Paper No. ______
`Filed: January 20, 2017
`
`
`
`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 CBM2016-0054
`U.S. Patent 7,693,768
`
`
`
`PATENT OWNER’S RESPONSE
`
`
`
`

`
`PROTECTIVE ORDER MATERIAL
`
`CBM2016-00054
`U.S. Patent 7,693,768
`
`
`TABLE OF CONTENTS
`
`I.
`
`OVERVIEW OF CLAIMED INVENTION ................................................... 5
`
`II.
`
`CLAIM CONSTRUCTION ..........................................................................10
`
`A.
`
`“Single Action” ...................................................................................10
`
`B.
`
`C.
`
`D.
`
`“Computer Readable Medium Having Program Code
`Recorded Thereon”..............................................................................10
`
`“Order Entry Region” ..........................................................................11
`
`“Setting a Plurality of Parameters for a Trade Order
`Relating to the Commodity and Sending the Trade Order
`to the Electronic Exchange in Response to a Selection of
`a Particular Location of the Order Entry Region by a
`Single Action of a User Input Device” ...............................................12
`
`E.
`
`“Entered Order Indicator in Association with a Price
`Level Along the Price Axis” ...............................................................13
`
`F.
`
`“Centering Command” ........................................................................13
`
`III. TSE IS NOT PRIOR ART .............................................................................14
`
`A.
`
`The Evidence Fails to Prove TSE Was Publicly
`Accessible ............................................................................................15
`
`1.
`
`2.
`
`TSE Was Not Distributed to POSAs ........................................16
`
`There Is No Evidence TSE Was Available to the
`POSA Exercising Reasonable Diligence ..................................17
`
`B.
`
`Kawashima’s Testimony Is Uncorroborated and Biased,
`and Therefore Legally Insufficient ......................................................22
`
`1.
`
`2.
`
`Kawashima’s Testimony Is Uncorroborated ............................22
`
`Kawashima Is Not a Disinterested Witness ..............................23
`
`IV. THE CLAIMS ARE NOT OBVIOUS ..........................................................24
`
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`PROTECTIVE ORDER MATERIAL
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`CBM2016-00054
`U.S. Patent 7,693,768
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`A.
`
`B.
`
`C.
`
`TSE and Belden Fail to Render Obvious the Claimed
`“Order Entry Region” and “Setting a Plurality of
`Parameters ... By a Single Action . . .” ................................................25
`
`TSE and Belden Fail to Render Obvious the Claimed “At
`Least One First [/ Second] Fixed Location” and
`“Updating the Display of the First [/ Second] Indicator” ...................27
`
`Petitioners Have Failed to Set Forth A Motivation To
`Combine TSE and Belden ...................................................................29
`
`D. Dependent Claim 6 ..............................................................................32
`
`E.
`
`F.
`
`Dependent Claim 7-9...........................................................................33
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`Dependent Claim 11 ............................................................................35
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`V.
`
`REAL-WORLD EVIDENCE PROVES THE CLAIMED
`INVENTION IS NOT OBVIOUS .................................................................35
`
`A.
`
`B.
`
`The Claimed Invention Went Against Conventional
`Wisdom................................................................................................36
`
`Overwhelming Secondary Considerations Prove That the
`Invention Is Not Obvious ....................................................................43
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`Problems with Conventional GUI Tools Went
`Unrecognized ............................................................................46
`
`The Invention Provided Unexpected Results............................48
`
`The Invention Was Received with Initial
`Skepticism, but Was Ultimately Demanded by
`Traders.......................................................................................51
`
`The Invention Enjoyed Tremendous Commercial
`Success ......................................................................................56
`
`The Invention Was Widely Copied ..........................................62
`
`The Invention Received Widespread Praise in the
`Industry .....................................................................................69
`
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`PROTECTIVE ORDER MATERIAL
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`CBM2016-00054
`U.S. Patent 7,693,768
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`7.
`
`8.
`
`9.
`
`The Invention Also Received Widespread Industry
`Acquiescence ............................................................................71
`
`Others Failed to Make The Invention .......................................72
`
`Other Evidence Proves Non-obviousness .................................75
`
`C.
`
`The Real-World Evidence Establishes That TSE Would
`Have Been Rejected by a POSA, Which Provides an
`Additional Basis for Non-Obviousness ...............................................76
`
`VI. THE CLAIMS SATISFY SECTION 101 .....................................................78
`
`A.
