Paper No.
`Filed: September 23, 2016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`
`TRADESTATION GROUP, INC.,
`TRADESTATION SECURITIES, INC., IBG LLC, and
`INTERACTIVE BROKERS LLC,
`
`Petitioners
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`v.
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` TRADING TECHNOLOGIES INTERNATIONAL, INC.,
`
`Patent Owner
`_________________
`
`Case CBM2015-001611
`U.S. Patent 6,766,304 B2
`_________________
`
`PATENT OWNER’S MOTION TO EXCLUDE
`UNDER 37 C.F.R. 42.64(C)
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`1 Case CBM2016-00035 has been joined with this proceeding.
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`Filed: September 23, 2016
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`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`
`TRADESTATION GROUP, INC.,
`TRADESTATION SECURITIES, INC., IBG LLC, and
`INTERACTIVE BROKERS LLC,
`
`Petitioners
`
`v.
`
` TRADING TECHNOLOGIES INTERNATIONAL, INC.,
`
`Patent Owner
`_________________
`
`Case CBM2015-001611
`U.S. Patent 6,766,304 B2
`_________________
`
`PATENT OWNER’S MOTION TO EXCLUDE
`UNDER 37 C.F.R. 42.64(C)
`
`
`
`
`
`
`
`
`
`
`
`
`1 Case CBM2016-00035 has been joined with this proceeding.
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`CBM2015-00161
`Patent No. 6,766,304
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`
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`TABLE OF CONTENTS
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`I. Preliminary Statement ....................................................................................... 1
`II. Standard ............................................................................................................... 1
`III. TSE (Ex. 1016) Should Be Excluded ............................................................... 2
`A. TT Timely Objected to TSE, Which Was Relied Upon in
`Petitioners’ Petition .......................................................................................... 2
`B. TSE Has Not Been Authenticated under FRE 901 .......................... 2
`C. TSE is Irrelevant under FRE 401 ...................................................... 2
`i. TSE is irrelevant because it is not Prior Art .................................. 3
`ii. TSE would still be irrelevant if it were Prior Art .......................... 4
`IV. The TSE Translation (Ex. 1017) Should be Excluded ................................... 5
`A. TT Timely Objected to the TSE Translation, Which Was Relied
`Upon in Petitioners’ Petition ........................................................................... 5
`B. The TSE Translation is inadmissible because the O’Connell
`affidavit does not comply with the rules ........................................................ 5
`V. Certain Deposition Testimony of TT’s Expert Dan Olsen (Ex. 1025) Should
`be Excluded ............................................................................................................... 7
`A. TT Timely Objected to the Deposition Testimony, Which Was
`Relied Upon in Petitioners’ Reply .................................................................. 7
`B. The Probative Value of the Testimony at Pages 57 and 58 is
`Outweighed by a Danger of Prejudice and Confusing the Issues under
`FRE 403 ............................................................................................................. 8
`
`
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`ii
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`CBM2015-00161
`Patent No. 6,766,304
`
`I.
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`Preliminary Statement
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`Pursuant to 37 C.F.R. §§ 42.64(c) and 42.61(a) and the Federal Rules of
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`Evidence, Patent Owner Trading Technologies International, Inc. (“TT”), moves to
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`exclude TSE (Ex. 1016), because Petitioners have failed to meet the authentication
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`requirements of FRE 901 and because TSE is irrelevant under FRE 401.
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`TT also moves to exclude the English translation of TSE (Ex. 1017),
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`because the translation fails to comply with the requirements of 37 C.F.R.
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`§ 42.63(b) and FRE 104(b) and 602-604. The affidavit of Ms. O’Connell (Ex.
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`1018), which purportedly certifies the translation, is defective because it was not
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`made by a person having personal knowledge of the translation. Because this
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`defect is not curable by supplemental evidence, all of the TSE translation should be
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`excluded.
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`In addition, TT moves to exclude certain deposition testimony of TT’s
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`expert Dan Olsen (Ex. 1025) under FRE 403 because its probative value is
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`substantially outweighed by a danger of unfair prejudice and confusing the issues
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`as the result of vague questioning.
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`II.
