Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`Paper 23
`Entered: November 9, 2016
`
`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.,
`Petitioner,
`
`v.
`
`TRADING TECHNOLOGIES INTERNATIONAL, INC.,
`Patent Owner.
`_______________
`
`Case CBM2016-00032
`Patent 7,212,999 B2
`_______________
`
`
`Before SALLY C. MEDLEY, MEREDITH C. PETRAVICK, and
`JEREMY M. PLENZLER, Administrative Patent Judges.
`
`
`PETRAVICK, Administrative Patent Judge.
`
`
`
`
`
`
`
`DECISION
`Denying Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`
`Tel: 571-272-7822
`
`
`
`Paper 23
`Entered: November 9, 2016
`
`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.,
`Petitioner,
`
`v.
`
`TRADING TECHNOLOGIES INTERNATIONAL, INC.,
`Patent Owner.
`_______________
`
`Case CBM2016-00032
`Patent 7,212,999 B2
`_______________
`
`
`Before SALLY C. MEDLEY, MEREDITH C. PETRAVICK, and
`JEREMY M. PLENZLER, Administrative Patent Judges.
`
`
`PETRAVICK, Administrative Patent Judge.
`
`
`
`
`
`
`
`DECISION
`Denying Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`
`
`CBM2016-00032
`Patent 7,212,999 B2
`
`
`I. INTRODUCTION
`On August 30, 2016, IBG LLC, Interactive Brokers LLC,
`TradeStation Group, Inc., and TradeStation Securities, Inc. (collectively,
`“Petitioner”) filed a Request for Rehearing (Paper 19, “Req. Reh’g”) of our
`Decision (Paper 16, “Dec.”) denying inter partes review of Petitioner’s
`challenge to U.S. Patent No. 7,212,999 B2 (Ex. 1001, “the ’999 patent”)
`based upon grounds of obviousness based on a combination of TSE1,
`Schott2, and Subler3.4
`Petitioner’s Request alleges that we misapprehended or overlooked
`arguments and evidence, presented in the Petition, concerning the rationale
`to combine TSE, Schott, and Subler. Req. Reh’g 1–13. Petitioner argues
`that we overlooked that Petitioner’s evidence that a person of ordinary skill
`in the art (“POSITA”) would have made the proposed combination because
`(1) “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;” (2) “increasing the
`efficiency of order entry;” and (3) “decreasing the complexity of order
`entry.” Id. at 2. Petitioner also argues that we misapprehended the
`combination proposed in the Petition (Paper 1, “Pet.”). Req. Reh’g 11–13.
`
`
`
`1 TOKYO STOCK EXCHANGE OPERATION SYSTEM DIVISION, FUTURES/OPTION
`PURCHASING SYSTEM TRADING TERMINAL OPERATION GUIDE (1998) (Ex.
`1016) (“TSE”).
`2 U.S. Patent No. 5,619, 631 (issued Apr. 8, 1997) (Ex. 1019) (“Schott”).
`3 U.S. Patent No. 5,646,992 (issued July 8, 1997) (Ex. 1020) (“Subler”).
`4 Our Decision granted inter partes review with respect to the challenge
`based on unpatentability under 35 U.S.C. § 101.
`2
`
`
`
`
`
`CBM2016-00032
`Patent 7,212,999 B2
`
`
`II. STANDARD OF REVIEW
`Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition,
`a panel will review the decision for an abuse of discretion.” Abuse of
`discretion occurs when a “decision was based on an erroneous conclusion of
`law or clearly erroneous factual findings, or . . . a clear error of judgment.”
`PPG Indus. Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567
`(Fed. Cir. 1988). In its request for rehearing, the dissatisfied party must
`identify the place in the record where it previously addressed each matter it
`submits for review. 37 C.F.R. § 42.71(d).
`
`
`III. ANALYSIS
`We did not misapprehend or overlook arguments and evidence
`
`concerning the rationale to combine TSE, Schott, and Subler. See Dec. 20–
`26. For example, our Decision indicates that the Petition asserts that a
`POSITA would have made the proposed combination because it “would
`have been an obvious design choice and nothing more than simple
`substitution of one known GUI technique (point-and-click) for another
`(drag-and-drop)” or it “is nothing more than combining prior art elements
`according to known method[s] to yield predictable and desirable results,
`such as increasing the efficiency and decreasing the complexity of order
`entry in TSE.” Dec. 25 (quoting Pet. 51–54). Our Decision also indicates
`that we considered the portions of the Petition that included the testimony of
`Mr. Roman5 and quoted portions of Cooper6 and Shneiderman7 to support
`
`5 Ex. 1012 (Declaration of Mr. Kendyl A. Roman).
