UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`TD AMERITRADE HOLDING CORPORATION, TD AMERITRADE, INC., and
`TD AMERITRADE ONLINE HOLDINGS CORP.,
`Petitioners
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`v.
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`TRADING TECHNOLOGIES INTERNATIONAL, INC.,
`Patent Owner
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`____________________
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`Case CBM2014-00137
`Patent 7,685,055
`____________________
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`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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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`TD AMERITRADE HOLDING CORPORATION, TD AMERITRADE, INC., and
`TD AMERITRADE ONLINE HOLDINGS CORP.,
`Petitioners
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`v.
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`TRADING TECHNOLOGIES INTERNATIONAL, INC.,
`Patent Owner
`
`____________________
`
`Case CBM2014-00137
`Patent 7,685,055
`____________________
`
`
`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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`CBM2014-00137
`U.S. Pat. No. 7,685,055
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`TABLE OF CONTENTS
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`The TSE translation (Ex. 1008) is admissible because it is relevant and
`properly supported by affidavits of accuracy .................................................. 1
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`A.
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`The affidavits of record far surpass the Rule’s requirements for the
`TSE translation ...................................................................................... 1
`
`1. Ms. O’Connell’s affidavits were supported by sufficient
`personal knowledge..................................................................... 3
`
`2.
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`The supplemental affidavits from Ms. O’Connell and the
`translators were timely ................................................................ 5
`
`3. Mr. Skidmore confirmed during cross-examination that his
`translation was true and accurate to the best of his ability ......... 7
`
`B.
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`The accuracy of the TSE translation goes to its weight, not its
`admissibility .......................................................................................... 9
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`II.
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`The Supplemental Román Declaration (Ex. 1023) is admissible because it is
`relevant and it passes the balancing test of FRE 403 .................................... 11
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`III. The Hartheimer transcript (Ex. 1029) is admissible because Mr. Hartheimer
`applied the art to the claims in his direct testimony ...................................... 15
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`IV. Conclusion ..................................................................................................... 15
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`CBM2014-00137
`U.S. Pat. No. 7,685,055
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`TABLE OF AUTHORITIES
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`
`Cases:
`
`Doe v. Young,
`664 F.3d 727 (8th Cir. 2011) ................................................................................... 13
`
`Intri-Plex Techs. v. Saint-Gobain Perf. Plastics Rencol,
`IPR2014-00309 (paper 83, Mar. 23, 2014) .............................................................. 15
`
`Mexichem Amanco Holdings v. Honeywell Int’l,
`IPR2013-00576 (paper 50, Feb. 26, 2015) ......................................................... 4, 11
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`Schultz v. Butcher,
`24 F.3d 626 (4th Cir. 1994) ..................................................................................... 13
`
`Sony Corp. v. Yissum Research,
`IPR2013-00218 (paper 53, Sep. 22, 2014) ................................................................ 9
`
`Tennard v. Drake,
`542 U.S. 274 (2004) ................................................................................................... 9
`
`Vibrant Media v. General Electric,
`IPR2013-00170 (paper 56, June 26, 2014) ........................................................ 11, 14
`
`Zhongshan Broad Ocean v. Nidec Motor,
`IPR2014-01121 (paper 20, Jan. 21, 2015) ............................................................. 5, 6
`
`Regulations
`
`37 C.F.R. § 42.23(b) ................................................................................................ 14
`37 C.F.R. § 42.63(b) .......................................................................................... 1, 3, 4
`37 C.F.R. § 42.64(b) ............................................................................................... 1,4
`37 C.F.R. 104(c) ......................................................................................................... 6
`
`Other Authority
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`Wright & Miller § 5054.1 .......................................................................................... 4
`Wright & Miller § 5214.2 ........................................................................................ 13
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`CBM2014-00137
`U.S. Pat. No. 7,685,055
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`EXHIBIT LIST
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`1009
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`1008
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`Description
`Exh. No.
`1001 U.S. Patent No. 7,685,055 to Brumfield et al. (“the ʼ055 patent”)
`1002
`File History of Application Ser. No. 11/417,547, which became the
`’055 patent, as filed and obtained from PAIR (“File History”)
`1003
`Expert Declaration of Kendyl A. Román (“Román Decl.”)
