`Conference Call
`July 17, 2014
`
`1
`
` UNITED STATES PATENT AND TRADEMARK OFFICE
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
`———————————————————————————————————
`TD AMERITRADE HOLDING CORPORATION, |
`TD AMERITRADE, INC., and TD |
`AMERITRADE ONLINE HOLDINGS CORP. |
` Petitioner, | Case CBM2014-00131
` v. | Patent 7,533,056
`TRADE TECHNOLOGIES INTERNATIONAL, |
`INC., |
` Patent Owner. |
`———————————————————————————————————
`TD AMERITRADE HOLDING CORPORATION, |
`TD AMERITRADE, INC., and TD |
`AMERITRADE ONLINE HOLDINGS CORP. |
` Petitioner, | Case CBM2014-00133
` v. | Patent 7,676,411
`TRADE TECHNOLOGIES INTERNATIONAL, |
`INC., |
` Patent Owner. |
`———————————————————————————————————
`TD AMERITRADE HOLDING CORPORATION, |
`TD AMERITRADE, INC., and TD |
`AMERITRADE ONLINE HOLDINGS CORP. |
` Petitioner, | Case CBM2014-00135
` v. | Patent 6,772,132
`TRADE TECHNOLOGIES INTERNATIONAL, |
`INC., |
` Patent Owner. |
`———————————————————————————————————
` (Caption continues on following page)
` Thursday, July 17, 2014
` 3:00 p.m. EST
` Teleconference before the Patent Trial and Appeal
`Board, Judge Meredith C. Petravick presiding, the
`proceedings being recorded stenographically by Jonathan
`Wonnell, RMR, a Registered Professional Court Reporter
`(NCRA# 835577) and Notary Public of the State of
`Minnesota, and transcribed under his direction.
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`Page 1 of 48
`
`BOARD EXHIBIT 3001
`TD Ameritrade v. Trading Technologies
`CBM2014-00137
`
`
`
`CBM2014-00131, CBM2014-00133, CBM2014-00135, CBM2014-00136, CBM2014-00137
`Conference Call
`July 17, 2014
`
`2
`
` (Caption continues:)
`———————————————————————————————————
`TD AMERITRADE HOLDING CORPORATION, |
`TD AMERITRADE, INC., and TD |
`AMERITRADE ONLINE HOLDINGS CORP. |
` Petitioner, | Case CBM2014-00136
` v. | Patent 6,766,304
`TRADE TECHNOLOGIES INTERNATIONAL, |
`INC., |
` Patent Owner. |
`———————————————————————————————————
`TD AMERITRADE HOLDING CORPORATION, |
`TD AMERITRADE, INC., and TD |
`AMERITRADE ONLINE HOLDINGS CORP. |
` Petitioner, | Case CBM2014-00137
` v. | Patent 7,685,055
`TRADE TECHNOLOGIES INTERNATIONAL, |
`INC., |
` Patent Owner. |
`———————————————————————————————————
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`Page 2 of 48
`
`
`
`CBM2014-00131, CBM2014-00133, CBM2014-00135, CBM2014-00136, CBM2014-00137
`Conference Call
`July 17, 2014
`
` A P P E A R A N C E S O F C O U N S E L
` (All participants appearing by phone)
`
`3
`
` On behalf of the Patent Trial and Appeal
` Board:
` MEREDITH C. PETRAVICK, ESQ., JAMESON LEE, ESQ.
` and PHILLIP J. HOFFMAN, ESQ.,
` Administrative Patent Judges
`
` On behalf of TD Ameritrade:
` ROBERT E. SOKOHL, ESQ.
` JONATHAN M. STRANG, ESQ.
` Sterne, Kessler, Goldstein & Fox
` 1100 New York Avenue, NW
` Washington, DC 20005
` (202) 371-2600
` rsokohl@skgf.com
` jstrang@skgf.com
`
`1
`
`2
`
`3 4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`Page 3 of 48
`
`
`
`CBM2014-00131, CBM2014-00133, CBM2014-00135, CBM2014-00136, CBM2014-00137
`Conference Call
`July 17, 2014
`
`4
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
` A P P E A R A N C E S (Cont'd)
` On behalf of Trade Technologies
` International:
` ERIKA HARMON ARNER, ESQ.
