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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 CORP., TD AMERITRADE, INC., and
`TD AMERITRADE ONLINE HOLDINGS CORP.,
`Petitioners
`
`v.
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`TRADING TECHNOLOGIES INTERNATIONAL, INC.,
`Patent Owner
`____________________
`
`Case CBM2014-00135
`Patent 6,772,132
`____________________
`
`
`PETITIONERS’ OPPOSITION TO
`PATENT OWNER’S MOTION TO EXCLUDE
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`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`I.
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`II.
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`CBM2014-00135
`U.S. Pat. No. 6,772,132
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`Table of Contents
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`Introduction ...................................................................................................... 1
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`The Supplemental Román Declaration (Ex. 1026) is admissible because it is
`relevant and passes the balancing test of FRE 403 ......................................... 1
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`III. Conclusion ....................................................................................................... 6
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`- i -
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`CBM2014-00135
`U.S. Pat. No. 6,772,132
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`Table of Authorities
`
`
`Doe v. Young,
`664 F.3d 727 (8th Cir. 2011) ..................................................................................... 4
`
`Intri-Plex Techs. v. Saint-Gobain Perf. Plastics Rencol,
`IPR2014-00309 (paper 83, Mar. 23, 2014) ................................................................ 5
`
`Mexichem Amanco Holdings v. Honeywell Int’l,
`IPR2013-00576 (paper 50, Feb. 26, 2015) ............................................................ 1-2
`
`Schultz v. Butcher,
`24 F.3d 626 (4th Cir. 1994) ....................................................................................... 4
`
`Vibrant Media v. General Electric,
`IPR2013-00170 (paper 56, June 26, 2014) ............................................................ 2, 5
`
`Regulations
`
`37 C.F.R. § 42.23(b) .................................................................................................. 4
`
`Other Authority
`
`Wright & Miller § 5214.2 .......................................................................................... 3
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`- ii -
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`Exh. No.
`1001
`1002
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`1003
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`1004
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`1005
`1006
`1007
`1008
`1009
`1010
`1011
`1012
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`1013
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`1014
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`1015
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`1016
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`1017
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`Exhibit List
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`CBM2014-00135
`U.S. Pat. No. 6,772,132
`
`Description
`U.S. Patent No. 6,772,132 to Kemp, II et al. (“ʼ132 patent”)
`Petition to Make Special Under 37 C.F.R. § 1.102(d) for Ser. No.
`09/590,692, filed August 21, 2000
`Request for Reexamination of U.S. Patent No. 6,772,132, Control
`No. 90/011,250, filed September 22, 2010
`Order Denying Request for Reexamination of U.S. Patent No.
`6,772,132, Control No. 90/011,250, mailed December 14, 2010
`Expert Declaration of Kendyl A. Román (“Román Decl.”)
`Expert Declaration of David Rho (“Rho Decl.”)
`U.S. Patent No. 5,077,665 to Silverman et al. (“Silverman”)
`U.S. Patent No. 5,297,031 to Gutterman et al. (“Gutterman”)
`U.S. Patent No. 5,375,055 to Togher et al. (“Togher”)
`CA Publication No. CA 2,305,736 to May (“May”)
`U.S. Patent No. 5,263,134 to Paal et al. (“Paal”)
`“Futures/Option Purchasing System Trading Terminal Operation
`Guidelines,” Tokyo Stock Exchange (“TSE JP”)
`Certified Translation of “System for Buying and Selling Futures and
`Options Transaction Terminal Operational Guidelines” (“TSE”)
`Certificate of Translation for “System for Buying and Selling
`Futures and Options Transaction Terminal Operational Guidelines”
`(“TSE Certificate”)
`Memorandum from James M. Hilmert to eSpeed file regarding
`direct examination of TSE’s 30(b)(6) witness, dated December 5,
`2005 (“Depo. Letter”)
`Deposition Transcript of Atsushi Kawashima, Trading Technologies
`International, Inc., v. eSPEED, Inc., Case No. 04-cv-5312, United
`States District Court, Northern District of Illinois, Eastern Division,
`dated November 21, 2005 (“Depo. Transcript”)
`Robert Deel, “The Strategic Electronic Day Trader,” 2000 (“Deel”)
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`- iii -
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`Exh. No.