`1004
`Expert Declaration of David Rho (“Rho Decl.”)
`1005 U.S. Patent No. 5,077,665 to Silverman et al. (“Silverman”)
`1006 U.S. Patent No. 5,297,031 to Gutterman et al. (“Gutterman”)
`1007
`“Futures/Option Purchasing System Trading Terminal Operation
`Guide” (“TSE JP”)
`Certified English-language Translation of “Futures/Option Purchasing
`System Trading Terminal Operation Guide” (“TSE”)
`Certificate of Translation for “Futures/Option Purchasing System
`Trading Terminal Operation Guide” (“O’Connell Affidavit”)
`1010 Memorandum from James M. Hilmert to eSpeed file regarding direct
`examination of TSE’s 30(b)(6) witness, dated December 5, 2005
`(“Depo. Letter”)
`1011 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”)
`1012
`Curriculum Vitae of Kendyl A. Román
`1013
`List of Materials Considered by Kendyl A. Román
`1014
`Curriculum Vitae of David Rho
`1015
`List of Materials Considered by David Rho
`1016 Official Transcript of Conference Call held January 20, 2015
`1017 Declaration of Ronald E. Skidmore
`1018 Declaration of Maho Taniguchi-Speller
`1019 Declaration of Eiken Hino
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`U.S. Pat. No. 7,685,055
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`1024
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`1025
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`1026
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`Description
`Exh. No.
`1020 Declaration Akiko Rosenberry
`1021 Declaration of Courtney O’Connell (“O’Connell Decl.”)
`1022 April 16, 2015 Hearing Transcript
`1023
`Supplemental Decl. of Kendyl A. Román (“Suppl. Román Decl.”)
`Excerpts of Trial Transcript of Proceedings, Vol. 11-A, Trading Tech’s
`Int’l v. eSpeed Inc., et al. Case No. 04-cv-5312 (N.D. Ill.), held
`September 26, 2007. (“eSpeed Tr. Vol. 11”)
`Excerpts of Trial Transcript of Proceedings, Vol. 17-A, Trading Tech’s
`Int’l v. eSpeed Inc., et al. Case No. 04-cv-5312 (N.D. Ill.), held October
`4, 2007. (“eSpeed Tr. Vol. 17”)
`Excerpts of Trial Transcript of Proceedings, Vol. 12-A, Trading Tech’s
`Int’l v. eSpeed Inc., et al. Case No. 04-cv-5312 (N.D. Ill.), held
`September 27, 2007. (“eSpeed Tr. Vol. 12”)
`Summary of Facts and Submissions directed to European Patent
`Application No. 01 920 183.9, mailed September 30, 2010 (“EPO
`Summary of Facts and Submissions”)
`1028 Deposition Transcript of Harold Abilock held April 24, 2015 (“Abilock
`Tr.”)
`1029 Deposition Transcript of Richard Hartheimer held April 29, 2015
`(“Hartheimer Tr.”)
`Proprietor’s Response to Communication Pursuant to Article 101(1)
`and Rule 81(2) to (3) EPC, dated June 14, 2011 (“EPO Response”)
`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
`1033 Declaration of Jay Knoblock
`1034 Deposition Transcript of Chris Thomas
`1035 Wright & Miller § 5054.1
`1036 Wright & Miller § 5214.2
`1037 Videotaped Deposition of Akiko Rosenberry, Volume II
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`1027
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`1030
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`1031
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`1032
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`I.
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`CBM2014-00137
`U.S. Pat. No. 7,685,055
`The TSE translation (Ex. 1008) is admissible because it is relevant and
`properly supported by affidavits of accuracy
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`The Board should deny TT’s motion as to the TSE translation because the
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`timely filed affidavits of accuracy -- which TT does not seek to exclude -- far
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`surpass the Rules’ requirements. Each translator’s portion of TSE was incorporated
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`into the filed translation, which easily passes the relevancy test of FRE 401, which
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`merely requires it to have any tendency to make a fact more or less probable.
