Chicago Mercantile Exchange, Inc.v.5th Market Inc.

Patent Trial and Appeal Board

Aug 18, 2015

09695828 (P.T.A.B. Aug. 18, 2015)

Trials@uspto.gov Paper 35
571-272-7822 Entered: August 18, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

CHICAGO MERCANTILE EXCHANGE, INC.,
Petitioner,

v.

5th MARKET, INC.,
Patent Owner.
____________

Case CBM2014-00114
Patent 7,024,387 B1
____________

Before KALYAN K. DESHPANDE, MICHAEL R. ZECHER, and
GEORGIANNA W. BRADEN, Administrative Patent Judges.

ZECHER, Administrative Patent Judge.

FINAL WRITTEN DECISION
35 U.S.C. § 328(a) and 37 C.F.R. § 42.73

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I. BACKGROUND
A. Introduction
Petitioner, Chicago Mercantile Exchange, Inc. (“CME”), filed a
Petition requesting a review under the transitional program for covered
business method patents of claims 1, 2, 4, 6–8, and 10 of U.S. Patent No.
7,024,387 B1 (“the ’387 patent,” Ex. 1001). Paper 2 (“Pet.”). Patent
Owner, 5th Market, Inc. (“5th Market”), timely filed a Preliminary
Response. Paper 8 (“Prelim. Resp.”). Taking into account the arguments
presented in 5th Market’s Preliminary Response, we determined that the
information presented in CME’s Petition establishes that claims 4, 6–8, and
10 are more likely than not unpatentable under 35 U.S.C. § 103(a). We
determined, however, that the information presented in the Petition does not
establish that claims 1 and 2 are more likely than not unpatentable. Pursuant
to 35 U.S.C. § 324,
1
we instituted this proceeding on October 9, 2014, only
as to claims 4, 6–8, and 10 of the ’387 patent. Paper 9 (“Dec. to Inst.”).
During the course of trial, 5th Market timely filed a Patent Owner
Response (Paper 19, “PO Resp.”), and CME timely filed a Reply to the
Patent Owner Response (Paper 23, “Pet. Reply”). 5th Market filed a Motion
to Exclude seeking to exclude one of the references that serves as the basis
of the ground of unpatentability (“ground”) instituted in this proceeding, as

1
See section 18(a) of the Leahy-Smith America Invents Act, Pub. L. No.
112–29, 125 Stat. 284, 329 (2011) (“AIA”). Section 18(a)(1) of the AIA
provides that the transitional program for covered business method patents
will be regarded as a post-grant review under Chapter 32 of Title 35 United
States Code and will employ the standards and procedures of a post-grant
review, subject to certain exceptions.
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well as certain portions of the Declarations of Craig Pirrong, Ph.D. Paper 25
(“Mot. to Exclude”). CME filed an Opposition to 5th Market’s Motion to
Exclude. Paper 29 (“Exclude Opp.”). 5th Market filed a Reply to CME’s
Opposition. Paper 31 (“Exclude Reply”). An oral hearing was held on
May 18, 2015, and a transcript is of record. Paper 34 (“Tr.”).
We have jurisdiction under 35 U.S.C. § 6(c). This decision is a Final
Written Decision under 35 U.S.C. § 328(a) as to the patentability of claims
4, 6–8, and 10 of the ’387 patent. For the reasons discussed below, CME
has demonstrated by a preponderance of the evidence that these claims are
unpatentable under § 103(a). We also deny 5th Market’s Motion to Exclude.
B. Related Matters
The ’387 patent is already the subject of the following two
proceedings between CME and 5th Market: (1) an inter partes
reexamination proceeding titled Reexamination Control No. 95/002,032
(“the ’032 reexamination), in which another panel of the Board entered a
decision affirming-in-part the Examiner’s confirmation of a certain subset of
claims of the ’387 patent on June 24, 2015; and (2) Case CBM2015-00061,
in which this panel instituted a covered business method patent review as to
claims 1 and 2 of the ’387 patent on July 16, 2015. See Pet. 2; Paper 6, 2. In
addition to the Petition filed in this proceeding and the Petition filed in Case
CBM2015-0061, CME filed a Petition challenging the patentability of
claims 1–23 and 41–49 of U.S. Patent No. 6,418,419 (“the ’419 patent”),
which is a parent patent of the ’387 patent. Chicago Mercantile Exch., Inc.
v. 5th Mkt., Inc., Case CBM2013-00027, Paper 3 (PTAB June 18, 2013).
Another panel of the Board instituted a covered business method patent
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review as to claims 1–23 of the ’419 patent as being indefinite under 35
U.S.C. §112 ¶ 2, as well as to claims 1–23 and 41–49 of the ’419 patent as
being unpatentable under § 103(a). Ex. 1008. In a Final Decision, the
Board determined that claims 1–23 of the ’419 patent are indefinite under
§112 ¶ 2, and the claims 1–4, 6–23, and 41–49 of the ’419 patent are
unpatentable under § 103(a). Case CBM2013-00027, Paper 33 (PTAB Dec.
17, 2014) (Ex. 1020). The Board also denied 5th Market’s Motion to
Amend. Id. In a Decision on 5th Market’s Request for Rehearing, the
Board granted-in-part 5th Market’s Motion to Amend only as to proposed,
substitute dependent claim 54. Case CBM2013-00027, Paper 38 (PTAB
Mar. 23, 2015).
C. Standing
Section 18 of the AIA governs the transitional program for covered
business method patent reviews. Section 18(a)(1)(B) of the AIA limits such
reviews to persons, or their privies, that have been sued or charged with
infringement of a covered business method patent. CME asserts that it has
been sued for infringement of the ’387 patent and the ’419 patent in Fifth
Market, Inc. v. CME Group Inc., No. 08-0520 GMS (D. Del.). Pet. 6 (citing
Ex. 1012). Based on the record before us, we agree that CME has standing
to file its Petition.
D. The ’387 Patent
The ’387 patent, titled “Automated System for Conditional Order
Transactions in Securities or Other Items in Commerce,” issued April 4,
2006, from U.S. Patent Application No. 09/695,828, filed on October 26,
2000. Ex. 1001, at [54], [45], [21], [22]. The ’387 patent is both a
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continuation-in-part of U.S. Patent Application No. 09/359,686, filed on
July 23, 1999—now the ’419 patent—and a continuation of application
No. PCT/US00/19567, filed on July 24, 2000. Id. at [63].
The ’387 patent generally relates to the conditional trading of
securities, such as convertible bond “swaps,” risk arbitrage, and
combinations thereof in both listed and over-the-counter markets, via one or
more electronic networks. Ex. 1001, 1:10–16. According to the ’387 patent,
there is no computer network that links participants involved in convertible
securities in a transaction-oriented format. Id. at 1:33–34. Virtually every
transaction is through verbal private negotiations, i.e., almost every bid,
offer, or trade is made verbally and is transmitted only to the participants
involved. Id. at 1:34–37. The ’387 patent discloses that this problem can be
solved by creating an anonymous auction market, instead of a negotiated
market, that displays prices to all participants and saves the trade
information for later use. Id. at 1:37–42.
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Figure 1 of the ’387 patent, reproduced below, illustrates a conditional
order transaction system. Ex. 1001, 4:36–38.

As shown in Figure 1 of the ’387 patent, there are three scenarios that
use a conditional order routing exchange (“CORE”). Id. at 5:14–16. The
first scenario includes CORE client program T1, which formats and
transmits a client/subscriber/trade request with a directed response; the
second scenario includes CORE client program T2, which formats and
transmits a client request whose response is disseminated to various
interested parties; and the third scenario involves CORE client program T3,
which receives data from some external source and, subsequently,
redistributes it to all interested parties. Id. at 5:23–59.
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Figure 2 of the ’387 patent, reproduced below, illustrates the
processing of a match order using the conditional order transaction system of
Figure 1. Ex. 1001, 4:42–43, 6:36–37.
2

As shown in Figure 2 of the ’387 patent, a first client requests to be
informed about events relating to a given security, a second client places a

2
A comparison of Figure 3 of the ’419 patent and Figure 2 of the ’387
patent reveals that these Figures are identical. Compare the ’419 patent,
Fig. 3, with Ex. 1001, Fig. 2. In addition, we note that, although the
specification of the ’387 patent indicates that Figure 3 illustrates the
processing steps of a match order using the system of Figure 1 (see e.g.,
Ex. 1001, 4:42–43, 6:36–37), it is clear after reviewing both Figures 2 and 3
of the ’387 patent that these processing steps are illustrated in Figure 2—not
Figure 3. We, therefore, presume that the specification of the ’387 patent
mistakenly references Figure 3 when it intends to describe the ten processing
steps for matching an order illustrated in Figure 2.
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bid for that security, and a third client places an ask for the same security.
Id. at 6:37–41. The processing steps for matching an order illustrated in
Figure 2 of the ’387 patent are listed as follows: (1) Monitor Security; (2)
Return Latest Data; (3) Input Bid Order; (4) Distribute Bid Order; (5)
Distribute Ticker Data; (6) Input Ask Order; (7) Distribute Ask Order (also
Distribute Ticker Data); (8) External prices converge making orders cross;
(9) Crossed order are matched; and (10) Distribute Trade Details. Id. at
6:44–54.
E. Illustrative Claim
Claim 7 is the only remaining claim that is an independent claim.
Claims 4 and 6 directly depend from independent claim 3, which is not
challenged in this proceeding; claim 8
3
directly depends from independent
claim 7;

and claim 10 directly depends from independent claim 9, which
also is not challenged in this proceeding. Independent claim 7 is illustrative
of the challenged claims and is reproduced below:
7. A computer program embodied on a computer-
readable medium for matching or comparing buy and sell
orders for a plurality of items based upon conditions set forth

3
Dependent claim 8 recites, in relevant part, “[t]he computer program of
claim wherein.” Ex. 1001, 29:45. It is evident from this recitation that
dependent claim 8 issued without reference to a specific independent claim.
We note that claim 7 is the only independent claim that recites “[a] computer
program product.” Id. at 29:11. We, therefore, presume that issuing
dependent claim 8 without reference to a specific independent claim was a
typographical error and, as a consequence, we treat claim 8 as depending
directly from independent claim 7. See Novo Indus., L.P. v. Micro Molds
Corp. 350 F.3d 1348, 1354 (Fed. Circ. 2003) (holding obvious errors in a
claim can be corrected in construing the claim).
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within the order, including a price represented as an algorithm
with constraints thereon, a source code for the program having
a plurality of segments comprising:
a segment for processing data from a variable number of
trader terminals for entering an order for an item in the form of
an algorithm with constraints thereon that represent a
willingness to transact, where the price is a dependent variable
of the algorithm within the constraints and dynamically
changing price of another item is an independent variable, the
price as the dependent variable being continuously changeable
responsive to changes in price of the independent variable, the
algorithm representing a buy or sell order; and
a segment for a controlling a computer coupled to each of
the trader terminals over a communications network and
receiving as inputs,
a) each algorithm with its corresponding constraints, and
b) an external price feed depicting prices of various
items and contracts from external multiple data
sources which may be used as an independent variable
of the algorithm or an input to a constraint variable,
the source code further comprising,
a segment for matching or comparing, in accordance with
the constraints and conditions, algorithmic buy/sell orders with
algorithmic or non-algorithmic sell/buy orders through the use
of the external multiple data sources, and
a segment for simultaneously executing a trade of said
items in the same or diverse equity markets as a single
electronically matched trade.

