Paper No. ____
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` Filed: April 22, 2016
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`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
`v.
` TRADING TECHNOLOGIES INTERNATIONAL, INC.
`
`Patent Owner
`_________________
`Case CBM2015-00179
`U.S. Patent 7,533,056
`_________________
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`PATENT OWNER’S OPPOSITION TO MOTION TO STAY
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` Filed: April 22, 2016
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`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
`v.
` TRADING TECHNOLOGIES INTERNATIONAL, INC.
`
`Patent Owner
`_________________
`Case CBM2015-00179
`U.S. Patent 7,533,056
`_________________
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`PATENT OWNER’S OPPOSITION TO MOTION TO STAY
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`Case CBM2015-00179
`U.S. Patent 7,533,056
`Patent Owner’s opportunity to amend its claims would be impinged if the
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`reexamination was stayed in favor of the CBM. In contrast, Petitioners would
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`suffer no prejudice from allowing the reexamination—a proceeding they have no
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`present involvement in—to move forward with the CBM. Indeed, although 37
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`C.F.R. § 42.20 mandates that “[t]he moving party has the burden of proof to
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`establish that it is entitled to the requested relief,” (emphasis added), Petitioners’
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`do not claim any such entitlement. This alone dooms their motion.
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`Rather than identifying even a single reason why they are entitled to the
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`requested relief, Petitioners advocate on behalf of the USPTO—namely the CRU.
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`Paper 40, pp. 1-5. But the CRU does not need Petitioners’ protection, particularly
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`where, as here, proceeding with the reexamination is in the best interest of
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`everyone, including the examiner, involved in the reexamination.
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`I.
`Significant resources have already been invested, and the reexamination
`is not in its early stages.
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`Both the CRU and Patent Owner have invested significant resources in
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`advancing the reexamination and becoming familiar with the relevant issues. The
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`examiner has not only issued an Office Action but has also participated in an
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`interview with Patent Owner. With Patent Owner’s response to the Office Action
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`is due in only one week, the examiner should not be forced set aside the
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`
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`1
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`Case CBM2015-00179
`U.S. Patent 7,533,056
`information currently in their brain to only have to relearn it months or years later.1
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`That would be the epitome of wasted resources and the opposite of judicial
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`economy.
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`II. A stay would prejudice Patent Owner’s ability to amend its claims.
`Patent Owner understands that the USPTO recently advocated for
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`simplification of the issues in co-pending AIA reviews through the use of other
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`mechanisms—such as reexaminations—to make amendments. Given the
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`complexity of the issues in this and the other proceedings involving the parties,
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`Patent Owner has been attempting to simplify the issues in this CBM. Indeed, as
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`part of negotiations with Petitioners, Patent Owner agreed to forgo filing a motion
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`to amend here—based on the availability of an opportunity to amend in the
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`reexamination—to facilitate an extension of the due dates for both parties’ papers
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`in the CBM. See Paper 43. Patent Owner should not now be penalized for doing so
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`by having its ability to amend its claims in the co-pending reexamination inhibited
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`through a stay of that proceeding.
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`1 No matter the outcome of this proceeding, the examiner will still need to
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`ultimately render an action on Patent Owner’s amended claims.
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`2
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`Case CBM2015-00179
`U.S. Patent 7,533,056
`III. A stay of the reexamination proceeding would significantly delay Patent
`Owner’s ability to amend the claims.
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`Despite recognizing Patent Owner’s statutory right to have its reexamination
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`amendments considered with special dispatch, Paper 40, p. 2; see also 35 U.S.C.
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`§ 305, Petitioners assert that Patent Owner will not be deprived of its statutory
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`right because it can amend after the proceeding, Paper 40, pp. 4-5. Petitioners
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`imply that Patent Owners are causing delay in the reexamination based on the one-
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`month extension of time Patent Owners were granted and the absence of an
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`amendment to date. Id. But, Patent Owner plans to file amendments in the
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`reexamination within the next week. And, the one-month delay is insignificant,
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`whereas the requested stay has the potential to delay Patent Owner’s ability to
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`amend for years. For example, it could be more than a year from now before an
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`appeal is filed for this proceeding (Feb. 24, 2017, being Petitioner’s projected
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`decision date, Paper 40, p. 2; 30 days after that date to request rehearing, 37 C.F.R.
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`§ 42.71(d)(2); 63 days after any decision on rehearing to file notice of appeal, 37
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`C.F.R. § 90.3(b)). And an appeal could take an additional year or more before it
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`returns to the PTAB (Fed. Cir. statistics currently reflect a 10 month average time
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`to panel decision, but any requests for rehearing, etc. could significantly extend the
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`appeal length). Indeed, given the picture Petitioners paint of the time it could take
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`to complete the reexamination, Paper 40, p. 2, and given this patent’s April 1999
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`priority date, a stay could eliminate Patent Owner’s ability to amend in the
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`3
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`Case CBM2015-00179
`U.S. Patent 7,533,056
`reexamination because the delay could cause the ’056 patent to expire prior to a
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`time in which a certificate of reexamination for any confirmed claim amendments
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`could issue. Accordingly, a stay has the potential to significantly prejudice Patent
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`Owner.
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`IV. Conclusion
`Accordingly, the Board should deny Petitioners motion to stay the
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`reexamination. Petitioners make no attempt to explain why they are entitled to the
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`relief they request and fail to point to any compelling reason that would justify a
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`stay of the reexamination proceeding now that Patent Owner has chosen that venue
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`to submit its claim amendments. Thus, given the potential prejudice to Patent
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`Owner’s statutory right to amend in the reexamination, the Board should deny
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`Petitioner’s motion to stay the reexamination.
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`Dated: April 22, 2016
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`Respectfully submitted,
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`By: /Rachel L. Emsley/
`Rachel L. Emsley, Back-up Counsel
`Reg. No. 63,558
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`Counsel for Patent Owner
`Trading Technologies International, Inc.
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`4
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`CERTIFICATE OF SERVICE
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`Case CBM2015-00179
`U.S. Patent 7,533,056
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`The undersigned hereby certifies that a copy of the foregoing Patent
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`Owner’s Opposition to Motion to Stay was served on April 22, 2016, via email
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`directed to counsel of record for the Petitioners at the following:
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`Robert Sokohl
`rsokohl-PTAB@skgf.com
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`Lori Gordon
`lgordon-PTAB@skgf.com
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`Richard Bemben
`rbemben-PTAB@skgf.com
`
`PTAB@skgf.com
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`
`
`Date: April 22, 2016
`
`/Ashley F. Cheung/
`Ashley F. Cheung
`Case Manager
`
`Finnegan, Henderson, Farabow, Garrett
`& Dunner, LLP
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