`
`B.
`
`C.
`
`D.
`
`The Federal Circuit Recently Affirmed The Patentability
`Of The ‘768 Parent’s Claims ...............................................................78
`
`TT’s Claims Are Not Directed To An “Abstract Idea”
`Under Alice Prong One .......................................................................79
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`Petitioners Ignore and Overgeneralize the Claim
`Elements ....................................................................................79
`
`TT’s Claims Pass Part I of Alice Because They Set
`Forth a Specific Implementation That Solves a
`Problem With Computer Technology .......................................81
`
`TT’s Claims Pass Part I of Alice Because They
`Are Undoubtedly Not Abstract .................................................83
`
`TT’s Claims Pass Part I of Alice Because GUIs
`Are Technology .........................................................................84
`
`TT’s Claims Are Not Directed to Fundamental
`Economic or Longstanding Commercial Practices,
`or Business Methods .................................................................85
`
`The Claims Pass Part II of Alice Because They Recite an
`Inventive Concept................................................................................87
`
`The Claimed Invention Is Patent-Eligible Under §101
`Because the Claims Do Not Cover Signals .........................................89
`
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`PROTECTIVE ORDER MATERIAL
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`CBM2016-00054
`U.S. Patent 7,693,768
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`VII. CBM REVIEW ..............................................................................................90
`
`A.
`
`The ’768 Patent Does Not Claim “Data Processing” or
`“Other Operation[]” (e.g., a Business Method) ..................................90
`
`B.
`
`The ’768 Patent Falls Under the Technological Exception ................91
`
`VIII. CONCLUSION ..............................................................................................93
`
`
`
`
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`iv
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`PROTECTIVE ORDER MATERIAL
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`CBM2016-00054
`U.S. Patent 7,693,768
`
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`The claims of U.S. Patent No. 7,693,768 (“the ’768 patent,” Ex.1001) are
`
`not obvious because TSE (Ex.1016) is not prior art, the cited references do not
`
`disclose all of the claimed elements, and there is no motivation to combine the
`
`references. Petitioners have failed to meet their burden on all of these issues. As
`
`such, they have failed to make out even a prima facie case of obviousness – let
`
`alone establish obviousness by a preponderance of evidence. Moreover,
`
`overwhelming secondary considerations actually prove that the claims are not
`
`obvious. Additionally, the ’768 patent is directed to statutory subject matter under
`
`§ 101, and is not eligible for CBM review in the first instance. Petitioners have
`
`failed to prove otherwise.
`
`I.
`
`OVERVIEW OF CLAIMED INVENTION
`
`The electronic trading industry, both prior to the ‘768 invention and for a
`
`period thereafter, maintained a widely accepted conventional wisdom regarding the
`
`design of graphical user interface (“GUI”) tools for order entry on electronic
`
`exchanges. Ex. 2169, ¶49. Specifically, prior GUIs provided the ability to enter and
`
`send orders to an electronic exchange using order tickets or dynamic order entry
`
`screens. Ex.2169, ¶50. Order tickets were known to be accurate but slow:
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`Id.
`
`In prior dynamic order entry screens, such as Figure 2 of the ’768 patent
`
`(with annotations below), users entered and sent orders by directly interfacing with
`
`displayed prices (e.g., using a mouse). These types of GUIs provided rapid order
`
`entry via fixing locations for the inside market (best bid and best ask) prices.
`
`Ex.1001, 5:14-25; Ex.2169, ¶56. The top row of Figure 2 displays the inside
`
`market, which is the focus of trading activity because these offers reflect the
`
`current price of the commodity. Trading Techs. Int’l, Inc. v. eSpeed, Inc., 595 F.3d
`
`1340, 1345 (Fed. Cir. 2010) (“eSpeed”).
`
`
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`U.S. Patent 7,693,768
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`While these GUIs were widely used and faster than order tickets, Brumfield
`
`noticed that the structure, make-up, and functionality of Figure 2-style GUIs
`
`caused him a significant problem – the potential to miss his intended price. Ex.
`
`1001, 2:57-60; Ex. 2169, ¶¶85-86; Ex. 2212, 2214, 2535.
`
`As shown below (Time 1), the trader intends to get the price of 111175.
