Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 31
`Entered: March 24, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`IBG LLC, INTERACTIVE BROKERS LLC,
`TRADESTATION GROUP, INC., TRADESTATION SECURITIES, INC.,
`TRADESTATION TECHNOLOGIES, INC., and IBFX, INC.,
`Petitioner,
`
`v.
`
`TRADING TECHNOLOGIES INTERNATIONAL, INC.,
`Patent Owner.
`
`Case CBM2015-00179
`Patent No. 7,533,056 B2
`
`Before MEREDITH C. PETRAVICK and JEREMY M. PLENZLER,
`Administrative Patent Judges.
`
`PETRAVICK, Administrative Patent Judge.
`
`
`
`
`
`
`
`
`
`
`
`DECISON
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`On March 23, 2016, a conference call was held between counsel for
`Petitioner, counsel for Patent Owner, and Judges Petravick and Plenzler.
`Petitioner requested the conference call to seek an extension of time to serve
`supplemental evidence pursuant to 37 C.F.R. § 42.64 or alternatively
`authorization to file a motion to submit supplemental information pursuant
`
`
`571-272-7822
`
`
`
`
`Paper 31
`Entered: March 24, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`IBG LLC, INTERACTIVE BROKERS LLC,
`TRADESTATION GROUP, INC., TRADESTATION SECURITIES, INC.,
`TRADESTATION TECHNOLOGIES, INC., and IBFX, INC.,
`Petitioner,
`
`v.
`
`TRADING TECHNOLOGIES INTERNATIONAL, INC.,
`Patent Owner.
`
`Case CBM2015-00179
`Patent No. 7,533,056 B2
`
`Before MEREDITH C. PETRAVICK and JEREMY M. PLENZLER,
`Administrative Patent Judges.
`
`PETRAVICK, Administrative Patent Judge.
`
`
`
`
`
`
`
`
`
`
`
`DECISON
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`On March 23, 2016, a conference call was held between counsel for
`Petitioner, counsel for Patent Owner, and Judges Petravick and Plenzler.
`Petitioner requested the conference call to seek an extension of time to serve
`supplemental evidence pursuant to 37 C.F.R. § 42.64 or alternatively
`authorization to file a motion to submit supplemental information pursuant
`
`
`
`CBM2015-00179
`Patent 7,533,056 B2
`
`to 37 C.F.R. § 42.123. Patent Owner also sought authorization to file a
`motion to stay related Reexamination Control No. 90/013,578 during the
`conference call. A court reporter was present on the conference call.
`i. Supplemental Evidence or Information
`
`On March 9, 2015, Patent Owner filed an objection to Exhibit 1007, a
`transcript of a Deposition of Atsushi Kawashima taken in connection with
`Trading Technologies International, Inc. v. eSpeed, Inc., Case No. 04-cv-
`5312 (N.D. Ill). Paper 30. During the call, Petitioner stated that it was
`attempting to contact Atsushi Kawashima to obtain supplemental evidence
`to respond to Patent Owner’s objection, as provided for by 37 C.F.R. §
`42.64(b)(2). Rule 42.64(b)(2) requires that supplemental evidence must be
`served within ten business days of service of the objection, which here,
`would be March 23, 2016. Petitioner stated that it “recently” made attempts,
`but was unable, to contact Atsushi Kawashima, who is most probably in
`Japan. Petitioner, thus, sought an extension of time to file supplemental
`evidence until April 15, 2016.
`
`Patent Owner opposed Petitioner’s request. Atsushi Kawashima’s
`testimony is relied upon to establish that Exhibit 1003, an operation guide to
`a trading terminal of the Tokyo Stock Exchange, is prior art. See Paper 9,
`21–22. According to Patent Owner, an extension to the time period for
`filing supplemental evidence is not appropriate because Petitioner should
`have known of the deficiencies of Atsushi Kawashima’s testimony prior to
`filing the Petition and Petitioner is allegedly attempting to cure, improperly,
`deficiencies of its prima facie case through supplemental evidence.
