Trials@uspto.gov
`571.272.7822
`
`
`
`
` Paper No. 10
` Entered: July 24, 2014
`
`
`
`
`
`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)
`CBM2014-00133 (Patent 7,676,411)
`CBM2014-00135 (Patent 6,772,132)
`CBM2014-00136 (Patent 6,766,304)
`CBM2014-00137 (Patent 7,685,055)
`____________
`
`
`Before JAMESON LEE, MEREDITH C. PETRAVICK, and
`PHILIP J. HOFFMANN, Administrative Patent Judges.
`
`PETRAVICK, Administrative Patent Judge.
`
`
`
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.20
`
`
`
`
`
`
`
`
`
`
`
`
`571.272.7822
`
`
`
`
` Paper No. 10
` Entered: July 24, 2014
`
`
`
`
`
`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)
`CBM2014-00133 (Patent 7,676,411)
`CBM2014-00135 (Patent 6,772,132)
`CBM2014-00136 (Patent 6,766,304)
`CBM2014-00137 (Patent 7,685,055)
`____________
`
`
`Before JAMESON LEE, MEREDITH C. PETRAVICK, and
`PHILIP J. HOFFMANN, Administrative Patent Judges.
`
`PETRAVICK, Administrative Patent Judge.
`
`
`
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.20
`
`
`
`
`
`
`
`
`
`
`
`
`
`CBM2014-00131 (Patent 7,533,056)
`CBM2014-00133 (Patent 7,676,411)
`CBM2014-00135 (Patent 6,772,132)
`CBM2014-00136 (Patent 6,766,304)
`CBM2014-00137 (Patent 7,685,055)
`
`
`
`
`INTRODUCTION
`
`
`
`
`
`On July 17, 2014, a telephone conference call was held between
`
`respective counsel for the parties and Judges Lee, Petravick, and
`
`Hoffmann. In addition to the parties’s counsel, Mr. Sean Legue, of Arnold
`
`& Porter, LLP, was present on behalf of Finnegan, Henderson, Farabow,
`
`Garrett & Dunner, LLP (“Finnegan”). Counsel for TD Ameritrade Holding
`
`Corp. et al. (“TD Ameritrade”) initiated the conference call to seek
`
`authorization to file a motion to disqualify counsel for Trading Technologies
`
`International, Inc. (“Trading Tech”) from Finnegan. In addition, counsel for
`
`Trading Tech sought permission to present a live demonstration in support
`
`of the Trading Tech’s Preliminary Response and to file a motion for
`
`additional discovery related to the real-parties-in-interest listed in the
`
`Petition and inquired as to the procedure for filing exhibits that contain
`
`videos or animations.
`
`During the conference call, TD Ameritrade’s counsel requested
`
`authorization to file a motion for additional discovery regarding the date that
`
`Trading Tech’s counsel was first engaged to represent Trading Tech in this
`
`proceeding, and requested that Exhibit 10061 be expunged from the record.
`
`
`
`
`1 For expediency, CBM2014-00131 is representative and all subsequent
`citations are to CBM2014-00131 unless otherwise noted.
`
`2
`
`
`
`CBM2014-00131 (Patent 7,533,056)
`CBM2014-00133 (Patent 7,676,411)
`CBM2014-00135 (Patent 6,772,132)
`CBM2014-00136 (Patent 6,766,304)
`CBM2014-00137 (Patent 7,685,055)
`
`
`
`
`DISCUSSION
`
`
`
`TD Ameritrade’s Request for Authorization to File Motion to
`Disqualify Trading Tech’s Counsel from Finnegan and Related Request for
`Authorization to File Motion for Additional Discovery
`
`
`
`TD Ameritrade seeks authorization to file a motion to disqualify
`
`Trading Tech’s counsel from the firm of Finnegan. TD Ameritrade also
`
`seeks authorization for additional discovery to determine the date that
`
`Trading Tech engaged Finnegan to represent Trading Tech in these
`
`proceedings. TD Ameritrade alleges that, at a time shortly after the filing of
`
`the Petitions in these proceedings, both TD Ameritrade and Trading Tech
`
`were clients of Finnegan. According to TD Ameritrade, Finnegan’s
`
`concurrent representation of both parties caused Finnegan to have a conflict
`
`of interest according to the American Bar Association’s (“ABA”) Model
`
`Rule of Professional Conduct 1.7 and violates the terms of an engagement
`
`agreement between Finnegan and TD Ameritrade. TD Ameritrade seeks to
`
`file a motion to disqualify Trading Tech’s counsel from Finnegan based on
`
`this alleged conflict of interest and alleged breach of the engagement
`
`agreement.