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`A. The affidavits of record far surpass the Rule’s requirements for
`the TSE translation
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`The Rules require filing “an affidavit attesting to the accuracy of the
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`translation” with the translation. 37 C.F.R. § 42.63(b). TD Ameritrade did so. The
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`Rules allow timely service of supplemental evidence to cure objections. 37 C.F.R.
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`§ 42.64(b). Again, TD Ameritrade did so, and these original and supplemental
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`affidavits far surpass the Rule’s requirement for “an affidavit attesting to the
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`accuracy of the translation.” TT does not seek to exclude any of these affidavits,
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`and that should be the end of this dispute.
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`TD Ameritrade filed Ms. O’Connell’s first declaration, certifying that the
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`TSE translation is “true and accurate” along with the TSE translation. Ex. 1009
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`(“1st O’Connell Decl.”). This affidavit conformed to TransPerfect’s standard
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`template for certifying legal translations, was in accordance with typical industry
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`practice, and was similar to what the Board had accepted in the past. O’Connell
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`U.S. Pat. No. 7,685,055
`Dep. at 80 (Ex. 2093); Ecowater Sys. v. Culligan Int’l Co., IPR2013-00155, Ex.
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`1006, Papers 10 and 18; see also Geotext Translation at 1 (Ex. 2214); TransPerfect
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`Refco Translation at 1 (Ex. 2216); Abilock Decl. at 73 (Ex. 2097).
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`In response to TT’s objections (Ex. 2273), TD Ameritrade timely served Ms.
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`O’Connell’s second declaration, in which she established the basis for her personal
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`knowledge that the TSE translation is accurate -- she had personal knowledge that
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`(i) TransPerfect’s translation procedures are certified to be compliant with ISO
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`9001:2008 and EN 15038:2006; (ii) TransPerfect “uses its own proprietary
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`[translator] testing and certification process,” which has a mere 15% pass rate; (iii)
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`the four translators used to translate TSE were TransPerfect-certified translators;
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`and (iv) TransPerfect followed its certified procedures when performing the TSE
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`translation. Ex. 1021 at 1-2 (“2d O’Connell Decl.”). Based on those facts, Ms.
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`O’Connell reasonably concluded that “the TSE document translation is a true and
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`accurate translation.” Id. at 2; 1st O’Connell Decl. at 1. TD Ameritrade also timely
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`served affidavits from the four translators attesting to the accuracy of his or her
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`respective portion of the TSE translation. Skidmore Decl. (Ex. 1017); Speller Decl.
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`(Ex. 1018); Hino Decl. (Ex. 1019); Rosenberry Decl. (Ex. 1020).
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`TT does not dispute that TransPerfect has a certified and reliable translation
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`process using certified translators, and that when translating TSE, TransPerfect
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`followed its certified and reliable process using certified translators. That TD
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`Ameritrade asked for a “rush turnaround,” which under TransPerfect’s certified
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`procedures provides for a final verification from a program manager rather than a
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`review by an independent translator, changes nothing. Mot. at 3; O’Connell Tr. 50,
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`74. The Rules do not require a final check by different translator, and doing so
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`exceeds TT’s own translator practices. E.g., Abilock Tr. at 12-13 (no second
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`translator, and uses editors that do not speak Japanese) (Ex. 1028); id. at 37-39
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`(Abilock’s translation procedures are not certified or audited).
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`The TSE translation is admissible because these affidavits of record
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`“attesting to the accuracy of the translation” satisfy 37 C.F.R. § 42.63(b), and as
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`discussed below, the TSE translation is relevant because it tends to show that the
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`underlying prior-art document teaches TT’s claims.
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`1. Ms. O’Connell’s affidavits were supported by sufficient
`personal knowledge
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`TT does not challenge the underlying facts of Ms. O’Connell’s testimony or
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`TransPerfect’s translation process (relied upon by law firms across the country,
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`including Finnegan), but instead argues that Ms. O’Connell lacks sufficient
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`personal knowledge to testify to the ultimate issue of the accuracy of the
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`translation. Mot. at 3. TT is not seeking to exclude either of Ms. O’Connell’s
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`affidavits, but is instead trying to create a sideshow to distract the Board from the
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`merits of this proceeding.