` JAMES K. HAMMOND, ESQ.
` Finnegan, Henderson, Farabow, Garrett &
` Dunner, LLP
` Two Freedom Square
` 11955 Freedom Drive
` Reston, Virginia 20190-5675
` (571) 203-2700
` erika.arner@finnegan.com
` james.hammond@finnegan.com
`
` On behalf of Finnegan, Henderson, Farabow,
` Garrett & Dunner:
` SEAN M. SELEGUE, ESQ.
` Arnold & Porter LLP
` Three Embarcadero Center, 10th Floor
` San Francisco, California 94111-4024
` (415) 471-3169
` sean.selegue@aporter.com
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`Page 4 of 48
`
`
`
`CBM2014-00131, CBM2014-00133, CBM2014-00135, CBM2014-00136, CBM2014-00137
`Conference Call
`July 17, 2014
`
`5
`
` A P P E A R A N C E S (Cont'd)
`
` ALSO PRESENT:
` STEVE BORSAND, Trade Technologies, Inc.,
` JONATHAN WONNELL, Court Reporter,
` Henderson Legal Services
`
`1
`
`2 3
`
`4
`
`5
`
`6
`
`7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`Page 5 of 48
`
`
`
`CBM2014-00131, CBM2014-00133, CBM2014-00135, CBM2014-00136, CBM2014-00137
`Conference Call
`July 17, 2014
`
`6
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
` P R O C E E D I N G S
` (3:00 p.m. EST)
` JUDGE PETRAVICK: This is Judge Petravick
`and with me on the phone are Judge Jameson Lee and
`Judge Phil Hoffman. I believe we are here for CBMs
`2014-00131, 133 and 135, 136 and 137. Is that
`correct?
` MR. SOKOHL: Correct.
` MS. ARNER: Yes, Your Honor.
` JUDGE PETRAVICK: Counsel for Petitioner,
`let's do a roll call. Petitioner, please start.
` MR. SOKOHL: Sure. Robert Sokohl and
`Jon Strang from Sterne, Kessler, Goldstein & Fox.
` JUDGE PETRAVICK: I'm sorry. I didn't hear
`that last name.
` MR. SOKOHL: That last name was Jon
`Strang, S-t-r-a-n-g.
` JUDGE PETRAVICK: Thank you. Counsel for
`Patent Owners?
` MS. ARNER: Hi, Your Honor. This is a
`Erika Arner with Finnegan. Also I'm joined by Jim
`Hammond from our law firm as well as Steve Borsand
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`Page 6 of 48
`
`
`
`CBM2014-00131, CBM2014-00133, CBM2014-00135, CBM2014-00136, CBM2014-00137
`Conference Call
`July 17, 2014
`
`7
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`from Trade Technologies, the Patent Owner. And
`also on the line with us is Sean SeLegue who is
`Finnegan's outside counsel related to the potential
`discussion of a motion to disqualify Finnegan. And
`there's also a court reporter -- I mean the court
`reporter is on the line as well.
` JUDGE PETRAVICK: And Patent Owner, you've
`arranged for that court reporter?
` MS. ARNER: Yes.
` JUDGE PETRAVICK: And you will file a
`transcript after the call?
` MS. ARNER: Yes, we will. Mm-hmm.
` JUDGE PETRAVICK: Exhibit Number 3001.
`All right.
` I understand, Petitioner, you've
`submitted one matter to us and, Patent Owner,
`you've submit three matters to us. We're going to
`start with the Petitioner's matter regarding the
`motion to disqualify counsel. So Petitioners,
`since you requested this call, would you please
`start to explain your view.
` MR. SOKOHL: Sure. This is Rob Sokohl.
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`Page 7 of 48
`
`
`
`CBM2014-00131, CBM2014-00133, CBM2014-00135, CBM2014-00136, CBM2014-00137
`Conference Call
`July 17, 2014
`
`8
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`So we are asking for authorization from the Board
`to file a motion to disqualify. We're going to
`attempt to outline briefly the relevant facts, but
`there are a few facts, including when Finnegan was
`approached by Trade Technologies, that only
`Finnegan can provide and to date they have refused
`to provide this information. So we're going to
`proceed based on the facts as we understand them.
