Paper: _____
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`Filed: September 16, 2015
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`TRADESTATION GROUP, INC. AND
`TRADESTATION SECURITIES, INC.
`
`Petitioner
`v.
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` TRADING TECHNOLOGIES INTERNATIONAL, INC.
`
`Patent Owner
`_________________
`Case CBM2015-00161
`U.S. Patent 6,766,304 B2
`_________________
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`PATENT OWNER’S MOTION FOR
` ADDITIONAL DISCOVERY
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`Filed: September 16, 2015
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`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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`PATENT OWNER’S MOTION FOR
` ADDITIONAL DISCOVERY
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`I.
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`Case CBM2015-00161
`U.S. Patent 6,766,304
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`
`CONTENTS
`
`BACKGROUND ............................................................................................ 2
`
`II. TT PRESENTS GOOD CAUSE FOR ADDITIONAL
`DISCOVERY UNDER THE BLOOMBERG FACTORS .......................... 3
`A. More Than a Mere Possibility or Allegation that Something
`Useful Will Be Found Exists ................................................................. 4
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`1.
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`2.
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`3.
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`4.
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`Petitioner and CQG Acknowledge Their Coordination in
`Preparing Petitions ...................................................................... 5
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`Petitioner Is Acting as CQG’s Proxy .......................................... 6
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`RPX Illustrates Why the Board Should Grant Additional
`Discovery .................................................................................... 7
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`JP Morgan Presents Different Circumstances Than This
`Case ............................................................................................. 9
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`B.
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`C.
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`D.
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`E.
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`TT Does Not Seek Litigation Positions or Underlying Bases ............11
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`TT Cannot Generate the Equivalent Information by Other
`Means ..................................................................................................11
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`TT’s Instructions Are Easily Understandable .....................................11
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`TT’s Request Is Not Overly Burdensome ...........................................12
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`III. TT DOES NOT SEEK PRIVILEGED INFORMATION .......................12
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`IV. CONCLUSION ............................................................................................15
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`
`
`ii
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`TABLE OF AUTHORITIES
`
`Case CBM2015-00161
`U.S. Patent 6,766,304
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`
` Page(s)
`
`Cases
`Bethune-Hill v. Va. State Bd. of Elections,
`-- F. Supp. 3d --, 2015 WL 3404869 (E.D. Va. May 26, 2015) ......................... 13
`
`In re EchoStar Commc’ns Corp.,
`448 F.3d 1294 (Fed. Cir. 2006) .................................................................... 12, 14
`
`In re Grand Jury Subpoenas,
`902 F.2d 244 (4th Cir. 1990) .............................................................................. 14
`
`Lanigan v. Boston Terminal Corp.,
`112 F. Supp. 957 (D. Mass. 1953) ...................................................................... 10
`
`Northern N. Trust Co. v. Bunge Corp.,
`899 F.2d 591 (7th Cir. 1990) .............................................................................. 10
`
`Rowland v. Patterson,
`882 F.2d 97 (4th Cir. 1989) ................................................................................ 10
`
`U.S. v. Jones,
`696 F.2d 1069 (4th Cir. 1982) ............................................................................ 13
`
`Board Authority
`Bloomberg Inc. v. Markets-Alert Pty. Ltd.,
`CBM2013-00005, Paper 32 (May 29, 2013) .............................................. 4, 9, 15
`
`CQG v. Trading Techs.,
`CBM2015-00057, Paper 13 (July 10, 2015) ............................................... 2, 6, 10
`
`CQG v. Trading Techs.,
`CBM2015-00057, Paper 15 (Sept. 16, 2015) ................................................. 2, 10
`
`Garmin Int’l, Inc. v. Cuozzo Speed Techs. LLC,
`IPR2012-00001, Paper 26 (Mar. 5, 2013) ...................................................... 4, 12
`
`In re Guan, Control No. 95/001,045, Decision Vacating Filing Date,
`2008 WL 10682851 (P.T.O. Aug. 25, 2008) ................................................ 4, 8, 9
`iii
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`
`
`
`
`IBG LLC v. Trading Techs.,
`CBM2015-00179, Paper 9 (Sept. 2, 2015) ......................................................... 10
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`Case CBM2015-00161
`U.S. Patent 6,766,304
`
`
`JP Morgan Chase & Co. v. Maxim Integrated Products, Inc.,
`CBM2014-00179, Paper 11 (Feb. 20, 2015) .................................................. 9, 10
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`RPX Corp. v. VirnetX Inc.,
`IPR2014-00171, Redacted Motion for Additional Discovery,
`Paper 18 (Jan. 27, 2014) ....................................................................................... 8
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`RPX Corp. v. VirnetX Inc.,
`IPR2014-00171, Paper 33 (Feb. 20, 2014) ..................................................... 8, 12
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`RPX Corp. v. VirnetX Inc.,
`IPR2014-00171, Redacted Order, Paper 57 (June 5, 2014) ............................. 7, 8