Ex.1001, 29:11–44.
F. Covered Business Method Patent
Upon considering the information presented by CME in its Petition, as
well as the arguments presented by 5th Market in its Preliminary Response,
we determined that the ’387 patent is a covered business method patent, as
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defined in section 18(a)(1)(E) of the AIA and 37 C.F.R. § 42.301, because at
least one claim of the ’387 patent is directed to a covered business method.
Dec. to Inst. 9–12. Consequently, we concluded that the ’387 patent is
eligible for a covered business method patent review. Id.
When analyzing whether the ’387 patent is eligible for a covered
business method patent review in the Decision to Institute, we noted that the
definition of a “covered business method patent” in section 18(d)(1) of the
AIA does not include patents for “technological inventions.” Dec. to Inst.
11. When determining whether a patent is for a technological invention, we
consider the following factors: “[(1)] whether the claimed subject matter as
a whole recites a technological feature that is novel and unobvious over the
prior art; and [(2)] solves a technical problem using a technical solution.” 37
C.F.R. § 42.301(b).
In its Patent Owner Response, 5th Market contends that the
challenged claims of the ’387 patent fall within the purview of the
technological invention exception set forth in 37 C.F.R. § 42.301(b).
PO Resp. 42. 5th Market relies upon the legislative history of the AIA to
support this argument. Id. According to 5th Market, examples of subject
matter that should not be subject to the transitional program for covered
business method patents include “‘novel software tools and graphical user
interfaces that are used by the electronic trading industry workers to
implement trading or asset allocation strategies.’” Id. at 42–43 (quoting 157
CONG. REC. S5433 (daily ed. Sept. 8, 2011) (statement of Sen. Durbin))
(emphasis omitted). 5th Market then asserts that the challenged claims of
the ’387 patent, viewed as a whole, fall squarely within the technological
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invention exception because they are directed to “[t]he combination of
internal and external trades, matched via an automatic trade engine based on
an external price feed[, which] provide[s] increased speed and efficiency in
the electronic trading technology.” Id. at 43.
5th Market, however, does not explain adequately how the challenged
claims of the ’387 patent encompass novel software tools and graphical user
interfaces, nor does 5th Market provide sufficient or credible evidence to
support its assertion. Consequently, we maintain our initial determination
that CME has demonstrated that the ’387 patent is not for a technological
invention and, therefore, is eligible for a covered business method patent
review. Dec. to Inst. 9–12.
G. Prior Art Relied Upon
CME relies upon the following prior art references:
Lupien US 5,101,353 Mar. 31, 1992 (Ex. 1004)
Memorandum from the Commodity Futures Trading Commission on
the New York Mercantile Exchange’s (“NYMEX”) Proposal to Implement
the NYMEX ACCESS Trading System (Dec. 7, 1992) (on file with the
Commodity Futures Trading Commission) (Ex. 1003,
4
“CFTC”).
H. Instituted Ground
We instituted this proceeding based on the asserted ground set forth in
the table below.

4
Although CFTC is marked in the bottom right-hand corner as “CME
Exhibit 1002,” it is referenced by CME in its Petition as Exhibit 1003
(Pet. 6) and labeled in the Patent Review Processing System as Exhibit
1003. We, therefore, presume that CME intended to refer to CFTC as
Exhibit 1003.
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References Basis Claims Challenged
CFTC and Lupien § 103(a) 4, 6–8, and 10

II. ANALYSIS
A. Claim Construction
In a covered business method patent review, claim terms are given
their broadest reasonable interpretation in light of the specification of the
patent in which they appear. 37 C.F.R. § 42.300(b); see also In re Cuozzo
Speed Techs., LLC, No. 2014-1301, 2015 WL 4097949, *7–*8 (Fed. Cir.
July 8, 2015) (In considering the broadest reasonable interpretation standard
for post-grant review proceedings, the Federal Circuit determined that
“Congress implicitly approved the broadest reasonable interpretation
standard in enacting the AIA,” and “the standard was properly adopted by
[Patent and Trademark Office] regulation.”), reh’g en banc denied, _F.3d_,
2015 WL 4100060 (Fed. Cir. July 8, 2015). Under the broadest reasonable
interpretation standard, and absent any special definitions, claims terms are
given their ordinary and customary meaning, as would be understood by one
of ordinary skill in the art, in the context of the entire disclosure. In re
Translogic Tech. Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
1. Claim Phrases Construed in the Decision to Institute
In its Petition, CME proposed a construction for each of the following
claim phrases: (1) “external price feed”; (2) “external data sources”; and
(3) “external multiple data sources.” Pet. 14–17. In its Preliminary
Response, 5th Market did not propose alternative constructions for these
claim phrases. See generally Prelim. Resp. 1–17. In the Decision to
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Institute, we adopted CME’s proposed constructions for each claim phrase
identified by CME in its Petition because they were consistent with the
ordinary and customary meaning of the term “external,” as would be
understood by one with ordinary skill in the art, in light of the specification
of the ’387 patent. Dec. to Inst. 14–16.
In its Patent Owner Response, 5th Market accepts our construction of
the claim phrases that we construed in the Decision to Institute. PO Resp. 6.
In its Reply, CME does not propose an alternative claim construction for the
claim phrases that we construed in the Decision to Institute. See generally
Pet. Reply 1–15. Given 5th Market’s acceptance, as well as CME’s
acquiescence, of our constructions of each claim phrase in the Decision to
Institute, we discern no reason to address or alter those constructions for the
purposes of this Final Written Decision. For convenience, those claim
constructions are reproduced in the table below.
Claim(s) Claim Phrase Claim Construction
7 “external price feed” “price data received from
outside the conditional order
transaction network”
4, 8, and 10 “external data sources” “sources of price data that are
outside of the conditional order
transaction network”
7 and 9 “external multiple data
sources”
“sources of price data that are
outside of the conditional order
transaction network”
2. Remaining Constructions Proposed by 5th Market in the
Patent Owner Response
In its Patent Owner Response, 5th Market proposes a construction for
each of the following claim phrases: (1) “device for matching or
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comparing” (claim 4); (2) “single electronically matched trade” (claim 4 via
its dependency from independent claim 3); (4) “segment for combining . . .
to execute said single electronically matched trade” (claims 8 and 10);
(5) “sorter that resequences the orders” (claim 6); and (6) “segment for
matching or comparing . . . through the use of the external multiple data
sources” (claim 7). PO Resp. 7–14 (citing Ex. 2009 (“Declaration of
Dr. Terry Richard”) ¶¶ 27–31, 52, 56). In its Reply, CME contends that 5th
Market’s proposed constructions for these claim phrases are overly narrow,
are not consistent with the specification of the ’387 patent, and, as a result,
do not constitute the broadest reasonable interpretation. See, e.g., Pet. Reply
1, 3–4.
We are not persuaded that 5th Market’s proposed constructions for the
claim phrases identified above constitute the broadest reasonable
interpretation because these constructions disregard general claim
construction principles. Under the broadest reasonable interpretation
standard, “claims should always be read in light of the specification and
teachings in the underlying patent.” In re Suitco Surface, Inc. 603 F.3d
1255, 1260 (Fed. Cir. 2010) (citation omitted) (emphasis added); see also In
re NTP, Inc., 654 F.3d 1279, 1288 (Fed. Cir. 2011) (claim construction
“cannot be divorced from the specification and the record evidence”). This
same principle holds true even under the district court standard for claim
construction. See Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir.
2005) (en banc) (stating that the specification is “the single best guide to the
meaning of a disputed term”). In this case, 5th Market does not reference
the specification of the ’387 patent once throughout the roughly eight pages
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of its claim construction section in the Patent Owner Response. See
generally PO Resp. 7–14. Although 5th Market provides multiple citations
to the Declaration of Dr. Rickard that purportedly support its proposed
constructions (see, e.g., Ex. 2009 ¶¶ 27–31, 52, 56), none of the cited
paragraphs in this Declaration discuss the specification of the ’387 patent.
Notwithstanding that 5th Market and Dr. Rickard do not address how
the constructions proposed in the Patent Owner Response are consistent with
the specification of the ’387 patent, we cannot discern how these
constructions add any clarity to the claim phrases themselves, which, in our
view, are self-explanatory. We, therefore, conclude that no explicit
constructions are necessary beyond their ordinary and customary meaning.
3. “simultaneously executing a trade” (Claims 4, 8, and 10)
By virtue of their dependency from independent claims 3, 7, and 9,
claims 4, 8, and 10 require “simultaneously executing a trade of said items in
the same or diverse equity markets as a single electronically matched trade.”
Ex. 1001, 28:29–31, 29:42–44, 30:16–18. The parties do not dispute that “a
trade” in the context of these claims of the ’387 patent encompasses a spread
order. Instead, the parties dispute whether the combination of CFTC and
Lupien teaches a “single electronically matched trade.” See PO Resp. 16–
28; Pet. Reply 2–7. This dispute, however, first requires us to construe the
claim term “simultaneously” in the context of executing a spread order.
Neither CME nor 5th Market provides an explicit construction for the
limitation “simultaneously executing a trade.” The claim term
“simultaneously” appears outside the claims in the specification of the ’387
patent on the following three occasions: (1) in the Table disclosing
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examples of orders displayed in the Order Book (Ex. 1001, 19:29–67)
(“Sholodge; Registered 7½% May 15, 203; Trade; $95,000 face amount;
Price = 103.27XXX; Traded simultaneously with the common stock of
Sholodge at 23 1.”); (2) in “Example 1—Corporate Bonds” (id. at 24:66–
25:4) (“A corporate bond trader wishes to advertise that he would like to
purchase 500M Citicorp 5% Jan. 1, 2001, bonds at a spread to the two-year-
treasury of +65 basis points and simultaneously sell 500M of the two-year-
treasury . . .”); and (3) in “Example 11—Options” (id. at 25:48–52)
(“another example could easily be derived from a grain elevator company
with empty elevators where they would contract to purchase grain (in the
market) in May, and simultaneously wish to sell the grain in one or more
contract months in the future”). These cited disclosures in the specification
of the ’387 patent merely provide examples of orders processed by the
disclosed trading system, and do not provide an explicit definition for the
claim term “simultaneously.” Absent an explicit definition, we must accord
this claim term its ordinary and customary meaning, as would be understood
by one of ordinary skill in the art, in the context of the entire disclosure.
Translogic, 504 F.3d at 1257.
There is sufficient intrinsic evidence that indicates the claim term
“simultaneously,” in light of the ’387 patent and, in particular, in the context
of executing a spread order, does not apply to executing just one leg of the
spread order simultaneously, but instead applies to executing multiple legs
of the spread order simultaneously. In response to a question posed by
CME’s counsel, 5th Market’s expert witness, Dr. Rickard, testifies that the
“simultaneous execution of a trade” associated with, for example, dependent
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claim 4 does not involve a specific time period. Ex. 1021, 30:9–15. Dr.
Rickard further testifies that, in the context of spread trading functionality,
“simultaneous execution of a trade” refers to executing “both [] or multiple
legs [of the spread order] as required within the constraints on the
differential price.” Id. In addition, throughout his cross-examination
testimony, Dr. Rickard suggests that one of ordinary skill in the art could
program an exchange to execute a spread order based on a set of priority
rules, e.g., first matching or filling one leg of the spread order and then later
matching or filling another leg of the spread order. Ex. 1021, 11:10–12,
22:16–23:7, 30:9–31:3. These cited portions of Dr. Rickard’s cross-
examination testimony amount to credible evidence that one of ordinary skill
in the art would have understood that, once each leg of the spread order is
matched or filled, the exchange may be programmed to execute each leg of
the spread order simultaneously.
Applying the broadest reasonable interpretation standard in light of
the ’387 patent, we construe the limitation “simultaneously executing a
trade” in the context of executing a spread order as “simultaneously
executing multiple legs of a spread order.”
B. There is Sufficient Evidence in the Record Before Us to Demonstrate
That CFTC Qualifies as a Prior Art Printed Publication
Within the Meaning of 35 U.S.C. § 102(b)
In its Petition, CME contends that CFTC is dated December 7, 1992,
and, therefore, qualifies as prior art to the ’387 patent under § 102(b). Pet. 6.
In the same vein, CME argues that CFTC qualifies as prior art because it
predates the ’387 patent. Id. at 1, 18. On its face, CFTC includes the
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following indicia: (1) the date of December 7, 1992, along with the marking
of “PUBLIC COPY”; and (2) a stamp from the Agency that is the
Commodity Futures Trading Commission (“CFTC Agency”) indicating that
CFTC was received for public record on December 18, 1992. Ex. 1003, title
page.
In its Patent Owner Response, 5th Market contends that CME fails to
meet its burden of establishing that CFTC qualifies as a prior art printed
publication within the meaning of § 102(b). PO Resp. 43–44. 5th Market
argues that CME fails to demonstrate that CFTC was disseminated to the
relevant public before the earliest effective filing date of the ’387 patent and,
given that CFTC is labeled as a “memorandum,” actual public dissemination
cannot be presumed. Id. at 45. With its Patent Owner Response, 5th Market
submits the Declaration of Jonathan C. Wheeler (Ex. 2011), a paralegal at
the CFTC Agency, which was provided to 5th Market by CME in the related
district court case. Id. 5th Market then argues that, even if CME were to
rely upon various statements made by Mr. Wheeler in his Declaration, they
fall short of establishing that CFTC was accessible publicly before the
earliest effective filing date of the ’387 patent. Id. at 45–46. 5th Market
further argues that the Declaration of Mr. Wheeler should be accorded little,
if any, weight because it was drafted by CME’s counsel and includes
numerous gaps and omissions. Id. at 46–50.
In its Reply, CME contends that CFTC was applied as a prior art
reference against the claims in both the ’387 patent and its parent patent, the
’419 patent, in three prior proceedings before the United States Patent and
Trademark Office (“Office”). Pet. Reply 12. CME argues that, in those
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proceedings before the Office, 5th Market did not dispute that CFTC
qualifies as a prior art printed publication to the ’387 patent and the ’419
patent. Id. CME, therefore, asserts that 5th Market should be estopped from
arguing that CFTC is not a prior art printed publication in this proceeding
because it had a full and fair opportunity to do so in the prior proceedings
before the Office, yet it choose not to present such arguments. Id. at 13.
CME then turns to the Declaration of Mr. Wheeler and argues that Exhibit
A-3 attached to his Declaration is a certified copy of CFTC that was made
available publicly as early as December 18, 1992. Id. at 13 (citing Ex. 2011
¶¶ 14, 16). CME directs us to the Rebuttal Declaration of Dr. Pirrong as
evidence that the version of CFTC attached to the Declaration of Mr.
Wheeler (Ex. 2011, Exhibit A-3) is essentially the same as the version of
CFTC submitted by CME in this proceeding (Ex. 1003). Id. at 14–15 (citing
Ex. 1026 ¶¶ 9–12).
We look to the underlying factual determinations to make a legal
conclusion as to whether a reference is a printed publication. Suffolk Techs.,
LLC v. AOL Inc., 752 F.3d 1358, 1364 (Fed. Cir. 2014). The conclusion of
whether a given reference qualifies as a prior art “printed publication”
involves a case-by-case inquiry into the facts and circumstances surrounding
its disclosure to members of the public. In re Klopfenstein, 380 F.3d 1345,
1350 (Fed. Cir. 2004). The key inquiry is whether the reference was made
“sufficiently accessible to the public interested in the art” before the critical
date. In re Cronyn, 890 F.2d 1158, 1160 (Fed. Cir. 1989); In re Wyer, 655
F.2d 221, 226 (CCPA 1981). “A given reference is ‘publicly accessible’
upon a satisfactory showing that such document has been disseminated or
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otherwise made available to the extent that persons interested and ordinarily
skilled in the subject matter or art exercising reasonable diligence, can locate
it.” Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir.
2006) (citation omitted).
We are not persuaded by 5th Market’s arguments that CME fails to
meet its burden of establishing that CFTC qualifies as a prior art printed
publication. Instead, we determine that there is sufficient evidence in the
record before us demonstrating that CFTC is printed publication with the
meaning of § 102(b) and, therefore, qualifies as prior art to the ’387 patent.
As an initial matter, CME correctly notes that CFTC was applied as a prior
art reference in three prior proceedings before the Office—namely, (1) two
previous reexamination proceedings, one involving the ’387 patent and the
other involving the ’419 patent; and (2) one previous covered business
method patent review proceeding involving the ’419 patent. See, e.g.,
Exs. 1008–10, 1020. CME also correctly notes that, in those proceedings
before the Office, 5th Market did not dispute that CFTC qualifies as a prior
art printed publication to either the ’387 patent or the ’419 patent. See id.
Although we are not aware of a statutory or regulatory provision that
precludes 5th Market from presenting arguments in this proceeding as to the
public accessibility of CFTC, it is unclear to us why such arguments were
not brought in the prior proceedings before the Office, especially given their
potential to be dispositive.
Putting aside that the timing of 5th Market’s arguments as to the
public accessibility of CFTC is a bit unusual, we now turn to the evidence
submitted by 5th Market with its Patent Owner Response. In its Patent
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Owner Response, 5th Market contends that CME fails to meet its burden of
establishing that CFTC qualifies as a prior art printed publication within the
meaning of § 102(b), yet it submits evidence in the form of the Declaration
of Mr. Wheeler that supports CME’s position that CFTC is, in fact, a prior
art printed publication. We note that between the time period starting when
5th Market entered the Declaration of Mr. Wheeler into the record and
ending with the oral argument, 5th Market did not request authorization to
depose Mr. Wheeler.
5
Instead, 5th Market attempts to undermine Mr.
Wheeler’s testimony by presenting attorney argument unsupported by
factual evidence. See, e.g., PO Resp. 47–49.
It is well-settled that an “attorney’s argument . . . cannot take the place
of evidence.” In re Pearson, 494 F.2d 1399, 1406 (CCPA 1974) (citation
omitted). Absent sufficient evidence presented by 5th Market that
undermines Mr. Wheeler’s testimony, we have no reason to question his
credibility. With this in mind, we address the Declaration of Mr. Wheeler,
and then turn to the Rebuttal Declaration of Dr. Pirrong.

