From: Goldberg, Joshua [mailto:Joshua.Goldberg@finnegan.com]
`Sent: Tuesday, May 10, 2016 10:49 AM
`To: Trials <Trials@USPTO.GOV>
`Cc: phillips@fr.com; CBM41919-0004CP1@fr.com; CBM41919-0005CP1@fr.com; CBM41919-
`0002CP1@fr.com; PTABInbound@fr.com; rsokohl-PTAB@skgf.com; rsokohl@skgf.com; lgordon-
`ptab@skgf.com; rbemben-PTAB@skgf.com; jstrang-PTAB@skgf.com; mrosato@wsgr.com;
` margenti@wsgr.com; tt-patent-cbm@tradingtechnologies.com; Arner, Erika
` <erika.arner@finnegan.com>; Emsley, Rachel <Rachel.Emsley@finnegan.com>; Rodkey, Kevin
` <Kevin.Rodkey@finnegan.com>; Bell, Cory <Cory.Bell@finnegan.com>; Trading-Tech-CBM <Trading-
`Tech-CBM@finnegan.com>
`Subject: Request for Conference Call in CBM2015-00161 (CBM2016-00035), CBM2015-00172
` (CBM2016-00040), CBM2015-00179, CBM2015-00181, CBM2015-00182, CBM2016-00009
`
`Dear PTAB,
`As pointed out in Patent Owner’s mandatory notices, these proceedings involve patents that have
` been heavily litigated. They have survived numerous invalidation attempts both in district court and
` in the patent office, sometimes by consent judgement and sometimes by court/jury/examiner
` findings. During the course of the many proceedings involving these patents, millions of documents
` have been produced and scores of individuals have provided testimony. Although Patent Owner
` should not be prejudiced as a result of the inability of these CBMs to accommodate the large
` volume of material from these earlier proceedings supporting its positions, Patent Owner has spent
` the past few months identifying a very small subset of the documents and individuals, which it
` would be willing to move forward with in these CBMs if an agreement on their admissibility could be
` reached with Petitioners and if it was clear Patent Owner would not be prejudiced by such a
` compromise. To that end, Patent Owner has spent the last month trying to reach a compromise
` with Petitioners on how to get this small subset of material into these proceedings without
` unnecessarily increasing the cost of these proceedings. Although not required to do so, Patent
` Owner has even identified to Petitioners the specific documents and testimony (with pincites) from
` the prior proceedings that it seeks to rely on in its patent owner responses. Despite Patent Owner’s
` attempts, the parties have been unable to reach a compromise. Accordingly, Patent Owner
` requests:
`
`· Waiver of FRE 901 (authentication) in these proceedings such that either party in these
` proceedings can directly rely on (as opposed to only via an expert) documentary evidence without
` authenticating such evidence if the evidence was (i) produced by a party to a previous litigation (as
`
`

`
` opposed to a third party) from its own records in the previous litigation, (ii) admitted as a trial
` exhibit in the previous litigation, and (iii) not subject to any dispute concerning authenticity in the
` prior litigation.
`
`· Waiver of FRE 802 (hearsay) in these proceedings such that either party can directly rely on (as
` opposed to only via an expert) sworn testimony from other proceedings without preparing a new
` declaration for these proceedings so long as the opposing party has the opportunity to depose the
` testifying individual if it desires such a deposition;
`
`· Additional discovery in the form of subpoenas to facilitate depositions of individuals listed on the
` attached spreadsheet, which was provided to Petitioners on May 2, 2016;
`
`·
`The Board’s guidance on Petitioners’ duty to produce evidence related to how the GUI tools in
` their products were developed, which contradicts their positions that the claims are obvious
` because such evidence, for example, will show the state of mind of a POSITA, failure of others,
` copying, and other secondary considerations;
`
`· An extension of the deadline for the Board to issue its final written decisions to facilitate further
` extensions of time for TT’s patent owner responses; and
`
`·
`To the extent these proceedings cannot be timely completed without depriving Patent Owner of
` a full and fair opportunity to defend its patents due to the limitations of these proceedings, which
` are not set up to deal with the volume of evidence Patent Owner has supporting the validity of its
` patents, and due to positions being taken by Petitioners, that the institution decisions be vacated.
`
`The parties are available for a conference call to discuss these issues on May 11, 2016, after 1:30pm
` Eastern.
`Best regards,
`Joshua L. Goldberg
`Backup Counsel for Patent Owner
`
`Joshua L. Goldberg
`Attorney at Law
`Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
`901 New York Avenue, NW, Washington, DC 20001-4413
`202.408.6092 | fax 202.408.4400 | joshua.goldberg@finnegan.com
`www.finnegan.com | Bio | LinkedIn | PTAB Guidebook
`
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