`
`Finnegan disputes TD Ameritrade’s allegation that Finnegan
`
`represented, concurrently, both parties and that Finnegan breached its
`
`engagement agreement with TD Ameritrade. Finnegan’s counsel stated that
`
`Trading Tech engaged Finnegan to represent it in these proceedings on
`
`June 6, 2014, after Finnegan no longer represented TD Ameritrade.
`
`
`
`Upon inquiry by the judges, counsel for TD Ameritrade stated that, as
`
`of date of the conference call, TD Ameritrade was no longer a client of
`
`3
`
`
`
`CBM2014-00131 (Patent 7,533,056)
`CBM2014-00133 (Patent 7,676,411)
`CBM2014-00135 (Patent 6,772,132)
`CBM2014-00136 (Patent 6,766,304)
`CBM2014-00137 (Patent 7,685,055)
`
`
`
`Finnegan and that Finnegan was no longer handling any matters for
`
`
`
`TD Ameritrade. Upon further inquiry by the judges, TD Ameritrade stated
`
`that the matters Finnegan handled for TD Ameritrade were not related,
`
`substantially, to the matters in these proceedings.
`
`Disqualification is resolved on a case-by-case basis, where the moving
`
`party bears a heavy burden of proving facts showing that disqualification is
`
`necessary. Anderson v. Eppstein, 59 U.S.P.Q.2d 1280, 1286 (Bd. Pat. App.
`
`& Int. 2001) (informative). See also Rules of Practice for Trials Before the
`
`Patent Trial and Appeal Board; Final Rule 77 Fed. Reg. 48,630 (August 14,
`
`2012) (“[t]he determination whether to disqualify counsel is based on the
`
`facts and circumstance of the case”; “[m]otions to disqualify opposing
`
`counsel are disfavored because they cause delay and are sometimes
`
`abused”).
`
`On the information presented to us by respective counsel during the
`
`conference call, we see no reason to authorize a motion to disqualify Trading
`
`Tech’s counsel from Finnegan in this proceeding. Both parties agree that
`
`TD Ameritrade is no longer represented by Finnegan, and TD Ameritrade
`
`makes no allegation that Finnegan has, currently, any conflict of interest
`
`under, for example ABA Model Rule 1.9 or 37 C.F.R. § 11.109, by
`
`remaining as counsel for Trading Tech despite its past representation of TD
`
`Ameritrade. Note, in particular, that TD Ameritrade makes no allegations
`
`that Finnegan possesses confidential information gained from TD
`
`Ameritrade during its representation that is related to these proceedings.
`
`We decline to authorize a motion to disqualify counsel where, as here,
`
`the conflict complained of exists merely for a time period in the past, if at
`
`4
`
`
`
`CBM2014-00131 (Patent 7,533,056)
`CBM2014-00133 (Patent 7,676,411)
`CBM2014-00135 (Patent 6,772,132)
`CBM2014-00136 (Patent 6,766,304)
`CBM2014-00137 (Patent 7,685,055)
`
`
`
`all. For these reason, TD Ameritrade’s request for authorization to file a
`
`
`
`motion to disqualify Trading Tech’s counsel from Finnegan is denied.
`
`TD Ameritrade requests additional discovery to determine the date
`
`that Trading Tech first engaged Finnegan to represent Trading Tech in these
`
`proceedings. Even if information is discovered that differs from Finnegan’s
`
`alleged date of first engagement, our analysis above would not be changed
`
`because the alleged conflict will still be in the past. TD Ameritrade’s
`
`request to file a motion for additional discovery regarding disqualifying
`
`Trading Tech’s counsel is also denied.
`
`
`
`Trading Tech’s Request to Present Live Demo in Support of Preliminary
`Response
`
`
`
` Trading Tech requests permission to present a live demonstration of
`
`the invention in support of its Preliminary Response. Trading Tech
`
`explained that the demonstration would include live narration of a pre-
`
`existing video. Trading Tech explained that it felt a live demonstration
`
`would be helpful in demonstrating that the patented invention is not a
`
`business method, but is technical. TD Ameritrade objected to the
`
`presentation of a live demonstration.
