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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 CBM2016-00087
`Patent 7,412,416 B2
`___________________
`
`
`
`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
`
`
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`
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`
`
`CBM2016-00087
`U.S. Patent No. 7,412,416
`
`TABLE OF CONTENTS
`
`Statement of Relief Requested ........................................................................ 1
`
`Standard of Review.......................................................................................... 1
`
`I.
`
`II.
`
`III. Arguments ........................................................................................................ 1
`
`A.
`
`B.
`
`The Board misapprehended or overlooked the principle that
`obviousness cannot be defeated by attacking references
`individually where the invalidity grounds are based on
`combinations of references. ................................................................... 2
`
`The Board misapprehended or overlooked the principle that a
`determination of obviousness based on teachings from multiple
`references does not require an actual, physical substitution of
`elements or that the inventions of the references are physically
`combinable. ........................................................................................... 4
`
`IV. Conclusion ....................................................................................................... 7
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`- i -
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`CBM2016-00087
`U.S. Patent No. 7,412,416
`
`I.
`
`Statement of Relief Requested
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`Petitioners respectfully request rehearing of the Institution Decision (Paper
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`11) because the Board misapprehended or overlooked well-settled principles of
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`obviousness law in finding that the Petition (Paper 3) failed to demonstrate that
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`claims 1-24 of U.S. Patent No. 7,412,416 (Exhibit 1001; “’416 patent”) are more
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`likely than not obvious over TSE (Exhibits 1015, 1016), Bay (Exhibit 1042), and
`
`Subler (Exhibit 1020).
`
`II.
`
`Standard of Review
`
`A request for rehearing “must specifically identify all matters the party
`
`believes the Board misapprehended or overlooked.” See 37 C.F.R. § 42.71(d).
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`Section 42.71(d) further provides that the request must identify where each matter
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`was previously addressed.
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`III. Arguments
`The Board misapprehended or overlooked two well-settled principles of
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`obviousness law in the Institution Decision: (1) that obviousness cannot be
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`defeated by attacking references individually where the invalidity grounds are
`
`based on combinations of references; and (2) that a determination of obviousness
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`based on teachings from multiple references does not require an actual, physical
`
`substitution of elements or that the inventions in the references be physically
`
`combinable.
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`- 1 -
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`
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`CBM2016-00087
`U.S. Patent No. 7,412,416
`A. The Board misapprehended or overlooked the principle that
`obviousness cannot be defeated by attacking references
`individually where the invalidity grounds are based on
`combinations of references.
`
`Obviousness cannot be defeated by attacking references individually where
`
`the invalidity grounds are based on combinations of references. See In
`
`re Keller, 642 F.2d 413 (C.C.P.A. 1981); In re Merck & Co., Inc., 800 F.2d 1091
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`(Fed. Cir. 1986); M.P.E.P. § 2145. The Institution Decision misapprehended or
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`overlooked this principle in rejecting the Petition’s proposed combination of TSE
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`and Bay to teach or suggest the “displaying a chart . . .” limitation of independent
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`claims 1 and 14. (Institution Decision, 20-23.)
`
`The Petition proposes combing TSE and Bay to teach or suggest “displaying
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`a chart on a graphical user interface comprising a vertical axis of price values and a
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`horizontal axis of time.” (Petition, 48-53.) It relies on TSE to teach a chart on a
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`graphical user interface, explaining that “TSE discloses a GUI that includes a
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`Board Screen” (id., 42) and that “TSE’s Board Screen is a chart that displays
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`current bid and offer prices and quantities in the market” (id., 48). The Petition
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`further explains that TSE’s chart comprises a vertical axis of price values, but TSE
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`fails to explicitly teach a horizontal axis of time. (Id.)
`
`The Board agreed that TSE teaches displaying a chart on a graphical user
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`interface. It found that TSE’s “trading terminal displays a GUI for depicting
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`market information on a Board/Quotation Screen.” (Institution Decision, 15.) It
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`- 2 -
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`CBM2016-00087
`U.S. Patent No. 7,412,416
`also found that “[t]he Board/Quotation Screen includes a central order price at
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`column 11—a price axis.” (Id., 16.) Indeed, the Board recognized that “Petitioner
`
`relies on TSE for its description of displaying a chart on a graphical user
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`interface comprising a vertical axis of price values.” (Id., 20 (emphasis added).)
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`Yet the Board rejected the proposed combination of TSE and Bay because
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`“Petitioner has not demonstrated . . . that Bay describes or teaches displaying a
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`chart on a graphical user interface.” (Id., 20-21.) In so doing, the Board
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`improperly rejected the Petition’s proposed combination by focusing solely on Bay
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`even though the Petition relies on the combination of TSE and Bay to teach or
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`suggest the “displaying a chart . . .” limitation of claims 1 and 14. The Board also
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`overlooked the fact that TSE teaches the very feature that it found wanting in Bay.1
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`In sum, it is undisputed that TSE teaches displaying a chart on a graphical
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`user interface and that the Petition relies on this teaching. It is also undisputed that
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`Bay teaches a horizontal axis of time. (Id., 18-19.) It is also undisputed that the
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`Petition proposes combining TSE and Bay to teach the “displaying a chart . . .”
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`limitation of claims 1 and 14. Petitioners are not required to demonstrate that Bay
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`1 The Board also overlooked the fact that Subler also teaches a graphical
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`user interface. (Institution Decision, 19.) Thus, at least two of the three references
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`in the proposed combination teach a graphical user interface (i.e., TSE and Subler),
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`and at least two of the three references teach displaying a chart (i.e., TSE and Bay).
