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.
`Petitioners
`
`TRADING TECHNOLOGIES INTERNATIONAL, INC.
`Patent Owner
`
`CBM20 15-00179
`Patent 7,533,056
`
`PETITIONERS’ MOTION TO STAY THE
`CO-PENDING EX PARTE REEXAMINATION
`
`Mail Slop "PATENT BOARD "
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 223 13-1450
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`IBG LLC; INTERACTIVE BROKERS LLC;
`TRADESTATION GROUP, INC.; TRADESTATION SECURITIES,
`INC.; TRADESTATION TECHNOLOGIES, INC.; and IBFX, INC.
`Petitioners
`
`TRADING TECHNOLOGIES INTERNATIONAL, INC.
`Patent Owner
`
`CBM20 15-00179
`Patent 7,533,056
`
`PETITIONERS’ MOTION TO STAY THE
`CO-PENDING EX PARTE REEXAMINATION
`
`Mail Slop "PATENT BOARD "
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 223 13-1450
`
`
`
`CBM20 15-00179
`U.S. Pat. No. 7,533,056
`As authorized by the Board on April 8, 2016 (Paper 37 at 3), Petitioners
`
`request that the Board exercise its authority under 35 U.S.C. § 325(d) and 37
`
`C.F.R. § 42.222(a) to stay co-pending Reexamination Control No. 90/013,578. As
`
`correctly explained in Patent Owner’s prior motion, the issues in the reexamination
`
`overlap completely with this CBM review. (Paper 32 at 3.) A stay is warranted
`
`here to avoid potentially inconsistent outcomes. If the reexamination proceeds in
`
`parallel, the Central Reexamination Unit will be put in the uniquely difficult
`
`position of evaluating the same issues while a trial record develops before the
`
`Board. The reexamination is still in its early stages and no final action has issued.
`
`While Patent Owner represents that it will amend, it has not yet done so. Nor has
`
`Patent Owner clarified whether it intends to amend the claims under review, or
`
`merely add new claims to the patent. Regardless, Patent Owner will have the same
`
`opportunity once the Board completes its review and lifts any stay. Accordingly,
`
`judicial economy strongly favors staying the co-pending reexamination.
`
`Petitioners contacted counsel for Patent Owner and counsel stated that
`
`Patent Owner intends to oppose this motion to stay the reexamination.
`
`I. The reexamination is still in its early stages and the CRU should have
`an opportunity to consider the Board’s assessment of the issues.
`
`In this proceeding, the Board instituted trial on claims 1-15 based on,
`
`inter
`
`alia, TSE, Togher, Schott, and Cooper. (Institution Decision at 31.) The CRU
`
`initiated exparte reexamination and issued a First Office Action rejecting claims
`
`-1-
`
`
`
`CBM20 15-00179
`U.S. Pat. No. 7,533,056
`1-15 based on TSE, Togher, and Schott. (Ex. 2037 at 4.) Accordingly, as Patent
`
`Owner agrees (Paper 32 at 3), there is complete overlap between the claims and
`
`grounds at issue in this proceeding and the co-pending reexamination.
`
`A response to the CRU’s First Office Action is apparently due on April 28,
`
`2016, in view of an extension of time sought by Patent Owner.
`
`(See Paper 32 at 2
`
`n. 1.) Patent Owner has not yet responded. While reexaminations are conducted
`
`with special dispatch, the CRU has authority to grant extensions of time, and they
`
`have done so in this instance. The Board similarly has a statutory mandate to issue
`
`a final written decision in this review no later than one year from institution, which
`
`is projected to fall on February 24, 2017. See 35 U.S.C. § 316(a)(1 1); 37 C.F.R. §
`
`42.100(c). Thus, while both tribunals must conduct their proceedings justly and
`
`speedily, the reexamination remains in its early stages(cid:151)whereas this proceeding is
`
`scheduled to reach a final written decision on the merits in less than a year.
`
`1
`
`If the reexamination proceeds in parallel, the CRU will be put in the difficult
`
`position of interpreting the same issues being litigated before the Board without the
`
`1 The Office’s most recent statistics indicate that the average pendency of an
`
`exparte reexamination is 22.3 months. (Ex. 1047 at 1.) The Office’s statistics do
`
`not specify whether this number includes both appealed and unappealed cases. And
`
`the most recent statistics on exparte reexamination appeals to the Board suggest an
`
`18 month pendency from Notice of Appeal to a final decision. (Ex. 1048 at 1.)
`
`-2-
`
`
`
`CBM201 5-00179
`U.S. Pat. No. 7,533,056
`benefit of the record before the Board, or the Board’s assessment of the issues. At
`
`the present time, the reexamination is awaiting action by the Patent Owner and the
`
`CRU has not yet issued a final decision. As such, there is a prime opportunity for
`
`the CRU to suspend its judgment and allow the Board to rule on common issues.
`
`The CRU should be given the benefit of the Board’s insight on these matters, and
`
`not be put in the position of unnecessarily reaching an inconsistent conclusion.
`
`II. Staying the reexamination will avoid inconsistent outcomes, eliminate
`duplicative analysis, and prevent wasting of the Board’s resources.
`
`Conducting the reexamination concurrently with this proceeding duplicates
`
`efforts and could produce inconsistent results. Patent Owner’s intent to amend does
`
`not weigh in favor of allowing these proceedings to run in parallel. To the contrary,
`
`the Board has repeatedly cited the possibility of amendment during an
`
`exparte
`
`reexamination as a factor weighing in favor of a stay, given that amendment would
`
`likely waste Office resources: "[B]ecause all the challenged claims also are being
`
`reexamined, the Patent Owner could amend those claims, which could change the
`
`scope of the challenged claims while the Board is conducting its review."