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`TD Ameritrade v. Trading Techs.,
`CBM2014-00136, Paper 19 (Dec. 2, 2014) .......................................................... 2
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`Federal Statutes
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`35 U.S.C. § 101 ........................................................................................................ 10
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`35 U.S.C. § 315 .......................................................................................................... 7
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`35 U.S.C. § 322(a)(2) ................................................................................................. 3
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`35 U.S.C. § 325(a) ............................................................................................. 2, 3, 6
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`Rules
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`Fed. R. Civ. P. 26(b)(3) ............................................................................................ 14
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`Regulations
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`37 C.F.R. § 42.224(a) ................................................................................................. 3
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`37 C.F.R. § 42.302(c) ............................................................................................. 3, 6
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`Other Authorities
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`1-3 Moore’s Federal Practice – Civil § 3.02[4][a]................................................... 10
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`Trial Practice Guide, 77 Fed. Reg. 48759 ................................................ 1, 3, 4, 7, 13
`iv
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`
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`As authorized by Paper 11, Patent Owner Trading Technologies International,
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`Case CBM2015-00161
`U.S. Patent 6,766,304
`
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`Inc. (“TT”) hereby moves for additional discovery related to the real parties-in-
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`interest (“RPI”). TT requests the following discovery from Petitioner:1
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`All communications and agreements between TradeStation and
`CQG relating to the filing or preparation of any post-grant
`proceedings (filed or anticipated) of any TT patent, or other
`documents referencing such communications and agreements
`between TradeStation and CQG.
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`The Board should grant this discovery because Petitioner acknowledges
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`coordinating with CQG and because this issue is dispositive—if CQG is an RPI,
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`the statute bars institution. While Petitioner’s admissions in the corresponding
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`litigation alone should be sufficient to find RPI, additional discovery will provide
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`the Board a more complete picture of the facts because the RPI inquiry is fact
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`dependent. Trial Practice Guide, 77 Fed. Reg. 48756, 48760 (Aug. 14, 2012). For
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`example, Petitioner admits that it “took steps” to avoid the RPI issue. Ex. 2010 at
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`16:14. But the sufficiency of the “steps” cannot be evaluated absent an
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`understanding of how Petitioner and CQG conducted themselves. Accordingly, TT
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`1 In TT’s original discovery request (Ex. 2012), it also sought court documents. TT
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`limits this motion, however, to the communications and agreements between CQG
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`and Petitioner and documents referencing those communications.
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`1
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`requires the discovery it now seeks.
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`I.
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`BACKGROUND
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`Case CBM2015-00161
`U.S. Patent 6,766,304
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`TT sued Petitioner for patent infringement in February 2010, alleging
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`infringement of U.S. Patent No. 6,766,304 (“the ’304 patent”) and other patents. At
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`the same time, TT also sued CQG on several patents, but CQG had previously filed
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`a declaratory judgment (“DJ”) action on the ’304 patent and another patent in
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`2005. CQG and Petitioner remain defendants in these pending litigations. The ’304
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`patent has been unsuccessfully challenged three times at the U.S. Patent and
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`Trademark Office:
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`• Reexam No. 90/008,577—patentability of claims 1-40 confirmed,
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`• CBM2014-00136—institution denied on the merits (TD Ameritrade v.
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`Trading Techs., CBM2014-00136, Paper 19 (Dec. 2, 2014), reh’g
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`denied), and
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`• CBM2015-00057—denied because that petitioner, CQG, previously
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`filed a DJ action, barring institution under 35 U.S.C. § 325(a)(1) (CQG
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`v. Trading Techs., CBM2015-00057, Paper 13 (July 10, 2015), reh’g
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`denied).