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`U.S. Pat. No. 7,685,055
`The Rules require an affidavit “attesting to the accuracy of the translation.”
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`37 C.F.R. § 42.63(b). That is what Ms. O’Connell provided. The Rule is written in
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`the passive voice; it does not state who must attest to the accuracy of the
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`translation. If the person providing the affidavit lacks sufficient personal
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`knowledge under FRE 602, a party may object and preserve that objection by filing
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`a motion to exclude the affidavit. 37 C.F.R. § 42.64; Mexichem Amanco Holdings
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`v. Honeywell Int’l, IPR2013-00576, Order at 3, (paper 29, Aug. 15, 2014) (party
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`may object and file motion to exclude translation affidavit).
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`TT did not seek to exclude Ms. O’Connell’s affidavits because TT does not,
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`and cannot, dispute the underlying facts of Ms. O’Connell’s testimony or that she
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`established her personal knowledge of those facts. FRE 602(b) (“Evidence to prove
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`personal knowledge may consist of the witness’s own testimony.”); Wright &
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`Miller § 5054.1 (FRE 602 allows the witness’s own testimony to prove the FRE
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`104(b) preliminary question of whether she has sufficient personal knowledge to
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`testify) (Ex. 1035). It is undisputed that Ms. O’Connell has personal knowledge
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`that TransPerfect followed its certified and reliable translation procedures using the
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`four certified translators to translate the 337-page TSE reference. 2d O’Connell
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`Decl. at 1-2; O’Connell Tr. at 25, 31-34, 61-68; 69-76, 79-84. TransPerfect uses
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`this same process for all legal work, and Ms. O’Connell (with her supervisor
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`Karrie Russ) is responsible for all legal translations for all firms in the DC metro
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`area, including Kirkland, Arnold & Porter, and Finnegan. Id. at 80-81; 83-84. From
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`that factual basis, Ms. O’Connell certified that the translation is accurate. 1st
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`O’Connell Decl.; 2d O’Connell Decl. at 2; O’Connell Tr. at 73 (“our processes our
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`certified, so any translation we produce can be deemed as a certified translation”);
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`id. at 80 (“[My first] affidavit is TransPerfect’s standard template that we’ve been
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`using for years and one that I was trained to use. And typically we . . . use that
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`template and get it notarized and provide that to our client.”).
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`That Ms. O’Connell and TD Ameritrade did not talk to the translators or
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`discuss the substance of the translation merely confirms that TransPerfect’s
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`translators fairly and accurately translated the TSE prior art, and unlike TT’s
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`translator Mr. Abilock, were insulated from TD Ameritrade’s counsel. Mot. at 3;
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`O’Connell Tr. at 32-33, 51-53, 67-69.
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`2.
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`The supplemental affidavits from Ms. O’Connell and the
`translators were timely
`TT cites Zhongshan for the proposition that the Board should not consider
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`TD Ameritrade’s timely filed supplemental affidavits, arguing that supplemental
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`evidence cannot be used to cure defects in an affidavit filed with the translation.
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`Mot. at 3, 6, 9 (citing Zhongshan Broad Ocean v. Nidec Motor, IPR2014-01121,
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`Inst. Dec. at 11-13 (paper 20, Jan. 21, 2015)).
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`TT is wrong, and the Board should consider the timely filed affidavits.
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`Zhongshan is inapposite because that panel narrowly held that filing no affidavit is
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`not a correctable clerical error under 37 C.F.R. 104(c). Zhongshan at 9-12. In
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`contrast, the Board here ordered TD Ameritrade to file the already served
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`supplemental affidavits of accuracy (Paper 27, Jan. 22, 2015), just as other panels
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`have done in various situations, including cases like here, where the initially filed
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`affidavit was from a manager rather than a translator. Norman Int’l v. Andrew J.
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`Testamentary Trust, IPR2014-00283, Final Written Decision at 14 (Paper 52, June
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`18, 2015), Ex. 1002, Ex. 1021 (ordering petitioner to file a new, compliant
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`affidavit after oral argument); TSMC v. DSS Tech. Mgmt, IPR2014-01030,
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`Decision at 3 (Paper 11, Feb. 3, 2015), Ex. 1004, Ex. 2012 (substituting Japanese-
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`speaking attorney’s declaration for manager’s declaration); Handiquilter v.
