`571.272.7822
`
`
`
`
`
` Paper No. 16
`
` Entered: September 2, 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 SALLY C. MEDLEY, MEREDITH C. PETRAVICK, and
`PHILIP J. HOFFMANN, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`DECISION
`Petitioner’s Motion to Expunge Exhibit
`37 C.F.R. § 42.71
`
`
`
`
`
`
`
`
`
`
`
`
`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 August 25, 2014, Petitioner filed a motion to expunge, in each
`
`proceeding, an exhibit styled “Memorandum from James M. Hilmert to
`eSpeed file regarding direct examination of TSE’s 30(b)(6) witness”
`(Exhibit 1006;1 “the Hilmert memo”). Paper 13 (“Mot.”). Patent Owner
`filed an opposition. Paper 14 (“Opp.”). The motion is granted.
`
`ANALYSIS
`
`Petitioner argues that the Hilmert memo should be expunged because
`
`the memo is (i) a confidential document of a third party, (ii) not needed to
`decide whether to institute a covered business method patent review of the
`involved patents, and (iii) cited only once in the Petition. Mot. 1. Although
`Patent Owner “does not flatly oppose expunging the memo” (Opp. 1), Patent
`Owner argues that expunging the Hilmert memo would prejudice it because
`Petitioner might attempt to (i) limit the scope of discovery in future requests
`based on the removal of the memo, and/or (ii) limit Patent Owner’s ability to
`cross-examine Petitioner’s declarant on materials considered in forming his
`opinion based on removal of the memo from the record. Opp. 3.
`Pursuant to 35 U.S.C. § 326(b), rules for inter partes proceedings
`
`were promulgated to take into account the “regulation on the economy, the
`integrity of the patent system, the efficient administration of the Office, and
`the ability of the Office to timely complete proceedings.” The promulgated
`rules provide that they are to “be construed to secure the just, speedy, and
`inexpensive resolution of every proceeding.” 37 C.F.R. § 42.1(b). By way
`
`1 Citations are to CBM2014-00131.
`
`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)
`
`
`
`of rule 37 C.F.R. §42.20, Petitioner moves to expunge the Hilmert memo
`from the record. Petitioner bears the burden of proof to establish that it is
`entitled to the requested relief. 37 C.F.R. §42.20(c).
`Petitioner meets its burden of proof to establish that the Hilmert
`memo should be expunged from the record. In particular, Petitioner
`demonstrates sufficiently that the Hilmert memo is minimally relied on in its
`Petitions. The Hilmert memo is cited twice in the Petition. Paper 4, 17-18.
`Petitioner also explains that there is another exhibit that it relies on in
`support of its Petitions that is even better than the Hilmert memo for
`evidencing the contents of a deposition. Mot. 1. In other words, Petitioner
`argues that the Hilmert memo is not necessary to these proceedings. We
`agree. Maintaining the memo in these proceedings may add unnecessary
`complexities and complications that will hinder the ability to resolve the
`proceedings in a just, speedy and inexpensive resolution. While Patent
`Owner argues against expunging the Hilmert memo due to possible
`prejudice to it, the reasons provided are too speculative to outweigh
`expunging a document that appears unnecessary to any of these proceedings.
`Lastly, the memo will be expunged prior to the due date for a Patent Owner
`preliminary response, and thus, Patent Owner will have one less piece of
`evidence to which it needs to consider.
`
`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)
`
`Accordingly, it is:
`
`ORDERED that Petitioner’s motion to expunge the Hilmert memo is
`
`granted; and
`
`FURTHER ORDERED that the Hilmert memo be expunged from the
`record in each proceeding.
`
`
`
`
`
`
`PETITIONER:
`
`Lori Gordon
`Jonathan Strang
`Robert E. 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
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
`erika.arner@finnegan.com
`joshua.goldberg@finnegan.com
`
`Steven F Borsand
`TRADING TECHNOLOGIES INTERNATIONAL, INC.
`Steve.Borsand@tradingtechnologies.com
`
`
`4
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