Trials@uspto.gov
`571.272.7822
`
` Paper No. 76
`
` Entered: July 19, 2016
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`IBG LLC, INTERACTIVE BROKERS LLC,
`TRADSTATION GROUP, INC., TRADESTATION SECURITIES, INC.,
`TRADESTATION TECHNOLOGIES, INC., and IBFX, INC.,
`Petitioner,
`
`v.
`
`TRADING TECHNOLOGIES INTERNATIONAL, INC.,
`Patent Owner.
`
`CBM2015-00161 (Patent No. 6,766,304 B2)1
`CBM2015-00172 (Patent No. 7,783,556 B1)
`CBM2015-00179 (Patent No. 7,533,056 B2)2
`CBM2015-00181 (Patent No. 7,676,411 B2)
`CBM2015-00182 (Patent No. 6,772,132 B1)
`
`
`
`
`Before SALLY C. MEDLEY, MEREDITH C. PETRAVICK, and
`JEREMY M. PLENZLER, Administrative Patent Judges.
`
`Per Curiam.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`1 Case CBM2016-00035 has been joined with this proceeding.
`2 Case CBM2016-00040 has been joined with this proceeding.
`
`
`
`
`
`
`
`

`

`CBM2015-00161 (Patent 6,766,304 B2)
`CBM2015-00172 (Patent 7,783,556 B1)
`CBM2015-00179 (Patent 7,533,056 B2)
`CBM2015-00181 (Patent 7,676,411 B2)
`CBM2015-00182 (Patent 6,772,132 B1)
`
`
`
`On July 15, 2016, a conference call was held involving counsel for
`Petitioner, counsel for Patent Owner, and Judges Medley, Petravick, and
`Plenzler. The purpose of the call was for Patent Owner to seek authorization
`to file an Offer of Proof, pursuant to FRE 103(a)(2) & (b). For the reasons
`that follow, Patent Owner’s request is denied.
`
`The patents in these proceedings also are involved in the district court
`proceeding TT v. BGC Partners, Inc., et al., No. 1:10-cv-00715 (N.D. Ill.).
`See, e.g., Paper 9, 3.3 The district court proceeding was stayed, however,
`Patent Owner requested, and was granted a partial lift of the stay for limited
`discovery purposes. Ex. 2142, 29. As Patent Owner indicated (Paper 67, 2),
`that discovery period ended June 10, 2016. Due Dates for filing Patent
`Owner Responses were extended (Paper 63) to accommodate Patent Owner,
`in the event Patent Owner desired to use any of the district court evidence in
`these proceedings.
`The evidence from the district court proceeding, which is the subject
`of this request, is in Patent Owner’s possession, but is under a protective
`order in the district court proceeding. Ex. 2335, 21:15–21. According to
`Patent Owner, the district court protective order precludes the use of this
`evidence in Board proceedings. Ex. 2140, 5:19–22. The place to seek relief
`from such a protective order is in the district court. See Paper 74, 10. In
`other words, a district court can rule to lift its own protective order such that
`parties to a proceeding before the Board may then use such protected district
`court documents in a Board proceeding. When asked why Patent Owner
`
`
`3 Citations are to CBM2015-00179.
`
`2
`
`