` The issue here is essentially concurrent
`representation of adverse parties. Here it's TD
`Ameritrade and Trade Technologies. Finnegan has
`represented -- Finnegan has represented TD
`Ameritrade for 15 years. Throughout that period
`there has been times of inactivity, but the conduct
`of the parties was that the attorney-client
`relationship was ongoing for the last 15 years. TD
`Ameritrade has always considered Finnegan its
`attorneys.
` Now, at the beginning of the
`relationship between Finnegan and, at the time,
`Ameritrade, Inc -- now it's TD Ameritrade -- there
`was a representation or engagement letter sent from
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`Page 8 of 48
`
`
`
`CBM2014-00131, CBM2014-00133, CBM2014-00135, CBM2014-00136, CBM2014-00137
`Conference Call
`July 17, 2014
`
`9
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`Finnegan to Ameritrade, and that representation
`letter was augmented with a line that says "subject
`to the retention and billing policy of TD
`Ameritrade."
` Now, that incorporates our reference,
`that retention and billing policy. Now, that
`policy was forwarded to Finnegan periodically over
`the last 15 years. The last time in fact was April
`of this year. And that policy has never been
`objected to by Finnegan, has never been commented
`on by Finnegan to the best of our knowledge. There
`has been no suggestions to changes.
` And that policy specifically states that
`Finnegan cannot be or any counsel representing TD
`Ameritrade cannot be adverse in any way to TD
`Ameritrade while it is -- while TD Ameritrade is a
`current client. And so the issue here is whether
`or not TD Ameritrade was a current client of
`Finnegan while it also represented Trade
`Technologies.
` Now, on some sequence of some events, in
`late April early May of this year TD Ameritrade
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`Page 9 of 48
`
`
`
`CBM2014-00131, CBM2014-00133, CBM2014-00135, CBM2014-00136, CBM2014-00137
`Conference Call
`July 17, 2014
`
`10
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`told Trade Technologies in a concurrent litigation
`that it planned on filing the five CBMs that are
`before us today. On May 19th to 20th those CBMs
`were filed against Trade Technologies and on May
`27th Finnegan attempted to disengage representing
`TD Ameritrade with no prior notice. We believe --
`but Finnegan, again, will not confirm this -- that
`Trade Technologies approached Finnegan prior to May
`27th.
` Now, Finnegan was not up front with TD
`Ameritrade when it provided this letter to
`disengage. First it was a phone call and then a
`letter to disengage. And general counsel asked
`specifically whether or not there was any ethical
`or legal matter that caused them to attempt to
`disengage and none was provided. They simply said
`that this was just to clean up the account and so
`that Finnegan could move on.
` We believe this is a breach of
`Finnegan's ethical fiduciary duties to TD
`Ameritrade. But importantly on -- when Finnegan
`attempted to disengage on or about the 27th or 28th
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`Page 10 of 48
`
`
`
`CBM2014-00131, CBM2014-00133, CBM2014-00135, CBM2014-00136, CBM2014-00137
`Conference Call
`July 17, 2014
`
`11
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`of May, there were active matters pending for TD
`Ameritrade. Those include a trademark application
`that had not issued yet; it included a take-down
`campaign for a website that Finnegan had been
`monitoring to make sure that the website would
`continue to be kept down; and it also included
`watch notices that Finnegan periodically watched
`trademarks to make sure TD Ameritrade's trademarks
`were not in violation.
` In regard to the trademark application,
`Finnegan's own representation letter said that work
`would be substantially complete when a trademark or
`patent application issues. The trademark
`application, SnapTicket, had not issued. And there
`was still ongoing legal work that potentially could
`be done. Anything could happen with an
`application. And TD Ameritrade was counting on
`Finnegan to make sure that that application in fact
`issued.