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`Ten days after the Board denied institution of CQG’s petition, Petitioner
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`filed the present petition, which is a substantial copy of CQG’s, including the
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`identical expert report. During those ten days, Petitioner and CQG twice told the
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`2
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`district court that they are coordinating the filing of petitions at the U.S. Patent
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`Case CBM2015-00161
`U.S. Patent 6,766,304
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`Office. See Ex. 2002 at 3; Ex. 2003 at 8. Petitioner’s counsel has explained to the
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`Board that “[i]n this case it’s simply coordinated efforts between now three,
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`originally four, defendants.” Ex. 2010 at 12:8-10. In addition to this general
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`coordination, counsel indicated that Petitioner is coordinating with CQG in at least
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`one matter already—CBM2015-00179. Ex. 2010 at 12:19-13:2. Indeed,
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`CBM2015-00179 names Petitioner, CQG, and IBG as RPIs. Based on this
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`evidence of Petitioner and CQG’s coordination, CQG is likely an RPI to this
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`proceeding, which precludes institution of the petition for failure to name all RPIs
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`under 35 U.S.C. § 322(a)(2). The identification of all RPIs—including CQG—
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`further bars institution under 35 U.S.C. § 325(a)(1), as decided in CBM2015-
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`00057. The proper identification of RPI is a threshold issue under 35 U.S.C.
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`§§ 322(a)(2) and 325(a) and 37 C.F.R. § 42.302(c). Accordingly, addressing the
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`issue of RPI early in the proceeding is warranted. See Trial Practice Guide, 77 Fed.
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`Reg. at 48759.
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`II. TT PRESENTS GOOD CAUSE FOR ADDITIONAL DISCOVERY
`UNDER THE BLOOMBERG FACTORS
`Requests for additional discovery may be granted if the party seeking the
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`discovery shows “good cause as to why the discovery is needed.” 37 C.F.R.
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`§ 42.224(a). Here, TT seeks discovery related to factual matters surrounding
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`3
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`U.S. Patent 6,766,304
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`acknowledged coordination by Petitioner and CQG, which relates to whether CQG
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`is an RPI. When deciding whether to grant additional discovery in CBM
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`proceedings, the Board generally applies the same five factors from Garmin
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`International, Inc. v. Cuozzo Speed Technologies LLC, IPR2012-00001, Paper 26
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`(Mar. 5, 2013), with “slight[]” modifications. Bloomberg Inc. v. Markets-Alert Pty.
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`Ltd., CBM2013-00005, Paper 32 at 4 (May 29, 2013). Because each of the
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`Bloomberg factors is satisfied here, TT’s request should be granted.
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`A. More Than a Mere Possibility or Allegation that Something
`Useful Will Be Found Exists
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`“[T]he ‘real party-in-interest’ is the party that desires review of the patent.”
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`Trial Practice Guide, 77 Fed. Reg. at 48759. An RPI includes a “party or parties at
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`whose behest the petition has been filed.” Id.; In re Guan, Control No. 95/001,045,
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`Decision Vacating Filing Date, 2008 WL 10682851, at *8 (P.T.O. Aug. 25, 2008)
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`(“An entity named as the sole real party in interest may not receive a suggestion
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`from another party that a particular patent should be the subject of a request for
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`inter partes reexamination and be compensated by that party for the filing of the
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`request for inter partes reexamination of that patent without naming the party who
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`suggest[ed] and compensated the entity for the filing of a request for inter partes
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`reexamination of the patent.”). The evidence presently available to TT implicates
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`CQG as an RPI because CQG has an ongoing interest in the outcome of this
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`4
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`Case CBM2015-00161
`U.S. Patent 6,766,304
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`proceeding, has coordinated with Petitioner with respect to USPTO filings, and the
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`petition and expert report are substantive clones of CQG’s own denied petition.
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`Given that CQG and Petitioner made statements to the district court admitting to
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`coordination prior to the filing this copycat petition, more than a mere possibility
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`or allegation exists that communications were exchanged regarding a coordinated
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`effort. This information will be useful to demonstrate how CQG should have been
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`named as an RPI, which depends on the facts surrounding the coordination.
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`1.