`
`However, because this GUI tool that fixed the best bid and best ask in the same
`
`location, the intended price of 111175 unpredictably changes positions just before
`
`the trader clicks on it and he misses his intended price, sending an order at the
`
`higher price of 111180 (Time 2). Id.
`
`
`
`Time 1
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`U.S. Patent 7,693,768
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`Time 2
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`
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`Ex. 2212, 2214.
`
`The Federal Circuit describes this problem as follows:
`
`Returning to the prior art, these displays had grids for the inside market that
`
`never changed.… A trader who wished to place an order at a particular price
`
`would miss that market opportunity if the inside market moved as the trader
`
`tried to enter an order. In a fast moving market, missing an intended price
`
`could happen often and have very significant economic consequences.
`
`eSpeed, 595 F.3d at 1345-6; Ex. 1001, 2:57-60; see also Trading Techs. Int’l, Inc.
`
`v. CQG, Inc., 2016-1616, slip op. at 3 (Fed. Cir. Jan. 18, 2017) (“The patents
`
`explain problems that arise when a trader attempts to enter an order at a particular
`
`price, but misses the price because the market moved before the order was entered
`
`and executed.”).
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`U.S. Patent 7,693,768
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`Recognizing problems caused by the construction of the order ticket
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`(accurate but slow) and Figure 2-style (fast but not accurate) GUI tools, Brumfield
`
`invented a GUI tool with new structure, make-up, and functionality, that the
`
`Federal Circuit recognized “facilitates more accurate and efficient orders in this
`
`trading environment.” eSpeed, 595 F.3d at 1345 (emphasis added); Ex. 1001, at
`
`Abstract, 3:5-9 (“invention ensure[s] fast and accurate execution of trades…”),
`
`3:53-58 (same), 6:59-7:3 (same), 7:25-27 (“Mercury further increases the speed of
`
`trading and the likelihood of entering orders at desired prices with desired
`
`quantities.”). Thus, the specification does not simply “purport to solve the
`
`problem of reducing the amount of time to place a trade order” (Inst. Dec. at 14);
`
`rather, the claims recite how the problem of missing the intended price is solved
`
`(Pet. at 8-9). Ex. 2169, ¶¶88-90.
`
`The invention also diverged from conventional GUI tools of the time by
`
`displaying prices for which there are no quantities (using precious screen real
`
`estate) and allowing the most critical information (inside market), to move and
`
`even go off the top/bottom of the price axis. Ex.2169, ¶¶73-74; Ex.1001, 6:59-7:3;
`
`Ex. 2214.
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`CBM2016-00054
`U.S. Patent 7,693,768
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`II. CLAIM CONSTRUCTION
`
`A.
`
`“Single Action”
`
`The Petitioners’ construction of the term “single action,” which was adopted
`
`by the Board, is sufficient for these proceeding so long as the construction is
`
`limited to “an action by a user . . .” or “one action by a user . . .” because the
`
`claim itself specifically identifies that the action be a “single” action. Any other
`
`construction would be contrary to the specification and the plain and ordinary
`
`meaning of the language of the claim, and thus would not be reasonable.
`
`B.
`
`“Computer Readable Medium Having Program Code Recorded
`Thereon”
`
`The Board has determined that this term should be construed as “any
`
`medium that participates in providing instruction to a processor for execution and
`
`having program code recorded thereon.” As addressed infra, in Section VI.D, this
`
`construction should be modified to clarify that program code cannot be recorded
`
`on signals. One of ordinary skill in the art, under any reasonable definition, would
`
`not read a computer-readable medium with software recorded (i.e., stored) on it to
`
`be directed to a transitory, propagated signal, carrier wave or other transmission.
`
`This is because the act of recording, or storing, something on or in a medium is
`
`intended to give permanence to the data being recorded, such that it can later be
`
`accessed and retrieved. A propagated signal or other transmission, due to its
`
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`U.S. Patent 7,693,768
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`inherent transience, would be unsuitable for that purpose. In view of this, the
`
`broadest reasonable interpretation of “computer readable medium having program
`
`code recorded thereon” does not encompass transitory media.
`
`C.