5
During oral argument, we inquired why 5th Market did not seek
authorization to depose Mr. Wheeler. Tr. 62:17–63:14. Counsel for 5th
Market indicated that it wasn’t aware there was a protocol at the Board for
requesting authorization to depose Mr. Wheeler, but suggested that we stay
this proceeding pending a motion to apply for a subpoena at a United States
District Court to seek his deposition. Id. at 64:19–65:16. We explained that,
given the constraints of the statutory time period for issuing a Final Written
Decision in this case, we are not inclined to grant such a belated request
unless it qualifies as an extraordinary circumstance. Id. at 65:17–66:2. 5th
Market did not pursue further its suggestion that we stay this proceeding
pending a motion to apply for a subpoena at a United States District Court to
seek a deposition of Mr. Wheeler.
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Mr. Wheeler is a paralegal specialist at the CFTC Agency whose
duties include “maintaining and researching records of the CFTC maintained
by the Office of Secretariat, including in connection with the maintenance
and indexing of public documents filed with the CFTC [Agency].”
Ex. 2011 ¶ 1. Mr. Wheeler testifies that he is familiar with the file and
record keeping procedures at the CFTC Agency, including “the recording,
processing, and indexing, and maintenance of documents made available for
public inspection.” Id. ¶ 2. Mr. Wheeler further testifies that Exhibit A-3
attached to the Wheeler Declaration is a certified copy of CFTC, dated
December 7, 1992, and marked “PUBLIC COPY.” Id. ¶ 14. Mr. Wheeler
attests that, through the ordinary course of business and record keeping at
the CFTC Agency, Exhibit A-3 was made available publicly by December
18, 1992, or within a few days thereafter. Id. ¶ 16.
To support that the version of CFTC attached to the Declaration of
Mr. Wheeler (Ex. 2011, Exhibit A-3) is essentially the same as the version
of CFTC submitted by CME in this proceeding (Ex. 1003), CME relies upon
the Rebuttal Declaration of Dr. Pirrong. See Ex. 1026 ¶¶ 9–12. Dr. Pirrong
testifies that the version of CFTC that is Exhibit A-3 and the version of
CFTC that is Exhibit 1003 “are substantively identical.” Id. ¶ 9. Dr. Pirrong
further testifies that the only notable difference between the two documents
is that Exhibit A-3 includes pages 347–350, whereas Exhibit 1003 does not
include those pages. Id. ¶ 11. During the oral argument, we inquired
whether Dr. Pirrong was cross-examined as to the testimony he provided in
his Rebuttal Declaration. Tr. 58:23–24. CME represented that Dr. Pirrong
was available, but 5th Market decided not to cross-examine him. Id. at
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59:1–2; see also Ex. 1029 (email correspondence from counsel for 5th
Market to counsel for CME indicating that “[5th Market] has decided to
forgo the second deposition of Dr. Pirrong”). We, therefore, have no reason
to question the veracity of Dr. Pirrong’s testimony in the Rebuttal
Declaration.
In summary, the aforementioned testimony of both Mr. Wheeler and
Dr. Pirrong amounts to credible evidence supporting a determination that
CFTC was made sufficiently accessible to the public interested in the art at
or around December 18, 1992. Consequently, we conclude that CFTC is a
printed publication with the meaning of § 102(b) and, therefore, qualifies as
prior art to the ’387 patent.
C. Obvious Ground Based on the Combination of CFTC and Lupien
In its Petition, CME contends that claims 4, 6–8, and 10 are
unpatentable under § 103(a) over the combination of CFTC and Lupien.
Pet. 23–52. In support of this asserted ground, CME explains how the
proffered combination teaches the subject matter of each challenged claim
(id. at 34–39, 44–47, 49–52), and relies upon the Declaration of Dr. Pirrong
to support its positions (Ex. 1002 ¶¶ 75–120). In its Patent Owner Response,
5th Market presents arguments that focus on the following claim groupings:
(1) dependent claims 4, 8, and 10; (2) dependent claim 6; and (3)
independent claim 7. PO Resp. 14–41.
We begin our analysis with the principles of law that generally apply
to a ground based on obviousness, followed by our determination regarding
the knowledge level of a person with ordinary skill in the art, proceeded by
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brief discussions of CFTC and Lupien, and then we address the parties’
arguments directed to the challenged claims in turn.
1. Principles of Law
A claim is unpatentable under § 103(a) if the differences between the
claimed subject matter and the prior art are such that the subject matter, as a
whole, would have been obvious at the time the invention was made to a
person having ordinary skill in the art to which said subject matter pertains.
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
obviousness is resolved on the basis of underlying factual determinations,
including: (1) the scope and content of the prior art; (2) any differences
between the claimed subject matter and the prior art; (3) the level of skill in
the art; and (4) where in evidence, so-called secondary considerations.
Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). We also recognize
that prior art references must be “considered together with the knowledge of
one of ordinary skill in the pertinent art.” In re Paulsen, 30 F.3d 1475, 1480
(Fed. Cir. 1994) (citing In re Samour, 571 F.2d 559, 562 (CCPA 1978)).
We analyze this ground based on obviousness with the principles identified
above in mind.
2. Level of Skill in the Art
In determining the level of skill in the art, various factors may be
considered, including the “type of problems encountered in the art; prior art
solutions to those problems; rapidity with which innovations are made;
sophistication of the technology; and educational level of active workers in
the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citing
Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962
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(Fed. Cir. 1986)). There is evidence in the record before us that reflects the
knowledge level of a person with ordinary skill in the art. CME’s expert
witness, Dr. Pirrong, attests that a person with ordinary skill in the art would
be an individual who possesses the following: (1) a bachelor’s degree in
computer science, or another quantitative field such as mathematics,
statistics, economics, or finance; (2) two to five years of work experience in
any one of the aforementioned areas; and (3) an understanding of the
operation of markets for financial instruments, including computerized or
electronic markets. Ex. 1002 ¶ 48.
5th Market’s expert witness, Dr. Rickard, offers testimony as to the
knowledge level of a person with ordinary skill in the art that is essentially
the same as Dr. Pirrong’s assessment. Ex. 2009 ¶ 8. Dr. Rickard attests that
a person with ordinary skill in the art would be an individual who possesses
any one of the following: (1) at least two years of work experience with
trading software on one or more securities exchanges or private securities
markets, and the ability to describe algorithmic trading to programmers with
at least two years of programming experience in a securities exchange or
private securities market; or (2) a computer programmer with at least two
years of programming experience in the area of trading on a securities
exchange or private securities marketplace, as well as a general knowledge
of the details of algorithmic trading and the characteristics of data from other
marketplaces external to his/her work environment. Id.
In addition, we note that the prior art of record in this proceeding—
namely, CFTC and Lupien—is indicative of the level of ordinary skill in the
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art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001);
GPAC, 57 F.3d at 1579; In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).
3. CFTC
CFTC generally relates to NYMEX proposed rules and rule
amendments necessary to implement NYMEX American Computerized
Commodity Exchange System and Services (“NYMEX ACCESS”).
Ex. 1003, 3.
6
NYMEX ACCESS is an electronic order matching system that
may be used by NYMEX members, as well as customers trading through
NYMEX members, to trade futures and options contracts after NYMEX’s
regular trading hours. Id. In addition to the trade execution function,
NYMEX ACCESS provides trade reporting and quotation information for
NYMEX ACCESS contracts traded via the system. Id. at 3–4.
CFTC discloses a NYMEX ACCESS trade matching host that accepts
limit orders, i.e., orders to buy or sell a particular number of futures or
option contracts in a given commodity and month at a specified price, and
spread orders entered at a differential. Ex. 1003, 19. NYMEX ACCESS
terminal operators enter orders into the NYMEX ACCESS system using a
trader work station. Id. at 4, 9. The NYMEX ACCESS trade matching host
is coupled to these trader work stations over a network and, therefore, is
capable of receiving the orders entered at each station. Id. at 4. Orders
cannot be entered into the NYMEX ACCESS system for a customer unless
the customer provides the following information: (1) Commodity;