`
`On the information presented during the call, we do not authorize the
`
`proposed live demonstration. The proposed demonstration, with live
`
`narration, likens in kind to new testimony evidence and also is tantamount to
`
`additional briefing in “live” format. Section 42.07(c) of Title 37 of the Code
`
`of Federal Regulations states that “[t]he preliminary response shall not
`
`present new testimony evidence beyond that already of record, except as
`
`5
`
`
`
`CBM2014-00131 (Patent 7,533,056)
`CBM2014-00133 (Patent 7,676,411)
`CBM2014-00135 (Patent 6,772,132)
`CBM2014-00136 (Patent 6,766,304)
`CBM2014-00137 (Patent 7,685,055)
`
`
`
`authorized by the Board.” We find Trading Tech’s general allegation that
`
`
`
`the demonstration would be helpful is insufficient reason to authorize such a
`
`demonstration. Trading Tech’s request to present a live demonstration in
`
`support of its Preliminary Response is denied.
`
`
`
`Trading Tech’s Inquiry Regarding Filing of Exhibits not in PDF format
`
`
`
`Trading Tech inquired whether it should follow the procedures
`
`outlined in the Frequently Asked Questions on the Board’s website when
`
`filing exhibits not in PDF format, which contain video or animations. The
`
`judges indicated that it should follow that procedure to the extent possible.
`
`If Trading Tech requires further assistance in filing these documents,
`
`Trading Tech to should contact the Board via the email or telephone number
`
`listed on the Board’s website.
`
`
`
`
`
`Trading Tech’s Request for Authorization to File a Motion for Additional
`Discovery Regarding the Real-Parties-In-Interests List in the Petition
`
`During the call, Trading Tech withdrew their request for authorization
`
`to file a motion for additional discovery regarding the real-parties-in-interest
`
`listed in the Petition. Trading Tech explained that, as of the time of the call,
`
`the parties were still conferring on this issue.
`
`
`
`TD Ameritrade’s Request to Expunge Exhibit 1006
`
`TD Ameritrade requested authorization to file a motion to expunge
`
`TD Ameritrade’s Exhibit 1006, which TD Ameritrade describes as a memo
`
`written by a lawyer which summarizes a deposition. TD Ameritrade stated
`
`6
`
`
`
`CBM2014-00131 (Patent 7,533,056)
`CBM2014-00133 (Patent 7,676,411)
`CBM2014-00135 (Patent 6,772,132)
`CBM2014-00136 (Patent 6,766,304)
`CBM2014-00137 (Patent 7,685,055)
`
`
`
`that the Exhibit may contain attorney work product and that it believed,
`
`
`
`inadvertently, that the document could be disclosed to the public when it
`
`filed the Exhibit. TD Ameritrade also stated that the document is
`
`duplicative of the deposition transcript (Ex. 1007). Trading Tech objected to
`
`TD Ameritrade’s request on the basis that Exhibit 1006 is related to Trading
`
`Tech’s additional discovery request regarding the real-parties-in-interest.
`
`Because Exhibit 1006 already has been in the public record for some
`
`time and is related to Trading Tech’s request for additional discovery,
`
`TD Ameritrade’s request to file a motion to expunge Exhibit 1006 is denied.
`
`After the parties have come to agreement regarding Trading Tech’s
`
`additional discovery request, TD Ameritrade may renew their request to file
`
`a motion to expunge Exhibit 1006.
`
`
`
`ORDER
`
`It is:
`
`
`
`ORDERED that TD Ameritrade is not authorized to file a motion to
`
`disqualify Trading Tech’s counsel;
`
`
`
`ORDERED that TD Ameritrade is not authorized to file a motion for
`
`additional discovery related to the disqualification of Trading Tech’s
`
`counsel;
`
`
`
`ORDERED that Trading Tech is not authorized to present a live demo
`
`in support of its Preliminary Response; and
`
`
`
`ORDERED that TD Ameritrade’s is not authorized to file a motion to
`
`expunge Exhibit 1006.
`
`7
`
`
`
`CBM2014-00131 (Patent 7,533,056)
`CBM2014-00133 (Patent 7,676,411)
`CBM2014-00135 (Patent 6,772,132)
`CBM2014-00136 (Patent 6,766,304)
`CBM2014-00137 (Patent 7,685,055)
`
`
`
`
`
`
`
`
`
`
`
`
`PETITIONER:
`
`Lori Gordon
`Jonathan Strang
`Robert 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
`
`
`8
`
`
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