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`Standard
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`A Motion to Exclude must (a) identify where in the record the objection was
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`made, (b) identify where in the record the evidence sought to be excluded was
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`relied upon by an opponent, (c) address objections to exhibits in numerical order,
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`1
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`CBM2015-00161
`Patent No. 6,766,304
`and (d) explain the objection. Trial Practice Guide, 77 Fed. Reg. 48,756, 48,767
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`(Aug. 14, 2012).
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`III. TSE (Ex. 1016) Should Be Excluded
`A. TT Timely Objected to TSE, Which Was Relied Upon in
`Petitioners’ Petition
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`TT timely objected to Exhibit 1016 in objections filed February 10, 2016.
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`Paper 32 at 2-3. Petitioners rely upon TSE (Ex. 1016) in their Petition for their 35
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`U.S.C. § 101 grounds. E.g., Petition, Paper 2, at 36.
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`TSE Has Not Been Authenticated under FRE 901
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`B.
`To satisfy the requirement of authenticating or identifying an item of
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`evidence, the proponent must produce evidence sufficient to support a finding that
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`the item is what the proponent claims it is. FRE 901(a). Petitioners have produced
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`no such evidence to support a finding that TSE is authentic. For example,
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`Petitioners have provided no testimony of a witness with knowledge under
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`901(b)(1). Nor have Petitioners shown that TSE is an ancient document under
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`901(b)(8). While the petition notes that TSE was “put out by the Tokyo Stock
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`Exchange . . . nearly 20 years ago,” nearly 20 years is insufficient to satisfy the
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`ancient document requirement of being “at least 20 years old when offered” and, in
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`any case, the nearly 20 years assertion is not supported by any evidence. See
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`Petition, Paper 2, at 36.
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`C. TSE is Irrelevant under FRE 401
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`2
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`CBM2015-00161
`Patent No. 6,766,304
`“Evidence is relevant if: (a) it has any tendency to make a fact more or less
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`probable than it would be without the evidence; and (b) the fact is of consequence
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`in determining the action.” FRE 401. TSE does not satisfy this requirement for any
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`fact of consequence to this proceeding.
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`i.
`In another proceeding, Petitioners filed a Reply to attempt to cure the
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`TSE is irrelevant because it is not Prior Art
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`deficiencies of its Petition with respect to TSE’s prior art status. CBM2015-00181,
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`Paper 105 at 10-14. The Reply improperly places the burden on Patent Owner to
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`show that TSE is not prior art. Id. at 10. That is the incorrect test. The proper
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`burden is on Petitioner to show that TSE is prior art. 35 U.S.C. § 326(e) (“the
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`petitioner shall have the burden of proving a proposition of unpatentability by a
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`preponderance of the evidence”).
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`Petitioners must show some evidence of prior art and they have not.
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`Furthermore, Petitioners allege that the cases cited by TT relate only to public use,
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`CBM2015-00181, Paper 105 at 13, but that is incorrect. They relate generally to 35
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`U.S.C. § 102.
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`Nor is it sufficient to allege that TSE was kept in the ordinary course of
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`business. See id. at 13. This is incorrect under the case law. The case cited by
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`Petitioners relies on the fact that there was “extensive uncontroverted evidence of
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`business practice that was sufficient to prove that [the alleged prior art] was widely
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`3
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`CBM2015-00161
`Patent No. 6,766,304
`available and accessible to the interested public before” the critical date. Constant
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`v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1568-69 (Fed.Cir. 1988) (citing
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`In re Hall, 781 F.2d 897, 899 (Fed. Cir. 1986) (finding library's general practice for
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`indexing, cataloging, and shelving theses to be persuasive evidence that the alleged
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`prior art was accessible prior to the critical date)). Petitioners have provided no
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`evidence that the requirements for availability (e.g., cataloguing, indexing) were
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`part of TSE’s ordinary course of business or that it was made available as part of
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`the ordinary course of business to another entity.
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`ii.