`1018
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`1019
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`1020
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`1021
`1022
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`1023
`1024
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`1025
`1026
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`1027
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`1028
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`1029
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`1030
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`CBM2014-00135
`U.S. Pat. No. 6,772,132
`
`Description
`Alan Cooper, “About Face: The Essentials of User Interface
`Design,” First Edition, 1995. (“Cooper”)
`Ben Shneiderman, “Designing the User Interface: Strategies for
`Effective Human-Computer Interaction,” Third Edition, 1998
`(“Shneiderman”)
`Microsoft Computer Dictionary, Fifth Edition, 2002, pages 150
`(“Microsoft Computer Dictionary”)
`Curriculum Vitae of Kendyl A. Román (“Román CV”)
`List of Materials Considered by Kendyl A. Román (“Román List of
`Materials”)
`Curriculum Vitae of David Rho (“Rho CV”)
`List of Materials Considered by David Rho (“Rho List of
`Materials”)
`April 16, 2015 Hearing Transcript
`Supplemental Declaration of Kendyl A. Román (“Suppl. Román
`Decl.”)
`TT’s Rule 50(b) Motion for Judgment as a Matter of Law on
`Indirect Infringement or Alternatively For New Trial Pursuant to
`Rule 59, Trading Technologies International, Inc. v. CQG, Inc., et
`al., Case No. 1:05-cv-04811 (N.D. Ill. Apr. 15, 2015) (“TT Mot. for
`JMOL of Indirect Infringement”)
`Exhibit A (“Transcript of Proceedings, Vol. 1, Feb. 25, 2015”)
`accompanying TT’s Rule 50(b) Motion for Judgment as a Matter of
`Law on Indirect Infringement or Alternatively For New Trial
`Pursuant to Rule 59, Trading Technologies International, Inc. v.
`CQG, Inc., et al., Case No. 1:05-cv-04811 (N.D. Ill. Apr. 15, 2015)
`(“CQG Tr.”)
`TT’s Motion for Judgment as a Matter of Law Concerning PHE and
`Infringement Under the DOE and For a New Trial, Trading
`Technologies International, Inc. v. CQG, Inc., et al., Case No. 1:05-
`cv-04811 (N.D. Ill. Apr. 15, 2015) (“TT’s Motion for JMOL”)
`Transcript of the Deposition of Christopher Thomas, April 28, 2015
`(“Thomas Tr.”)
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`- iv -
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`CBM2014-00135
`U.S. Pat. No. 6,772,132
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`Exh. No.
`1031
`1032
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`1033
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`1034
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`1035
`1036
`1037
`1038
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`Description
`157 Cong. Rec. S1360 (Mar. 8, 2011)
`Transcript of the Deposition of Christopher Thomas, August 14,
`2007, Trading Technologies International, Inc. v. eSpeed
`International, Ltd., et al., No. 04-cv-05312 (N.D. Ill. Aug. 14, 2007)
`(originally served [but not filed] by Patent Owner as “TRADING
`TECH EXHIBIT 2266”) (“Thomas eSpeed Tr.”)
`Petitioners’ Objections to Patent Owner’s Evidence Pursuant to 37
`C.F.R. § 42.64(b)(1) dated December 16, 2014
`Petitioners’ Objections to Patent Owner’s Evidence Pursuant to 37
`C.F.R. § 42.64(b)(1) dated March 13, 2015
`Declaration of Jay Knoblock (served as Ex. 2212)
`Declaration of Chris Thomas
`Wright & Miller § 5214.2
`Videotaped Deposition of Akiko Rosenberry, Volume II
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`- v -
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`I.
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`Introduction
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`CBM2014-00135
`U.S. Pat. No. 6,772,132
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`The Board should deny TT’s motion to exclude in all respects. TT
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`consistently failed to apply basic principles of evidence law, such as FRE 401’s
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`“Test for Relevant Evidence,” which states that evidence is relevant if “it has any
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`tendency to make a fact more or less probable than it would be without the
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`evidence,” and FRE 403’s balancing test, which requires balancing the probative
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`value of the evidence against certain enumerated dangers, none of which are
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`present here. Instead, TT makes the improper (and incorrect on the facts) argument
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`that the evidence is irrelevant or unfairly prejudicial under the FRE because it is
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`beyond the scope of a Reply.
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`II. The Supplemental Román Declaration (Ex. 1026) is admissible because
`it is relevant and passes the balancing test of FRE 403
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`TT seeks to exclude ¶¶ 3-5 of this declaration as irrelevant and prejudicial.
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`Mot. at 1-4 (citing FRE 402, 403). TT did not meet its burden as movant because it
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`did not address relevancy and unfair prejudice balancing test under the FRE,
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`instead improperly and incorrectly arguing that this testimony exceeds the proper
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`scope of a Reply and should have been filed with the Petition. Id.