6
All references to the page numbers in CFTC are to the page numbers
located in the top, middle of each page.
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(2) Contract Month; (3) Buy or Sell; (4) Account Number; (5) Quantity; (6)
Limit Price; (7) Clearing Member; (8) Strike Price and Put or Call; and
(9) any precondition for entry into the matching system. Id. at 20–21.
CFTC discloses at least one example where the price of one security is
dependent on the price of another security being traded. For instance, the
NYMEX ACCESS system may generate implied spread bids and offers by
calculating spread differentials based on the current, best prices for each
component in the order. Ex. 1003, 28. CFTC also may generate conditional
bids and offers only if they better the best bids or offers currently in the
market. Id. at 28–29. These conditional bids and offers would adjust as the
underlying markets move. Id. at 29. If a conditional bid or offer was taken,
the NYMEX ACCESS system immediately completes the transaction by
buying or selling the number of contracts of securities in accordance with
the conditions and constraints entered as part of the order. Id.
4. Lupien
Lupien generally relates to an automated system for trading securities
in financial markets that increases liquidity and depth in such markets by
trading portions of normally dormant portfolios, including those with
numerous and diverse securities. Ex. 1004, 1:6–11. When discussing the
on-line storage devices associated with the automated securities trading
system, Lupien discloses that external data is available to clients from
securities information vendors. Id. at 6:20–22. The external data from
securities information vendors may include quote and trade feeds covering
current external quotes, trades, and other market data. Id. at 9:53–54.
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Lupien also discloses that traders using its system have the ability to
view information pertaining to all pending orders, as well as information
pertaining to their own executed and cancelled orders, ranked by various
criteria in numerous display screen formats. Ex. 1004, 7:15–19, Figs. 2–6.
The bottom portion of a trader’s display screen contains prompts that enable
each prospective trader to change the way data is displayed or ranked, to
move to other display screens, to alter orders, or to respond to the orders of
other systems or market participants. Id. at 7:39–41.
For instance, Figure 2 of Lupien illustrates a trader’s display screen
that allows the trader to view its orders ranked by size, nearness to
execution, price move for a day, symbol, etc. Ex. 1004, 7:48–50; Fig. 2. In
addition, Figure 6 of Lupien illustrates information displayed on a trader’s
screen relevant to a single order. Id. at 8:52–53; Fig. 6. The bottom portion
of the trader’s screen displays the best and next best bid and ask residing on
the system, along with the best bids and offers represented by the other
markets and exchanges as reported by the trader’s securities information
vendor. Id. at 8:57–61.
5. Independent Claim 7
Independent claim 7 recites, in relevant part:
an external price feed depicting prices of various items and
contracts from external multiple data sources which may be
uses an independent variable of the algorithm or an input to a
constraint variable, the source code further comprising, a
segment [of a computer program] for matching or comparing, in
accordance with the constraints and conditions, algorithmic
buy/sell orders with algorithmic or non-algorithmic sell/buy
orders through the use of the external multiple data sources.
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Ex. 1001, 29:32–41 (emphases added).
In its Petition, CME relies upon CFTC to teach all the limitations
recited in independent claim 7, except “an external price feed depicting
prices of various items and contracts from external multiple data sources.”
Pet. 40–41. CME then turns to Lupien’s trading system that includes an
external price feed to teach this limitation. Id. at 41–42, 45–46 (citing
Ex. 1004, 4:32–36, 6:20–22, 6:37–40, 9:53–54; Ex. 1002 ¶ 91).
According to CME, it would have been obvious to one of ordinary
skill in the art to modify CFTC’s NYMEX ACCESS system to include
Lupien’s external price feed. Pet. 42. To support combining the teachings
of CFTC and Lupien, CME asserts that “‘[t]he combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results.’” Id. (quoting KSR, 550 U.S. at
416). In addition, CME contends that one of ordinary skill in the art would
have had a sufficient reason to include an external price feed in CFTC’s
NYMEX ACCESS system. Id. (citing Ex. 1002 ¶ 108). For instance, CME
asserts that using external market data, such as external prices, enables a
trading system to avoid processing and infrastructure costs associated with
price discovery, which, in turn, may result in lower transaction costs to a
prospective trader. Id. (citing Ex. 1007, 20;
7
Ex. 1002 ¶ 110).
In its Patent Owner Response, 5th Market presents numerous
patentability arguments directed to independent claim 7. PO Resp. 32–40.

7
All references to the page numbers in Exhibit 1007 are to the page numbers
located in the top, right-hand corner of each page.
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Given the similarities that exist between 5th Market’s arguments, we group
the arguments that share a common theme and address them in turn.
a. The Combination of CFTC and Lupien Teaches Using an External
Price Feed to Match and Compare Orders in the Manner Required by
Independent Claim 7

In its Patent Owner Response, 5th Market contends that neither CME
nor its expert witness, Dr. Pirrong, adequately explain how CFTC and
Lupien teach what is recited in independent claim 7—namely
that a trading engine that executes multi-legged trades (by
matching/comparing orders) receives an external price feed, and
uses that price feed as an independent variable of the algorithm
or an input to a constraint variable to an algorithm executing on
the trading engine (as matching or comparing is performed
using a “price presented as an algorithm with constraints
thereon”).

