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` Paper No. ____
`Filed: August 28, 2014
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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.,
`Petitioner
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`v.
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`TRADING TECHNOLOGIES INTERNATIONAL, INC.,
`Patent Owner
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`Case CBM2014-00135
`Patent 6,772,132
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`Patent Owner’s Opposition to Expunging the Hilmert Memo
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`I.
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`Case No. CBM2014-00135
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`Trading Technologies only opposes the motion to expunge to the extent
`that Trading Technologies would be prejudiced in future discovery.
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`TD Ameritrade (“TDA”) filed the Hilmert memo with its petition, Ex. 1015,
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`cited it in the petition, Paper 4, p. 10, and provided it to its declarants for
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`consideration in preparing declarations supporting the petition, Ex. 1022 and Ex.
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`1024. The memo has not only been public for more than three months, but has also
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`been referenced by third parties. See, e.g., Ex. 2002. Only after Trading Technologies
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`(“TT”) asked for discovery about the memo did TDA suggest possible expungement,
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`noting that it was “written by a lawyer” and “may contain attorney work product.”
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`Ex. 3001 at 33-35. TDA refused to answer any follow-up questions regarding the
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`memo, such as, whether it was given the memo under a joint defense group (“JDG”)
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`agreement.
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`TT did not and does not flatly oppose expunging the memo, as TDA suggests.
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`TT simply wishes to preserve its ability to explore the waiver of privilege issues, if the
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`PTO recognizes community-of-interest privilege, created by TDA’s reliance on the
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`memo, which it may have received from a JDG.1 TT tried to do so by offering TDA a
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`stipulation that would allow for the expungement of the memo, but TDA refused to
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`consider it. Ex. 2003, p. 1. TT’s stipulation offer is still on the table.
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`1 TT knows of documents, not served by TDA, that contain inconsistent statements
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`that would support any discovery motion related to these waiver issues. See e.g., Ex.
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`2004.
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`1
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`Case No. CBM2014-00135
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`II. A motion to seal, rather than expungement, would satisfy any potential
`“confidentiality” concerns2 of the third party while permitting Trading
`Technologies to proceed with a complete record, if trial is instituted.
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`Assuming TDA is the appropriate party to raise BGC’s concerns, BGC’s
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`request to remove the memo from the public record could be satisfied by sealing the
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`document. Indeed, TDA originally presented this as a possibility. Ex. 3001 at 33-34.
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`The rules explicitly provide for sealing documents containing confidential
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`information. § 42.54. And, while the rules also contemplate expunging a document,
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`they only contemplate expunging confidential information “[a]fter denial of a petition
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`to institute a trial or after final judgment.” § 42.56. TDA fails to explain why
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`expunging the document now, rather than at the end of the proceeding, would serve
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`any purpose other than to prejudice TT.
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`III. TD Ameritrade cannot unring the waiver bell, and simply expunging the
`document would prejudice Trading Technologies.
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`TDA received the memo in response to a request for prior art. Ex. 2003, p. 6.
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`This exchange of purportedly confidential information suggests that there was a JDG,
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`even if TDA refuses to say so.3 See United States v. Gonzalez, 669 F.3d 974, 979 (9th Cir.
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`2012). Other facts also suggest a JDG arrangement. For example, TDA jointly filed
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`2 TDA does not explain why a document that has been publically available for more
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`than three months should still be considered “confidential.”
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`3 Absent some agreement between BGC and TDA, providing the memo to TD
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`Ameritrade would have vitiated the confidentiality of the information.
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`2
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`Case No. CBM2014-00135
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`litigation papers with BGC, Ex. 2005, and had joint representation in an appeal to the
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`Federal Circuit, Ex. 2006, pp. 2-3.
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`A single party can waive community-of-interest privilege, but sometimes only
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`to themselves. See, e.g., Static Control Components, Inc. v. Lexmark Int'l, Inc., 2007 WL
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`926985 at *4 (E.D. Ky. Mar. 26, 2007). Here, the lack of BGC approval indicates that
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`at least TDA waived privilege. Once privilege is waived, even if inadvertent, the Board
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`should not allow the bell to simply be unrung. See, e.g., Fed. Deposit Ins. Corp. v. Singh,
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`140 F.R.D. 252 (D.Me. 1992); Underwater Storage, Inc. v. U.S. Rubber Co., 314 F Supp.
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`546 (D.D.C. 1970); W.R. Grace & Co. v. Pullman, 446 F.Supp. 771 (W.D.Okla. 1976).
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`Expunging the memo would prejudice TT because TDA might attempt to
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`(i) limit the scope of discovery in future requests or in routine discovery based on its
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`removal from the record, and/or (ii) limit TT’s ability to cross-examine TDA’s
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`declarants on materials considered in forming their opinions based on its removal
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`from the record. To avoid prejudicing TT, the motion to expunge should be denied.
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`IV. Conclusion
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`To the extent that TT would be prejudiced, the motion to expunge should be
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`denied. TT would not oppose a motion by TDA to seal the Hilmert memo to protect
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`any supposed confidential information.
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`Respectfully submitted,
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`Dated: August 28, 2014
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`By: /Erika H. Arner/
`Erika H. Arner, Reg. No. 57,540
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`3
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a copy of the foregoing Patent Owner’s
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`Opposition to Expunging the Hilmert Memo was served on August 28, 2014, via
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`email directed to 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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`/Ashley F. Cheung/
`Ashley F. Cheung
`Case Manager
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`FINNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER, LLP
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