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`As an initial matter, TT relies on improper arguments. “A motion to exclude
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`is not an appropriate vehicle for challenging . . . a reply’s supporting evidence as
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`exceeding the scope.” Mexichem Amanco Holdings v. Honeywell Int’l, IPR2013-
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`- 1 -
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`CBM2014-00135
`U.S. Pat. No. 6,772,132
`00576, Final Written Decision at 31 (paper 50, Feb. 26, 2015) (citing cases);
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`
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`Vibrant Media v. General Electric, IPR2013-00170, Final Written Decision at 31-
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`32 (paper 56, June 26, 2014) (“A motion to exclude is not a mechanism to argue
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`that a reply contains new arguments or relies on evidence necessary to make out a
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`prima facie case.”).
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`Putting that aside, TT has not met its burden as movant to show that any of
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`Mr. Román’s supplemental declaration is irrelevant or should otherwise be
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`excluded under FRE 402/403. Starting with FRE 402, evidence is relevant and
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`generally admissible if “it has any tendency to make a fact more or less probable
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`than it would be without the evidence.” FRE 401, 402. TT did not address the FRE
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`401 relevance test in its Motion.
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`In any event, the testimony is unquestionably relevant, and that is why TT is
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`seeking to exclude it. Specifically, the complained-of paragraphs in the
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`Supplemental Román Declaration directly address the issues before the Board and
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`arguments raised by TT in its POR:
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` ¶ 3 - addresses TT’s § 101 arguments regarding its claimed GUI, e.g.,
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`POR at 18, 29-30, 34 by explaining that a person, or a generic computer
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`with routine and conventional programming, could perform the steps of
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`claim 1.
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`CBM2014-00135
`U.S. Pat. No. 6,772,132
` ¶ 4 - continues the reasoning of the previous paragraph, explaining that
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`Silverman and TSE provide examples of the data displaying steps.
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` ¶ 5 - continues the reasoning of the previous two paragraphs, explaining
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`that a static price axis is also routine and conventional as it occurs in
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`every hand-drawn graph, Silverman and TSE.
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`Similarly, TT’s allegation that ¶¶ 6, 7, and 10 are irrelevant because they are not
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`cited in the Reply (Mot. at 5) is nonsensical because the determination of whether
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`evidence is relevant under the FRE is not whether it was cited in a brief, but
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`whether “it has any tendency to make a fact more or less probable than it would be
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`without the evidence.” FRE 401. Further, ¶ 6 is relevant to the scope of claim 1 and
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`supports the testimony in ¶ 10, which in turn addresses TT’s non-infringing
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`alternatives argument. Paragraph 7 supports the cited ¶ 8, which responds to TT’s
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`combination arguments, e.g., POR at 2-3, 16, 22, 33-35.
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`TT also failed to apply FRE 403’s balancing test, which is that the
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`“probative value [of this testimony] is substantially outweighed by a danger [of]
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`unfair prejudice, confusing the issues, misleading the jury, undue delay, wasting
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`time, or needlessly presenting cumulative evidence.” FRE 403. TT did not address
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`the probative value of the testimony, which must be weighed assuming it will
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`ultimately be believed by the fact-finder. Wright & Miller § 5214.2 (Ex. 1037).
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`- 3 -
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`CBM2014-00135
`U.S. Pat. No. 6,772,132
`As for the other side of the balancing test, TT did not meaningfully address
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`
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`the enumerated grounds of confusing the issues, wasting time, misleading the jury,
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`cumulative evidence, or undue delay. Rather, the thrust of TT’s argument is that it
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`was unfairly surprised or prejudiced by the declaration. But unfair surprise is not
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`one of the listed grounds for exclusion, and being outside the scope of a reply is
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`not prejudicial under FRE 403. Doe v. Young, 664 F.3d 727, 733-36 (8th Cir.
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`2011) (abuse of discretion to exclude evidence under FRE 403 on the grounds of
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`unfair surprise); FRE 403 Notes (“‘Unfair prejudice’” within [the FRE 403]
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`context means an undue tendency to suggest decision on an improper basis,
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`commonly, though not necessarily, an emotional one. The rule does not enumerate
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`surprise as a ground for exclusion.”).
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`Here, the probative value of the evidence outweighs any of the dangers
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`enumerated in FRE 403. The testimony is probative of the § 101 issues before the
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`Board, and unlike a jury, the Board is unlikely to be unfairly swayed. Schultz v.