PO Resp. 32–33. 5th Market then focuses its arguments solely on Lupien.
Id. at 37–40. After providing excerpts of certain disclosures in Lupien, some
of which are relied upon by CME in its Petition, 5th Market asserts that
Lupien does not use an external price feed for “matching or comparing [by a
segment of a computer program] in accordance with the constraints and
conditions, algorithmic buy/sell orders with algorithmic or non-algorithmic
sell/buy orders through the use of the external multiple data sources,” as
recited in independent claim 7. Id. at 39; see also id. at 40 (repeating the
same).
In its Reply, CME contends that CFTC’s NYMEX ACCESS system is
capable of comparing and matching express spread orders with other express
spread orders, as well as matching and comparing express spread orders with
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two individual legs, via implied spread orders. Pet. Reply 11 (citing
Ex. 1003, 28; Ex. 1021, 47:21–48:7). CME further argues that Lupien
discloses a trading system that executes some trades internally and some
trades externally. Id. CME then turns back to CFTC and argues that its
NYMEX ACCESS system will adjust dynamically the conditional implied
spread orders as corresponding legs move, e.g., prices change. Id. at 12
(citing Ex. 1003, 29, Ex. 1021, 49:18–50:9). CME asserts that this
functionality performed by CFTC’s NYMEX ACCESS system would work
substantially the same when modified to include an external price feed that
dynamically adjust prices or, alternatively, when modified to execute part of
a trade externally, e.g., one leg of a spread order, as taught by Lupien. Id.
We are not persuaded by 5th Market’s individual attacks on Lupien.
When assessing obviousness, the test is what the combined teachings of the
references would have taught or suggested to one with ordinary skill in the
art. In re Young, 927 F.2d 588, 591 (Fed. Cir. 1991). In its Petition, CME
does not rely solely upon Lupien to teach the claimed features recited in
independent claim 7. Instead, CME relies upon the combined teachings of
CFTC and Lupien. That is, CME takes the position that the spread trade
functionality provided by CFTC’s NYMEX ACCESS system (Ex. 1003, 27–
34), in conjunction with Lupien’s disclosure of searching external data
sources to match orders that otherwise could not be matched internally
(Ex. 1004, 11:44–60, 12:55–57, 13:14–18, 16:23–28, 17:36–38, 17:46–54,
Fig. 7), collectively teaches using an external price feed from multiple
external data sources to match or fill multiple legs of a spread order in the
manner required by independent claim 7.
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To the extent 5th Market argues that independent claim 7 requires that
the external price feed be used as an independent variable of the algorithm or
an input to a constraint variable of the algorithm, we disagree. Independent
claim 7 recites, in relevant part, “an external price fee . . . may be used as an
independent variable of the algorithm or an input to a constraint variable.”
Ex. 1001, 29:32–36 (emphasis added). This recitation in independent claim
7 includes permissive language, such as “may,” which indicates the claim
language that follows is optional and, therefore, is not required when
affording this claim its broadest reasonable interpretation. See In re
Johnston, 435 F.3d 1381, 1384 (Fed. Cir. 2006) (“[O]ptional elements do
not narrow the claim because they can always be omitted.”). Accordingly,
these features in independent claim 7—specifically, whether the price feed is
used as “an independent variable of the algorithm or an input to a constraint
variable to an algorithm”—are not entitled to patentable weight.
b. CME Provides a Sufficient Rationale to Combine the Teachings of
CFTC and Lupien
In its Patent Owner Response, 5th Market contends that CME’s
rationale to combine the teachings of CFTC and Lupien is ambiguous with
no guidance as to how these prior art reference would be combined to
account for each limitation recited independent claim 7. PO Resp. 33–35
(citing Pet. 41–42, 46). 5th Market further argues that the supporting
testimony of Dr. Pirrong provides not additional guidance, but instead offers
blanket assertions for combining the teachings of CFTC and Lupien. Id. at
35 (citing Ex. 1002 ¶¶ 108, 109). 5th Market asserts that, at best, Dr.
Pirrong’s supporting testimony indicates that Lupien’s external price feed
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could be used as either a ticker or for price discovery, both of which do not
account properly for the features recited in independent claim 7. Id. at 36–
37 (citing Ex. 1002 ¶¶ 78, 110; Ex. 2009 ¶¶ 60–66).
In its Reply, CME contends that Dr. Pirrong provides an example of
how one of ordinary skill in the art would modify CFTC’s NYMEX
ACCESS system to include Lupien’s external price feed. Pet. Reply 10
(citing Ex. 1002 ¶¶ 78, 100). CME argues that, according to Dr. Pirrong,
providing external market data helps traders make trading decisions and
implement trading strategies for various securities and other items. Id.
CME further argues that, with more information, a trader is more likely to
price the traded security or item. Id. In further support of these arguments,
CME direct us to the cross-examination testimony of Dr. Pirrong in Case
CBM2013-00027. Id. (citing Ex. 1027, 102:22–103:1).
As CME correctly points out in its Petition (Pet. 42), the Supreme
Court has held that “[t]he combination of familiar elements according to
known methods is likely to be obvious when it does no more than yield
predictable results.” KSR, 550 U.S. at 416. The Court further instructs that:
[o]ften it will be necessary for a court to look to interrelated
teachings of multiple [references]; . . . and the background
knowledge possessed by a person having ordinary skill in the
art, all in order to determine whether there was an apparent
reason to combine the known elements in the fashion claimed
by the patent at issue.

Id. at 418. The Court also notes that a person of ordinary skill in the art is “a
person of ordinary creativity, not an automaton,” and “will be able to fit the
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teachings of multiple [references] together like pieces of a puzzle.” Id. at
420–21.
As we explained previously, CFTC discloses that its NYMEX
ACCESS system possesses spread trading functionality (Ex. 1003, 27–34),
and Lupien discloses searching external data sources to match orders that
otherwise could not be matched internally (Ex. 1004, 11:44–60, 12:55–57,
13:14–18, 16:23–28, 17:36–38, 17:46–54, Fig. 7). To support CME’s
rationale to combine these teachings of CFTC and Lupien, Dr. Pirrong
testifies that one of ordinary skill in the art would have good reason to
incorporate an external price feed into a trading system. See Ex. 1002 ¶ 108.
Dr. Pirrong supports this assertion by further testifying that traders
commonly refer to a ticker as a source of external market data. Id. ¶ 110.
Dr. Pirrong also testifies that, by referring to external market data
reproduced on a ticker, a trading system may avoid processing and
infrastructure costs associated with price discovery, which, in turn, results in
lower costs to the trader. Id. We credit Dr. Pirrong’s testimony in this
regard because it informs us of the background knowledge possessed by one
of ordinary skill in the art prior to the ’387 patent.
In addition, we credit the testimony of Dr. Pirrong elicited during his
cross-examination in Case CBM2013-00027 because it further informs us of
the background knowledge possessed by one of ordinary skill in the art prior
to the ’387 patent. In response to a question regarding what one with
ordinary skill in the art in 1992 would do next to improve CFTC’s NYMEX
ACCESS system, Dr. Pirrong states that “one of the most important things
about trading and traders is information. And so providing more
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information to traders and providing information in a more . . . convenient
and easy-to-understand format would have been an important
consideration.” Ex. 1027, 102:22–103:4.
In considering the entirety of the record before us, we agree with
CME’s assertion that modifying CFTC’s NYMEX ACCESS system to
include Lupien’s external price feed amounts to combining familiar elements
according to a known method that does no more than yield a predictable
result. See KSR, 550 U.S. at 416. In particular, we are satisfied that one
with ordinary skill in the art would have recognized that such a modification
to CFTC would provide a prospective trader with more information to
develop trading strategies and, as a result, provide the trader a better
opportunity to successfully complete trades. In that respect, instead of
presenting a rationale to combine that is ambiguous in nature as asserted by
5th Market, CME has provided an articulated reason with a rational
underpinning to justify the legal conclusion of obviousness.
c. Summary
Based on the record before us, we conclude that CME has
demonstrated by a preponderance of the evidence that independent claim 7
would have been obvious over the combination of CFTC and Lupien.
6. Dependent Claims 4, 8, and 10
Dependent claim 4 recites:
wherein said device for matching and comparing establishes
prices at which the buy/sell orders potentially match during a
matching cycle, establishes unmatched remainder data at such
established prices; searches the external data sources for
additional buy and sell data available to match the remainder
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data; combines the matched remainder data with the potentially
matching orders for creating a completed match according to
accepted match criteria in order to execute said single
electronically matched trade.

Ex. 1001, 28:31–40. Dependent claims 8 and 10 recite similar limitations.
Id. at 29:45–55, 30:19–29.
In its Petition, CME accounts for the features recited in dependent
claim 4 by contending that CFTC discloses the NYMEX ACCESS system
partially fills spread orders and creates unfilled portions within the system to
be filled later. Pet. 31–32 (citing Ex. 1003, 4, 28–29 n.37; Ex. 1002 ¶ 93).
CME further contends that, similar to the aforementioned disclosure in
CFTC, Lupien discloses that buy and sell orders that remain unexecuted
after internal comparing and matching are offered to external markets or
exchanges to be compared and matched. Id. at 32–33, 36 (citing Ex. 1004,
11:44–60, 12:55–57, 13:14–18, 16:23–28, 17:36–38, 17:46–54, Fig. 7 (steps
40, 42, 44, 46, 48)). According to CME, it would have been obvious to
modify CFTC’s NYMEX ACCESS system to compare and match unfilled
portions of internal spread orders with external markets to execute trades for
the unfilled portions on those external markets, as taught by Lupien. Id. at
33. To support combining these teachings of CFTC and Lupien, CME
asserts that “‘[t]he combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield predictable
results.’” Id. (quoting KSR, 550 U.S. at 416). CME relies upon essentially
the same findings and conclusions to support its ground based on
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obviousness that was instituted against dependent claims 8 and 10.
Compare Pet. 31–33, 36, with Pet. 42–44, 46–49, 52.
In its Patent Owner Response, 5th Market presents numerous
patentability arguments directed to dependent claims 4, 8, and 10. PO Resp.
16–28. Given the similarities that exist between 5th Market’s arguments, we
group the arguments that share a common theme and address them in turn.
a. CME Relies Upon the Combined Teachings of CFTC and Lupien to
Teach Matching of Remainder Data in the Manner Required by
Dependent Claims 4, 8, and 10

In its Patent Owner Response, 5th Market contends that CME only
relies upon CFTC to disclose the existence of remainder data, but does not
assert that CFTC matches the remainder data externally, or that internally
matched orders and externally matched orders are combined and executed as
a single trade. PO Resp. 17 (citing Pet. 32; Ex. 1002 ¶ 93). 5th Market
argues that CME and its expert witness, Dr. Pirrong, relies upon Lupien to
teach these features required by dependent claims 4, 8, and 10. See id.
(citing Pet. 36; Ex. 1002 ¶ 92).
In its Reply, CME contends that 5th Market mischaracterizes the
instituted ground of obviousness based on the combination of CFTC and
Lupien. Pet. Reply 5. CME argues that both the Petition and the
Declaration of Dr. Pirrong cite to, and rely upon, the teachings of CFTC and
Lupien to demonstrate how these references collectively teach all the
features recited in dependent claims 4, 8, and 10. Id. (citing Pet. 31–34, 42–
44, 47–49; Ex. 1002 ¶¶ 93–95, 112–14, 117–19). For instance, CME argues
that, although it relies upon Lupien to teach searching external data sources
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and matching external orders, it also relies upon CFTC to teach the
simultaneous execution of a multiple legs of a spread order as a single
matched trade. See id. (citing Pet. 32–33). CME asserts that it is the
collective teachings of CFTC and Lupien that the Board initially found
satisfied the “more likely than not” threshold standard for instituting a
covered business method review as to dependent claims 4, 8, and 10. Id. at
5–6 (citing Dec. to Inst. 23–25).
We agree with CME that 5th Market mischaracterizes the instituted
ground of obviousness based on the combination of CFTC and Lupien.
Contrary to 5th Market’s assertion, CME does not rely solely on the
teachings of Lupien to disclose matching the remainder data externally, or
that internally matched orders and externally match orders are combined and
executed as a single trade. Instead, CME relies upon the combined
teachings of CFTC and Lupien. See Young, 927 F.2d at 591. That is, CME
takes the position that CFTC’s NYMEX ACCESS system, which is capable
of filling one leg of a spread order by matching internal orders (Ex. 1003, 29
n.37), in conjunction with Lupien’s disclosure of searching external data
sources to match orders that otherwise could not be matched internally
(Ex. 1004, 11:44–60, 12:55–57, 13:14–18, 16:23–28, 17:36–38, 17:46–54,
Fig. 7), collectively teaches combining and executing unmatched remainder
data from the spread order with potentially matching external orders as a
single trade in the manner required by dependent claims 4, 8, and 10. See
Pet. 31–33, 42–44, 46–49, 52.
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b. CME Relies Upon the Combined Teachings of CFTC and Lupien to
Teach A Single Electronically Matched Trade in the Manner Required
by Dependent Claims 4, 8, and 10

