Paper No. ______
`Filed: February 10, 2016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`TRADESTATION GROUP, INC. AND
`TRADESTATION SECURITIES, INC.
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`Petitioner
`v.
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` TRADING TECHNOLOGIES INTERNATIONAL, INC.
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`Patent Owner
`_________________
`Case CBM2015-00161
`U.S. Patent 6,766,304 B2
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`Patent Owner’s Objections to
`Evidence Pursuant to 37 C.F.R. § 42.64
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`Filed: February 10, 2016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
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`
`
`
`
`
`
`
`
`TRADESTATION GROUP, INC. AND
`TRADESTATION SECURITIES, INC.
`
`Petitioner
`v.
`
` TRADING TECHNOLOGIES INTERNATIONAL, INC.
`
`Patent Owner
`_________________
`Case CBM2015-00161
`U.S. Patent 6,766,304 B2
`
`
`
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`
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`
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`Patent Owner’s Objections to
`Evidence Pursuant to 37 C.F.R. § 42.64
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`Pursuant to 37 C.F.R. § 42.64(b)(1), Patent Owner objects to Petitioners’
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`Case CBM2015-00161
`U.S. Patent 6,766,304 B2
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`
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`Exhibits 1013 (Declaration of Dr. John Phillips Mellor), 1016 (“Futures/ Option
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`Purchasing System Trading Terminal Operation Guide”, Tokyo Stock Exchange
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`Operation System Division), 1017 (Translation of “Futures/ Option Purchasing
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`System Trading Terminal Operation Guide”, Tokyo Stock Exchange Operation
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`System Division), 1018 (Certificate of Translation of “Futures/ Option Purchasing
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`System Trading Terminal Operation Guide”, Tokyo Stock Exchange Operation
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`System Division), and 1019 (Gutterman, et al. US Patent No. 5,297,031) served
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`with the Petition (Paper No. 2).
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`I.
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`OBJECTION TO PETITIONERS’ EXHIBIT 1013
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`Exhibit 1013 is inadmissible and should be excluded for the following
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`reasons:
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`First, Petitioners’ Exhibit 1013 is inadmissible hearsay under FRE 801 and
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`802, having been prepared for another party, CQG, in another proceeding, and not
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`having been adopted by Mr. Mellor for these proceedings (see, e.g., Ex. 1013 at 1-
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`2, 60). Exhibit 1013 also contains additional hearsay statements by other declarants
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`that appear at paragraphs 77, 79-81. No hearsay exception applies for Exhibit
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`1013, or the statements of others incorporated or contained therein.
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`Second, Exhibit 1013 is inadmissible as irrelevant under FRE 401 and 402.
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`Because Petitioners rely on Exhibit 1013 only for their un-instituted § 112 grounds
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`1
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`Case CBM2015-00161
`U.S. Patent 6,766,304 B2
`(see Pet. 53, 55, 56, 57, 58, 59), and because the Board instituted trial as to the
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`challenged claims only on § 101 grounds, and does not rely on Exhibit 1013 (see
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`Paper No. 29), Exhibit 1013 is not relevant to this proceeding and does not have
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`the tendency to make any fact at issue in this proceeding more or less probable.
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`Third, Exhibit 1013 does not include the Exhibits it refers to (Exs. 1-13).
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`Exhibit 1013 and the Petition, therefore, are not compliant with: 37 C.F.R. §§ 42.6
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`(c); 42.63(a); and/or 42.205(a).
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`II. OBJECTION TO PETITIONERS’ EXHIBITS 1016, 1017, AND 1018
`Exhibits 1016, 1017, and 1018 are inadmissible and should be excluded for
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`the following reasons:
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`First, Petitioners appear to rely on Exhibit 1016 and its purported English
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`translation, Exhibit 1017, for alleged truth(s) of the matter(s) asserted therein—
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`e.g., that features of the TSE GUI were known during the relevant time. Pet. 36-37.
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`Exhibit 1016 and 1017 are inadmissible hearsay for this purpose under FRE 801
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`and 802, and no exception applies.
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`Second, Exhibits 1016 and 1017 are irrelevant to the § 101 grounds, and
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`therefore Exhibits 1016 and 1017 are further inadmissible under FRE 401 and
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`402.
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`2
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`Case CBM2015-00161
`U.S. Patent 6,766,304 B2
`Third, Petitioners have submitted no evidence to authenticate Exhibit 1016,
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`and deficient evidence for Exhibit 1017 as set forth below, making both
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`inadmissible under FRE 901.