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`Butcher, 24 F.3d 626, 632 (4th Cir. 1994) (“For a bench trial, we are confident that
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`the district court can hear relevant evidence, weigh its probative value and reject
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`any improper inferences.”).
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`And assuming arguendo that exceeding the scope of a Reply is a proper
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`grounds for exclusion, TT did not meet its burden to show that the complained-of
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`portions were improper. TT quotes 37 C.F.R. § 42.23(b), which states that a Reply
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`- 4 -
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`CBM2014-00135
`U.S. Pat. No. 6,772,132
`may only address arguments raised in the POR, but TT does not address whether
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`
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`the evidence was properly raised in rebuttal to TT’s arguments. “The very nature
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`of a reply is to respond to the opposition, which in this case is the patent owner
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`response.” Vibrant Media at 31-32 (denying similar motion to exclude).
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`As in Vibrant Media, TT’s “motion does not contain any meaningful
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`discussion of the arguments that [TT] has made in its patent owner response.” And
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`here, the supplemental evidence was submitted to rebut TT’s arguments disputing
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`that its claims are directed to an abstract idea and merely recite routine and
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`conventional extra-solution activities.
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`TT also argues that the testimony should have been filed with the Petition.
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`Even if true, that is “insufficient to establish the impropriety of such evidence,
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`much less inadmissibility under the Federal Rules of Evidence.” Vibrant Media at
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`31-32. But it is not true. The Petition set forth a prima facie showing a likelihood
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`of success under § 101, alleging the necessary facts, including that the steps
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`beyond the abstract idea were merely routine and conventional, and citing
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`supporting evidence by referring to the “following sections.” Pet. at 18-20.
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`TT relies on Intri-Plex, which involved a petitioner that did not file any
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`declaration with its petition, and then filed a full declaration including technical
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`background, level of ordinary skill, and a claim-by-claim analysis. Intri-Plex
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`Techs. v. Saint-Gobain Perf. Plastics Rencol, IPR2014-00309, Final Written
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`- 5 -
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`Decision at 12—13 (paper 83, Mar. 23, 2014). But here, TD Ameritrade filed a
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`comprehensive expert declaration with its Petition, and is now properly
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`CBM2014-00135
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`US. Pat. No. 6,772,132
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`supplementing it in response to TT’s arguments.
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`111. Conclusion
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`For the foregoing reasons, TD Ameritrade asks the Board deny TT’s motion
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`in all respects.
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`Date: June 23, 2015
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`Respectfully submitted,
`STERNE, KESSLER, GOLDSTEIN & Fox P.L.L.C.
`
`1100 New York Avenue, NW.
`
`Washington, DC. 20005-3934
`(202) 371—2600
`
`
`
`
`
`u
` Jonathan
`.
`Registration No. 61,724
`
`Lori A. Gord
`egistration No. 50,633
`Robert E. Sokohl, Registration No. 36,013
`Attorneys for Petitioners
`
`
`
`CBM2014—00135
`
`U.S. Pat. No. 6,772,132
`
`CERTIFICATION OF SERVICE
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`The undersigned hereby certifies that the foregoing PETITIONERS’
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`OPPOSITION TO PATENT OWNER’S MOTION TO EXCLUDE and all
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`associated exhibits were served electronically via e—mail on June 23, 2015, in their
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`entirety on the following:
`
`Erika H. Arner (Lead Counsel)
`Joshua L. Goldberg (Back—up Counsel)
`Kevin D. Rodkey (Back—up Counsel)
`Rachel Emsley (Back-up Counsel)
`FINNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER, LLP
`5:.1.111.\'_'c_1;.§_.1‘§154.3.liéi’iiltl!l§i~i£l¥i£§2§ll
`joshuagoldbcrgz’riitinnegan.com
`lg»:Rina:_o_alls§3:..:.éi;tiaaaan_.gum
`Rachel.emslcyni’ciFiinncgan .com
`
`Steven F. Borsand (Back~up Counsel)
`TRADING TECHNOLOGIES
`INTERNATIONAL, INC.
`steVe.borsand@tl‘adingtechn01Ogies£0111
`
`STERNE, KESSLER, GOLDSTEIN & Fox P.L.L.C.
`
`
`
`Registrationo. . 1,724
`Attorney for Petitioners
`
`Date: June 23, 2015
`
`l 100 New York Avenue, NW.
`Washington, D.C.20005—3934
`(202) 371—2600
`
`
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