would have been motivated to use order
`
`icons that represent quantity. Id. Based on this analysis and the discussion above,
`
`the Board should rehear and reverse its Decision.
`
`
`
`
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`- 13 -
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`CBM2016-00032
`U.S. Patent No. 7,212,999
`
`III. Conclusion
`In view of the above, Petitioners respectfully request that the Board rehear
`
`and reverse its Decision, and institute review of claims 1-35 as obvious over the
`
`TSE combinations presented in the Petition.
`
`
`
`
`
`Date: 8/30/2016
`
`1100 New York Avenue, N.W.
`Washington, D.C. 20005-3934
`(202) 371-2600
`2823929_1.DOCX
`
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`
`
`/Robert Sokohl/
`
`
`Robert E. Sokohl (Reg. No. 36,013)
`Lori A. Gordon (Reg. No. 50,633)
`Richard M. Bemben (Reg. No. 68,658)
`Attorneys for Petitioners
`
`
`
`
`- 14 -
`
`
`
`
`
`CBM2015-00179
`U.S. Patent No. 7,533,056
`
`CERTIFICATION OF SERVICE
`
`The undersigned hereby certifies that the foregoing PETITIONERS’
`
`REQUEST FOR REHEARING was served electronically via e-mail on August
`
`30, 2016, in its entirety on Attorneys for Patent Owner:
`
`Erika H. Arner, Joshua L. Goldberg, Kevin D. Rodkey,
`Rachel L. Emsley
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
`Erika.arner@finnegan.com
`Joshua.goldberg@finnegan.com
`Kevin.rodkey@finnegan.com
`Rachel.emsley@finnegan.com
`Trading-Tech-CBM@finnegan.com
`
`Steven F. Borsand
`TRADING TECHNOLOGIES INTERNATIONAL, INC.
`tt-patent-cbm@tradingtechnologies.com
`
`Michael D. Gannon, Leif R. Sigmond, Jr.
`MCDONNELL BOEHNEN HULBERT & BERGHOFF LLP
`gannon@mbhb.com
`sigmond@mbhb.com
`
`
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`
`
`/Robert Sokohl/
`
`
`Robert E. Sokohl (Reg. No. 36,013)
`Lori A. Gordon (Reg. No. 50,633)
`Richard M. Bemben (Reg. No. 68,658)
`Attorneys for Petitioners
`
`
`
`Date: 8/30/2016
`
`1100 New York Avenue, N.W.
`Washington, D.C. 20005-3934
`(202) 371-2600
`2823929_1.DOCX
`
`
`
`
`
`
`
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