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`- 3 -
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`
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`CBM2016-00087
`U.S. Patent No. 7,412,416
`also teaches a chart on a graphical user interface in order to teach or suggest the
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`“displaying a chart . . .” limitation. Even if the Board disagrees that Bay teaches a
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`graphical user interface, that does not defeat the proposed combination of TSE and
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`Bay as a matter of law. The Board’s holding to the contrary violates the principle
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`against attacking references individually when the invalidity ground is based on a
`
`combination of references, and thus should be reversed.
`
`B.
`
`The Board misapprehended or overlooked the principle that a
`determination of obviousness based on teachings from multiple
`references does not require an actual, physical substitution of
`elements or that the inventions of the references are physically
`combinable.
`
`“It is well-established that a determination of obviousness based on
`
`teachings from multiple references does not require an actual, physical substitution
`
`of elements.” In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012). Nor does it
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`require that “the inventions of the references be physically combinable to render
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`obvious the invention under review.” In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir.
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`1983); see also In re Keller, 642 F.2d 413, 425 (CCPA 1981) (“The test for
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`obviousness is not whether the features of a secondary reference may be bodily
`
`incorporated into the structure of the primary reference . . . .”). The Board
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`misapprehended or overlooked these directives when it rejected the Petition’s
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`proposed combination of TSE and Bay.
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`The Institution Decision improperly attempts to force-fit Bay’s chart into
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`- 4 -
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`
`
`CBM2016-00087
`U.S. Patent No. 7,412,416
`TSE’s GUI. (Institution Decision, 21-22.) First, it finds that an actual, physical
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`substitution of Bay’s chart into TSE’s GUI would fail. (Id., 21 (questioning
`
`whether “Bay’s chart would substitute for the TSE display” in the proposed
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`combination).) Next, it finds that bodily incorporating Bay’s chart into TSE’s
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`display would fail. (Id., 21-22 (finding that “adding Bay’s entire display to TSE’s
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`display” would yield “yet another vertical axis of price values” and “duplicat[e]
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`data already presented by TSE’s GUI”).) But neither analysis is germane to the
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`obviousness determination. Indeed, “assertions that [Bay] cannot be incorporated
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`into [TSE] are basically irrelevant.” In re Etter, 756 F.2d 852, 859 (Fed. Cir.
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`1985) (en banc) (emphasis added).
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`Rather, “the test for obviousness is what the combined teachings of the
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`references would have suggested to those having ordinary skill in the art.” In re
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`Mouttet, 686 F.3d at 1333. The Petition performs this test and demonstrates that
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`the disputed limitation is obvious. It explains that TSE teaches displaying a chart
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`on a graphical user interface, that the chart includes a vertical axis of price values,
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`and displaying prices with respect to time. (Petition, 42, 48; see also Institution
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`Decision, 15-17 (acknowledging that TSE teaches these features).) It explains that
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`“Bay discloses displaying, on a computer monitor, a graph or a chart that has a
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`vertical axis of price values and a horizontal axis of time.” (Petition, 49; see also
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`Institution Decision, 18-19, 21 (acknowledging that Bay teaches these features).)
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`- 5 -
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`CBM2016-00087
`U.S. Patent No. 7,412,416
`And the Petition explains why a POSITA would have been motivated to combine
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`Bay’s teachings with TSE, pointing to Bay’s express teachings and a 1971 treatise
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`by Arms (Exhibit 1033), both of which explain that plotting market data along a
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`vertical price axis and a horizontal time axis is desirable for interpreting the market
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`data and is extremely well known. (Petition, 51-53.)
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`The Institution Decision’s attempt to force-fit Bay’s chart into TSE’s GUI
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`misapprehended or overlooked the proper test for obviousness, and thus should be
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`reversed.
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`- 6 -
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`
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`CBM2016-00087
`U.S. Patent No. 7,412,416
`
`IV. Conclusion
`At the end of the day, the ’416 patent claims nothing more than displaying
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`market data in a well-known format and using well-known GUI concepts for
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`trading financial products. (Petition, 1-2.) The Petition applied references (TSE,
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`Bay, and Subler) that teach these basic concepts, and cites to expansive treatises
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`(Cooper, Schneiderman, and Arms) to corroborate its positions.
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`In view of the above, Petitioners respectfully request that the Board rehear
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`and reverse its Institution Decision, and institute review of claims 1-24 as obvious
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`over the TSE combinations presented in the Petition.
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`
`
`
`
`Date: December 15, 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
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`- 7 -
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`CBM2016-00087
`U.S. Patent No. 7,412,416
`CERTIFICATION OF SERVICE
`
`The undersigned hereby certifies that the foregoing PETITIONERS’
`
`REQUEST FOR REHEARING was served electronically via e-mail on
`
`December 15, 2016, in its entirety on Attorneys for Patent Owner:
`
`Erika H. Arner, Joshua L. Goldberg, Kevin D. Rodkey,
`Rachel L. Emsley, Cory C. Bell
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
`erika.arner@finnegan.com
`joshua.goldberg@finnegan.com
`kevin.rodkey@finnegan.com
`rachel.emsley@finnegan.com
`cory.bell@finnegan.com
`Trading-Tech-CBM@finnegan.com
`
`Steven F. Borsand, Jay Q. Knobloch
`TRADING TECHNOLOGIES INTERNATIONAL, INC.
`tt-patent-cbm@tradingtechnologies.com
`jay.knobloch@tradingtechnologies.com
`
`Michael D. Gannon, Leif R. Sigmond, Jr., Jennifer M. Kurcz
`MCDONNELL BOEHNEN HULBERT & BERGHOFF LLP
`gannon@mbhb.com
`sigmond@mbhb.com
`kurcz@mbhb.com
`
`
`
`
`Date: December 15, 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
`
`
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