` In regard to the take-down notices,
`Finnegan's own e-mails to TD Ameritrade showed that
`they had indicated that they had taken -- gotten
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`Page 11 of 48
`
`
`
`CBM2014-00131, CBM2014-00133, CBM2014-00135, CBM2014-00136, CBM2014-00137
`Conference Call
`July 17, 2014
`
`12
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`the website taken down, that they were going to
`periodically check, and that they were going to
`check the site again in about a month. And on June
`5th of this year they sent one last e-mail that
`said -- and I quote -- "We did one last check.
`Site is still down. Looks like we can close this
`one out."
` This is evidence to show that the
`relationship was still ongoing, they were doing
`work for TD Ameritrade and that the relationship
`had not closed.
` Now -- so really the fundamental
`question here is whether or not when TD Ameritrade
`was a current client of Finnegan did they represent
`Trade Technologies. And based on the
`circumstantial evidence the answer is yes.
` Only Finnegan has access to the
`information that we now seek to confirm that they
`actually represented Trade Technologies while TD
`Ameritrade was a current client. And so we would
`seek some limited discovery in order to confirm our
`suspicions.
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`Page 12 of 48
`
`
`
`CBM2014-00131, CBM2014-00133, CBM2014-00135, CBM2014-00136, CBM2014-00137
`Conference Call
`July 17, 2014
`
`13
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
` JUDGE PETRAVICK: Can you please be more
`specific as far as which ethical rules in
`particular you are claiming that the counsel to the
`Patent Owner has violated?
` MR. SOKOHL: So obviously one of the
`things we were doing is asking for authorization to
`file a brief to outline the different rules. But
`there are two rules we are concerned about. Number
`one, first of all, the agreement between the
`parties was that -- as part of the retention policy
`was that Finnegan could not be adverse in any way
`to TD Ameritrade. And so they violated that
`agreement.
` In addition, Rule 1.7 we believe of the
`ABA rules is also violated. I mean, this is a
`classic hot potato issue in regard to a firm taking
`on a more lucrative client and firing a client
`solely to take on the more lucrative client.
` But just to expand, I mean, we would try
`to expand upon that in our briefs. So the point of
`today is to see if we can move forward.
` JUDGE PETRAVICK: Thank you. Do you have
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`Page 13 of 48
`
`
`
`CBM2014-00131, CBM2014-00133, CBM2014-00135, CBM2014-00136, CBM2014-00137
`Conference Call
`July 17, 2014
`
`14
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`anything else to add?
` MR. SOKOHL: I think that's a fairly
`good summary at this point.
` JUDGE PETRAVICK: It was 1.7, correct?
` MR. SOKOHL: I believe so. Yes. Yup.
`Yup.
` JUDGE PETRAVICK: Patent Owner, we will
`hear from you now.
` MS. ARNER: Thank you, Your Honor. I
`would like to just make one quick comment regarding
`the discovery request, I guess, that counsel for
`Petitioner referenced and then I'll turn it over to
`Sean to address the qualification issues. But the
`Petitioner said that Finnegan has refused to
`give -- I guess dates is what they said and that
`they were seeking limited discovery.
` And I just wanted to clarify that we've
`received two additional discovery requests from the
`Petitioner and the first one was not very limited.
`It was seeking "Testimony, documents and written
`discovery such as interrogatories related to the
`extent and timing of your firm's representation of
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`Page 14 of 48
`
`
`
`CBM2014-00131, CBM2014-00133, CBM2014-00135, CBM2014-00136, CBM2014-00137
`Conference Call
`July 17, 2014
`
`15
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`the two parties, including billing records,
`conflict checks, other internal documents and
`communications and communications with the
`parties."
` That was the first request we received.
`And then later we received a request for two dates
`which they said was the additional discovery they
`needed at this point indicating that by providing
`those dates then there would be perhaps a lead-in
`to more extensive discovery as they first
`requested.
` So talking about whether or not limited
`discovery is appropriate, I don't think limited is
`really what they have been looking for.
` As to the substance --
` JUDGE PETRAVICK: Hold on for a second.
`As of right now, Petitioner, are you making a motion
`regarding a limited discovery? We're still on the
`motion to authorize qualification, right? Correct?
` MR. SOKOHL: That is correct.
` JUDGE PETRAVICK: Right. So Patent Owner,
`could you address that issue?
