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` Paper No. ______
`Filed: June 12, 2015
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`TD AMERITRADE HOLDING CORPORATION, TD AMERITRADE, INC., and
`TD AMERITRADE ONLINE HOLDINGS CORP.
`Petitioners
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`v.
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`TRADING TECHNOLOGIES INTERNATIONAL, INC.
`Patent Owner
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`Case CBM2014-00133
`Patent 7,676,411
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`Patent Owner’s Motion to Exclude
`Under 37 C.F.R. 42.64(c)
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`Case CBM2014-00133
`Patent No. 7,676,411
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`I.
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`II.
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`TABLE OF CONTENTS
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`Preliminary Statement ..................................................................................... 1
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`Standard ........................................................................................................... 1
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`III. Dr. Román’s Supplemental Declaration (Ex. 1027) Should be
`Excluded .......................................................................................................... 1
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`A.
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`TT Timely Objected to the Supplemental Declaration, Which
`Was Relied Upon in TD’s Reply .......................................................... 1
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`B. Dr. Román’s Supplemental Declaration Lacks Relevance Under
`FRE 402 and is Prejudicial under FRE 403 .......................................... 2
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`i
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`Case CBM2014-00133
`Patent No. 7,676,411
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`I.
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`Preliminary Statement
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`Patent Owner Trading Technologies International, Inc. (“TT”), moves to
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`exclude the Supplemental Declaration of Kendyl A. Román in Support of
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`Petitioners’ Reply for Covered Business Method Review of U.S. Patent 7,676,411
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`(Ex. 1027, “Supplemental Declaration”), because portions of Exhibit 1027 lack
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`relevance (FRE 402), since they exceed the proper scope of Petitioner’s Reply
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`under 37 C.F.R. § 42.23(b), and are prejudicial to Patent Owner, since Patent
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`Owner is unable to respond to them (FRE 403).
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`II.
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`Standard
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`A Motion to Exclude must (a) identify where in the record the objection was
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`made, (b) identify where in the record the evidence sought to be excluded was
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`relied upon by an opponent, (c) address objections to exhibits in numerical order,
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`and (d) explain the objection. Trial Practice Guide, 77 Fed. Reg. 48,756, 78,767
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`(Aug. 14, 2012).
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`III. Dr. Román’s Supplemental Declaration (Ex. 1027) Should be Excluded
`A. TT Timely Objected to the Supplemental Declaration, Which Was
`Relied Upon in TD’s Reply
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`TT objected to Exhibit 1027 in objections served June 5, 2015. Paper 43. TD
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`relies upon the Supplemental Declaration (Ex. 1027) for its 35 U.S.C. § 101
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`grounds. E.g., Reply, Paper 42 at 4, 8-9, 12, 15, and 24.
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`1
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`Case CBM2014-00133
`Patent No. 7,676,411
`B. Dr. Román’s Supplemental Declaration Lacks Relevance Under
`FRE 402 and is Prejudicial under FRE 403
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`Rather than further explain the original arguments set out in the Petition,
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`TD’s Reply raises several issues for the first time, supported by Dr. Román’s
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`Supplemental Declaration. Thus, instead of narrowing the issues before the Board,
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`TD’s Reply expands them. 37 C.F.R. § 42.23(b) states “[a] reply may only respond
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`to arguments raised in the corresponding . . . patent owner response.” As explained
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`in the Trial Practice Guide, “new evidence necessary to make out a prima facie
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`case for [] unpatentability” and “new evidence that could have been presented in a
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`prior filing” are improper. 77 Fed. Reg. 48767. The Board should not allow TD to
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`propose entirely new theories of unpatentability under 35 U.S.C. § 101 when those
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`arguments could have been presented in its Petition.
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`37 C.F.R. § 42.22(a)(2) requires that “[a] petition . . . must include ‘[a] full
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`statement of the reasons for the relief requested, including a detailed explanation of
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`the significance of the evidence including material facts, and the governing law,
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`rules, and precedent.’” TD’s late evidence to support new “reasons for the relief
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`requested” and new alleged “material facts” lacks relevance under Fed. R. Evid.
