Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 52
`Entered: May 2, 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.,
`Petitioners,
`
`v.
`
`TRADING TECHNOLOGIES INTERNATIONAL, INC.,
`Patent Owner.
`____________
`
`CBM 2015-00179
`Patent 7,533,056 B2
`_______________
`
`
`Before SALLY C. MEDLEY, MEREDITH C. PETRAVICK, and
`JEREMY M. PLENZLER, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`
`DECISION
`Denying Motion to Stay Concurrent Ex Parte Reexamination
`35 U.S.C. § 325(d); 37 C.F.R. § 42.222(a)
`
`
`
`
`
`
`
`
`
`Tel: 571-272-7822
`
`Paper 52
`Entered: May 2, 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.,
`Petitioners,
`
`v.
`
`TRADING TECHNOLOGIES INTERNATIONAL, INC.,
`Patent Owner.
`____________
`
`CBM 2015-00179
`Patent 7,533,056 B2
`_______________
`
`
`Before SALLY C. MEDLEY, MEREDITH C. PETRAVICK, and
`JEREMY M. PLENZLER, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`
`DECISION
`Denying Motion to Stay Concurrent Ex Parte Reexamination
`35 U.S.C. § 325(d); 37 C.F.R. § 42.222(a)
`
`
`
`
`
`
`
`
`
`
`CBM2015-00179
`Patent 7,533,056 B2
`
`On April 15, 2016, Petitioner filed a Motion to Stay Reexamination
`
`Control Number 90/013,578 (“the Reexamination”), a pending
`reexamination proceeding of the involved patent here, U.S. Patent No.
`7,533,056 B2 (“the ’056 patent”). Paper 40 (“Motion” or “Mot.”). On April
`22, 2016, Patent Owner filed an opposition. Paper 47 (“Opposition” or
`“Opp.”). For the reasons that follow, the Motion is denied.
`BACKGROUND
`On February 24, 2016, we instituted a covered business method patent
`
`review of claims 1–15 of the ’056 patent on the ground that claims 1–15 are
`unpatentable under 35 U.S.C. §103 over TSE1, Togher2, Schott3, and
`Cooper4, along with two other grounds. Paper 23 (“Inst. Dec.”).
`
`Reexamination of the ’056 patent was granted on September 22, 2015
`and a rejection of claims 1–15 under 35 U.S.C. § 103 over TSE, Togher, and
`Schott was made on January 28, 2016. Ex. 2037. Patent Owner filed a
`response on April 24, 2016 in which, among other things, Patent Owner
`presented new claims 16–66. Ex. 3001.5
`ANALYSIS
`Under 35 U.S.C. § 325(d) and 37 C.F.R. § 42.222(a), the Board,
`
`
`
`
`1TOKYO STOCK EXCHANGE OPERATION SYSTEM DIVISION, FUTURES/OPTION
`PURCHASING SYSTEM TRADING TERMINAL OPERATION GUIDE (1998) (Ex.
`1004) (“TSE”).
`2 U.S. Patent No. 5,375,055, issued Dec. 20, 1994 (Ex. 1008) (“Togher”).
`3 U.S. Patent No. 5,619,631, issued Apr. 8, 1997 (Ex. 1009) (“Schott”).
`4Alan Cooper, ABOUT FACE: THE ESSENTIALS OF USER INTERFACE DESIGN,
`First Edition (1995) (Ex. 1015) (“Cooper”).
`5 Exhibit 3001 is a copy of the amendment entered April 24, 2016 and
`publically available through the USPTO Public Pair website at
`http://portal.uspto.gov/pair/PublicPair.
`
` 2
`
`
`
`
`
`
`
`CBM2015-00179
`Patent 7,533,056 B2
`
`“during the pendency of any post-grant review,” may provide for the “stay,
`transfer, consolidation, or termination” of any other proceeding or matter
`before the Office that involves the same patent. 35 U.S.C. § 325(d); 37
`C.F.R. § 42.222(a). The Board ordinarily will not stay a reexamination
`because, in the absence of good cause, reexaminations are conducted with
`special dispatch. See 35 U.S.C. § 305.