`
`Upon consideration of the parties’ contentions, we are not persuaded
`by Petitioner that deviating from 37 C.F.R. § 42.64(b)(2) by extending the
`
`2
`
`
`
`CBM2015-00179
`Patent 7,533,056 B2
`
`time for filing supplemental evidence is appropriate under these
`circumstances. The prior art status of Exhibit 1003 and the reliability of the
`testimony of Atshushi Kawashima was a contested in Trading Technologies
`International, Inc. v. eSpeed, Inc. and in related CBM2014-00131. See
`Paper 21, 61–62; Trading Technologies Int’l, Inc. v. TD Ameritrade Holding
`Corp., CBM2014-00131 (PTAB) (Paper 38, 33–34, Paper 48, 19–20).
`Petitioner, thus, should have been aware prior to filing of the Petition in this
`proceeding that it may need to locate Atsushi Kawashima if it relied upon
`the testimony in Exhibit 1007 to establish that Exhibit 1003 is prior art.
`Petitioner alternatively requested authorization to file a motion to
`submit supplemental information should it contact Atsushi Kawashima. At
`this time, Petitioner’s request is premature as Petitioner indicates that it has
`been unable to contact Atsushi Kawashima and, thus, is not in possession of
`such supplemental information. Should Petitioner possess such
`supplemental information, Petitioner may contact the Board to renew its
`request at that time.
`ii. Motion to Stay Related Reexamination
`Prior to this institution of covered business method patent review in
`
`this proceeding, Petitioner requested authorization to file a motion to
`terminate, consolidate, or stay Reexamination Control No. 90/013,5781.
`Paper 18, 4–5. The Board denied Patent Owner’s request as premature
`because the Board, at that time, had not decided whether to institute a
`review. Id. During the call, Patent Owner renewed its request for
`
`
`1 U.S. Patent No. 7,533,056 B2 is the subject of covered business method
`patent review CBM2015-00179 and the subject of Reexamination Control
`No. 90/013,578
`
`3
`
`
`
`CBM2015-00179
`Patent 7,533,056 B2
`
`authorization to file a motion stay the related reexamination. Petitioner did
`not oppose the request.
`
`Patent Owner may file a motion to stay Reexamination Control No.
`90/013,578 no later than March 31, 2016. Should Petitioner oppose the
`motion, the opposition must be filed no later than one week from the filing
`date of the motion. No reply is authorized at this time.
`
` Accordingly, it is:
`ORDERED that Petitioner’s request for an extension of time to file
`supplemental evidence is denied;
`FURTHER ORDERED that Petitioner’s request to file a motion to
`submit supplement information is denied; and
`FURTHER ORDERED that Patent Owner’s request to file a motion to
`stay the related reexamination is granted, the motion should be filed no later
`than March 31, 2016, and the opposition should be filed no later than one
`week from the filing date of the motion.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`4
`
`
`
`CBM2015-00179
`Patent 7,533,056 B2
`
`PETITIONER:
`Robert Sokohl
`Lori Gordon
`Jonathan Strang
`Richard Bemben
`STERNE, KESSLER, GOLDSTEIN & FOX
`Rsokohl-ptab@skgf.com
`Lgordon-ptab@skgf.com
`Jstrang-ptab@skgf.com
`Rbemben-ptab@sdgf.com
`PTAB@skgf.com
`
`
`PATENT OWNER:
`Erika H. Arner
`Joshua L. Goldberg
`Kevin D. Rodkey
`Rachel L. Emsley
`FINNEGAN, HENDERSON, FARABOW,
`GARRET & DUNNER, LLP
`erika.arner@finnegan.com
`joshua.goldberg@finnegan.com
`kevin.rodkey@finnegan.com
`rache.emsley@finnegan.com
`
`Steven F. Borsand
`TRADING TECHNOLOGIES INTERNATIONAL, INC.
`tt-patent-cbm@tradingtechnologies.com
`
`
`5
`
`
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