`
`“Order Entry Region”
`
`Each independent claim of the ‘768 patent recites an “order entry region”
`
`that includes “a plurality of locations for receiving single action commands to send
`
`trade orders.” Ex. 1001, 11:65-67. The independent claims further recite that the
`
`plurality of locations includes a “first fixed location” and a “second fixed
`
`location,” where these locations “correspond” to first and second price level along
`
`a price axis. The patent also discloses sending an order by selecting a location in
`
`the order entry region through a single action of a user input device to both set a
`
`plurality of parameters for the trade order and send the trade order to the electronic
`
`exchange. Under the broadest reasonable interpretation, the claimed order entry
`
`region includes a plurality of locations, each location corresponding with a
`
`different price level along the price axis (e.g., aligned with a price level), each
`
`location being configured to be selected by a single action command to both set a
`
`plurality of parameters for a trade order and to send the trade order to an electronic
`
`exchange. Ex. 2169, ¶28. The only proper construction of “order entry region” in
`
`light of the specification is a region that includes locations that correspond to price
`
`11
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`CBM2016-00054
`U.S. Patent 7,693,768
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`levels along a price axis, where the locations receive single action commands to
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`both set parameters and send a trade order; indeed, this is the only example of an
`
`order entry region disclosed in the specification. Id.; Ex. 1001, 4:48-53, 7:24-31,
`
`8:64 – 9:2, 9:46 – 10:60. Further, the benefit of order entry speed (Ex. 2169 ¶¶75,
`
`89, and 107) flows directly from being able to set parameters and send the order
`
`with one action in a location corresponding to a price level.
`
`D.
`
` “Setting a Plurality of Parameters for a Trade Order Relating to
`the Commodity and Sending the Trade Order to the Electronic
`Exchange in Response to a Selection of a Particular Location of
`the Order Entry Region by a Single Action of a User Input
`Device”
`
`Each independent claim of the patent recites the phrase “setting a plurality of
`
`parameters for a trade order relating to the commodity and sending the trade order
`
`to the electronic exchange in response to a selection of a particular location of the
`
`order entry region by a single action of a user input device.” Ex. 1001, 12:32-36.
`
`The broadest reasonable interpretation of this phrase requires that the single action
`
`of the user input device set a plurality of parameters for a trade order and also send
`
`the trade order to an electronic exchange by selecting a particular location of the
`
`order entry region. For the same reasons discussed above, both setting parameters
`
`and sending the trade order from the order entry region by a single action
`
`command is the only proper construction in light of the specification. Again, this
`
`12
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`PROTECTIVE ORDER MATERIAL
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`CBM2016-00054
`U.S. Patent 7,693,768
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`is the only example of order entry disclosed in the specification in accordance with
`
`the invention. Ex. 1001, 4:48-53, 7:24-31, 8:64 – 9:2, 9:46 – 10:60. Indeed, single
`
`action order entry results in one of the benefits of the invention, which is speed.
`
`Moreover, the specification distinguishes the claimed single action order entry
`
`from other types of slower, multiple action order entry. E.g., Ex. 1001, 2:43-50.
`
`E.
`
` “Entered Order Indicator in Association with a Price Level
`Along the Price Axis”
`
`The ’768 patent discloses an “entered/working” column (E/W) that “displays
`
`the current status of the trader’s orders.” Ex.1001, 7:50-52, Figs. 3-4. The claimed
`
`entered order indicator is displayed in alignment with the corresponding price level
`
`on the price axis and indicates something about the user’s own orders working at
`
`that price level. Ex.1001, 7:52-64; Ex.2169, ¶30. “Entered” means the order is
`
`pending at the electronic exchange and has not yet been filled. Ex. 1001, 7:50-58.
`
`A POSA would readily recognize that the entered order indicator must indicate to
`
`the user that the user has an order at a particular price level along the price
`
`axis. See, e.g., Ex. 1001 at 7:50-58; Ex. 2169, ¶30.
`
`F.
`
`“Centering Command”
`
`The ‘768 patent explains that the user can execute a “re-centering command”
`
`with, for example, a single click of a mouse button by a user, which will “re-center
`
`the inside market on the trader’s screen.” Ex.1001, 8:49-54. A POSA would
`
`13
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`PROTECTIVE ORDER MATERIAL
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`U.S. Patent 7,693,768
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`readily recognize that “centering” the display “upon receipt of a centering
`
`instruction” causes the first and second indicators to be immediately displayed
`
`substantially at the center of the displayed range of price levels of the price axis as
`
`a result of manual centering command. Id.; Ex. 2169, ¶32. The broadest
`
`reasonable construction of “centering command” requires that the command be
`
`sent from a user because the example of a centering command disclosed in the
`
`specification is one from a user. E.g., Ex.1001, 8:49-54.