`
`The
`
`Scotts Company LLCv. Encap, LLC, 1PR2013-00110, Paper 10 (May 13, 2013).2
`
`2 See also CB Distributors, Inc. et at. v. Ryuan Investments (Holdings)
`
`Limited, 1PR2013-00387, Paper 6 (Jan. 24, 2013); Invue Security Products Inc. v.
`
`Merchandising Technologies, Inc., 1PR2013-00122, Paper 15 (Apr. 2, 2013);
`
`Lumondi Inc. v. Lennon Image Technologies LLC, 1PR2013-00432, Paper 7 (Aug.
`
`-3-
`
`
`
`CBM201 5-00 179
`U.S. Pat. No. 7,533,056
`Another relevant consideration is that, should the Board find the challenged
`
`claims unpatentable in this review, Patent Owner would be estopped from taking
`
`action that is inconsistent with the adverse judgment, including obtaining "a claim
`
`that is not patentably distinct from a finally refused or canceled claim" under 37
`
`C.F.R. § 42.73(d)(3). A stay of the co-pending reexamination pending termination
`
`or completion of this proceeding will prevent the CRU from expending significant
`
`time and resources evaluating claims that may be subject to such an estoppel.
`
`III. Patent Owner has not yet amended and will have an opportunity to
`enter any amendments after the Board has concluded its review.
`
`And even if the Board is persuaded that Patent Owner’s intent to amend
`
`weighs in favor of denying a stay, that intent is still speculative. Patent Owner has
`
`not submitted a response to the First Office Action. Patent Owner has not indicated
`
`whether it intends to amend the claims in this review, or whether it intends to add
`
`new claims(cid:151)or both. Furthermore, Patent Owner will have an opportunity to take
`
`such action after the Board has concluded its review. Granting a stay in this case
`
`will not deprive Patent Owner of that opportunity. Patent Owner could have filed
`
`its amendment earlier but elected to move for an extension of time, request a stay,
`
`only to withdraw its request for a stay, and then oppose a stay based on its alleged
`
`6,2013); Google Inc. v. Grandeye Ltd., 1PR2013-00547, Paper 7 (Sept. 30, 2013);
`
`Goertek, Inc. et al. v. Knowles Electronics, LLC,
`
`IPR2013-00614, Paper 11 (Nov.
`
`13, 2013) (noting that this would be an "inefficient use of Office resources.")
`
`-4-
`
`
`
`CBM20 15-00179
`U.S. Pat. No. 7,533,056
`intent to amend. All of this underscores why the Board’s decision on whether to
`
`stay the co-pending reexamination should not depend on Patent Owner’s intent.
`
`Rather, the Board’s decision whether or not to stay a co-pending proceeding
`
`should be based on objective principles of judicial economy. Prior Board decisions
`
`have evaluated whether to stay a co-pending reexamination based on the following
`
`factors: (1) overlap of the patents at issue; (2) overlap of the claims at issue; (2)
`
`overlap of the prior art and grounds; (3) status of the reexamination relative to the
`
`Board’s review; (4) duplication of efforts; and (5) potential for inconsistent results.
`
`See, e.g., Google Inc. v. Summit 6LLC, IPR2015-00806, Paper 26 (Oct. 7, 2015).
`
`All of these factors weigh in favor of stay, most of which Patent Owner has already
`
`conceded(cid:151)notwithstanding its intent to oppose this motion. (Paper 32 at 2-4.)
`
`Finally, the reexamination requester will not suffer any prejudice because
`
`the same issues are being considered in this proceeding. The reexamination is
`
`ex
`
`parte and the requester has no further opportunity to participate. If for some reason
`
`this CBM review is terminated, the Board may lift the stay and the reexamination
`
`can proceed. Accordingly, all objective and equitable considerations favor a stay.
`
`- 5 -
`
`
`
`CBM20 15-00179
`U.S. Pat. No. 7,533,056
`In sum, Petitioners respectfully request that the Board exercise its discretion
`
`and authority under 35 U.S.C. § 325(d) and 37 C.F.R. § 42.222(a) to stay control
`
`No. 90/013,578 pending termination or completion of this proceeding.
`
`Respectfully submitted,
`S RNE, KESSLER, GOLDSTEIN & Fox P.L.L.C.
`
`obert F. Sokohi
`Registration No. 36,013
`Attorney for Petitioners
`
`Date: April 15, 2016
`
`1100 New York Avenue, N. W.
`Washington, D.C. 20005
`(202) 371-2600
`
`
`
`CBM20 15-00179
`U.S. Pat. No. 7,533,056
`CERTIFICATION OF SERVICE
`
`The undersigned hereby certifies that the foregoing PETITIONERS’
`
`MOTION TO STAY THE CO-PENDING EX PARTE REEXAMINATION
`
`was served electronically via e-mail on April 15, 2016, in its entirety on the
`
`following counsel of record for Patent Owner:
`
`Erika H. Amer (Lead Counsel)
`Joshua L. Goldberg (Back-up Counsel)
`Kevin D. Rodkey (Back-up Counsel)
`Rachel L. Ernsley (Back-up Counsel)
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
`erika. arner(finnegan. corn
`I oshua.goldberg@finnegan.com
`kevin.rodkey(2finnegan. corn
`rachel. emsley@finnegan. corn
`trading-tech-CBM(finnegan.corn
`
`Steven F. Borsand (Back-up Counsel)
`Trading Technologies International, Inc.
`tt-patent-cbrn(ZItradingtechnologies .com
`
`STERNE, KESSLER, GOLDSTEIN & Fox P.L.L.C.
`
`Robert E. Sokohl
`Registration No. 36,013
`Attorney for Petitioners
`
`Date: April 15, 2016
`
`1100 New York Avenue, N.W.
`Washington, D.C.20005
`(202) 371-2600
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