`

`CBM2015-00161 (Patent 6,766,304 B2)
`CBM2015-00172 (Patent 7,783,556 B1)
`CBM2015-00179 (Patent 7,533,056 B2)
`CBM2015-00181 (Patent 7,676,411 B2)
`CBM2015-00182 (Patent 6,772,132 B1)
`
`
`
`was asking the Board for the relief from the district court protective order
`during the call requesting authorization to file the motion for additional
`discovery, Patent Owner indicated that it “believe[d] there was a motion
`filed in the District Court action, but that hasn’t been acted on.” Ex. 2140,
`5:19–24. Accordingly, we were led to believe that Patent Owner sought
`such relief from the district court. See Paper 74, 10. When asked during the
`call regarding the request to file an offer of proof, Patent Owner could not
`clearly articulate whether such a request had ever been made to the district
`court.4 See Ex. 2335, 14:14–15:11, 16:14–20, 17:2–12, 18:5–6. Based on
`the record before us, it appears that Patent Owner did not request relief from
`the district court protective order, but instead, made the litigation decision to
`file a motion for additional discovery in these proceedings. Ex. 2335, 15:5–
`11. Nevertheless, the motions for additional discovery were ultimately
`denied primarily for reasons divorced from whether Patent Owner requested
`relief from the district court protective order. Paper 74.
`Notwithstanding the denial of the motion for additional discovery,
`Patent Owner was free to submit the same evidence it sought through means
`
`
`4 During the call, Petitioner indicated that on June 13, 2016 Patent Owner
`filed, in the district court, a first motion to modify the protective order for
`the limited purpose of submitting some of the evidence with the motion for
`additional discovery. The first motion was withdrawn on June 14, 2016.
`According to Petitioner, a second motion was filed to modify the protective
`order for the limited purpose of an offer of proof. The district court granted
`the second motion on July 7, 2016 for the limited purpose of filing an offer
`of proof. Ex. 2335, 6:6–7:2. The record does not indicate whether Patent
`Owner requested general relief from the protective order in its first or second
`motion.
`
`3
`
`

`

`CBM2015-00161 (Patent 6,766,304 B2)
`CBM2015-00172 (Patent 7,783,556 B1)
`CBM2015-00179 (Patent 7,533,056 B2)
`CBM2015-00181 (Patent 7,676,411 B2)
`CBM2015-00182 (Patent 6,772,132 B1)
`
`
`
`of additional discovery provided the district court granted it relief from the
`district court protective order. But, as indicated above, Patent Owner does
`not appear to have timely made such a request. Rather, on June 26, 2016,
`Patent Owner filed its Patent Owner Responses without the protected district
`court proceeding evidence. Apparently, sometime after that, Patent Owner
`sought, and received, relief from the district court protective order for the
`limited purpose of filing an offer of proof, along with the evidence.
`In essence, because Patent Owner now has evidence it seeks to file in
`these proceedings due to the limited relief from the district court protective
`order, Patent Owner argues that it is proper to present such evidence under
`the guise of an offer of proof under FRE 103(a)(2) & (b).
`Analysis
`Our rules provide that generally, the Federal Rules of Evidence apply
`to the types of proceedings before us here. 37 C.F.R. § 42.62(a). Patent
`Owner argues that to preserve the issue for appeal of whether we abused our
`discretion in denying it additional discovery, it must file an offer of proof
`under FRE 103(a)(2) & (b). Patent Owner argues that this is the proper
`mechanism in a district court proceeding to claim error of an evidentiary
`ruling for appeal purposes. However, Patent Owner did not provide a legal
`basis for doing the same in these proceedings. AIA proceedings are not the
`same as district court proceedings. See, e.g., Cuozzo Speed Techs. LLC v.
`Lee, No. 15–446, 2016 WL 3369425, at *2 (U.S. June 20, 2016) (explaining
`that an AIA proceeding is “less like a judicial proceeding and more like a
`specialized agency proceeding”). Moreover, even if a party can file an offer of
`proof in an AIA proceeding under 37 C.F.R. § 42.62(a), Patent Owner has not
`
`4
`
`