`
`III. TSE IS NOT PRIOR ART
`
`Petitioners’ § 103 grounds hinge on TSE qualifying as prior art. Petitioners
`
`have failed meet their burden on this issue and, as a result, their § 103 grounds fail.
`
`Mere identification of a date in Ex. 1016 (“TSE”) fails to establish that it is a
`
`“printed publication,” In re Wyer, 655 F.2d 221, 227 (C.C.P.A. 1981); Petitioners
`
`must show TSE was publicly accessible. Petitioners’ sole evidence—
`
`Kawashima’s prior testimony—cannot support a final written decision that TSE is
`
`prior art. Kawashima is not a disinterested witness and his testimony is
`
`uncorroborated. Even if considered, it is insufficient to show that TSE was
`
`“available to the interested public” exercising “reasonable diligence.”
`
`Public accessibility is the “touchstone” for whether a document qualifies as a
`
`printed publication. Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1348
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`14
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`PROTECTIVE ORDER MATERIAL
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`U.S. Patent 7,693,768
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`(Fed. Cir. 2016). Public accessibility is shown when the reference was
`
`“disseminated or otherwise made available to the extent that persons interested and
`
`ordinarily skilled in the subject matter or art exercising reasonable diligence, can
`
`locate it.” Id. at 1348 (citation omitted). Here, no evidence shows that TSE was
`
`disseminated to POSAs or that POSAs exercising “reasonable diligence” could
`
`locate TSE. Merely providing the document to someone is insufficient to show
`
`that it was publicly accessible to the POSA upon "reasonable diligence." In re
`
`Cronyn, 890 F.2d 1158, 1160-61 (Fed. Cir. 1989).
`
`A. The Evidence Fails to Prove TSE Was Publicly Accessible
`
`Petitioners rely solely on Kawashima's previous testimony (Ex. 1019),
`
`making the conclusory argument that TSE was publicly accessible merely because
`
`it was allegedly given to TSE participants with no restrictions. After the Board
`
`ordered Kawashima's cross-examination, the parties agreed to limit the scope to
`
`two narrow topics: whether TSE qualifies as prior art and, specifically in the
`
`petition or statement that TSE was published in August of 1998, as well as, of
`
`course, the credibility of Mr. Kawashima. CBM2015-00181, Ex.1043, 7:8-15
`
`(emphasis added). Kawashima’s cross-examination did not cure Petitioners’
`
`deficiencies. There is no testimony of who actually picked up the documents or
`
`whether they were POSAs. Kawashima does not know what, if anything,
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`participants did with the manuals once picked up. Ex.2163, 60:25-61:3. And there
`
`is no evidence for how a POSA seeking the document could locate it. Therefore,
`
`TSE fails to qualify as prior art.
`
`1.
`
`TSE Was Not Distributed to POSAs
`
`Both parties agree that the POSA must have “at least 2 years working
`
`experience designing and/or programming graphical user interfaces.” Pet. 13
`
`(emphasis added); Ex.1019, ¶57; Ex.2169 ¶24. There is no evidence that TSE was
`
`provided to POSAs.
`
`Kawashima admitted the manual was intended for traders using the
`
`terminals “who actually did trading,” and not “written for people who were
`
`designing graphical user interfaces.” Ex.2163, 43:22-44:4. Rather, the Tokyo Stock
`
`Exchange provided physical terminals, which came pre-installed with software,
`
`and Participants were contractually prohibited from modifying the terminals and
`
`software. Ex.2176, 9, 13, 16, 21.1 There is no evidence that any Participant
`
`employed POSAs, and Kawashima does not know what Participants did with TSE
`
`after they purportedly picked them up. Ex.2163:60:25-61:3.
`
`
`1 Japanese original, Ex.2175; Certificate of Translation, Ex.2177.
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`Other than these important admissions, the record is unchanged. There is no
`
`evidence that TSE was publicly available to POSAs, no evidence that any
`
`particular person or entity received TSE, and no evidence how a POSA could
`
`locate TSE even if looking for it.
`
`2.