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`Bernina Int’l, IPR2013-00364, Order at 2 (Paper 10, Sep. 13, 2013), Ex. 1005
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`(June 17, 2013), Sub. Ex. 1005 (Sep. 18, 2013) (substituting translator declaration
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`for manager’s declaration); Medtronic v. Nuvasive, IPR2014-00074, Order at 2
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`(Paper 14, Apr. 1, 2014); Toyota Motor Corp. v. Am. Vehicular Sci., IPR2013-
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`00417, Order at 2 (Paper 13, Dec. 5, 2013) (ordering petitioner to serve
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`supplemental affidavit after objections served).
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`Further, TT waived this timeliness argument by not raising it when it asked
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`to cross-examine the translators. TT should have raised this issue then rather than
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`pursuing its expensive, time consuming, and ultimately fruitless game of “gotcha”
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`with TransPerfect’s translators in a desperate attempt to distract TD Ameritrade
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`and the Board from the merits of this case.
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`3. Mr. Skidmore confirmed during cross-examination that his
`translation was true and accurate to the best of his ability
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`Although TT does not formally seek to exclude the Skidmore declaration, it
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`is asking the Board to ignore it, asserting that Mr. Skidmore denied that he had
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`translated his portion of TSE. Mot. at 1, 7-9. TT is wrong. Reading Mr. Skidmore’s
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`testimony in context, and taking into account Ms. O’Connell’s corroborating
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`testimony, the only reasonable conclusion is that Mr. Skidmore’s translated portion
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`was integrated into the filed TSE translation.
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`First, Ms. O’Connell confirmed under oath that Mr. Skidmore’s portion of
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`the translation was integrated into the final exhibit according to TransPerfect’s
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`process. 2d O’Connell Decl.; O’Connell Tr . at 25, 66, 72. Second, everyone at the
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`Mr. Skidmore’s deposition -- including Mr. Skidmore and TT’s counsel --
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`understood that Mr. Skidmore translated his pages. For example:
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`Q: Why would you translate “zengoba” as “AM/PM 19 session”?
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`A: Translation is a process. And many times we learn as we go along,
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`and we don’t always catch the places previous and update them as we
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`go along.
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`Skidmore Tr. at 25 (emphasis added, objection omitted); see also id. at 36 (“Would
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`this text have been clearer if you had used ‘up or down’ or ‘above or below’ for
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`‘jouge’ here?” (emphasis added)).
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`Q: And do you think that “jouge” could have been translated in this
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`bullet to “up or down”?
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`A: This is something I did almost a year ago. I do not remember too
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`closely what was going on then, and I can’t really say what’s the
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`better translation now.
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`Skidmore at 38 (emphasis added, objection omitted); see also id. at 23 (“I did the
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`best I could.”).
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`As for TT’s quotes, Mr. Skidmore was understandably cautious and
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`distrustful at the beginning of his deposition. He is not a professional witness. He
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`had never been deposed before, never been placed in front of a videographer and
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`court reporter and grilled by lawyers. Skidmore Tr. at 7. He did not immediately
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`recognize the TSE or his translated portion because it had been almost a year, and
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`the poor copy provided by TT’s counsel was illegible in parts where the electronic
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`version that he translated was not. Compare Mot. at 8 (quoting Mr. Skidmore’s
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`statement that he does not “forget things like this”) with Skidmore Tr. 17-18
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`(showing that “this” is an illegible block on TT’s poor printout of page 0101,
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`which is legible in the electronic version, Ex. 1007); see also Speller Decl. at 19-21
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`(TransPerfect distributes documents to translators electronically).
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`The accuracy of the TSE translation goes to its weight, not its
`admissibility
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`B.