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`Petitioner and CQG Acknowledge Their Coordination in
`Preparing Petitions
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`Petitioner admits that it and CQG are coordinating filing strategies and
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`working together to prepare petitions against TT’s patents. For example, Petitioner
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`and CQG jointly submitted briefs to the district court requesting “a short period of
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`time to coordinate on these PTAB actions.” Ex. 2002 at 3 (emphasis added).
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`Petitioner and CQG explained some of the division of the patents for USPTO
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`filings, including that “[f]or CQG’s part, it is preparing to file CBMR petitions on
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`the ’411, ’374, ’768, and ’724 patents in the next several weeks.” Ex. 2003 at 8
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`(emphasis added). These two statements implicate further communications
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`between CQG and Petitioner, which TT seeks by this motion. Each of the
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`communications in which they “coordinate on these PTAB actions” is a fact that
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`should be considered when determining whether CQG is an RPI. Ex. 2002 at 3.
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`5
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`Such communications necessarily exist because, prior to filing Exhibits 2002 and
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`Case CBM2015-00161
`U.S. Patent 6,766,304
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`2003 with the district court, Petitioner and CQG determined that CQG would file
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`petitions against four of TT’s patents. These discussions likely include the ’304
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`patent, which CQG is barred from challenging in post-grant proceedings.
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`Petitioner Is Acting as CQG’s Proxy
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`2.
`CQG’s petition was denied because CQG is barred under 35 U.S.C.
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`§ 325(a)(1). See CQG v. Trading Techs., CBM2015-00057, Paper 13 (July 10,
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`2015) (denying institution); see also id., Paper 15 (Sept. 16, 2015) (denying
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`rehearing). As part of the admitted coordination amongst the defendants, CQG
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`cannot pursue the arguments it developed against the ’304 patent in CBM2015-
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`00057. But, the petition here is a substantive clone of CQG’s barred petition.
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`Compare Petition, Paper 2 (July 20, 2015) with Ex. 2011, CQG Petition,
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`CBM2015-00057, Paper 3 (Jan. 9, 2015). Petitioner admits that the “petition and
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`its exhibits, including the declaration of Dr. Mellor, are substantially identical to
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`CQG’s petition and exhibits,” absent removal of the declaratory judgment section.
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`Pet. at 4 (emphasis added). Because CQG’s bar would extend to Petitioner if the
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`criteria for real party-in-interest is satisfied, TT requires the requested discovery to
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`further demonstrate CQG’s and Petitioner’s coordination. 35 U.S.C. § 325(a)(1)
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`(barring “the petitioner or real party in interest”); 37 C.F.R. § 42.302(c) (same).
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`Furthermore, as acknowledged by Petitioner, Exhibit 1013 (expert report of
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`6
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`Dr. Mellor) is identical to the expert report filed in CQG’s denied petition. Pet. at
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`Case CBM2015-00161
`U.S. Patent 6,766,304
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`4. As a result, CQG effectively prepared and paid for both the expert report and the
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`underlying arguments in the petition.
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`Although Petitioner is correct that an entity is not a real party-in-interest
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`“based solely on its participation in [a joint defense group],” participation in a joint
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`defense group does not immunize parties from an RPI inquiry, which is highly fact
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`specific. Trial Practice Guide, 77 Fed. Reg. at 48760. Importantly, the issue for the
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`Board to decide with this motion is not whether CQG is an RPI; the issue is
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`whether TT has shown good cause to receive additional discovery surrounding the
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`facts that will allow the Board to determine whether CQG is an RPI.
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`3.
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`RPX Illustrates Why the Board Should Grant Additional
`Discovery
`The Board’s previous decision in RPX Corp. v. VirnetX Inc., IPR2014-
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`00171,2 illustrates why discovery is warranted in this case. In RPX, Apple was
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`barred from filing petitions under 35 U.S.C. § 315. Redacted Order, Paper 57 at 3-
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`4, 3 n.4 (June 5, 2014). Apple and RPX held discussions in which RPX agreed “to
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`challenge patents of questionable quality through post-grant proceedings at the
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`U.S. Patent and Trademark Office” and paid RPX for these services. Id. at 4-5. The
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`2 Similar decisions were issued in parallel proceedings IPR2014-00172
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`through IPR2014-00177.
