`571.272.7822
`
`
`
`
` Paper 41
`
` Entered: May 15, 2015
`
`
`
`
`
`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.
`____________
`
`CBM2014-00133 (Patent 7,676,411)
`CBM2014-00135 (Patent 6,772,132)
`____________
`
`
`Before SALLY C. MEDLEY, MEREDITH C. PETRAVICK, and
`PHILIP J. HOFFMANN, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`CBM2014-00133 (Patent 7,676,411)
`CBM2014-00135 (Patent 6,772,132)
`
`
`
`
`
`On May 11, 2015, a conference call was held between counsel for the
`
`respective parties and Judges Medley, Petravick, and Hoffmann. Patent
`
`Owner requested the call to discuss expunging Exhibit 2011 from the record.
`
`Exhibit 2011 is described as “Volume 4-A Trial Transcript of the
`
`Proceedings Before The Honorable James B. Moran and a Jury, Trading
`
`Technologies International, Inc. v. eSpeed, Inc., Case No. 1:04-CV-05312
`
`(N.D. Ill. Sept. 17, 2007).” Paper 34 at 2–3 (“Trial Transcript”).1 Included
`
`in the Trial Transcript is the testimony of Mr. Harris Brumfield. In the
`
`Patent Owner Response, Exhibit 2011 is cited with respect to certain
`
`portions of Mr. Brumfield’s testimony. See, e.g., PO Resp. 6, 16, and 17.
`
`During the conference call, Patent Owner explained that because the
`
`Patent Owner Response relies on Mr. Brumfield’s testimony (Ex. 2011)
`
`sparingly, and the testimony is not necessary to the proceedings, Patent
`
`Owner seeks to have Exhibit 2011 expunged from the record. Patent Owner
`
`further explained that as a result of expunging the exhibit from the record,
`
`there would be no occasion for the cross examination of Mr. Brumfield,
`
`saving both sides the expense of a deposition.
`
`Petitioner explained that it does not object to Exhibit 2011 being
`
`expunged from the record, provided that Patent Owner file a corrected
`
`Patent Owner Response to remove not only citations to Exhibit 2011, but
`
`also text and statements surrounding the citations. Petitioner explained that
`
`it would be prejudiced if the statements are left in the Patent Owner
`
`Response, even if Exhibit 2011 is expunged from the record, because it
`
`would not be authorized to cross examine Mr. Brumfield regarding the
`
`statements that would remain in the Patent Owner Response.
`
`
`1 Citations are to CBM2014-00133.
`
`2
`
`
`
`CBM2014-00133 (Patent 7,676,411)
`CBM2014-00135 (Patent 6,772,132)
`
`
`
`
`
`
`
`
`
`During the call, we discussed the difficulties of having Patent Owner
`
`file a corrected Patent Owner Response. These proceedings are contentious
`
`and there is not a likelihood that the parties will agree on what should or
`
`should not remain in a corrected Patent Owner Response. We are of the
`
`opinion that ordering the Patent Owner to file a corrected Patent Owner
`
`Response, based on the record of these proceedings, would impede the just,
`
`speedy, and inexpensive resolution of these proceedings. 37 C.F.R. §
`
`42.1(b). Moreover, we are not persuaded that Petitioner will be prejudiced if
`
`Exhibit 2011 is expunged, but the original Patent Owner Response remains
`
`of record. As we explained during the call, the remaining statements
`
`without the supporting document (Ex. 2011) would be based on attorney
`
`argument and would be given little or no weight. Argument of counsel
`
`cannot take the place of evidence lacking in the record. Meitzner v. Mindick,
`
`549 F.2d 775, 782 (CCPA 1977). As such, there would be no sufficient
`
`reason for Petitioner to cross examine Mr. Brumfield. His testimony no
`
`longer would be of record and the statements about what he did or did not do
`
`made in the Patent Owner Response would be based on attorney argument,
`
`and given little to no weight.
`
`
`
`Accordingly, we grant Patent Owner’s request to expunge Exhibit
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`2011 and deny Petitioner’s request for us to order Patent Owner to file a
`
`corrected Patent Owner Response. 37 C.F.R. § 42.1(b).
`
`It is
`
`Order
`
`ORDERED that Exhibit 2011 be expunged from the record.
`
`
`
`
`
`3
`
`
`
`CBM2014-00133 (Patent 7,676,411)
`CBM2014-00135 (Patent 6,772,132)
`
`
`
`
`
`
`
`
`PETITIONER:
`
`Lori Gordon
`Robert E. Sokohl
`Jonathan Strang
`Sterne, Kessler, Goldstein & Fox
`lgordon-ptab@skgf.com
`rsokohl-ptab@skgf.com
`jstrang-PTAB@skgf.com
`
`
`
`PATENT OWNER:
`
`Erika H. Arner
`Steven F. Borsand
`Joshua L. Goldberg
`erika.arner@finnegan.com
`Steve.Borsand@tradingtechnologies.com
`joshua.goldberg@finnegan.com
`
`
`4
`
`
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