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`The TSE translation unquestionably satisfies the low bar presented by FRE
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`401 and is therefore admissible under FRE 402. The prior art is the foreign-
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`language document itself, not its translation. Even if imperfect, the TSE translation
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`tends to show that the foreign-language TSE prior art teaches TT’s claims. FRE
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`401 (relevant if “it has any tendency to make a fact more or less probable than it
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`would be without the evidence”); Tennard v. Drake, 542 U.S. 274, 284 (2004)
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`(FRE 401 presents a “low threshold”).
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`Because a translation’s accuracy goes to its weight, not its admissibility, the
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`Rules contemplate that a party may dispute what the underlying art teaches by
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`submitting its own translation and expert testimony regarding the relevant portions
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`of the prior art. Sony Corp. v. Yissum Research, IPR2013-00218, Final Written
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`Decision at 42-43 (paper 53, Sep. 22, 2014) (denying petitioner’s motion to
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`exclude translations and addressing alleged inconsistencies).
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`In contrast, the affidavit-of-accuracy requirement ensures that translations of
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`record have some threshold indicia of reliability. If the opposing party believes the
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`affidavit is defective, it may object to the affidavit and seek to exclude the
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`affidavit. But such a challenge is not to the translation’s accuracy, but its pedigree.
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`CBM2014-00137
`U.S. Pat. No. 7,685,055
`As is proper under the Rules, TD Ameritrade addressed TT’s accuracy
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`arguments in its Reply. POR at 39-41, 49-53, 56-58; Reply at 16-20. To
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`summarize, there is no factual dispute regarding the teachings of the TSE
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`reference. The only evidence, as opposed to attorney argument, on this issue is Mr.
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`Román’s testimony. He reviewed the TSE translation of record, Mr. Abilock’s old
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`translation of Chapter 7, and Mr. Abilock’s recent translation of two short passages
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`of page 0115, and he concluded that TSE translation’s synonym choice and other
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`alleged errors did not affect his opinion regarding what TSE teaches. Suppl.
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`Román Decl. ¶¶ 7-16 (comparing relevant portions of Abilock translation with the
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`TSE translation), ¶ 17 (addressing synonym choice such as “meigara” as “brand”
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`and “saiken” as “securities” and “bond”). TT provides no contradictory testimony.
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`As Mr. Abilock made clear during his deposition, he limited his declaration to just
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`two short passages on page 0115 of TSE, which relate to the repositioning feature.
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`Abilock Tr. at 60-61 (testifying that he opined only on “bullet 2 and the illustrative
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`caption” on page 0115, and refusing to discuss any other portions) (Ex. 1028).
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`Even if Mr. Abilock’s partial translation of page 0115 reads smoother than
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`the TSE translation of record, he is not an expert on the technology and did not
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`(and cannot) opine regarding what TSE would have taught POSA. Mr. Román,
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`who is an expert, testified that all three translations of page 0115 then of record
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`CBM2014-00137
`U.S. Pat. No. 7,685,055
`convey the same meaning when read in the context of the TSE reference. Suppl.
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`
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`Román Decl. ¶¶ 7-17. There is no other testimony of record on this issue.
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`II. The Supplemental Román Declaration (Ex. 1023) is admissible because
`it is relevant and it passes the balancing test of FRE 403
`
`TT seeks to exclude ¶¶ 3-6, 12-14, and 19-23 of this declaration as irrelevant
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`and prejudicial. Mot. at 9-15 (citing FRE 402, 403). TT did not meet its burden
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`because it did not address relevancy or the unfair prejudice balancing test under the
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`FRE, instead improperly and incorrectly arguing that this testimony exceeds the
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`proper 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-
`
`00576, Final Written Decision at 31 (paper 50, Feb. 26, 2015) (citing cases);
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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
`
`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
`
`excluded under FRE 402/403. Starting with FRE 402, evidence is relevant and
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`CBM2014-00137
`U.S. Pat. No. 7,685,055
`generally admissible if “it has any tendency to make a fact more or less probable
`
`
`
`than it would be without the evidence.” FRE 401, 402. TT did not address the FRE
`
`401 relevance test in its Motion. In any event, the testimony is unquestionably
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`relevant, and that is why TT is seeking to exclude it. Suppl. Román Decl. ¶¶ 3-6
`
`(addressing TT’s § 101 arguments, e.g., POR at 23, 32, by explaining that a static
`
`price axis is routine and conventional), 12-14 (addressing TT’s translation
`
`accuracy arguments, e.g., POR at 40-41, 49-53, 56-58, by discussing the TSE
`
`teachings as described by competing translations), 19 (addressing TT’s §§ 101 and
`
`103 arguments, e.g., 23, 32, 59-60, by explaining that the claim 1 steps, which are
`
`all performed at once, uses a computer only for conventional and routine repetitive
`
`functions), 20-23 (addressing TT’s arguments regarding the claimed repositioning
`
`feature, e.g., POR at 16, 29, 35). Similarly, TT’s assertion that ¶¶ 9-11 and 15-17
`
`are irrelevant because they were not cited in a brief (Mot. at 15) is nonsensical
`
`because the FRE does not require citation, and wrong because these paragraphs
`
`support cited paragraphs 7-8 and TD Ameritrade’s arguments in its Petition.