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`7
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`agreement between RPX and Apple also identified other, non-post-grant review
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`Case CBM2015-00161
`U.S. Patent 6,766,304
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`tasks that RPX would perform. Id. at 5. After RPX filed its petitions, VirnetX
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`sought additional discovery, which the Board granted. RPX, IPR2014-00171,
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`Redacted Motion for Additional Discovery, Paper 18 (Jan. 27, 2014) and Order,
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`Paper 33 (Feb. 20, 2014). In its decision regarding RPI, the Board applied In re
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`Guan and explained that an “entity named as the sole real party in interest may not
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`receive a suggestion from another party that a particular patent should be the
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`subject of a request for inter partes reexamination and be compensated by that
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`party for the filing of the request . . . without naming the party who suggested the
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`inter partes reexamination” as a real party in interest. Paper 57 at 7 (emphasis in
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`original) (quoting In re Guan, Reexam Control No. 95/001,045 (Aug. 25, 2008)).
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`Here, Petitioner admits that it and CQG are coordinating the filing of
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`petitions at the USPTO. See, e.g., Ex. 2002 at 3; Ex. 2003 at 8; Ex. 2010 at 12:19-
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`13:2. (“In this case it’s simply coordinated efforts between now three, originally
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`four, defendants” and “There’s also no question that in at least one case that CQG
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`and the Petitioner in this case have cooperated. We filed for co-petitioners on it, on
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`a -- the petition for the -- CBM petition for the ’056 patent. We can see that. We
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`don’t deny it.”). All of these statements and facts demonstrate that Petitioner and
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`CQG, like Apple and RPX, have discussed coordinating the filing of post-grant
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`review petitions against TT’s patents. Dividing efforts is payment in-kind and is no
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`8
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`different than dividing the costs of each proceeding. And, the coordination
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`Case CBM2015-00161
`U.S. Patent 6,766,304
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`discussions could include CQG’s suggestion that Petitioner challenge the ’304
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`patent and effective funding of the expert preparation, which are prohibited under
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`In re Guan and RPX without naming CQG as an RPI.
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`The discovery of statements delineating this coordination will be “useful” to
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`TT in preparing its defenses because they will likely be “favorable in substantive
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`value” to TT’s contention that CQG is an unnamed RPI in this proceeding.
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`Bloomberg, CBM2013-00005, Paper 32 at 5.
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`4.
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`JP Morgan Presents Different Circumstances Than This
`Case
`Petitioner has several times referred to the Board’s decision in JP Morgan
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`Chase & Co. v. Maxim Integrated Products, Inc., CBM2014-00179, Paper 11 (Feb.
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`20, 2015).3 JP Morgan presents different facts because the alleged RPI—PNC
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`Bank—had settled and no longer had any interest in the outcome of the proceeding
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`and the petition “present[ed] different prior art and arguments.” Id. at 7, 13. Here,
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`CQG maintains an interest in the present proceeding as CQG remains involved in
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`3 Petitioner described JP Morgan as a “precedential decision.” Pet. at 7. It is not.
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`See Precedential Decisions, U.S. Patent and Trademark Office, available at
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`http://www.uspto.gov/patents-application-process/appealing-patent-
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`decisions/decisions-and-opinions/precedential.
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`9
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`the co-pending district court action, had its own petition on the same grounds
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`Case CBM2015-00161
`U.S. Patent 6,766,304
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`denied (CBM2015-00057, Paper 13 (Aug. 10, 2015); id., Paper 15 (Sept. 16,
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`2015)), and has filed a joint petition with Petitioner against another of TT’s
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`patents, U.S. Patent No. 7,533,056 (CBM2015-00179, Paper 9 (Sept. 2, 2015)).
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`The district court also ruled that CQG failed to show that the ’304 patent is invalid
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`under 35 U.S.C. § 101. See Ex. 2006. Thus, unlike JP Morgan, CQG has an
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`interest in the present proceeding because it remains a defendant in the district
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`court, CQG’s own petition on the same grounds was denied, and the instant
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`petition represents an attempt to re-litigate arguments that CQG lost in the district
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`court.4
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`Regardless, the issue before the Board at this time is not whether CQG is, in
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`fact, an RPI, but whether TT has shown good cause that additional discovery of
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`4 Even if CQG were to abandon its own efforts at the USPTO with respect to the
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`’304 patent, or if it were to settle in the district court, “[j]urisdiction of the court
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`depends on the circumstances that exist at the time the action is commenced.” 1-3
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`Moore’s Federal Practice – Civil §3.02[4][a] (citing Lanigan v. Boston Terminal
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`Corp., 112 F. Supp. 957, 957-58 (D. Mass. 1953); Rowland v. Patterson, 882 F.2d
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`97, 99 (4th Cir. 1989); N. Trust Co. v. Bunge Corp., 899 F.2d 591, 596 (7th Cir.