`

`CBM2015-00161 (Patent 6,766,304 B2)
`CBM2015-00172 (Patent 7,783,556 B1)
`CBM2015-00179 (Patent 7,533,056 B2)
`CBM2015-00181 (Patent 7,676,411 B2)
`CBM2015-00182 (Patent 6,772,132 B1)
`
`
`
`demonstrated sufficiently why such an offer of proof is appropriate based on
`the facts before us.
`Federal Rule of Evidence 103 is directed to “Rulings on Evidence.”
`The text of FRE 103(a)(2) is directed to preserving a claim of error and
`indicates that “[a] party may claim error in a ruling to admit or exclude
`evidence only if the error affects a substantial right of the party and . . . (2) if
`the ruling excludes evidence, a party informs the court of its substance by an
`offer of proof, unless the substance was apparent from the context.” Federal
`Rule of Evidence 103(b) states that “[o]nce the court rules definitively on
`the record—either before or at trial—a party need not renew an objection or
`offer of proof to preserve a claim of error for appeal.” An offer of proof
`relates to rulings made by a court in admitting evidence or excluding
`evidence. Here, Patent Owner argues that we erred in excluding evidence
`when we denied its motion for discovery. Ex. 2335, 8:16–23. Patent
`Owner’s argument is misplaced as we did not exclude any evidence from the
`record of these proceedings. Rather, we denied Patent Owner’s motion
`seeking additional discovery, e.g., seeking to have Petitioner produce in
`these proceedings the same evidence Patent Owner obtained through
`discovery in the district court. We could not have excluded something that
`was never part of the record in the first place. Accordingly, Patent Owner’s
`argument is not persuasive.
`We also note that with the proposed offer of proof, Patent Owner
`seeks to file new evidence in these proceedings, but acknowledges that those
`Exhibits would not affect this proceeding. Ex. 2335, 9:8–20. The proper
`mechanism for introducing new evidence into the record at this stage of the
`
`5
`
`

`

`CBM2015-00161 (Patent 6,766,304 B2)
`CBM2015-00172 (Patent 7,783,556 B1)
`CBM2015-00179 (Patent 7,533,056 B2)
`CBM2015-00181 (Patent 7,676,411 B2)
`CBM2015-00182 (Patent 6,772,132 B1)
`
`
`
`proceeding would be by requesting authorization to submit a motion for
`supplemental information and supplemental briefing. Based on the record
`before us, we are apprised of no persuasive reason to include evidence in the
`record that is not relied on by either party in the proceeding.
`We also are not persuaded that the necessity to file an offer of proof
`could not have been avoided by Patent Owner. As noted above, during the
`call requesting authorization to file its motion for additional discovery,
`Patent Owner appeared to represent that relief from the district court
`protective order was being sought from the district court. Based on the
`record before us, however, Patent Owner has not shown good cause that it
`timely made such efforts to receive the relief from the protective order. Had
`it done so, it could have filed such exhibits in support of its Patent Owner
`Responses.
`
`Order
`
`It is
`ORDERED that Patent Owner’s request to file an offer of proof is
`denied.
`
`
`6
`
`

`

`CBM2015-00161 (Patent 6,766,304 B2)
`CBM2015-00172 (Patent 7,783,556 B1)
`CBM2015-00179 (Patent 7,533,056 B2)
`CBM2015-00181 (Patent 7,676,411 B2)
`CBM2015-00182 (Patent 6,772,132 B1)
`
`
`
`
`PETITIONER:
`
`Robert Sokohl
`Rsokohl-ptab@skgf.com
`
`Lori Gordon
`Lgordon-ptab@skgf.com
`
`Jonathan Strang
`Jstrang-ptab@skgf.com
`
`Richard Bemben
`Rbemben-ptab@skgf.com
`
`Michael Rosato
`mrosato@wsgr.com
`
`Matthew A. Argenti
`margenti@wsgr.com
`
`John Phillips
`phillips@fr.com
`
`Kevin Su
`CBM41919-0005CP1@fr.com
`
`
`PATENT OWNER:
`
`Erika Arner
`Erika.arner@finnegan.com
`
`Joshua Goldberg
`Joshua.goldberg@finnegna.com
`
`Kevin Rodkey
`Kevin.rodkey@finnegan.com
`
`Rachel Emsley
`Rachel.emsley@finnegan.com
`
`
`
`
`7
`
`

`

`CBM2015-00161 (Patent 6,766,304 B2)
`CBM2015-00172 (Patent 7,783,556 B1)
`CBM2015-00179 (Patent 7,533,056 B2)
`CBM2015-00181 (Patent 7,676,411 B2)
`CBM2015-00182 (Patent 6,772,132 B1)
`
`
`
`Michael Gannon
`gannon@mbhb.com
`
`Leif Sigmond
`sigmond@mbhb.com
`
`Steven Borsand
`tt-patent-cbm@tradingtechnologies.com
`
`
`
`
`
`
`8
`
`