`
`TT also failed to apply FRE 403’s balancing test, which is that the
`
`“probative value [of this testimony] is substantially outweighed by a danger [of]
`
`unfair prejudice, confusing the issues, misleading the jury, undue delay, wasting
`
`time, or needlessly presenting cumulative evidence.” FRE 403. TT did not address
`
`the probative value of the testimony, which must be weighed assuming it will
`
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`CBM2014-00137
`U.S. Pat. No. 7,685,055
`ultimately be believed by the fact-finder. Wright & Miller § 5214.2 (Ex. 1036). As
`
`
`
`for the other side of the balancing test, TT did not meaningfully address the
`
`enumerated grounds of confusing the issues, wasting time, misleading the jury,
`
`cumulative evidence, or undue delay. Rather, the thrust of TT’s argument is that it
`
`was unfairly surprised or prejudiced by the declaration. But unfair surprise is not
`
`one of the listed grounds for exclusion, and being outside the scope of a reply is
`
`not prejudicial under FRE 403. Doe v. Young, 664 F.3d 727, 733-36 (8th Cir.
`
`2011) (abuse of discretion to exclude evidence under FRE 403 on the grounds of
`
`unfair surprise); FRE 403 Notes (“‘Unfair prejudice’” within [the FRE 403]
`
`context means an undue tendency to suggest decision on an improper basis,
`
`commonly, though not necessarily, an emotional one. The rule does not enumerate
`
`surprise as a ground for exclusion.”).
`
`Here, the probative value of the evidence outweighs any of the dangers
`
`enumerated in FRE 403. The testimony is highly probative on the above-listed
`
`§§ 101 and 103 issues before the Board, and unlike a jury, the Board is unlikely to
`
`be unfairly swayed. Schultz v. Butcher, 24 F.3d 626, 632 (4th Cir. 1994) (“For a
`
`bench trial, we are confident that the district court can hear relevant evidence,
`
`weigh its probative value and reject any improper inferences.”).
`
`And assuming arguendo that exceeding the scope of a Reply is a proper
`
`grounds for exclusion, TT did not meet its burden to show that the complained-of
`
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`- 13 -
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`CBM2014-00137
`U.S. Pat. No. 7,685,055
`portions were improper. TT quotes 37 C.F.R. § 42.23(b), which states that a Reply
`
`
`
`may only address arguments raised in the POR, but TT does not address whether
`
`the evidence was properly raised in rebuttal to TT’s arguments. “The very nature
`
`of a reply is to respond to the opposition, which in this case is the patent owner
`
`response.” Vibrant Media at 31-32 (denying similar motion to exclude).
`
`As in Vibrant Media, TT’s “motion does not contain any meaningful
`
`discussion of the arguments that [TT] has made in its patent owner response.” And
`
`here, the supplemental evidence was submitted to rebut TT’s arguments disputing
`
`that: its claims are directed to an abstract idea; merely recite routine and
`
`conventional extra-solution activities; TSE teaches certain claim steps; the TSE
`
`translation is accurate; and the claim steps must be performed in order.
`
`TT also argues that the testimony should have been filed with the Petition.