`Even if TSE were prior art, it would still be irrelevant because no prior art
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`TSE would still be irrelevant if it were Prior Art
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`grounds remain in the proceeding. Further, in spite of Petitioners’ attempt to use
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`TSE to show that certain aspects of electronic trading are “well-known” in the
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`context of its 35 U.S.C. § 101 grounds (See Petition, Paper 2, at 36), the Federal
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`Circuit recently held that the pertinent evidence pertains to whether the claimed
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`process is the same as the prior process performed by humans (i.e., the same as
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`what was done in the pits) or the claimed process is the process that must be used
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`to achieve the abstract result (i.e., the claimed process is the only way of “sending
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`of trade orders based on displayed market information, as well as updating the
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`market information”). McRo, Inc. v. Bandai Namco Games America Inc.,
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`No. 2015-1080, slip op. at 24-25. Thus, TSE is irrelevant to the 35 U.S.C. § 101
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`4
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`CBM2015-00161
`Patent No. 6,766,304
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`ground regardless of whether it is prior art.
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`As TSE is not prior art and, in any case, has no bearing on any instituted
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`ground, it fails to satisfy FRE 401. That is, it has no tendency to make a fact of
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`consequence in determining the action more or less probable than it would be
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`without the evidence. Accordingly, TSE (Exhibit 1016) should be excluded.
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`IV. The TSE Translation (Ex. 1017) Should be Excluded
`A. TT Timely Objected to the TSE Translation, Which Was Relied
`Upon in Petitioners’ Petition
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`TT timely objected to Ex. 1017 and to the affidavit of Ms. Courtney
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`O’Connell (Ex. 1018) in objections served February 10, 2016. Paper 32 at 2-5.
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`Petitioners rely upon the TSE Translation by virtue of their reliance upon TSE (Ex.
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`1016) in their Petition for their 35 U.S.C. § 101 grounds and the requirements of
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`37 C.F.R. § 42.63(b) and FRE 602-604. E.g., Petition, Paper 2 at 36.
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`B.
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`The TSE Translation is inadmissible because the O’Connell
`affidavit does not comply with the rules
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`Petitioners failed to provide a credible translation of TSE and failed to
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`conform with the Board’s rules for submitting translations of foreign language
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`documents. In particular, 37 C.F.R. § 42.63(b) requires that “[w]hen a party relies
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`on a document or is required to produce a document in a language other than
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`English, a translation of the document into English and an affidavit attesting to the
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`accuracy of the translation must be filed with the document.” (Emphasis added.)
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`Without such an affidavit, the Board cannot consider TSE. Zhongshan Broad
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`5
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`CBM2015-00161
`Patent No. 6,766,304
`Ocean Motor Co., Ltd. v. Nidec Motor Corp., IPR2014-01121, Paper 20 at 11-12
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`(January 21, 2015) (holding that because an affidavit was not filed with a
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`translation, the Board would not consider the reference).
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`The record lacks the required affidavit under Rule 42.63(b) attesting to the
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`accuracy of the TSE translation because Ms. O’Connell was not qualified to make
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`such an affidavit. See FRE 602 (requiring personal knowledge to testify to a
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`matter); FRE 603 and 604 (requiring truthful testimony and ability to make
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`accurate translations); FRE 104(b) (requiring proof that a fact exists where the
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`relevance of the evidence depends on the existence of a fact).When previously
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`deposed regarding her affidavit (Ex. 1018), Ms. O’Connell, a manager at
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`TransPerfect, was unable to personally attest to the accuracy of the translation.
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`Indeed, Ms. O’Connell admitted that she (1) speaks only English and, therefore,
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`cannot attest to the accuracy of a Japanese translation; (2) does not know which
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`pages were translated by any translator; and (3) did not perform a quality check on
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`the translations. CBM2014-00137 Ex. 2093 at 16:16-17, 38:8-39:1, 72:10-19. Ms.
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`O’Connell not only admitted that she cannot read Japanese, but also admitted that
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`the project manager, Courtney Edmunds, also could not verify the accuracy of the
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`translation because Ms. Edmunds cannot read Japanese and has no Japanese
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`translation experience. CBM2014-00137 Ex. 2093 at 74:1-15.
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`The O’Connell affidavit also fails to comply with the Board’s rules for a
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`6
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`CBM2015-00161
`Patent No. 6,766,304
`proper affidavit and lacks the required statements for perjury. See 37 C.F.R. § 1.68
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`(stating that a declaration may be used in lieu of an oath “if, and only if, the
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`declarant is on the same document, warned that willful false statements and the
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`like are punishable by fine or imprisonment.”); 37 C.F.R. § 42.2 (defining the term
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`“affidavit” in a CBM proceeding as an “affidavit or declaration under § 1.68 of this
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`chapter”); see 28 U.S.C. § 1746 (stating that unsworn declarations under penalty of
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`perjury may be used where a matter is required or permitted to be supported by
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`sworn declaration or affidavit); 37 C.F.R. § 42.2 (noting that “a declaration under
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`28 U.S.C. 1746 may be used as an affidavit” in a CBM proceeding). This non-
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`compliant affidavit is inadmissible for this additional reason. 37 C.F.R. § 42.61(a).