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`Page 15 of 48
`
`
`
`CBM2014-00131, CBM2014-00133, CBM2014-00135, CBM2014-00136, CBM2014-00137
`Conference Call
`July 17, 2014
`
`16
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
` MS. ARNER: Sure. Yes. Of course. And
`Sean, I'll turn it over to you for that.
` MR. SELEGUE: Sure. This is Sean
`SeLegue from Arnold & Porter representing the
`Finnegan Henderson law firm.
` Really I think the issues here are much
`more simple than Patent Owner's counsel set out.
`So there are two relevant rules. There's the
`Former Client Rule, which is Model Rule 1.9, which
`says that a law firm may take on a matter adverse
`to a former client that is not substantially
`related to the firm's prior work for that client.
`And then there is the Current Client Rule, which
`opposing counsel mentioned. That's Rule 1.7.
` Let me start with Rule 1.9 because that
`really is the crux of the matter. There is no
`dispute at this point that TD Ameritrade is a
`former client of Finnegan's. It became a former
`client under the terms of the engagement agreement
`when the last and final trademark application that
`Finnegan was handling to TD Ameritrade was
`published for opposition and no opposition was
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`Page 16 of 48
`
`
`
`CBM2014-00131, CBM2014-00133, CBM2014-00135, CBM2014-00136, CBM2014-00137
`Conference Call
`July 17, 2014
`
`17
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`filed on May 15th.
` Finnegan did no more substantive work on
`that mark. And under the terms of the engagement
`agreement the parties agreed that Finnegan's
`engagement would terminate when its last
`substantive work was completed for TD Ameritrade.
` And so TD Ameritrade has always focused
`on this trademark matter as the basis for why it
`believes Finnegan was still its counsel, which
`Finnegan confirmed on May 28th that all of its work
`had been completed.
` So the reality is that TD Ameritrade is
`a former client of Finnegan. There is absolutely
`no dispute between the parties as the
`correspondence reflects that the current matter is
`completely unrelated to the work that Finnegan
`previously did for TD Ameritrade. And therefore,
`under the Former Client Rule Finnegan is permitted
`to take on this matter.
` And it's very important to recognize
`that Trade Technologies' interests in choosing its
`counsel must be given weight, including the ability
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`Page 17 of 48
`
`
`
`CBM2014-00131, CBM2014-00133, CBM2014-00135, CBM2014-00136, CBM2014-00137
`Conference Call
`July 17, 2014
`
`18
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`to choose counsel who have experience in the very
`specialized sort of proceeding before this
`tribunal.
` Some of the other issues that counsel
`raised are new. This watch notice issue is a new
`issue. It's a red herring. A paralegal at
`Finnegan would check on a weekly basis a watch list
`for TD Ameritrade and there was no substantive work
`going on regarding that engagement on May 28th.
` And this take-down campaign matter also
`is addressed in the correspondence. That work was
`completed months before Finnegan confirmed on May
`28th that it was disengaging from TD Ameritrade and
`would not accept any more work.
` So while Finnegan had done work for TD
`Ameritrade for a long time, the big picture is that
`by the date -- by May 28th of this year, the work
`had dwindled to a very small amount and Finnegan
`had wrapped up all of its work for TD Ameritrade.
`And so when Trade Technologies asked to be
`represented by Finnegan, Finnegan was entitled to
`take on that representation and did not begin the
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`Page 18 of 48
`
`
`
`CBM2014-00131, CBM2014-00133, CBM2014-00135, CBM2014-00136, CBM2014-00137
`Conference Call
`July 17, 2014
`
`19
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`representation until June 6th, which was well after
`the substantive work for TD Ameritrade was
`completed.
` And if Your Honors look at the text of
`Rule 1.7 and 1.9 -- pardon me -- of Rule 1.7 of the
`concurrent representation rule, it speaks about
`representation beginning, not preliminary inquiries
`or whatnot. So all the interest by TD Ameritrade
`in when Trade Technologies first contacted Finnegan
`is legally irrelevant because under the Current
`Client Rule the court would only look to when
`Finnegan actually began representing Trade
`Technologies.
` So just to sum up, TD Ameritrade is a
`former client. There is no dispute that under the
`Former Client Rule Finnegan is not disqualified.