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`1990)).
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`10
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`information relating to the RPI inquiry is warranted. Based on the information
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`Case CBM2015-00161
`U.S. Patent 6,766,304
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`presented by TT, there is “more than a mere possibility or allegation” that
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`something “useful” will be discovered.
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`TT Does Not Seek Litigation Positions or Underlying Bases
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`B.
`TT is not seeking litigation positions or underlying bases. TT seeks the
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`factual communications related to how Petitioner and CQG determined who would
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`file petitions on each of TT’s patents, including the ’304 patent. TT’s requests do
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`not implicate district court litigation positions or litigation strategies by either
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`Petitioner or CQG. Nor do TT’s requests implicate legal theories related to the
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`substance of the challenges set forth in the petition or to Petitioner’s or CQG’s
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`positions in any proceedings.
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`C. TT Cannot Generate the Equivalent Information by Other Means
`The documents sought are neither public nor publicly available. TT seeks
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`communications and agreements between CQG and Petitioner related to the filing
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`of the post-grant proceedings. TT is not a party to these communications or
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`agreements and cannot access them, except through the requested discovery.
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`D. TT’s Instructions Are Easily Understandable
`TT’s request is straightforward. TT seeks communications and agreements
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`between CQG and TradeStation that relate to the filing of post-grant proceedings
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`against TT’s patents, whether those proceedings have been filed or are anticipated
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`11
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`being filed, and documents referencing those communications and agreements.
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`Case CBM2015-00161
`U.S. Patent 6,766,304
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`Ex. 2012, e-mail from K. Rodkey to J. Phillips dated Sept. 1, 2015. Such a request
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`is easily understood. To the extent Petitioner believes there is ambiguity or a lack
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`of clarity, TT will work with Petitioner to clarify the scope of the request.
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`TT’s Request Is Not Overly Burdensome
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`E.
`TT’s request is not burdensome and production should not inconvenience
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`Petitioner. Although the requested documents will detail the coordination between
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`CQG and Petitioner, the volume is not expected to be large or difficult to produce.
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`Such documents would normally be stored electronically and could easily be
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`produced to TT. Accordingly, the time and burden on Petitioner should be
`
`negligible. See Garmin, IPR2012-00001, Paper 26 at 7.
`
`III. TT DOES NOT SEEK PRIVILEGED INFORMATION
`Petitioner has suggested that the communications sought are privileged.
`
`Ex. 2010 at 14:1-4, 15:13-15. The Board has previously permitted discovery of
`
`communications between a petitioner and a third party with respect to RPI issues.
`
`RPX v. VirnetX, IPR2014-00171, Paper 33 at 3. Petitioner should not be able to
`
`object on the basis of privilege, through which it can selectively disclose certain
`
`information while withholding other information. See In re EchoStar Commc’ns
`
`Corp., 448 F.3d 1294, 1301 (Fed. Cir. 2006). Petitioner raises two grounds of
`
`possible privilege: attorney-client privilege and work product doctrine. Neither
`
`
`
`12
`
`
`
`doctrine precludes discovery here.
`
`Case CBM2015-00161
`U.S. Patent 6,766,304
`
`
`With respect to attorney-client privilege, the doctrine requires, among other
`
`things, that “the asserted holder of the privilege is or sought to become a client”
`
`and that the communication is “for the purpose of securing primarily either (i) an
`
`opinion on law or (ii) legal services or (iii) assistance in some legal proceeding,
`
`and not for the purpose of committing a crime or tort.” Bethune-Hill v. Va. State
`
`Bd. of Elections, -- F. Supp. 3d --, 2015 WL 3404869, at *17 (E.D. Va. May 26,
`
`2015) (quoting U.S. v. Jones, 696 F.2d 1069, 1072 (4th Cir. 1982)). Petitioner has
`
`not asserted that CQG is a client of Petitioner’s counsel, and therefore the
`
`threshold requirement—client communication—is not met. If Petitioner asserts that
`
`it was providing CQG legal advice in these proceedings or accepting legal advice
`
`on the grounds raised in them, this fact weighs in favor of finding RPI. In addition,
`
`if CQG’s communications with Petitioner or its counsel were for the purposes of
`
`securing legal opinions, legal services, or assistance in this proceeding (e.g., the
`
`very scope of the requested discovery), this further implicates CQG as an RPI
`
`because it demonstrates that CQG either controlled or had the opportunity to
`
`control the petition or that CQG is “the party that desires review of the patent.”