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`Exhibits 1017 and 1018 are inadmissible and should also be excluded for the
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`following additional reasons:
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`Petitioners fail to provide a credible translation of TSE and fail to conform
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`with the Board’s rules for submitting translations of foreign language documents.
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`In particular, 37 C.F.R. § 42.63(b) requires that “[w]hen a party relies on a
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`document or is required to produce a document in a language other than English, a
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`translation of the document into English and an affidavit attesting to the accuracy
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`of the translation must be filed with the document.” (Emphasis added.) The record
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`lacks such an affidavit under Rule 42.63(b) attesting to the accuracy. When
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`previously deposed regarding her affidavit (Ex. 1018), Ms. O’Connell, a manager
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`at TransPerfect, was also unable to personally attest to the accuracy of the
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`translation. She admitted that she cannot read or translate Japanese. See CBM2015-
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`00131, Ex. 2093 [O’Connell Tr.] at 16:16-17; see FRE 602 (requiring personal
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`knowledge to testify to a matter); FRE 603 and 604 (requiring truthful testimony
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`and ability to make accurate translations); FRE 104(b) (requiring proof that a fact
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`exists where the relevance of the evidence depends on the existence of a fact). This
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`makes Exhibit 1018 inadmissible under 37 C.F.R. § 42.61(a).
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`3
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`Case CBM2015-00161
`U.S. Patent 6,766,304 B2
`Exhibit 1018 also fails to comply with the Board’s rules for a proper
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`affidavit and lacks the required statements for perjury. See 37 C.F.R. § 1.68
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`(stating that a declaration may be used in lieu of an oath “if, and only if, the
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`declarant is on the same document, warned that willful false statements and the
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`like are punishable by fine or imprisonment.”); 37 C.F.R. § 42.2 (defining the term
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`“affidavit” in a CBM proceeding as an “affidavit or declaration under § 1.68 of this
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`chapter”); see 28 U.S.C. § 1746 (stating that unsworn declarations under penalty of
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`perjury may be used where a matter is required or permitted to be supported by
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`sworn declaration or affidavit); 37 C.F.R. § 42.2 (noting that “a declaration under
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`28 U.S.C. 1746 may be used as an affidavit” in a CBM proceeding). This non-
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`compliant affidavit is inadmissible. 37 C.F.R. § 42.61(a).
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`The accuracy of Ex. 1017 is a question of fact. Ms. O’Connell cannot testify
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`to that fact because she has no personal knowledge of Japanese-English translation
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`or personal knowledge of the underlying source document’s content. FRE 602-604,
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`104(b); Zhongshan Broad Ocean Motor Co., Ltd. v. Nidec Motor Corp., IPR2014-
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`01121, Paper 20 at 11-12 (January 21, 2015) (holding that because an affidavit was
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`not filed with a translation, the Board would not consider the reference). Without
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`proper evidence attesting to the accuracy of the translation, the translation is
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`inadmissible. 37 C.F.R. § 42.61(a) (“Evidence that is not taken, sought, or filed in
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`accordance with this subpart is not admissible.”). Based on the failure to comply
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`4
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`Case CBM2015-00161
`U.S. Patent 6,766,304 B2
`with Rule 42.63(a) and (b), FRE 104(b), 401, 402, 602, 603, and 604, Exhibits
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`1017 and 1018 should be excluded from the proceeding or, at a minimum, given no
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`weight.
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`III. OBJECTION TO PETITIONERS’ EXHIBIT 1019
`Petitioners rely on Exhibit 1019 as disclosing certain features of the ’304
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`claims. Pet. 36-37. Exhibit 1019 is irrelevant to the § 101 grounds and therefore is
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`inadmissible under FRE 401 and 402.
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`Respectfully submitted,
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`By: /Rachel L. Emsley/
`Rachel L. Emsley, Backup Counsel
`Registration No. 63,558
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`Dated: February 10, 2016
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`5
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a copy of the foregoing Patent
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`Owner’s Objections to Evidence Pursuant to 37 C.F.R. § 42.64 were served on
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`February 10, 2016, via email directed to counsel of record for the Petitioner at the
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`following:
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`John C. Phillips
`phillips@fr.com
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`Kevin Su
`CBM41919-0005CP1@fr.com
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`Dated: February 10, 2016
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`
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`/Valencia Daniel/
`Valencia Daniel
`Litigation Legal Assistant
`
`Finnegan, Henderson, Farabow, Garrett
`& Dunner, LLP
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