Trials@uspto.gov
`Tel: 571-272-7822
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` Paper 14
`
`
` Entered: September 16, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`CQG, INC. and CQGT, LLC,
`Petitioner,
`
`v.
`
`TRADING TECHNOLOGIES INTERNATIONAL, INC.,
`Patent Owner.
`____________
`
`Case CBM2015-00057 (Patent 6,766,304 B2)
`Case CBM2015-00058 (Patent 6,772,132 B2)
`_______________
`
`
`
`
`
`Before SALLY C. MEDLEY, MEREDITH C. PETRAVICK, and
`PHILIP J. HOFFMANN, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`DECISION
`Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`
`Tel: 571-272-7822
`
`
`
`
`
`
`
`
`
`
`
` Paper 14
`
`
` Entered: September 16, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`CQG, INC. and CQGT, LLC,
`Petitioner,
`
`v.
`
`TRADING TECHNOLOGIES INTERNATIONAL, INC.,
`Patent Owner.
`____________
`
`Case CBM2015-00057 (Patent 6,766,304 B2)
`Case CBM2015-00058 (Patent 6,772,132 B2)
`_______________
`
`
`
`
`
`Before SALLY C. MEDLEY, MEREDITH C. PETRAVICK, and
`PHILIP J. HOFFMANN, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`DECISION
`Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`
`
`CBM2015-00057 (Patent 6,766,304 B2)
`CBM2015-00058 (Patent 6,772,132 B2)
`
`
`
`INTRODUCTION
`
`CQG, Inc. and CQGT, LLC (collectively, “Petitioner”), filed a
`Request for Rehearing (CBM2015-00057, Paper 14, “Req. Reh’g” 1) of the
`Decision Denying Institution of Covered Business Method Patent Review
`(Paper 13, “Decision” or “Dec.”) in both proceedings. Because the
`rehearing arguments presented are the same for the two cases, we decide
`both rehearing requests in one decision. In the rehearing requests, Petitioner
`argues that we misapprehended or overlooked (1) that the dismissal of the
`Colorado DJ Action was final, thereby rendering the action a nullity, (2) that
`we should follow other Board cases and grant institution with similar facts,
`(3) that counterclaims cannot bar institution of a CBM proceeding, and (4)
`that actions taken after dismissal of the Colorado DJ Action were not a result
`of the order dismissing the Colorado DJ Action. Req. Reh’g 1–2.
`
`ANALYSIS
`
`When rehearing a decision on petition, the Board will review the
`
`decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of
`discretion may be determined if a decision is based on an erroneous
`interpretation of law, if a factual finding is not supported by substantial
`evidence, or if the decision represents an unreasonable judgment in weighing
`relevant factors. Arnold Partnership v. Dudas, 362 F.3d 1338, 1340 (Fed.
`
`
`1 Citations are to CBM2015-00057.
`
`
`
`2
`
`
`
`CBM2015-00057 (Patent 6,766,304 B2)
`CBM2015-00058 (Patent 6,772,132 B2)
`
`Cir. 2004). For the reasons that follow, Petitioner has not shown that the
`Board abused its discretion.
`In the Decision, we determined that Petitioner’s filing of the Colorado
`DJ Action before filing its Petitions prevented us from instituting a covered
`business method patent review of either the ’304 or ’132 patents. Dec. 9.
`Petitioner argues that we overlooked the fact that the order of dismissal of
`the Colorado DJ Action was final without any conditions or procedures for
`reinstatement. Req. Reh’g 3–5. Petitioner does not identify where in its
`petition this argument was made previously. A rehearing request is not
`proper for advancing arguments not made previously. 37 C.F.R. § 42.71(d).
`
`
`In any event, we are not persuaded by Petitioner’s arguments that we
`misinterpreted Brennan v. Kulick, 407 F.3d 603 (3d Cir. 2005), which
`Petitioner argues makes clear that “a naked dismissal without prejudice
`devoid of any conditions must be treated as a final order of dismissal.” Req.