`
`Trial Practice Guide, 77 Fed. Reg. at 48759.
`
`To the extent Petitioner asserts a joint defense or common interest privilege,
`
`that privilege is an extension of attorney-client privilege and requires satisfying the
`
`
`
`13
`
`
`
`applicable requirements of another privilege. In re Grand Jury Subpoenas, 902
`
`Case CBM2015-00161
`U.S. Patent 6,766,304
`
`
`F.2d 244, 249 (4th Cir. 1990) (“the joint defense or common interest rule
`
`presupposes the existence of an otherwise valid privilege”). As explained above,
`
`satisfying the requisite prongs of attorney-client privilege implicates CQG as an
`
`RPI.
`
`The work product doctrine protects “‘documents and tangible things’
`
`prepared in anticipation of litigation that are both non-privileged and relevant.” In
`
`re EchoStar, 448 F.3d at 1301 (citing Fed. R. Civ. P. 26(b)(3)). This doctrine,
`
`however, “is not absolute” and “a party may discover certain types of work product
`
`if they have a ‘substantial need of the materials in the preparation of the party's
`
`case and that the party is unable without undue hardship to obtain the substantial
`
`equivalent . . . by other means.’” In re EchoStar, 448 F.3d at 1301-02; Fed. R. Civ.
`
`P. 26(b)(3). This exception permits discovery of “factual” and “non-opinion” work
`
`product, but does not allow discovery of “mental impressions, conclusions,
`
`opinions, or legal theories of an attorney or other representative.” In re EchoStar,
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`448 F.3d at 1302; Fed. R. Civ. P. 26(b)(3). TT does not seek any attorney’s mental
`
`impressions. Instead it seeks factual information about the coordination with a
`
`third party (CQG) with respect to post-grant filings, for example, how Petitioner
`
`and CQG determined which party would file against which of TT’s patents.
`
`To the extent any of the requested documents contain privileged or work
`
`
`
`14
`
`
`
`product information, the Board should grant the discovery, and Petitioner can
`
`Case CBM2015-00161
`U.S. Patent 6,766,304
`
`
`redact the privileged portions and provide a detailed privilege log so that TT and
`
`the Board can evaluate the privilege claim.
`
`IV. CONCLUSION
`Because TT has shown that good cause for additional discovery exists and
`
`each of the Bloomberg factors is satisfied, TT requests that the Board order
`
`Petitioner to produce the following documents and a privilege log for any withheld
`
`or redacted documents:
`
`All communications and agreements between TradeStation and
`CQG relating to the filing or preparation of any post-grant
`proceedings (filed or anticipated) of any TT patent, or other
`documents referencing such communications and agreements
`between TradeStation and CQG.
`
`Dated: September 16, 2015
`
`Respectfully submitted,
`
`By: /Kevin D. Rodkey/
`Kevin D. Rodkey, Back Up Counsel
`Reg. No. 65,506
`Counsel for Patent Owner
`Trading Technologies International, Inc.
`
`
`
`
`
`15
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`
`
`CERTIFICATE OF SERVICE
`
`Case CBM2015-00161
`U.S. Patent 6,766,304
`
`The undersigned hereby certifies that a copy of the foregoing Patent
`
`Owner’s Motion for Additional Discovery and corresponding Exhibits 2011-
`
`2012 were served on September 16, 2015, via email directed to counsel of record
`
`for the Petitioner at the following:
`
`
`John C. Phillips
`phillips@fr.com
`
`Kevin Su
`CBM41919-0005CP1@fr.com
`
`
`
`Date: September 16, 2015
`
`/Bradley Moore/
`Bradley Moore
`Litigation Clerk
`
`Finnegan, Henderson, Farabow, Garrett &
`Dunner, LLP
`
`
`
`16
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