`
`Petitioner argues that because the Reexamination is in the early
`stages, staying the Reexamination is warranted. Mot. 1–3. Petitioner also
`argues that a stay is necessary to avoid potentially inconsistent outcomes, to
`eliminate duplicative analysis, and to prevent wasting Board resources.
`Id. at 1, 3–4. Lastly, Petitioner argues that because Patent Owner has not yet
`amended its claims in the Reexamination, it will have an opportunity to
`amend after the Board has concluded review. Id. at 4–5.
`We have considered all of Petitioner’s arguments, but determine that
`Petitioner has not shown sufficiently that a stay of the Reexamination is
`warranted. Contrary to Petitioner’s assertions that Patent Owner has not yet
`amended its claims in the Reexamination (Mot. 4–5), as noted above, Patent
`Owner filed new claims in the Reexamination. Ex. 3001. The new claims
`are not part of this proceeding and would appear to have no direct bearing on
`the claims and issues in this case. Staying the Reexamination would
`postpone a decision of the patentability of the new claims, all to the
`detriment of Patent Owner.
` Moreover, we are not persuaded that the Board will waste its
`resources if the Reexamination is not stayed. Mot. 3–4. In the
`Reexamination, Patent Owner has not amended or cancelled its original
`claims; the claims involved in this proceeding. As such, we do not agree
`
` 3
`
`
`
`
`
`
`
`CBM2015-00179
`Patent 7,533,056 B2
`
`that we will waste our resources deciding the issues before us. This
`proceeding includes whether the challenged claims are unpatentable under
`two grounds not included in the Reexamination. Nor do we agree with
`Petitioner that the third party requestor of the Reexamination will not be
`prejudiced by a stay. We believe that they would be.
` We do recognize that one ground of unpatentability raised here is
`nearly identical to the rejection adopted by the examiner in the
`Reexamination. But even then, the proceedings are not identical. A
`decision in this proceeding would not necessarily be dispositive of the
`rejection in the Reexamination as to the original claims. And as even
`pointed out by Petitioner, the Reexamination is relatively in the early stages.
`The Reexamination can run in parallel with this proceeding without harm to
`third party requestor, Patent Owner, or even the public.
`For all of these reasons, we deny Petitioner’s Motion to Stay the
`
`Reexamination.
`
`ORDER
`
`Accordingly, it is:
`
`ORDERED that Petitioner’s Motion to Stay Reexamination Control
`
`No. 90/013,578 is denied.
`
` 4
`
`
`
`
`
`
`
`CBM2015-00179
`Patent 7,533,056 B2
`
`PETITIONER:
`
`Robert E. Sokohl
`Lori Gordon
`Richard M. Bemben
`Sterne, Kessler, Goldstein & Fox P.L.L.C.
`
`Adam J. Kessel
`Fish & Richardson
`
`rsokohl-PTAB@skgf.com
`lgordon-ptab@skgf.com
`Rbemben-ptab@skgf.com
`PTAB@skgf.com
`kessel@fr.com
`
`PATENT OWNER:
`
`Erika H. Arner
`Joshua L. Goldberg
`Kevin Rodkey
`Rachel L. Emsley
`Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
`
`Michael D. Gannon
`Leif R. Sigmond, Jr.
`McDonnell Boehnen Hulbert & Berghoff LLP
`
`Steven Borsand
`Trading Technologies, Inc.
`
`Erika.arner@finnegan.com
`Joshua.goldberg@finnegan.com
`Kevin.rodkey@finnegan.com
`Rachel.emsley@finnegan.com
`trading-tech-CBM@finnegan.com
`gannon@mbhb.com
`sigmond@mbhb.com
`tt-patent-cbm@tradingtechnologies.com
`
` 5
`
`
`
`
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
