Steven F. Borsand
`Executive Vice President, Intellectual Property
`Trading Technologies International, Inc.
`Direct line: 312.476.1018
`steve.borsand@tradingtechnologies.com
`
`VIA FED EX
`
`February 5, 2016
`
`Hon. Michelle K. Lee
`Under Secretary of Commerce for Intellectual Property and
`Director of the United States Patent and Trademark Office
`600 Dulany St., MDW 10D44
`Alexandria, Virginia 22314
`
`
`Re: CBM2015-00161
`
`
`Dear Director Lee:
`I am writing to inform you that on January 27, 2016, the PTAB instituted a Covered
`Business Method (“CBM”) review in CBM2015-00161 on Section 101 grounds for the ‘304 patent.
`See CBM2015-00161, Paper 29 (P.T.A.B. January 27, 2016). You will recall that the ‘304 patent
`was the first CBM petition of six petitions discussed in our previous letters to you dated August 10,
`2015, October 23, 2015 and October 30, 2015. The decision to institute on 101 grounds is in
`conflict with a 2015 decision in the U.S. District Court of the Northern District of Illinois upholding
`the validity of all claims of the ‘304 patent under 101—finding that the claims satisfied both prongs
`of the Alice test. The decision was set forth in a thorough and well-reasoned opinion (which is
`attached) reached after extensive briefing and a hearing.1
`
`TT again respectfully requests that you exercise the discretion provided to the Director
`under the AIA to intervene and terminate the CBM2015-00161 proceeding for the reasons set forth
`in the previous letters. TT makes this request recognizing that the exercise of Director discretion
`under the statute is extraordinary. However, TT believes that intervention is justified in this case.
`
`In the next two weeks, TT plans to file a mandamus petition with the Federal Circuit
`requesting that the institution decision be reversed because the ‘304 patent is not a CBM patent
`within the jurisdictional reach of Section 18 of the AIA. Out of respect for you and the office that
`you hold, TT is providing prior notice of our intent to file the mandamus. If you agree with our
`position, it is our sincere desire that you exercise your discretion to terminate so that we do not need
`to pursue this course of action.
`
`1 TT expects that this District Court decision will be on appeal at the Federal Circuit in short order.
`
`tradingtechnologies.com
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`222 South Riverside Plaza
`Suite 1100
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`Chicago, IL 60606
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`+1 312 476 1000 Main
`+1 312 476 1001 Fax
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`Page 1 of 3
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`TRADING TECH EXHIBIT 2096
`TRADESTATION v TRADING TECH
`CBM2015-00161
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`P a g e | 2
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`Please understand that TT does not desire to proceed in an adversarial manner with the
`USPTO. TT prides itself on working closely with the USPTO and having a strong, cooperative
`relationship. However, the institution decision will force TT, a small, job-creating company
`attempting to compete with much larger competitors like TradeStation and Interactive Brokers to
`spend millions of dollars to defend patents that have already been thoroughly vetted both by the
`USPTO and by the Courts.
`
`Notably, the ‘304 patent served the very purpose of the patent system—encouraging
`innovation and investment that created jobs. The ‘304 patent is one of the first patents that TT
`obtained on the technology that it commercialized in its revolutionary MD_TRADER® product
`which was discussed in the previous letters. This patent went through a rigorous original
`examination, including two quality reviews in the “second pair of eyes” program with large
`amounts of prior art considered, and was confirmed on reexamination with literally hundreds of
`additional pieces of prior art considered. This patent has also been extensively tested in years of
`litigation with defendants using scorched earth tactics (e.g., endless prior art discovery), has been
`upheld as valid after two full jury trials (one in 2006 and another in 2015), and has also been upheld
`by the Federal Circuit.
`
`The patented MD_TRADER® product and the ability to protect it with the ‘304 patent has
`been essential to TT surviving as a company because it was key to TT attracting critical
`investments and protecting TT from having its intellectual property copied—both of which
`permitted TT to grow and create jobs. Without the ability to patent MD_TRADER®, TT would not
`be in existence today, as it could not have obtained such critical investments in the early 2000s
`when the company needed such capital to survive while developing and marketing the new
`MD_TRADER® technology.
`
`TT finds it unbelievable that a patent like the ‘304 patent—TT’s first patent directed to the
`features of a revolutionary product that changed the industry—is once again under siege by
`competitors 12 years after it was granted and after 12 years of being repeatedly tested and upheld in
`the USPTO and by the Courts in which overwhelming evidence has shown the patent to be valid.
`
`TT thanks you for your prompt attention to this important matter. TT would appreciate
`hearing your thoughts on this matter.
`
`
`
`Sincerely,
`
`
`
`
`
`Steven F. Borsand
`EVP, Intellectual Property
`Trading Technologies International, Inc.
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`Page 2 of 3
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`P a g e | 3
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`John C. Phillips (phillips@fr.com);
`Robert E. Sokohl (rsokohl@skgf.com);
`Erika H. Arner (erika.arner@finnegan.com);
`Vikrum Aiyer, Chief of Staff for the United States Patent and Trademark Office
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`Attached: U.S. District Court Opinion Finding ‘304 Patent Eligible Under 101
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`cc:
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`Page 3 of 3