`6 ALAN COOPER, ABOUT FACE: THE ESSENTIALS OF USER INTERFACE DESIGN
`(1st ed. 1995) (Ex. 1029).
`7 BEN SHNEIDERMAN, DESIGNING THE USER INTERFACE: STRATEGIES FOR
`3
`
`
`
`
`
`CBM2016-00032
`Patent 7,212,999 B2
`
`Petitioner’s proposed rationale. See, e.g., Dec. 25 (citing Pet. 52–53
`(quoting Cooper)).
`As indicated in our Decision, we considered Petitioner’s arguments
`
`and evidence but were not persuaded that a POSITA would have combined
`TSE, Schott, and Subler in the manner proposed in the Petition. The
`Decision states:
`We disagree that the proposed combination is nothing more than
`an obvious design choice or nothing more than combining prior
`art elements according to a known method to yield predictable
`and desirable results of increasing the efficiency and decreasing
`the complexity of order entry. As can be seen from the annotated
`figure above, the proposed combination results in a more
`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.
`Dec. 25 (referring to a figure from page 49 of the Petition, reproduced on
`page 24 in the Decision). Petitioner effectively disagrees with our Decision,
`which is not an appropriate basis for rehearing.
`
`In addition, Petitioner argues that we misapprehended the
`combination proposed in the Petition. According to Petitioner, the Petition
`“never suggests ‘[u]sing 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.’” Req. Reh’g 11 (alteration in original) (quoting
`Dec. 26).
`
`Petitioner is correct that the Petition does not suggest dragging and
`dropping the aggregate quantity of order number displayed on TSE’s
`
`
`EFFECTIVE HUMAN-COMPUTER INTERACTION (3d ed. 1998) (Ex. 1030).
`
`
`
`4
`
`
`
`CBM2016-00032
`Patent 7,212,999 B2
`
`Board/Quotation Screen to place an order, when addressing the claimed
`selecting and moving step. See Pet. 46–54. The Petition suggests modifying
`TSE so that a user can select a quantity indicator, such as “5,” from a
`window of quantity indicators and move it with a pointer of a mouse to a
`location associated with a price in column 11 of the Board/Quotation Screen
`of TSE to place an order. See id. Our Decision recognizes this. See Dec.
`24–25. The Decision points out that the Petition relies upon the aggregate
`quantity of order number displayed on TSE’s Board/Quotation Screen, for
`the claimed step of displaying an order icon. See Dec. 26 (citing Pet. 43–45
`(discussing the claimed displaying step)). The Decision points to this as a
`further example of why Petitioner’s combination appears to be based
`improperly on hindsight. See id.
`Accordingly, we are not persuaded of error in our Decision.
`
`
`IV. ORDER
`For the reasons given, it is
`ORDERED that Petitioner’s Request for Rehearing is denied.
`
`
`
`PETITIONER:
`
`
`Robert E. Sokohl
`Lori A. Gordon
`Richard M. Bemben
`STERNE, KESSLER, GOLDSTEIN & FOX, PLLC
`rsokohl-PTAB@skgf.com
`lgordon-PTAB@skgf.com
`rbemben-PTAB@skgf.com
`
`
`
`
`
`5
`
`
`
`CBM2016-00032
`Patent 7,212,999 B2
`
`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@finngan.com
`rachel.emsley@finnegan.com
`cory.bell@finnegan.com
`
`
`Steven F. Borsand
`Jay Knobloch
`TRADING TECHNOLOGIES INTERNATIONAL, INC.
`steve.borsand@tradingtechnologies.com
`jay.knobloch@tradingtechnologies.com
`
`Michael D. Gannon
`Leif R. Sigmond, Jr.
`Jennifer Kurcz
`MCDONNELL BOEHNEN HULBERT & BERGHOFF LLP
`gannon@mbhb.com
`sigmond@mbhb.com
`kurcz@mbhb.com
`
`
`
`
`6
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