`
`There Is No Evidence TSE Was Available to the POSA
`Exercising Reasonable Diligence
`
`There is no evidence that “persons interested and ordinarily skilled in the
`
`subject matter or art exercising reasonable diligence, can locate [TSE].” See Blue
`
`Calypso, 815 F3d at 1348.
`
`As set forth above, the TSE manual was intended only for people who
`
`actually traded, not designers of GUI’s. Ex.2163, 43:22-44:4. There is no
`
`evidence that any Participants employed POSAs. Even if they did, Participants
`
`were contractually prohibited from modifying the terminals or software, Ex.1019
`
`at 0082:6-11; Ex.2176, 9, 13, 16, 21; therefore, they had no reason to provide the
`
`manual to GUI designers.
`
`Nor is there any evidence that POSAs could have located TSE using
`
`“reasonable diligence.” Blue Calypso, 815 F.3d at 1349. There is no evidence of
`
`“meaningful assurance” that the interested public searching for TSE would find it,
`
`such as being placed in a library, indexed, or catalogued. See id.; In re Cronyn, 890
`
`F.2d at 1161. Nor is there evidence that “a person interested in
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`[designing/developing GUIs] would have been independently aware” of TSE, let
`
`alone how they would locate it. Blue Calypso, 815 F.3d at 1349-50. To the
`
`contrary, no evidence shows how a POSA would have found TSE through any type
`
`of search nor any evidence directing the POSA to locate TSE. Id. at 1350.
`
`This case is strikingly similar to the final written decisions of the PTAB in
`
`GoPro, Inc., v. Contour IP Holding, LLC, IPR2015-01078, Paper 54 (Oct. 26,
`
`2016) (“GoPro”), finding that a catalog did not constitute a “printed publication”
`
`under 35 U.S.C. § 102 because the petitioner failed to meet its burden of
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`establishing that it was publicly accessible. In GoPro, hundreds of copies of a
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`GoPro catalog were distributed, without restriction, at a tradeshow having
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`approximately 150 vendors and “over 1000” attendees. GoPro, p. 23. The
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`tradeshow was not advertised to the public, nor was it open to the public. Id. The
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`PTAB ruled that the GoPro Catalog did not qualify as prior art for two reasons.
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`First, the petitioner failed to provide any “evidence that the 2009 Tucker
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`Rocky Dealer Show was advertised or announced to the public, such that a person
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`interested and ordinarily skilled in the art from the public would have known about
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`it and could have obtained a copy of the GoPro Catalog there.” Id. The PTAB
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`stated:
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`[Petitioner’s declarant], however, does not explain how any member of the
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`general public (as opposed to just Tucker Rocky’s members) would have
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`known about the show.
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`Id.
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`Second, the Petitioner failed to provide any evidence “that the GoPro
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`Catalog was disseminated or otherwise made available at the 2009 Tucker Rocky
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`Dealer Show to persons skilled in the art.” Id. at 25-28. Importantly, on this
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`second point, the PTAB stated:
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`Petitioner does not provide any proof that the 2009 Tucker Rocky Dealer
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`Show would have been attended by, for example, camera engineers,
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`designers, or developers, who would have a technical background with
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`digital video cameras and fall within the above definition of someone
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`ordinary skilled in the art. Certainly, it is possible that such an individual
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`could have been in attendance, but speculation is insufficient for Petitioner
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`to meet its burden.
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`* * *
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`Further, we agree with Patent Owner that, even assuming that “those
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`interested in buying [Petitioner’s] devices” were in attendance in the show,
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`that does not establish that any of those individuals were ordinary skilled
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`in the art.
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`Id. at 26-27 (bold and underline added, italics in original).
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`Here, virtually the identical facts are present. Even assuming the TSE
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`manual was actually distributed to TSE members (which Patent Owner (“TT”)
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`disputes), Petitioners have failed to show that TSE advertised or announced to the
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`public that the TSE manual was allegedly being made available to TSE members,
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`such that a POSA from the public would have known about such distribution and
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`could have obtained a copy of the TSE manual from TSE members or from the
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`TSE itself. On this point, Petitioners have failed to provide any evidence how any
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`member of the public (as opposed to just TSE members) would have known about
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`the TSE manual. Petitioners’ argument that indexing in a library is not required to
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`show public accessibility misses the point. Indexing in a library is merely one way
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`to show that a POSA could have obtained the TSE manual using reasonable
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`diligence. But Petitioners have failed to point to any other type of evidence
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`(advertising, posting on website, etc.) that would have permitted a POSA in the
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`general public to obtain the TSE manual from TSE members (again, assuming they
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`had it) or from the TSE itself.
