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