Trials@uspto.gov
`571.272.7822
`
`
`
`
` Paper No. 27
`
` Entered: January 22, 2015
`
`
`
`
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`On January 20, 2015, a conference call was held involving counsel for
`the respective parties and Judges Medley, Petravick, and Hoffmann. Patent
`Owner requested the call to seek guidance regarding a discovery dispute. In
`particular, and according to Patent Owner, Petitioner will not permit the
`cross examination of several witnesses.
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TD AMERITRADE HOLDING CORP., TD AMERITRADE, INC., AND
`TD AMERITRADE ONLINE HOLDINGS CORP.,
`Petitioner,
`
`v.
`
`TRADING TECHNOLOGIES INTERNATIONAL, INC.,
`Patent Owner.
`____________
`
`CBM2014-00131 (Patent 7,533,056)
`CBM2014-00137 (Patent 7,685,055)
`____________
`
`
`Before SALLY C. MEDLEY, MEREDITH C. PETRAVICK, and
`PHILIP J. HOFFMANN, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`
`571.272.7822
`
`
`
`
` Paper No. 27
`
` Entered: January 22, 2015
`
`
`
`
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`On January 20, 2015, a conference call was held involving counsel for
`the respective parties and Judges Medley, Petravick, and Hoffmann. Patent
`Owner requested the call to seek guidance regarding a discovery dispute. In
`particular, and according to Patent Owner, Petitioner will not permit the
`cross examination of several witnesses.
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TD AMERITRADE HOLDING CORP., TD AMERITRADE, INC., AND
`TD AMERITRADE ONLINE HOLDINGS CORP.,
`Petitioner,
`
`v.
`
`TRADING TECHNOLOGIES INTERNATIONAL, INC.,
`Patent Owner.
`____________
`
`CBM2014-00131 (Patent 7,533,056)
`CBM2014-00137 (Patent 7,685,055)
`____________
`
`
`Before SALLY C. MEDLEY, MEREDITH C. PETRAVICK, and
`PHILIP J. HOFFMANN, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`
`
`CBM2014-00131 (Patent 7,533,056)
`CBM2014-00137 (Patent 7,685,055)
`
`
`
`
`Background
`In these two proceedings, a decision was made to institute review
`
`based in part on a prior art reference known as TSE. CBM2014-00131,
`Paper 19.1 TSE is a Tokyo Stock Exchange publication published in
`Japanese. Ex. 1003. Petitioner submitted a 337 page English translation of
`the document (Ex. 1004) along with an affidavit of Courtney O’Connell (Ex.
`1005) certifying that the English translation was true and accurate. In
`accordance with 37 C.F.R. § 42.64(b)(1), Petitioner objected to the affidavit
`of Courtney O’Connell as failing to comply with 37 C.F.R. § 42.63. In
`response to the objection, Petitioner served several declarations from
`individuals who had translated various portions of TSE.2
`Patent Owner is of the impression that the translation of TSE is
`inaccurate and seeks to depose the individuals who translated TSE.
`Petitioner believes that cross examination of the individuals is not permitted
`per the routine discovery rule 37 C.F.R. § 42.51(b)(1).
`
`
`Analysis
`Cross examination of affidavit testimony is authorized under the
`routine discovery rule. 37 C.F.R. § 42.51(b)(1). We have considered
`arguments from both Petitioner and Patent Owner. Based on the facts of
`these proceedings, we agree with Patent Owner that cross examination of the
`
`
`1 Citations are to CBM2014-00131.
`2 Although the declarations were served, they were not filed.
`Notwithstanding 37 C.F.R. § 42.64, Petitioner is herein ordered to file the
`declarations of the individuals who translated TSE in each of the two
`proceedings. Petitioner shall not file the declarations in either of CBM2014-
`00133 or CBM2014-00135 because we did not institute review based on
`TSE in either of those proceedings.
`
`2
`
`
`
`CBM2014-00131 (Patent 7,533,056)
`CBM2014-00137 (Patent 7,685,055)
`
`
`
`individuals who translated various portions of TSE is permitted under 37
`C.F.R. § 42.51(b)(1). During the call, we explained that Patent Owner is
`authorized to cross examine these individuals.
`In light of our explanation, Petitioner sought authorization to file a
`motion for additional discovery for documents in Patent Owner’s possession
`in support of Patent Owner’s theory that the TSE English translation is
`inaccurate. We denied the request. Patent Owner has not filed its Patent
`Owner Response. Patent Owner does not know, at this juncture of the trial,
`whether it will raise the accuracy of the translation of TSE as an issue.
`Moreover, as pointed out by Patent Owner, a party that seeks to cross
`examine a witness need not provide documents that that party intends to rely
`on for cross examination purposes many days or weeks prior to cross
`examination. Rather any documents a deposing party will rely on for cross
`examination, if not previously served, must be served at the deposition. 37
`C.F.R. § 42.53(f)(3). Providing the sought after documents to Petitioner
`days or weeks prior to the cross examination of Petitioner’s witnesses would
`undermine the cross examination process. Accordingly, Petitioner’s request
`for authorization to file a motion for additional discovery is denied.
`
`
`Related Matters
`Patent Owner represented that Petitioner’s real party in interest filed a
`motion to stay the related district court case and indicated that it would file
`an updated notice regarding any decision of the motion to stay. 37 C.F.R.
`§ 42.8. Patent Owner further represented that a motion for summary
`judgment was filed in another district court proceeding involving Patent
`Owner and a third party. According to Patent Owner, that proceeding also
`involves some of the same issues and patents that are involved in these or
`
`3
`
`
`
`CBM2014-00131 (Patent 7,533,056)
`CBM2014-00137 (Patent 7,685,055)
`
`
`
`related CBM2014-00133 and CBM2014-00135 proceedings. Patent Owner
`indicated that it would file an updated notice regarding the decision of the
`summary judgment motion.
`
`
`Order
`
`It is
`ORDERED that Petitioner shall file, in these two proceedings,
`declarations of the individuals who translated TSE by January 26, 2015;
`FURTHER ORDERED that Patent Owner is authorized to cross
`examine the individuals who translated TSE; and
`FURTHER ORDERED that Petitioner’s request to file a motion for
`additional discovery is denied.
`
`
`4
`
`
`
`CBM2014-00131 (Patent 7,533,056)
`CBM2014-00137 (Patent 7,685,055)
`
`
`
`
`
`PETITIONER:
`
`
`
`Lori Gordon
`Jonathan Strang
`Robert E. Sokohl
`Sterne, Kessler, Goldstein & Fox
`lgordon-ptab@skgf.com
`jstrang-PTAB@skgf.com
`rsokohl-ptab@skgf.com
`
`
`
`PATENT OWNER:
`
`Erika H. Arner
`Joshua L. Goldberg
`erika.arner@finnegan.com
`joshua.goldberg@finnegan.com
`
`
`
`Steven F Borsand
`Steve.Borsand@tradingtechnologies.com
`
`
`5
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