`And under Rule 1.7, which TD Ameritrade is relying
`on, TD Ameritrade is simply not a current client.
`There has been no concurrent conflict of interest,
`no date on which Finnegan represented both TD
`Ameritrade in some matters and Trade Technologies
`in a matter adverse to TD Ameritrade.
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`Page 19 of 48
`
`
`
`CBM2014-00131, CBM2014-00133, CBM2014-00135, CBM2014-00136, CBM2014-00137
`Conference Call
`July 17, 2014
`
`20
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
` So the court should not allow this
`motion to be filed.
` JUDGE PETRAVICK: Okay. We've heard from
`both the parties. We have a couple questions.
`First, for Petitioner, do you think that the work
`performed by Finnegan and in the current matter are
`substantially the same? Or related matters?
` MR. SOKOHL: They are not. We would
`agree that the work previously done is not
`substantially related to this matter.
` JUDGE PETRAVICK: All right. At this time
`is TD Ameritrade a former client of Finnegan's?
` MR. SOKOHL: As of today?
` JUDGE PETRAVICK: As of today.
` MR. SOKOHL: I believe the answer to
`that would be yes, that Finnegan has disengaged and
`the work that Finnegan had with them has been
`transferred to other firms. And so as of today,
`yes, they would be a former --
` JUDGE PETRAVICK: Finnegan is not handling
`any matters for TD Ameritrade as of today?
` MR. SOKOHL: To the best of my
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`Page 20 of 48
`
`
`
`CBM2014-00131, CBM2014-00133, CBM2014-00135, CBM2014-00136, CBM2014-00137
`Conference Call
`July 17, 2014
`
`21
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`knowledge, that is correct. Yup.
` JUDGE PETRAVICK: So just to confirm, that
`it's your position that they are -- have misconduct
`that they were violating a contractual agreement
`between the parties and they violated Rule 1.7 on
`the concurrent client?
` MR. SOKOHL: Correct.
` JUDGE PETRAVICK: Thank you. So let's move
`on to the next issue. Petitioner, are you asking
`us to authorize motion for discovery on the issues
`of the qualification of the counsel?
` MR. SOKOHL: Yes. And let me tell you
`why, if I may.
` JUDGE PETRAVICK: Yes.
` MR. SOKOHL: So Mr. SeLegue make a made
`that statement that they did not begin the
`representation of Trade Technologies until June
`6th. If in fact that's true then we would concur
`that there's no issue here. But that's what we
`need to know. And it's all in the -- you know,
`that's not --
` JUDGE PETRAVICK: Why do you think that's
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`Page 21 of 48
`
`
`
`CBM2014-00131, CBM2014-00133, CBM2014-00135, CBM2014-00136, CBM2014-00137
`Conference Call
`July 17, 2014
`
`22
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`not true if he just told you? He just told you
`that today?
` MR. SOKOHL: Because I don't know what
`he means by no representation. We would need to
`know whether or not Finnegan, for instance,
`performed any type of analysis, strategizing,
`planning, regarding these CBMs prior to June 6th.
` What we do know is that there were
`representation letters that went out on June 3rd
`from Finnegan to Trade Technologies and I believe
`Trade Technologies may have signed that on or about
`June 6th. I don't have the exact date in front of
`me.
` But the question is whether or not any
`work had been performed relating to these CBMs
`prior to that. And I think if we could resolve
`those issues then either this whole matter does go
`away, or it makes it more acute.
` JUDGE PETRAVICK: Patent owners?
` MR. SELEGUE: Yes, Your Honor. So --
`well, that's very helpful. I think that really
`narrows the issues before the Court because the
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`Page 22 of 48
`
`
`
`CBM2014-00131, CBM2014-00133, CBM2014-00135, CBM2014-00136, CBM2014-00137
`Conference Call
`July 17, 2014
`
`23
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`fact is that the representation did begin on June
`6th. That's when Trade Technologies signed the
`engagement letter with Finnegan. And the discovery
`that the Patent Owner is seeking would not bear on
`when the representation began.