In its Patent Owner Response, 5th Market contends that Lupien does
not teach a device for matching or comparing that “combines the [externally]
matched remainder data with the [internally matched] potentially matching
orders . . . in order to execute a single electronically matched trade,” as
recited in dependent claim 4, 8, and 10. PO Resp. 17 (citing Ex. 2009 ¶ 46)
(emphasis omitted). 5th Market argues that, because Lupien deals with
orders for individual securities, the trading system in Lupien matches an
internal purchase and sale as a single trade, and then sends separate orders
(in the same security) for any remainder to one or more external markets.
Id. at 18. 5th Market asserts that the outcome of the external orders
disclosed in Lupien are separate and independent from the outcome of the
internal orders executed within its trading system. Id. at 18–19. 5th Market
also asserts that, based on the serial operations illustrated in Figure 7 of
Lupien, the potential execution of the external orders disclosed in Lupien
occurs later in time than the execution of the internal orders. Id. at 19–21
(citing Ex. 1004, Fig. 7 (steps 40, 42, 44, 46, 48); Ex. 2009 ¶¶ 43, 44).
In its Reply, CME contends that it is the combined teachings of CFTC
and Lupien that account for a “single electronically matched trade,” as
required by dependent claims 4, 8, and 10. Pet. Reply 6. CME argues that
CFTC’s NYMEX ACCESS system executes both legs of a spread trade
internally, where each leg of the spread comes from separate order books.
Id. at 6–7 (citing Pet. 32; Ex. 1021, 47:21–52:2). CME further argues that,
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although Lupien does not disclose spread trading functionality, it discloses
executing trades both internally and externally. Id. at 7 (citing Pet. 10, 24–
25; Ex. 1002 ¶¶ 80, 81). According to CME, modifying CFTC’s NYMEX
ACCESS system with the identified teachings in Lupien provides a spread
trade where, instead of executing both legs of the spread order internally,
one leg of the spread order is executed internally and the other leg of the
spread order is executed externally. Id. (citing Ex. 1027, 177:1–178:2;
Ex. 1020, 34).
Similar to our analysis above regarding the matching of remainder
data (see supra II(C)(6)(a)), we do not share 5th Market’s view that CME
relies solely upon Lupien to teach a “single electronically matched trade,” as
required by dependent claims 4, 8, and 10. See Young, 927 F.2d at 591.
Instead, we agree with CME’s contention that CFTC’s NYMEX ACCESS
system, which is capable of filling one leg of a spread order by matching
internal orders (Ex. 1003, 29 n.37), in conjunction with Lupien’s disclosure
of searching external data sources to match orders that otherwise could not
be matched internally (Ex. 1004, 11:44–60, 12:55–57, 13:14–18, 16:23–28,
17:36–38, 17:46–54, Fig. 7), collectively teaches filling the second leg of the
spread order by combining and executing unmatched remainder data with
potentially matching external orders in order to complete a single trade in
the manner required by dependent claims 4, 8, and 10. See Pet. 31–33, 42–
44, 46–49, 52.
In addition, 5th Market contends that, even if it assumes for the sake
of argument that CME relies upon CFTC to teach a “single electronically
matched trade,” as required by dependent claims 4, 8, and 10, the supporting
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testimony from Dr. Pirrong is inconsistent with the teachings of CFTC and
is not commensurate in scope with the features required by these claims.
PO Resp. 26 (citing Ex. 1002 ¶ 93). 5th Market argues that Dr. Pirrong’s
statement in the cited paragraph of his Declaration that the unfilled portions
of CFTC’s spread order are “later fill[ed]” constitutes an admission that the
initially filled portion of CFTC’s spread order and the “later fill[ed]” portion
of that spread order are executed separately. Id. at 26–27. 5th Market then
asserts that these separately executed trades cannot constitute a “single
electronically matched trade,” as required by dependent claims 4, 8, and 10.
Id. at 27.
We do not share 5th Market’s view that Dr. Pirrong’s testimony
regarding unfilled portions in CFTC being “later fill[ed]” (Ex. 1002 ¶ 93) is
inconsistent with the teachings of CFTC. For convenience, the relevant
portion of Dr. Pirrong’s testimony is reproduced below:
CFTC discloses a system that partially fills spread orders and
creates unfilled portions within the system to be filled later. In
my opinion, these unfilled portions correspond to unmatched
remainder data as set forth in [dependent] claim 4. And when
the CFTC system later fills these unfilled portions, this
corresponds to a completed match to execute a single
electronically matched trade.

Ex. 1002 ¶ 93. CFTC discloses that, although the NYMEX ACCESS
system is capable of filling one portion or leg of a spread order by matching
internal orders and leaving the remaining, unfilled portion or leg of the
spread order for execution (Ex. 1003, 29 n.37), the system treats the
execution of each leg of the spread order as “a single event” (id. at 29).
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Therefore, contrary to 5th Market’s assertion, Dr. Pirrong’s testimony
regarding unfilled portions in CFTC being “later fill[ed]” is consistent with
the teachings of CFTC that it is the completed match of each portion or leg
of the spread order and their simultaneous execution that constitutes a single
trade.
We also do not share 5th Market’s view that Dr. Pirrong’s testimony
regarding unfilled portions in CFTC being “later fill[ed]” (Ex. 1002 ¶ 93) is
not commensurate in scope with the features required by dependent claims
4, 8, and 10. As we explained above in the claim construction section, in
order to determine whether the combination of CFTC and Lupien properly
accounts for a “single electronically matched trade,” we first must construe
the claim term “simultaneously” in the context of executing a spread order.
See supra Section II(A)(3). Upon reviewing the specification of the ’387
patent, as well as the cross-examination testimony of Dr. Rickard, we
construe the limitation “simultaneously executing a trade” in the context of
executing a spread order as “simultaneously executing multiple legs of a
spread order.” Id.
Contrary to 5th Market’s assertion, the aforementioned testimony of
Dr. Pirrong is commensurate in scope with the features required by
dependent claims 4, 8, and 10—namely, the simultaneous execution of
multiple legs of a spread order as a “single electronically matched trade.”
5th Market narrowly focuses on the portion of Dr. Pirrong’s testimony
regarding unfilled portions in CFTC being “later fill[ed],” and either ignores
or overlooks that Dr. Pirrong follows up this testimony by clarifying it is the
completed match of each portion or leg of the spread order and their
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simultaneous execution that results in the claimed “single electronically
matched trade.” Ex. 1002 ¶ 93. Accordingly, Dr. Pirrong’s cited testimony
is consistent with our claim construction of the limitation “simultaneously
executing a trade” in the context of executing a spread order.
c. 5th Market Narrowly Focuses on the Cross-Examination Testimony of
CME’s Expert Witness, Dr. Pirrong, and the Statements of
CME’s Counsel
5th Market contends that CME’s expert witness, Dr. Pirrong,
confirmed during his cross-examination testimony that Lupien’s internal and
external trades are outcome-independent and, therefore, cannot be combined
and executed as a “single electronically matched trade,” as required by
dependent claims 4, 8, and 10. PO Resp. 21–24 (citing Ex. 2008, 19:6–11,
21:12–18, 22:2–17). In particular, 5th Market argues that Dr. Pirrong’s
cross-examination testimony acknowledging that there is a possibility that
Lupien’s remainder data may not be matched external, coupled with its’
disclosure of definitively executing an internal order, demonstrates that the
internal and external orders are not combined and executed as a “single
electronically matched trade,” as claimed. Id. at 24 (citing Ex. 2009 ¶¶ 45–
47).
We are not persuaded by 5th Market’s argument because it focuses on
Dr. Pirrong’s cross-examination testimony as though it was articulated and
relied upon by CME in its Petition. Regardless whether Dr. Pirrong
confirms during his cross-examination testimony that Lupien’s internal and
external trades are outcome-independent, he was simply responding to
questions posed by 5th Market’s counsel. As we discussed previously, CME
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provides sufficient evidence to support a finding that the combined teachings
of CFTC and Lupien account for a “single electronically matched trade,” as
required by dependent claims 4, 8, and 10. See supra Section II(C)(6)(b).
We did not rely upon the aforementioned portions of Dr. Pirrong’s cross-
examination testimony when determining whether the combined teachings
of CFTC and Lupien properly account for this disputed limitation. 5th
Market’s attempt to distinguish the testimony elicited from Dr. Pirrong
during cross-examination from a “single electronically matched trade,” as
required by dependent claims 4, 8, and 10, does not undermine the evidence
presented and developed by CME in its Petition, or otherwise render Dr.
Pirrong’s supporting testimony provided in the Declaration accompanying
the Petition less persuasive.
5th Market further contends that, during oral argument in Case
CBM2013-00027, CME’s counsel represented that Lupien does not mix and
match its internal and external trades. PO Resp. 24–25 (citing Ex. 2017,
51:8–52:3). 5th Market then argues that, given this purported admission by
CME’s counsel, Lupien does not teach combing internally matched orders
with externally matched orders to execute a “single electronically matched
trade,” as required by dependent claims 4, 8, and 10. See id. at 26.
Similar to our analysis above, we are not persuaded by 5th Market’s
argument because it focuses on the statements of CME’s counsel as though
they were articulated and relied upon by CME in its Petition. Regardless
whether CME’s counsel admitted during oral argument in Case CBM2013-
00027 that Lupien does not mix and match internal and external trades, she
was simply responding to a question posed by one of the Administrative
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Patent Judges presiding over that case. As we discussed previously, CME
provides sufficient evidence to support a finding that the combined teachings
of CFTC and Lupien account for a “single electronically matched trade,” as
required by dependent claims 4, 8, and 10. See supra Section II(C)(6)(b).
We did not rely upon the statements made by CME’s counsel during oral
argument in Case CBM2013-00027 when determining whether the
combined teachings of CFTC and Lupien properly account for this disputed
limitation. 5th Market’s attempt to distinguish the statements made by
CME’s counsel during oral argument in Case CBM2013-00027 from a
“single electronically matched trade,” as required by dependent claims 4, 8,
and 10, does not undermine the evidence presented and developed by CME
in its Petition.
d. Summary
Based on the record before us, we conclude that CME has
demonstrated by a preponderance of the evidence that dependent claims 4, 8,
and 10 would have been obvious over the combination of CFTC and Lupien.
7. Claim 6
Dependent claim 6 recites, in relevant part:
a plurality of trader workstations for trading and negotiating
prospective trades for instruments referenced in buy and sell
orders . . . each workstation comprising . . . a sorter that
resequences the orders in real-time in the display field as each
order is received to reflect changes in the relative favorability of
the orders responsive to changes in price of said another item as
is the independent variable.

