`
`From: Steve Borsand (TT) [mailto:steve.borsand@tradingtechnologies.com]
`Sent: Tuesday, July 19, 2016 4:31 PM
`To: Houser, Robert C.
`Cc: Arner, Erika; John Phillips; Rob Sokohl; rsokohl-PTAB@skgf.com; mrosato@wsgr.com
`Subject: Re: PTAB CBM Proceeding No. CBM 2015-0061.
`
`Mr. Houser -
`
`Based on recent developments (as well as the original bases for our letters to Director Lee),
`we urgently need a response to the questions set forth in my April 1, 2016 letter to you
`(which is below).
`
`At a minimum, we need to immediately know the proper procedure to raise supervisory
`issues of the sort discussed in my previous letters with the Chief Judge.
`
`Thanks,
`
`Steve
`
`---------------------------------------------------------------------
`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, Apr 1, 2016 at 4:54 PM, Steve Borsand (TT)
`<steve.borsand@tradingtechnologies.com> wrote:
`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
`
`
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`Page 1 of 3
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`TRADING TECH EXHIBIT 2342
`TRADESTATION v. TRADING TECH
`CBM2015-00161
`
`
`
`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.
`
`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
`
`
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`Page 2 of 3
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`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
`(571) 272-7630
`
`
`
`
`
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`Page 3 of 3