`Reh’g 4–6. Petitioner’s arguments are misplaced. We did not find that the
`dismissal without prejudice was a naked dismissal. Dec. 3–4. As explained
`in our Decision, the order was pursuant to “agreement of the parties” which
`we found, based on substantial record evidence, included all that was in the
`Proposed Minute Order (Ex. 1012). Id. Petitioner does not show
`sufficiently that we abused our discretion by making that finding. Rather,
`Petitioner’s rehearing request does not take into account all of the language
`of the order, but focuses only on certain words of the order, while ignoring
`other words.
`
`
`
`3
`
`
`
`CBM2015-00057 (Patent 6,766,304 B2)
`CBM2015-00058 (Patent 6,772,132 B2)
`
`
`We also are not persuaded by Petitioner’s argument (Req. Reh’g 6–
`10) that we should follow other Board cases and grant institution with
`“identical facts,” because those cases are not based on identical facts.
`Indeed, Petitioner does not direct us to where in any of the dismissal orders
`of those cases the dismissals were based on an agreement of the parties that
`included all of the content in the Proposed Minute Order of these cases.2
`Petitioner argues that the Decision erred in determining that “DJ
`claims can effectively continue as counterclaims” in violation of 35 U.S.C.
`§ 325(a)(3) and that counterclaims of invalidity are irrelevant to a Section
`325(a)(1) analysis. Req. Reh’g 10–11. Notwithstanding that this is a new
`argument, not presented previously, the argument is without merit. The
`requirements of 35 U.S.C. § 325(a)(3) are of no moment to whether
`Petitioner is barred under 35 U.S.C. § 325(a)(1). Unequivocally, section
`325(a)(1) precluded us from instituting a covered business method patent
`review because, prior to filing its petitions, Petitioner filed a civil action
`challenging the validity of a claim of the challenged patents.
`We also are not persuaded by Petitioner’s arguments that it did not
`add an invalidity counterclaim after dismissal of the Colorado DJ Action.
`Req. Reh’g 11–14. Per the Amended Answer, Affirmative Defenses and
`Counterclaims submission filed with the Illinois Court (Ex. 1014), Petitioner
`
`
`2 Petitioner argues that the agreement of the parties (e.g., the Proposed
`Minute Order) is silent as to any consolidation. Req. Reh’g 8, fn 3. The
`Proposed Minute Order (Ex. 1012) contemplates, as part of the parties’
`agreement, granting an already filed motion to reassign and consolidate. Ex.
`1012.
`
`
`4
`
`
`
`
`
`CBM2015-00057 (Patent 6,766,304 B2)
`CBM2015-00058 (Patent 6,772,132 B2)
`
`included the same assertions of invalidity (page 7, paragraph 10) that it
`included in the Colorado DJ Action (Ex. 1003, ¶ 18). It is of no moment that
`the original answer in the Illinois Infringement Action already included a
`counterclaim directed to invalidity. Petitioner, by way of the order from the
`Illinois Court was authorized to amend its answer in the Illinois
`Infringement Action, and Petitioner took full advantage of doing so by
`maintaining and including assertions of invalidity. Lastly, we find
`unpersuasive Petitioner’s argument that because Rule 15(a)(2) of the Federal
`Rules of Civil Procedure permits liberal amendment of counterclaims, that
`that is the reason Petitioner chose to file an Amended Answer; not because
`the Illinois Court authorized the amended answer. Req. Reh’g 14–15.
`Again, this is a new argument not presented previously. More importantly,
`however, the argument is unsupported by record evidence, which tends to
`show the opposite. The Amended Answer, Affirmative Defenses and
`Counterclaims (Ex. 1014) was filed with the Illinois Court immediately
`after, and on the same day as, the court’s order granting Petitioner leave to
`file that paper.
`For all of the above reasons, Petitioner’s Requests for Rehearing are
`denied.
`
`5
`
`
`
`
`
`
`
`CBM2015-00057 (Patent 6,766,304 B2)
`CBM2015-00058 (Patent 6,772,132 B2)
`
`
`PETITIONER:
`
`Adam G. Kelly
`William J. Kramer
`William J. Voller, III
`LOEB & LOEB LLP
`akelly@loeb.com
`wkramer@loeb.com
`wvoller@loeb.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
`
`
`
`
`
`6
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