Ex. 1001, 28:54–29:10.
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In its Petition, CME relies upon the combined teachings of CFTC and
Lupien to account for these features recited in dependent claim 6. Pet. 33,
37–39. In particular, CME argues that CFTC discloses entering orders into a
trader work station, which includes a trading screen that allows a prospective
trader to configure how incoming order information, such as best bids, best
offers, and last trade prices, are displayed. Id. at 39 (citing Ex. 1003, 4, 28,
58). Similarly, CME argues that Lupien discloses “[a] sorting function [that]
allows the user to concentrate on the most important orders according to the
selected criteria.” Id. (quoting Ex. 1004, 7:19–22). CME further argues that
Lupien discloses that “[t]he bottom portion of all screens contains prompts
that enable the user to change the way the data is displayed or ranked.” Id.
(quoting Ex. 1004, 7:39–41). According to CME, Lupien’s display screen is
capable of showing all orders, purchases, and sales in the system by using a
“Sort” function to rank them in descending order. Id. (citing Ex. 1004, Fig.
5).
In its Patent Owner Response, 5th Market presents two patentability
arguments directed to dependent claim 6. PO Resp. 28–32. We address
each argument in turn.
a. CME Relies Upon the Combined Teachings of CFTC and Lupien to
Teach a Trader Workstation That Includes a Sorter, as Required by
Dependent Claim 6

In its Patent Owner Response, 5th Market contends that CFTC and
Lupien each do not teach a trader workstation that includes a sorter, as
required by dependent claim 6. PO Resp. 29, 31. 5th Market argues that
both CFTC and Lupien provide sorting functionality via a trade engine or
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central processing unit (“CPU”)—not via a trader workstation. Id. at 31.
According to 5th Market, there is simply no teaching in either CFTC or
Lupien of a trader workstation that includes a sorter, as claimed. Id.
In its Reply, CME contends that Lupien discloses a trader workstation
that includes a display device and a sorter. Pet. Reply 7–8 (citing Ex. 1004,
6:22–24, 6:26–27, 6:33–37, 7:39–41, Figs. 2–6). According to CME,
Lupien’s system allows prospective traders to rank, sort, and otherwise
arrange data, such as order data, on their respective workstations. Id. at 8
(citing Ex. 1004, 7:15–59). CME also asserts that Lupien’s trader
workstation includes a “Sort” prompt on the display screen. Id. (citing
Ex. 1005, 7:43–46, Fig. 5).
We agree with CME that Lupien’s trader workstation includes a
sorter, as required by dependent claim 6. Lupien discloses that traders using
its system have the ability to view information pertaining to all pending
orders, as well as information pertaining to their own executed and cancelled
orders, ranked by various criteria in numerous display screen formats.
Ex. 1004, 7:15–19, Figs. 2–6. The bottom portion of a trader’s display
screen contains prompts that enable each prospective trader to change the
way data is displayed or ranked, to move to other display screens, to alter
orders, or to respond to the orders of other systems or market participants.
Id. at 7:39–41. For instance, Figure 5 of Lupien, reproduced below with
annotation added, includes a reproduction of data shown on a trader’s
display screen relating to all orders in the system. Id. at 5:46–47, 8:33–51.
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As shown above in this annotated version of Figure 5, the trader’s display
screen includes a “Sort” prompt in the bottom, left-hand corner. See
Ex. 1004, Fig. 5.
Based on the aforementioned disclosures in Lupien, one of ordinary
skill in the art would have recognized that the “Sort” prompt illustrated in
Figure 5 is associated with a “sorter” located at the trader workstation, rather
than the “sorter” located at the controller CPU. 5th Market’s expert witness,
Dr. Rickard, appears to acknowledge as much during his cross-examination.
In response to a question posed by CME’s counsel concerning whether
reorganizing or re-sorting by a trader on his/her workstation would affect the
order or rank in the book kept at Lupien’s controller CPU, Dr. Rickard stated
that “[w]hat is displayed would not affect the ordering or ranking in the
book, no.”) Ex. 1021, 37:1–14. In addition, we credit Dr. Pirrong’s
testimony that providing sorting functionality at a trader’s workstation is a
common way to show the trader other resting orders that are in the system,
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and further enables the trader to make sense of the other orders and other
trading possibilities. Ex. 1002 ¶ 103.
b. 5th Market Narrowly Focuses on the Cross-Examination Testimony of
CME’s Expert Witness, Dr. Pirrong

In its Patent Owner Response, 5th Market contends that Dr. Pirrong
concedes that the sorting functionality occurs at Lupien’s controller CPU.
PO Resp. 30–31 (citing Ex. 2008, 26:21–27:8, 30:9–13). 5th Market then
argues that, given this concession from Dr. Pirrong, there would be no
reason to add redundant sorting functionality to Lupien’s trader workstation.
Id. at 32 (citing Ex. 2009 ¶ 55).
In its Reply, CME acknowledges that, when Dr. Pirrong was
questioned about the sorting and matching performed by Lupien’s trading
system, Dr. Pirrong explained that Lupien’s controller CPU also includes a
sorter. Pet. Reply 8 (citing Ex. 2008, 26:21–27:8). CME argues, however,
that Dr. Pirrong’s testimony in this regard was in the context of how
Lupien’s trading system matches and executes trades on a price-time priority
basis, and does not contradict his testimony provided in the Declaration
accompanying the Petition that Lupien’s trader workstation includes a sorter.
Id. (citing Ex. 2008, 23:3–27:8; Ex. 1002, App’x C (p. 95)).
We are not persuaded by 5th Market’s argument because it focuses on
Dr. Pirrong cross-examination testimony as though it was articulated and
relied upon by CME in its Petition. Regardless whether Dr. Pirrong
confirms during his cross-examination testimony that Lupien’s controller
CPU includes a sorter, he was simply responding to questions posed by 5th
Market’s counsel. As we discussed previously, CME provides sufficient
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evidence to support a finding that Lupien’s trader workstation also includes
a sorter, as required by dependent 6. See supra Section II(C)(7)(a). We did
not rely upon the aforementioned portions of Dr. Pirrong’s cross-
examination testimony when determining whether Lupien properly accounts
for this disputed limitation. 5th Market’s attempt to distinguish the
testimony elicited from Dr. Pirrong during cross-examination from a trader
workstation with a sorter, as required by dependent claim 6, does not
undermine the evidence presented and developed by CME in its Petition, or
otherwise render Dr. Pirrong’s supporting testimony provided in the
Declaration accompanying the Petition less persuasive.
c. Summary
Based on the record before us, we conclude that CME has
demonstrated by a preponderance of the evidence that dependent claim 6
would have been obvious over the combination of CFTC and Lupien.
D. 5th Market’s Motion to Exclude
In its Motion to Exclude, 5th Market seeks to exclude the following
evidence: (1) CFTC, itself, because it is not authenticated properly under
Federal Rule of Evidence (“FRE”) 901, and lacks relevance, presumably
under FRE 403, at least because it does not qualify as a prior art printed
publication within the meaning of § 102(b); (2) the stamps or markings on
the title page of CFTC because they are inadmissible hearsay under FREs
801 and 803; (3) certain portions of the Declaration of Dr. Pirrong
accompanying the Petition (Ex. 1002) because they lack foundation under
FRE 702; and (4) certain portions of the Rebuttal Declaration of Dr. Pirrong
(Ex. 1026) as exceeding the permissible scope of reply testimony. Mot. to
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Exclude 1–15. In its Opposition, CME counters with the following
arguments: (1) CFTC is self-authenticating under FREs 902(4)–(5) and
901(b)(8), and 5th Market’s argument that CFTC lacks relevance under FRE
403 is not a proper subject for a motion to exclude; (2) the stamps or
markings on the title page of CFTC are not hearsay under FRE 801(d)(2)(B)
or, alternatively, are admissible under any one of the hearsay exceptions set
forth in FREs 806(6), (8), (16); and (3) the relevant portions of the Rebuttal
Declaration of Dr. Pirrong do not exceed the permissible scope of reply
testimony. Exclude Opp. 1–15. In its Reply, 5th Market contends that
CFTC is not self-authenticating under FREs 902(4)–(5) and 901(b)(8).
Exclude Reply 1–5. For the reasons discussed below, 5th Market’s Motion
to Exclude is denied.
1. There is Sufficient Evidence in the Record Before Us to Support a
Finding That CFTC is Relevant Evidence That is Self-Authenticating

