Trials@uspto.gov
`571.272.7822
`
` Paper No. 11
`
` Entered: August 14, 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.
`
`PETRAVICK, Administrative Patent Judge.
`
`
`
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.20
`
`
`
`
`
`
`
`
`
`
`571.272.7822
`
` Paper No. 11
`
` Entered: August 14, 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.
`
`PETRAVICK, Administrative Patent Judge.
`
`
`
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.20
`
`
`
`
`
`
`
`
`
`
`
`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 8, 2014, a telephone conference call was held between
`
`respective counsel for the parties and Judges Medley, Petravick, and
`Hoffmann. Patent Owner requested the call to seek authorization to file a
`motion for additional discovery related to Petitioner’s real parties-in-interest.
`
`
`DISCUSSION
`Patent Owner’s Request for Authorization to File a
`Motion for Additional Discovery
`Patent Owner requests authorization to file a motion for additional
`
`discovery related to whether eSpeed and other unnamed parties are real-
`parties-in-interest. According to Patent Owner, the parties agreed to, and
`Petitioner has already answered, an initial set of three questions related to
`this issue, but the parties cannot agree as to two further follow up questions.
`Ex. 3002, 6-7.
`Patent Owner argues that certain facts suggest that “perhaps”
`Petitioner, eSpeed, and other unnamed parties have a joint defense group.
`Id. at 11. Those alleged facts are: that the Petition (Paper 4) cites to a memo
`written by an attorney at Winston & Strawn, LLP for the “eSpeed file” (Ex.
`1006, “eSpeed Memo”); that Petitioner stated, in a previous conference call
`(see Paper 10; Ex. 3001) that the memo may contain attorney work product;
`and that there are other parties involved currently in the same litigation as
`these patents and Petitioner. Ex. 3002, 10-11.
`
`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)
`
`
`
`According to Petitioner, Petitioner obtained the 2005 eSpeed Memo,
`in response to a request for prior art, which was made in the 2010 time frame
`after Petitioner was sued by Patent Owner and which was prior to the
`existence of covered business method patent review in the statute. Id. at 12-
`14. Petitioner stated that the eSpeed Memo “may be work product of
`Winston & Strawn and eSpeed in 2005” (id. at 13), but that it was not
`created for these proceedings. Id. Petitioner stated that it already had told
`Patent Owner, in response to their initial questions, that no other party
`provided work product for the Petitions in these proceedings or provided
`comments on drafts of the Petitions. Id. at 13.
`In covered business method patent proceedings, motions for
`additional discovery may be granted upon a showing of good cause as to
`why the discovery is needed. 37 C.F.R. §§ 42.224. See also Bloomberg Inc.
`et al. v. Markets-Alert Pty. Ltd., CBM2013-00005, 5 (2013) (setting forth
`factors that are helpful in determining whether discovery requests may be
`granted). Patent Owner, as the moving party, has the burden of proof. 37
`C.F.R. §§ 42.20(c), 42.224.
`
`Patent Owner has not explained sufficiently how it could demonstrate
`“good cause as to why the discovery is needed” to justify a motion for
`further additional discovery. See 37 C.F.R. §§ 42.51(b)(2)(i), 42.224.
`Patent Owner’s explanation, based mainly upon Petitioner’s possession of
`the eSpeed Memo and Petitioner’s “work product” statement, is mere
`speculation that it will discover information regarding an alleged joint
`defense group between Petitioner, eSpeed, and other unnamed entities.
`Petitioner has explained already how it obtained the eSpeed Memo and what
`
`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)
`
`
`
`it meant by the “work product” statement, and Patent Owner provides no
`reasons as to why Petitioner’s explanation is insufficient. The only other
`fact Patent Owner relies upon is that Petitioner and other parties are involved
`in the same district court litigation over the patents at issue in these
`proceedings. This fact, alone, is insufficient reason to authorize a motion for
`further additional discovery; particularly, in light of Petitioner’s
`representation that no entities other than TD Ameritrade, “was authorized,
`controlled, reviewed [,] or provided work product for the CBMs that TD
`Ameritrade filed” (Ex. 3002, 14). For these reasons, Patent Owner’s request
`for authorization to file a motion for additional discovery is denied.
`
`Patent Owner’s Request for Guidance on a Routine Discovery Issue
`Patent Owner seeks “guidance” as to how to enforce compliance with
`the routine discovery rules. Ex. 3002, 9. Patent Owner alleges that
`Petitioner did not serve a document, which is from an eSpeed litigation and
`publicly available, that includes inconsistent statements. Id.
`Because Patent Owner asks us for “guidance” and seeks no other
`relief from us, we decline to provide an affirmative declaration as to whether
`Petitioner should have or should not have served the document that contains
`the alleged inconsistent statements pursuant to the routine discovery rule.
`For guidance, Patent Owner is directed to 37 C.F.R. § 42.51(b)(1)(iii), which
`states “[u]nless previously served, a party must serve relevant information
`that is inconsistent with a position advanced by the party during the
`proceeding concurrent with the filing of the documents or things that
`contains the inconsistency.” “Routine discovery under 37 C.F.R. §
`
`4
`
`
`
`
`
`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)
`
`
`
`41.51(b)(1)(iii) is narrowly directed to specific information known to the
`responding party to be inconsistent with a position advanced by that party in
`the proceeding, and not broadly directed to any subject area in general
`within which the requesting party hopes to discover such inconsistent
`information.” Decision –On Motion for Additional Discovery in Case
`IPR2012-00001 (Garmin Int’l., Inc. v. Cuozzo Speed Techs. LLC, (Paper 26,
`p. 4)) (emphasis added). As to the complained about document, which
`according to Patent Owner is publicly available, Patent Owner is free to
`address the alleged inconsistent statements in its Preliminary Response or
`Patent Owner Response.
`
`
`ORDER
`
`It is:
`ORDERED that Patent Owner is not authorized to file a motion for
`
`additional discovery.
`
`5
`
`
`
`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)
`
`
`
`
`
`
`
`
`
`
`PETITIONER:
`
`Lori Gordon
`Robert E. Sokohl
`Jonathan Strang
`Sterne, Kessler, Goldstein & Fox
`lgordon-ptab@skgf.com
`rsokohl-ptab@skgf.com
`jstrang-PTAB@skgf.com
`
`
`
`PATENT OWNER:
`
`Erika H. Arner
`Steven F Borsand
`Joshua L. Goldberg
`erika.arner@finnegan.com
`Steve.Borsand@tradingtechnologies.com
`joshua.goldberg@finnegan.com
`
`
`6
`
`
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