` So as I understand it, the Patent Owner
`is seeking information about, you know, any and all
`contacts that Trade Technologies had had with
`Finnegan prior to the date the representation
`began. And that would not be relevant under Model
`Rule 1.7, which, as I mentioned earlier, finds a
`concurrent conflict of interest in a firm
`representing two clients only when actual
`representation is going on.
` If there is merely an inquiry from a
`potential client, that is not representation. And
`the Model Rules distinguish very clearly between
`potential clients and actual clients. So, for
`example, if the Court were to look at Model Rule
`1.10, there are differing rules about a potential
`client who had come to a law firm to talk about
`potential representation.
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`Page 23 of 48
`
`
`
`CBM2014-00131, CBM2014-00133, CBM2014-00135, CBM2014-00136, CBM2014-00137
`Conference Call
`July 17, 2014
`
`24
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
` So those communications, for example,
`are still subject to attorney-client privilege even
`thought the representation hasn't begun and no
`relationship has been formed and are recognizing
`that an inquiry from a potential client is of less
`significance.
` There are more limited disqualification
`rules for potential clients, which is not directly
`relevant here. What's relevant here is that the
`ethics rules clearly distinguish between contact
`between a potential client and a law firm and then
`the law firm's actual undertaking of a
`representation on behalf of the client which turns
`a potential client into an actual client.
` So the key date is when the
`representation actually began and that is June 5th
`as confirmed by the written engagement agreement.
` JUDGE PETRAVICK: Thank you. I think we
`understander your side, both of your positions on
`this issue. Let's move on to the next one.
` Moving on to the request that the Patent
`Owner sent to us, you're requesting leave to
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`Page 24 of 48
`
`
`
`CBM2014-00131, CBM2014-00133, CBM2014-00135, CBM2014-00136, CBM2014-00137
`Conference Call
`July 17, 2014
`
`25
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`present a live demo of the patent invention before
`the Patent Owner's preliminary response.
` MS. ARNER: Yes, Your Honor. Thank you.
`The Patent Owner in preparing its preliminary
`response to the petition needs to make a showing
`under 35 U.S.C. § 323 of reasons that no post-grant
`review should be instituted. And here we think
`there are some very unique reasons based on the
`nature of the invention, the claims covering a
`graphical user interface and devices and methods of
`operating or methods of how the graphical user
`interfaces and devices operate.
` And we have found in the past with these
`patents that a demonstration of the patented
`invention is very useful. A demonstration was used
`in the prosecution before the USPTO and also in the
`European Patent Office where the examiners were
`considering whether the patents were business
`methods which are not patentable in Europe and also
`the technical effect of the invention.
` We have found in the past that it was
`useful given the unique nature of the invention to
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`Page 25 of 48
`
`
`
`CBM2014-00131, CBM2014-00133, CBM2014-00135, CBM2014-00136, CBM2014-00137
`Conference Call
`July 17, 2014
`
`26
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`include a demonstration, a technical tutorial, if
`you will, on the invention. And we think that
`including it here with our preliminary response
`will enable us to show under Section 323 that it's
`a very clear-cut case here that this is not a
`covered business method patent, that it is a
`technological invention, which are the showings
`that the Patent Owner needs to make in its
`preliminary response.
` We did -- before this call we spoke with
`the Petitioner and mentioned that we were going to
`approach the Board with this request and I'll let
`the Petitioner speak for itself. It didn't take a
`position during our call.
` But we would note that in the course of
`these proceedings the Patent Owner is able to
`include preexisting evidence, not new testamentary
`evidence, but preexisting evidence, as exhibits
`with its preliminary response. And we think that
`this would work in a very similar way and the
`Board's rules would provide Petitioner with
`appropriate opportunities to respond as needed.
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`Page 26 of 48
`
`
`
`CBM2014-00131, CBM2014-00133, CBM2014-00135, CBM2014-00136, CBM2014-00137
`Conference Call
`July 17, 2014
`
`27
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
` JUDGE PETRAVICK: Petitioner, we'll hear
`from you now.
` MR. SOKOHL: So, first of all, in
`regards to the live demo, this is the very first
`time we heard about the live demo was last night
`when we received an e-mail that was sent to the
`Board. That was not discussed, Erika, I believe,
`on the ph