At the outset, we address 5th Market’s arguments that CFTC lacks
relevance, presumably under FRE 403, at least because it does not qualify as
a prior art printed publication within the meaning of § 102(b). To support
this assertion, 5th Market relies upon essentially the same arguments it
presented in its Patent Owner Response. Compare PO Resp. 43–50, with
Mot. to Exclude 6–13. In response, CME contends that the issue of whether
there is sufficient evidence in the record before us to demonstrate that CFTC
qualifies as a prior art printed publication within the meaning of § 102(b) is
not a proper subject for a motion to exclude, but instead must be presented in
the patent owner response. Exclude Opp. 13–14 (citing Office Patent Trial
Practice Guide, 77 Fed. Reg. 48,756, 48,767 (Aug. 14, 2012)).
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We agree with CME that a motion to exclude is not the proper vehicle
to challenge the sufficiency of the evidence used to demonstrate that CFTC
qualifies as a prior art printed publication within the meaning of § 102(b).
Whether a reference qualifies as a printed publication within the meaning of
§ 102(b) is a legal conclusion based on underlying factual determinations.
Suffolk Techs., 752 F.3d at 1364. Therefore, the issue of whether there is
sufficient evidence in the record before us to demonstrate that CFTC is a
printed publication within the meaning of § 102(b) should be presented in
the patent owner response—not a motion to exclude. As we explained
previously, the unrebutted testimony of Mr. Wheeler and the rebuttal
testimony of Dr. Pirrong amounts to credible evidence supporting a
determination that CFTC was made sufficiently accessible to the public
interested in the art at or around December 18, 1992. See supra Section
II(B). Consequently, we conclude that CFTC is printed publication with the
meaning of § 102(b) and, therefore, qualifies as prior art to the ’387 patent.
Id.
We note, however, that addressing the admissibility of evidence, e.g.,
authenticity or hearsay, underlying the factual determinations of whether
CFTC is a prior art printed publication may be the subject of a motion to
exclude. See Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,767 (“A
motion to exclude must explain why the evidence is not admissible (e.g.,
relevance or hearsay) but may not be used to challenge the sufficiency of the
evidence to prove a particular fact.”). With this in mind, we turn to 5th
Market’s arguments that CFTC should be excluded because it is not
authenticated properly under FRE 901.
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5th Market contends that CFTC does not constitute evidence that is
self-authenticating under FRE 902 because it does not satisfy any of the
categories of self-authenticating documents. Mot. to Exclude. 3. In
particular, 5th Market argues that CFTC does not qualify as an “official
publication” by a public authority under FRE 902(5). Id. 5th Market also
argues that CFTC does not satisfy the ancient document rule under FRE
901(8), which requires, among other things, that the document in question be
“in a place where, if authenticate, it would likely be.” Id. at 4. 5th Market
asserts that CFTC is not an ancient document because CME does not
provide credible or sufficient evidence as to where it obtained CFTC. Id.
In response, CME contends that CFTC qualifies as a self-
authenticating official publication under FRE 902(5) because it is an internal
memorandum of an independent agency of the United States Government
that was made available publicly at or around December 18, 1993. Exclude
Opp. 2–3 (citing Ex. 1003, title page; Ex. 2011 ¶¶ 3, 6, 10, 11). In addition,
CME contends that CFTC qualifies as a self-authenticating ancient
document under FRE 901(b)(8) for the following reasons: (1) there is
nothing in the record that calls into question the authenticity of CFTC; (2)
Mr. Wheeler testifies that, through the ordinary business and established
record keeping procedures of the CFTC Agency, essentially the same
version of CFTC was filed and indexed with the CFTC Agency; and (3)
CFTC was at least 20 years old when offered as evidence in this proceeding.
Id. at 5–6 (citing Ex. 1003, title page; Ex. 2011 ¶¶ 9–12, 15, 16).
In its Reply, 5th Market contends that CFTC is not a self-
authenticating “official publication” of the CFTC Agency under FRE 902(5)
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because it is labeled as an internal memorandum, and CME provides no
persuasive authority to support its assertion that an internal memorandum
qualifies as a book, a pamphlet, or any other type of official publication.
Exclude Reply 1–2. 5th Market further argues that, contrary to CME’s
assertion, Mr. Wheeler’s testimony does not indicate that CFTC was
published, but rather only indicates that it was made available to the public.
Id. at 2–3 (citing Ex. 2011 ¶¶ 6, 16). In addition, 5th Market contends that
CFTC is not an ancient document under FRE 901(b)(8) because CME does
not provide credible or sufficient evidence that indicates where it found
CFTC, which, in turn, prevents CME from demonstrating that CFTC was
found “in a place where, if authentic, it would likely be.” Id. at 4 (quoting
FRE 901(b)(8)).
Despite 5th Market’s contentions, we agree with CME that CFTC is a
self-authenticating document under at least FREs 902(5) and 901(b)(8).
With respect to FRE 902(5), it is undisputed that the CFTC Agency is an
executive agency of the United States Government that constitutes a public
authority. The parties’ dispute, therefore, centers on a whether CFTC
qualifies as one of the “official publications” identified in FRE 902(5)—
namely, “a book, pamphlet, or other publication.” FRE 902(5). Taking into
account the testimony of Mr. Wheeler, the rebuttal testimony of Dr. Pirrong,
and the document itself, there is sufficient evidence in the record before us
to suggest that CFTC falls within the purview of “other publication[s].”
Mr. Wheeler testifies that the version of CFTC that is Exhibit A-3 is
“a true and accurate CFTC certified copy of the Division of Trading and
Markets memorandum submission in response to the Notice of Proposed
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Rules and Rule Amendments to Implement the NYMEX ACCESS
Electronic Trading System dated December 7, 1992, and marked ‘PUBLIC
COPY’ (‘memorandum’).” Ex. 2011 ¶ 14. In his Rebuttal Declaration,
Dr. Pirrong corroborates that the version of CFTC that is Exhibit A-3 is
essentially the same as the version of CFTC that is Exhibit 1003. See
Ex. 1026 ¶¶ 9–12. As we explained above, because 5th Market did not seek
authorization to depose Mr. Wheeler, and declined to cross-examine Dr.
Pirrong regarding the testimony offered in his Rebuttal Declaration, we have
no reason to question the veracity of the statements made by each declarant.
See supra Section II(B). In summary, CFTC has been authenticated
properly under FRE 902(5) because it is a publication issued by the CFTC
Agency.
With respect to FRE 901(b)(8), there is no dispute between the parties
that CFTC was 20 years old when offered as prior art in this proceeding.
FRE 901(b)(8)(C) (requiring evidence that a document “is at least 20 years
old when offered”). Indeed, on its face, CFTC includes a stamp from the
CFTC Agency that indicates it was received for public record on December
18, 1992. Pet. 6; Ex. 1003, title page. Mr. Wheeler’s testimony further
supports that CFTC was made available publicly on or around December 18,
1992. See Ex. 2011 ¶¶ 15, 16. The parties’ dispute, therefore, centers on
whether CFTC “is in a condition that creates no suspicion about its
authenticity,” and “was in a place where, if authentic, it would like be.”
FRE 901(b)(8)(A)–(B). Taking into account the testimony of Mr. Wheeler,
the rebuttal testimony of Dr. Pirrong, and the document itself , there is
sufficient evidence in the record before us to suggest that there is no reason
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to question the authenticity of CFTC because it was obtained from the CFTC
Agency.
Mr. Wheeler testifies that “[f]ollowing the [CFTC Agency’s] ordinary
business and established record keeping procedures for the intake and
maintenance of publicly available documents, [the version of CFTC that is]
Exhibit A-3 was filed and indexed with the CFTC as document ‘NC 2,’ as
evinced by Exhibit A-1.” Ex. 2011 ¶ 15. Mr. Wheeler further testifies that
“those having ordinary skill in the subject matter or art, exercising
reasonable diligence, would have been able to locate [the version of CFTC
that is Exhibit A-3] as of December 18, 1992[,] or within a few days
thereafter.” Id. at ¶ 16. Similar to our analysis above, Dr. Pirrong
corroborates that the version of CFTC that is Exhibit A-3 is essentially the
same as the version of CFTC that is Exhibit 1003. See Ex. 1026 ¶¶ 9–12.
Once again, we have no reason to question the veracity of the statements
made by these declarants. See supra Section II(B). In summary, CFTC has
been authenticated properly under FRE 901(b)(8) because the Declaration of
Mr. Wheeler and the Rebuttal Declaration Dr. Pirrong identify where and
when CFTC was obtained, the Declaration of Mr. Wheeler provides a brief
description of the place where CFTC was maintained, and the indicia on the
title page of CFTC indicate it was at least 20 years old when offered.
For the foregoing reasons, we determine 5th Market has not presented
a sufficient basis to exclude CFTC as lacking relevance or as
unauthenticated evidence.
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2. The Stamps or Markings on the Title Page of CFTC are Admissible as
an Exception to the Rule Against Hearsay Under
FREs 803(6) and 803(16)

5th Market contends that the stamps or markings on the title page of
CFTC, such as “RECEIVED FOR PUBLIC RECORD,” the date of “DEC 18
320PM ’92,” “PUBLIC COPY,” and the date of “December 7, 1992,” are
each inadmissible hearsay under FREs 801 and 803. Mot to. Exclude 5. In
response, CME contends that these stamps and markings are not hearsay
under FRE 801(d)(2)(B) or, alternatively, are admissible because they
qualify as an exception to the rule against hearsay under FREs 803(6) and
803(16). Exclude Opp. 6–9, 11. In its Reply, 5th Market does not address
the contentions presented by CME in its Opposition. See generally Exclude
Reply 1–5.
We agree with CME that the stamps and markings on the title page of
CFTC are admissible because they qualify as an exception to the rule against
hearsay under FRE 803(6). The Declaration of Mr. Wheeler and the
Rebuttal Declaration of Dr. Pirrong lay the necessary foundation to establish
the following: (1) these stamps and markings were made at or near the time
CFTC was submitted to the CFTC Agency; (2) they were kept in the course
of the regularly conducted business activity; (3) making these stamps and
markings was a regular practice of that activity; (4) all the conditions are
shown by the cited testimony of Mr. Wheeler and Dr. Pirrong; and (5) 5th
Market does not demonstrate adequately that the cited testimony of Mr.
Wheeler or Dr. Pirrong lacks trustworthiness. See Ex. 2011 ¶¶ 14–16;
Ex. 1026 ¶¶ 9–12. In addition, we agree with CME that, because CFTC is
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an ancient document under FRE 901(b)(8) (see supra Section II(D)(1)), the
stamps and markings on the title page are admissible as an exception to the
rule against hearsay under FRE 803(16).
Accordingly, we determine that 5th Market has not presented a
sufficient basis to exclude the stamps and markings on the title page of
CFTC as impermissible hearsay.
3. The Declaration of Dr. Pirrong Accompanying the Petition Does Not
Lack Foundation Under FRE 702

5th Market contends that the Declaration of Dr. Pirrong
accompanying the Petition relies upon CFTC in claim charts on pages 85–
124 and in the following paragraphs: 52, 53, 60, 64, 66–75, 83, 84, 91–93,
95–97, 104–07, 111, 112, 114–17, 119, 120, 127–30, 132, 134–37, 139–41,
148, and 149. Mot. to Exclude. 14. 5th Market asserts that these portions of
the Declaration of Dr. Pirrong should be excluded as lacking foundation
under FRE 702. Id. We disagree.
5th Market’s argument in this regard is predicated on the notion that
CFTC should be excluded because it has not been authenticated properly.
As we explained above, CFTC has been authenticated properly under at least
FREs 902(5) and 901(b)(8). See supra Section II(D)(1). Accordingly, we
determine that 5th Market has not presented a sufficient basis to exclude the
aforementioned portions of the Declaration of Dr. Pirrong as lacking
foundation.
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4. The Rebuttal Declaration of Dr. Pirrong Does Not Exceed the
Permissible Scope of Reply Testimony

5th Market contends that the Rebuttal Declaration of Dr. Pirrong—
specifically, paragraphs 8 and 13—exceed the permissible scope of reply
testimony. Mot. to Exclude 14 (citing Office Patent Trial Practice Guide,
77 Fed. Reg. at 48,767). 5th Market argues that, because Dr. Pirrong states
in his Rebuttal Declaration that the testimony in his Declaration
accompanying the Petition is supported by reliance on the Declaration of
Mr. Wheeler, a document which was purportedly in CME’s possession at the
time it filed its Petition, CME could have relied on that document earlier, yet
it chose not to. Id. 5th Market asserts that the late reliance on the
Declaration of Mr. Wheeler is improper and warrants the exclusion of the
aforementioned paragraphs in the Rebuttal Declaration of Dr. Pirrong. Id. at
14–15. In response, CME contends that the Rebuttal Declaration of Dr.
Pirrong properly responds to 5th Market’s arguments in its Patent Owner
Response directed to the public accessibility of CFTC. Exclude Opp. 11–13.
As an initial matter, a motion to exclude is not a proper vehicle for a
party to raise the issue of testimony in a rebuttal declaration exceeding the
permissible scope of reply testimony. See Vibrant Media Inc. v. General
Electric Co., Case IPR2013-00170, slip op. at 31 (PTAB June 26, 2014)
(Paper 56) (“Whether a reply contains arguments or evidence that are
outside the scope of a proper reply under 37 C.F.R. § 42.23(b) is left to our
determination.”). In any event, based on our review of the arguments
presented by 5th Market in its Patent Owner Response, as well as the
relevant portions of the Rebuttal Declaration of Dr. Pirrong, we agree with
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CME that Dr. Pirrong’s testimony is responsive to 5th Market’s argument
directed to the public accessibility of CFTC. Compare PO Resp. 43–50,
with Ex. 1026 ¶¶ 8, 13. In other words, Dr. Pirrong’s testimony concerning
the Declaration of Mr. Wheeler, particularly Exhibit A-3 attached thereto,
falls within the purview of 37 C.F.R. § 42.23(b), which provides that a
petitioner’s reply may only respond to arguments or evidence raised in the
patent owner response.
Accordingly, we determine that 5th Market has not presented a
sufficient basis to exclude paragraphs 8 and 13 in the Rebuttal Declaration
of Dr. Pirrong.
5. Summary
For the foregoing reasons, 5th Market’s Motion to Exclude the CFTC
reference, certain portions of the Declaration of Dr. Pirrong accompanying
the Petition, and certain portions of the Rebuttal Declaration of Dr. Pirrong
is denied.

III. CONCLUSION
CME has demonstrated by a preponderance of the evidence that
claims 4, 6–8, and 10 of the ’387 patent are unpatentable under § 103(a)
over the combination of CFTC and Lupien.

IV. ORDER
In consideration of the foregoing, it is
ORDERED that claims 4, 6–8, and 10 of the ’387 patent are
determined to be unpatentable;
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FURTHER ORDERED that 5th Market’s Motion to Exclude is
DENIED; and
FURTHER ORDERED that, because this is a Final Written Decision,
parties to this proceeding seeking judicial review of our decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

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For PETITIONER:

Erika H. Arner
Timothy P. McAnulty
Justin Loffredo
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
erika.arner@finnegan.com
timothy.mcanulty@finnegan.com
justin.loffredo@finnegan.com

Matthew J. Kelly
Chicago Mercantile Exchange, Inc.
Matthew.Kelly@cmegroup.com

For PATENT OWNER:

D. Richard Anderson
George S. Dolina
Birch, Stewart, Kolasch & Birch, LLP
dra@bskb.com
gsd@bskb.com

J. Gregory Whitehair
The Whitehair Law Firm, LLC
jgw@whitehairlaw.com