`571.272.7822
`
`
`
`
` Paper No. 39
`
` Entered: April 15, 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.
`
`
`CBM2015-00179 (Patent No. 7,533,056 B2)
`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.
`
`MEDLEY, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`On April 14, 2016, Patent Owner contacted Board personnel seeking a
`
`ruling regarding a discovery dispute. In particular, the parties disagree as to
`
`
`
`
`
`
`
`CBM2015-00179 (Patent 7,533,056 B2)
`CBM2015-00181 (Patent 7,676,411 B2)
`CBM2015-00182 (Patent 6,772,132 B1)
`
`
`
`whether cross examination of Petitioner’s witness, Mr. Atsushi Kawashima,
`
`falls under the routine discovery rule or under the additional discovery rule.
`
`Background
`
`
`
`In these proceedings, a decision was made to institute review based in
`
`part on a prior art reference known as TSE. CBM2015-00179, Paper 23.1
`
`TSE is a Tokyo Stock Exchange publication published in Japanese.
`
`Ex. 1004. In support of its showing that TSE qualifies as prior art, Petitioner
`
`relies on November 21, 2005 deposition testimony of Atsushi Kawashima
`
`taken during litigation between Patent Owner and a third party, eSpeed, Inc.
`
`Ex. 1007.
`
`Patent Owner seeks to depose Mr. Kawashima. Petitioner believes
`
`that cross examination of Mr. Kawashima is not permitted per the routine
`
`discovery rule 37 C.F.R. § 42.51(b)(1). Further, according to Petitioner,
`
`Mr. Kawashima is unavailable. Patent Owner, on the other hand, seeks a
`
`ruling from the Board essentially indicating who is responsible for securing
`
`the availability of Mr. Kawashima. For the reasons that follow, we
`
`determine that Petitioner is responsible for producing Mr. Kawashima for
`
`cross examination.
`
`Analysis
`
`Cross examination of affidavit testimony is authorized under the
`
`routine discovery rule. 37 C.F.R. § 42.51(b)(1). We understand that
`
`Petitioner may be of the impression that cross examination of a witness
`
`whose testimony was obtained during a prior proceeding does not fall under
`
`the routine discovery rule, but rather falls under the rule for additional
`
`
`1 Citations are to CBM2015-00179.
`
`2
`
`
`
`CBM2015-00179 (Patent 7,533,056 B2)
`CBM2015-00181 (Patent 7,676,411 B2)
`CBM2015-00182 (Patent 6,772,132 B1)
`
`
`
`discovery, 37 C.F.R. § 42.51(b)(2). If the latter, the parties are of the
`
`impression that Patent Owner would need to file a motion for additional
`
`discovery, showing good cause why the cross examination of
`
`Mr. Kawashima is needed.
`
`Here, Petitioner relies on the prior Kawashima testimonial evidence in
`
`support of its Petitions. It is a pivotal part of Petitioner’s challenges based
`
`on TSE. Petitioner relies solely on the Kawashima testimony to show that
`
`TSE was publically available, and thus constitutes prior art. Based on the
`
`facts of these cases, we determine that it is Petitioner’s responsibility to
`
`secure the availability of Mr. Kawashima. Patent Owner is authorized to
`
`cross examine Mr. Kawashima. To the Extent that Petitioner is unable to
`
`produce Mr. Kawashima for cross examination, we will consider his
`
`unavailability in weighing his original testimony in our Final Written
`
`Decisions.
`
`It is
`
`Order
`
`ORDERED that Patent Owner is authorized to cross examine
`
`Mr. Atsushi Kawashima.
`
`
`
`3
`
`
`
`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
`
`
`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
`
`Steven Borsand
`tt-patent-cbm@tradingtechnologies.com
`
`
`
`
`4
`
`
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