`
`Even if true, that is “insufficient to establish the impropriety of such evidence,
`
`much less inadmissibility under the Federal Rules of Evidence.” Vibrant Media at
`
`31-32. But it is not true. The Petition set forth a prima facie showing a likelihood
`
`of success under §§ 101 and 103. The § 101 section alleged the necessary facts,
`
`including that the steps beyond the abstract idea were merely routine and
`
`conventional, and cited supporting evidence by referring to the “following
`
`sections.” Pet. at 10-13. TT relies on Intri-Plex, which involved a petitioner that
`
`did not file any declaration with its petition, and then filed a full declaration
`
`
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`CBM2014—00137
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`U.S. Pat. No. 7,685,055
`
`including technical background, level of ordinary skill, and a c1aim—by—claim
`
`analysis. ]nlri—P[ex Techs. v. Saim‘—G0bain Pezf Plastics Rerzcol, IPR2014-00309,
`
`Final Written Decision at 12-13 (paper 83, Mar. 23, 2014). But here, TD
`
`Ameritrade filed comprehensive expert declarations with its Petition, and is now
`
`properly supplementing them in response to TT’s arguments.
`
`III. The Hartheimer transcript (Ex. 1029) is admissible because Mr.
`Hartheimer applied the art to the claims in his direct testimony
`
`TT argues that Mr. Hartheimer’s testimony regarding the scope of the
`
`“designated number” recited in claim 1
`
`is beyond the scope of his declaration. Mot.
`
`at 15. Because Mr. Hartheimer supposedly compared the art to the claims to
`
`support his opinion that TSE does not teach a range that is a ‘‘‘designated mmzber
`
`of price levels from the lowest value or the highest Value’” as recited in claim 1,
`
`this cross—examination was within the bounds of FRE 611. Hartheimer Decl. 11 19.
`
`IV. Conclusion
`
`For the foregoing reasons, TD Ameritrade asks the Board deny TT’s motion
`
`in all respects.
`
`Date: June 23, 2015
`
`Respectfully submitted,
`STERNE, KESSLER, GOLDSTEIN & Fox P.L.L.C.
`
`1 100 NGW Y01‘k AV€11u€, N-W-
`WaShingt0na D-C 200053934
`(202) 371-2600
`
`
`
`egistration No. 61,724
`J
`athan M.
`t
`Lori A. Gordon,
`egistration No. 50,633
`
`Robert E. Soko 1, Registration No. 36,013
`Attorneys for Petitioners
`
`_15_
`
`
`
`CBM20l4~00l 37
`
`U.S. Pat. No. 7,685,055
`
`CERTIFICATION OF SERVICE
`
`The undersigned hereby certifies that the foregoing PETITIONERS’
`
`OPPOSITION TO PATENT OWNER’S MOTION TO EXCLUDE and all
`
`associated exhibits were served electronically via e-mail on June 23, 2015, in their
`
`entirety on the following:
`
`Erika H. Arner (Lead Counsel)
`Joshua L. Goldberg (Bacl<—up Counsel)
`Kevin D. Rodkey (Back-up Counsel)
`Rachel Emsley (Back-up Counsel0
`FINNEGAN, HENDERSON, FARABOW,
`
`GARRETT & DUNNER, LLP
`
`£TJjil$_§1-mi1iI!l§lZ§i2il111LM€‘41i1}L,EQl1l
`i<>sl1ua.g9ld‘l>erg<’(i>tiniiegaiicom
`3.<_g\;'i13,...Ls‘>_,<l1:;::_>;:%_;._1'! 17 U E2111 ...<_:9n_1
`l‘)x.£1Cl]€;’l.L‘fl}SlL“\,/‘QT./‘ linncgan .com
`
`Steven F. Borsand (Bacl<—up Counsel)
`TRADING TECHNOLOGIES
`
`INTERNATIONAL, INC.
`steve.borsand@tradingtechnologies.com
`
`STERNE, KEssLER, GOLDSTEIN & Fox P.L.L.C.
`
`
`
`Attorney for Petitioners
`
`Date: June 23, 2015
`
`l 100 New York Avenue, N.W.
`
`Washington, D.C.20005—3934
`(202) 371-2600
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