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`402, going beyond TD’s originally proposed “reasons for the relief requested.”
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`The new evidence prejudices Patent Owner under Fed. R. Evid. 403 because
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`its own experts cannot now respond to the new observations and opinions, and
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`Patent Owner is precluded from addressing the Supplemental Declaration in its
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`2
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`Case CBM2014-00133
`Patent No. 7,676,411
`Patent Owner Response. See Intri-Plex Technologies, Inc. v. Saint-Gobain
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`Performance Plastics Rencol Limited, IPR2014-00309, Paper 83 at 13. The new
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`evidence is also a waste of time, confuses the issues, and could cause undue delay
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`(Fed. R. Evid. 403) because it unnecessarily expands the issues for Oral Hearing,
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`and presents multiple theories (legal and claim construction) that have not been
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`fully briefed for consideration in the Board’s Final Written Decision.
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`For at least the following reason with respect to the instituted
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`35 U.S.C. § 101 grounds, the Supplemental Declaration is improper:
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`Citing to the Supplemental Declaration at ¶ 4, TD argues for the first time
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`that “[a]side from the recitation of conventional and generic computer terms and
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`processes. . . claim 1 could be performed in the human mind or with the aid of pen-
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`and-paper with little difficulty because the claim requires plotting only two data
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`points (highest bid and lowest ask).” See Reply at 4. Similarly, citing to the
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`Supplemental Declaration at ¶ 6, TD argues for the first time that “[p]lotting data
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`along a static price axis can be done mentally or with the aid of pen-and-
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`paper. . . .” and specifically that “a static price axis is a well-known conventional
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`feature in both paper and electronic displays for such data.” See Reply at 8-9.
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`These new arguments could have been included in Petitioner’s original paper, but
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`were not, and they raise claim construction and factual issues that the Patent
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`Owner cannot now brief. Dr. Román’s new conclusions and supporting statements
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`3
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`Case CBM2014-00133
`Patent No. 7,676,411
`in ¶¶ 4 and 6 are therefore irrelevant under Rule 402 and prejudicial, a waste of
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`time, confuse the issues, and are likely to cause undue delay under Rule 403.
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`In its Petition, TD nowhere relied on expert testimony (by Dr. Román or
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`otherwise) to support its 35 U.S.C. § 101 grounds. See Pet. at 11-14. Evidence that
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`TD intended to rely upon to establish its prima facie case should have been
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`submitted with its Petition. See Intri-Plex Technologies, Inc. v. Saint-Gobain
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`Performance Plastics Rencol Limited, IPR2014-00309, Paper 83 at 13. The
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`Supplemental Declaration raises claim construction issues and alleged facts
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`regarding what was routine and conventional, which Patent Owner cannot now
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`brief. The Supplemental Declaration, in its entirety, is irrelevant under Rule 402
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`and prejudicial, a waste of time, confuses the issues, and likely to cause undue
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`delay under Rule 403. Furthermore, TD has not cited to ¶¶ 7-8 or 10-11, which are
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`therefore irrelevant under Rule 402 for this additional reason.
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`Dated: June 12, 2015
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`Respectfully submitted,
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`By: /Joshua L. Goldberg/
`Joshua L. Goldberg, Backup Counsel
`Registration No. 59,369
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`4
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a copy of the foregoing Patent
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`Owner’s Motion to Exclude was served on June 12, 2015, via email directed to
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`counsel of record for the Petitioner at the following:
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`Lori A. Gordon
`lgordon-ptab@skgf.com
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`Jonathan M. Strang
`jstrang-ptab@skgf.com
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`Robert E. Sokohl
`rsokohl-ptab@skgf.com
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`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`1100 New York Avenue, N.W.
`Washington, D.C. 20005-3934
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`/Lisa C. Hines/
`Lisa C. Hines
`Litigation Clerk
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`FINNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER, LLP
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