`Sent:
`To:
`Cc:
`Subject:
`Attachments:
`
`Steve Borsand (TT) <steve.borsand@tradingtechnologies.com>
`Friday, April 1, 2016 5:54 PM
`Houser, Robert C.
`Arner, Erika; John Phillips; Rob Sokohl; rsokohl-PTAB@skgf.com; mrosato@wsgr.com
`Re: PTAB CBM Proceeding No. CBM 2015-0061.
`2015-03-23 (DI 033)-PTO-Brief for Intervenor-Director of the US PTO - PU... (1).pdf
`
`Mr. Houser ‐
`
`
`Thank you for your response. In your e‐mail, you state that “the Director has delegated issues such as those
`raised in your letter to the PTAB, and that you should raise them in that forum.” From this, we take it that it
`that it is the PTO's position that the Director has delegated her supervisory authority over the PTAB to to the
`PTAB? If this is the case, can you point us to when and how those responsibilities have been delegated? We
`understand that Director has authorized the Board to institute a trial “on behalf of the Director,” 37 C.F.R. §
`42.4, and that is the issue in the Ethicon case. In its various letters, TT has not asked the Director to revoke
`that general authorization. Instead, TT has asked the Director to intervene based on the extraordinary nature
`of our cases and the public policy issues they involve. The statute provides the Director discretion to deal with
`various issues of public policy that arise in the proceedings, including preventing abuse, preventing egregious
`mistakes, promoting comity within the PTO and with the courts, etc. See, e.g., 35 U.S.C. §§ 324 and 326.
`Without taking a position on the merits of the arguments in the Ethicon case, we do not see how an
`irrevocable delegation of supervisory authority is consistent with the plain language of the AIA, id., and the
`Director’s further statutory responsibility to “provid[e] policy direction and management supervision for the
`Office,” 35 U.S.C. § 3(a)2(A).
`
`Indeed, such an irrevocable delegation would leave an entire portion of the Office to operate independently
`and without supervision. This creates a number of problems, including inconsistencies between different
`portions of the Office. For example, the institution decision on § 101 in our case is inconsistent with the
`Office’s public guidance on § 101 in examination guidelines. July 2015 Update Appendix 1: Examples, Ex. 23.
`
`In addition, your response regarding delegation of the matters we have written about in our letters dated
`August 10, 2015, October 23, 2015, October 30, 2015, and February 5, 2016 is inconsistent with statements
`made by the PTO in other matters. For example, in the Ethicon case, the PTO argued that the party there
`waived issues because it could have “raised its challenge directly to the Director,” but didn’t. Attached Brief at
`19. The PTO brief also suggests that patent owners could request panel changes to the Director. Accordingly,
`TT requests that the Director reconsider her position on delegation and actually substantively address the
`issues raised in TT's previous letters. This request is especially appropriate in light of the new AIA rules
`announced by the USPTO today and in light of Director Lee's comments yesterday, in which she denounced
`litigation abuse by defendants. As mentioned in our letters, if the conduct outlined in the letters by
`petitioners does not constitute abuse, it is hard to imagine what would.
`
`If the Director declines to reconsider her position on delegation, TT will likely file a petition requesting the
`Director to suspend any delegation of her authority to the PTAB for the following matters: CBM2015‐
`00161, CBM2015‐00172, CBM2015‐00179, CBM2015‐00181, CBM2015‐00182, CBM2016‐00009, CBM2016‐
`00031, CBM2016‐00032, CBM2016‐00035, CBM2016‐00040 and CBM2016‐00051. This course of action was
`suggested in the PTO's Ethicon brief. Attached, at p. 19.
`
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`1
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`TRADING TECH EXHIBIT 2102
`TRADESTATION v. TRADING TECH
`CBM2015-00161
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`Page 1 of 3
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`With that being said, in the meantime can you please explain how TT should raise the issues raised in our
`letters or other supervisory issues that have arisen since then to the PTAB? Obviously, we have already filed
`responses in the regular course of the proceedings. We are not aware of a mechanism under the rules to raise
`these issues with the Chief Judge. Is the suggestion that we write the Chief Judge directly or file a petition
`with the Chief Judge? We are concerned that the regulation on petitions to the Chief Judge, 37 CFR § 41.3, as
`written can be interpreted as precluding a petition to the Chief Judge on such matters. First, it is located in
`section 41 of the CFR, whereas PTAB trials are governed by section 42. Second, the scope provision references
`proceedings under section 41 but does not reference trials under section 42. 37 CFR § 41.3(b). Third, the
`Petitioners may argue that some of our requests fall under the exception for “procedural issues.” 37 CFR §
`41.3(b)(2). We would like clarity on whether petitions related to such matters could be filed with the Chief
`Judge.
`
`
`Thanks,
`
`
`Steve Borsand
`
`
`
`---------------------------------------------------------------------
`Steven F. Borsand
`Executive Vice President, Intellectual Property
`Trading Technologies, Inc.
`ph: +1.312.476.1018
`fax: +1.312.476.1182
`steve.borsand@tradingtechnologies.com
`----------------------------------------------------------------------
`
`
`On Fri, Feb 19, 2016 at 5:27 PM, Houser, Robert C. <Robert.Houser@uspto.gov> wrote:
`
`Dear Mr. Borsand:
`
`
`
`
`
`Thank you for your correspondence of February 5, 2016, informing Director Lee of your concerns about PTAB
`CBM Proceeding No. CBM 2015-0061. This message is to let you know that the Director has delegated issues
`such as those raised in your letter to the PTAB, and that you should raise them in that forum. I greatly
`appreciate your understanding and continued strong and cooperative relationship in working with the USPTO.
`
`
`
`
`
`Robert C. Houser
`
`Office of the Under Secretary and Director
`
`United States Patent and Trademark Office
`
`Department of Commerce
`
`600 Dulany Street
`
`Alexandria, Virginia 22314
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`(571) 272-7630
`j57| ) 272-7630
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