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`Accordingly, the Board cannot consider the TSE translation or TSE. Zhongshan
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`Broad Ocean Motor Co., Ltd., IPR2014-01121, Paper 20 at 11-12.
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`Based on the failure to comply with 37 C.F.R. 42.63, FRE 104(b), 401, 602,
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`603, and 604, Exhibits 1017 and 1018 should be excluded from the proceeding or,
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`at a minimum, given no weight.
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`V. Certain Deposition Testimony of TT’s Expert Dan Olsen (Ex. 1025)
`Should be Excluded
`A. TT Timely Objected to the Deposition Testimony, Which Was
`Relied Upon in Petitioners’ Reply
`
`TT timely objected to Exhibit 1025 during the deposition. Ex. 1025 at 57-58.
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`Petitioners rely upon pages 57 and 58 of the deposition transcript (Ex. 1025) in
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`7
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`CBM2015-00161
`Patent No. 6,766,304
`their Reply for their 35 U.S.C. § 101 grounds. Reply, Paper 98 at 10.
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`B.
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`The Probative Value of the Testimony at Pages 57 and 58 is
`Outweighed by a Danger of Prejudice and Confusing the Issues
`under FRE 403
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`The answers at page 57 and 58 were in response to vague and ambiguous
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`questions yielding irrelevant testimony that Petitioners are using in a confusing and
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`misleading manner to imply that the claimed inventions do not improve computers.
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`18 Q. Okay. Does the GUI in Figure 3 make
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`19 the computer run faster?
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`20 A. That's not the improvement claimed.
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`21 Q. I'm asking. That's the question I'm
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`22 asking.
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`1 A. It does not.
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`2 Q. Does it allow the computer to use less
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`3 energy?
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`4 MS. KURCZ: Objection, form.
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`5 BY MR. SOKOHL:
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`6 Q. Does the GUI in Figure 3 allow the
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`7 computer to use less energy?
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`8 A. That is not one of the claimed
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`9 improvements, no.
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`8
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`CBM2015-00161
`Patent No. 6,766,304
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`10 Q. Does the GUI in Figure 3 make the
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`11 computer more efficient relative to the network?
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`12 A. That's not one of the claimed
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`13 improvements, no.
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`Ex. 1025 at 57:18-58:13. Rather than admitting the claimed inventions do not
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`improve computers, Mr. Olsen was simply stating what was not explicitly recited
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`by the claims. The probative value of this testimony is thus substantially
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`outweighed by a danger of unfair prejudice and confusing the issues as the result of
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`vague questioning. Accordingly, it should be excluded under FRE 403.
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`
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`Date: September 23, 2016
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`
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`Respectfully Submitted,
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`
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`By:
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`
`
`/Joshua L. Goldberg/
`Joshua L. Goldberg (Reg. No. 59,369)
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`9
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`CERTIFICATE OF SERVICE
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`CBM2015-00161
`Patent No. 6,766,304
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`The undersigned hereby certifies that a copy of PATENT OWNER’S
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`MOTION TO EXCLUDE UNDER 37 C.F.R. 42.64(C) was served on
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`September 23, 2016, via email directed to counsel of record for the Petitioner at the
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`following:
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`Robert E. Sokohl
`rsokohl@skgf.com
`
`John C. Phillips
`phillips@fr.com
`
`Kevin Su
`CBM41919-0005CP1@fr.com
`
`Michael T. Rosato
`mrosato@wsgr.com
`
`Matthew A. Argenti
`margenti@wsgr.com
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`
`
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`Dated: September 23, 2016
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`
`
`/Valencia Daniel/
`Valencia Daniel
`Litigation Legal Assistant
`
`Finnegan, Henderson, Farabow, Garrett
`& Dunner, LLP
`
`
`
`10
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