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`Moreover, Petitioners have failed to provide any evidence that the TSE
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`manual was disseminated or otherwise made available to a POSA (even if it was
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`distributed to TSE members). On this point, the GoPro proceedings make clear
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`that “dissemination” requires a showing of dissemination to a person of ordinary
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`skill in the art and that dissemination to select members of the public in general is
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`not sufficient to render a document a printed publication. Id. at 19-21.2 Here,
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`Petitioners have taken the exact opposite position by claiming that there is no
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`requirement that TSE be “distributed to POSAs,” and instead argue that it is
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`sufficient to disseminate the document to select members of the “public.” Pet. 12.
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`Any finding that dissemination to select members of the public is sufficient to
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`establish public accessibility (versus dissemination to a POSA) will conflict with
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`2 Petitioner in GoPro advanced the theory that “there are two different standards
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`depending on the factual circumstances of the case: for ‘catalog’ cases, like a thesis
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`stored at a university, the standard is accessibility to persons interested and
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`ordinarily skilled in the art, but for ‘dissemination [cases], like at a trade show,’ the
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`standard is only accessibility to the interested public.” GoPro at 19-20. In GoPro,
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`the Board rejected that theory based on Federal Circuit precedent. Id. at 20-21.
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`the decisions in GoPro along with binding precedent from the Federal Circuit.
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`GoPro at 18-28; Blue Calypso, 815 F3d at 1348.
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`B. Kawashima’s Testimony Is Uncorroborated and Biased, and
`Therefore Legally Insufficient
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`Even if the Board ignores the deficiencies in Petitioners’ evidence,
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`Kawashima’s testimony cannot support TSE qualifying as a prior art printed
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`publication because: (1) it is uncorroborated and (2) he is a biased witness.
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`1. Kawashima’s Testimony Is Uncorroborated
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`“[C]orroboration is required of any witness whose testimony alone is
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`asserted to invalidate a patent….” Tex. Digital Sys., Inc. v. Telegenix, Inc., 308
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`F.3d 1193, 1217 (Fed. Cir. 2002), overruled on other grounds, Phillips v. AWH
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`Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). Corroboration is particularly
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`important where the interested witness is the sole basis to establish public
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`accessibility of a document. See Netsirv & Local Motion MN v. Boxbee, Inc.,
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`PGR2015-00009, Paper 10 (PTAB Aug. 4, 2015). Kawashima has twice admitted
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`that there is no list of who allegedly received TSE. Ex.1019, 0069:2-4; Ex.2163,
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`56:11-15; see Juicy Whip, Inc. v. Orange Bang, Inc., 292 F.3d 728, 742 (Fed. Cir.
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`2002) (oral evidence alone insufficient to invalidate a patent without written
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`corroboration). But there is no evidence of when the manuals were actually picked
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`up or by whom. Kawashima’s testimony remains uncorroborated, and even if
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`Kawashima testified that a distribution occurred, there is no corroboration of such
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`testimony. As the Petition’s sole evidence, this lack of corroboration renders the
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`evidence legally insufficient to show TSE qualifies as a printed publication.
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`2. Kawashima Is Not a Disinterested Witness
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`Kawashima is not a disinterested witness. Kawashima’s employer—the
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`Tokyo Stock Exchange—challenged TT’s Japanese counterpart to U.S. Patent No.
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`6,766,304, which was asserted in litigation when Kawashima previously testified,
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`and is part of the same family as the ’768 patent. Ex.2163, 32:5-8; Ex.1019, 0108,
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`0110; Ex.2160, 13; Ex.2056. The Tokyo Stock Exchange provided documents,
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`including the same TSE document asserted by Petitioners, to the Japanese Patent
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`Office. Ex.2163, 35:21-36:11, 39:3-40:20, 42:14-43:10; Ex.1019, 0108:1-15,
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`0109:7-15, 0111:11-0112:5; Ex.2160, 1. The Tokyo Stock Exchange wanted the
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`Japanese Patent Office to rely on these documents to prevent TT from obtaining
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`the