Trials@uspto.gov
`571-272-7822
`
`Paper 54
`Entered: May 12, 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.,
`Petitioner,
`
`v.
`
`TRADING TECHNOLOGIES INTERNATIONAL, INC.,
`Patent Owner.
`
`CBM2015-00161 (Patent No. 6,766,304 B2)1
`CBM2015-00172 (Patent No. 7,783,556 B1)
`CBM2015-00179 (Patent No. 7,533,056 B2)2
`CBM2015-00181 (Patent No. 7,676,411 B2)
`CBM2015-00182 (Patent No. 6,772,132 B1)
`CBM2016-00009 (Patent No. 7,685,055 B2)
`
`Before SALLY C. MEDLEY, MEREDITH C. PETRAVICK and
`JEREMY M. PLENZLER, Administrative Patent Judges.
`
`PETRAVICK, Administrative Patent Judge.
`
`ORDER
`
`1 Case CBM2016-00035 has been joined with this proceeding.
`2 Case CBM2016-00040 has been joined with this proceeding.
`
`
`571-272-7822
`
`Paper 54
`Entered: May 12, 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.,
`Petitioner,
`
`v.
`
`TRADING TECHNOLOGIES INTERNATIONAL, INC.,
`Patent Owner.
`
`CBM2015-00161 (Patent No. 6,766,304 B2)1
`CBM2015-00172 (Patent No. 7,783,556 B1)
`CBM2015-00179 (Patent No. 7,533,056 B2)2
`CBM2015-00181 (Patent No. 7,676,411 B2)
`CBM2015-00182 (Patent No. 6,772,132 B1)
`CBM2016-00009 (Patent No. 7,685,055 B2)
`
`Before SALLY C. MEDLEY, MEREDITH C. PETRAVICK and
`JEREMY M. PLENZLER, Administrative Patent Judges.
`
`PETRAVICK, Administrative Patent Judge.
`
`ORDER
`
`1 Case CBM2016-00035 has been joined with this proceeding.
`2 Case CBM2016-00040 has been joined with this proceeding.
`
`
`
`CBM2015-00161 (Patent No. 6,766,304 B2)
`CBM2015-00172 (Patent No. 7,783,556 B1)
`CBM2015-00179 (Patent No. 7,533,056 B2)
`CBM2015-00181 (Patent No. 7,676,411 B2)
`CBM2015-00182 (Patent No. 6,772,132 B1)
`CBM2016-00009 (Patent No. 7,685,055 B2)
`
`
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`On May 11, 2016, a conference call was held between counsel for
`
`Petitioners, counsel for Patent Owner, and Judges Medley, Petravick, and
`
`Plenzler. Patent Owner requested the call to discuss several issues, which
`
`we address in turn below. See Ex. 3001, 1–2.3 Patent Owner provided a
`
`court reporter and indicated that it would file in the record the transcript,
`
`when it becomes available. This Order summarizes the call and provides
`
`some additional explanation.
`
`
`
`i. Wavier of the Federal Rules of Evidence (“FRE”)
`
`
`
`Patent Owner requested:
`
`[w]aiver 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
`
`[w]aiver 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 so long as the opposing
`party has the opportunity to depose the testifying individual if it
`desires such a deposition.
`
`and
`
`
`3 For the purposes of this Order, CBM2015-00161 is representative and all
`citations are to papers in CBM2015-00161, unless otherwise noted.
`
`2
`
`
`
`CBM2015-00161 (Patent No. 6,766,304 B2)
`CBM2015-00172 (Patent No. 7,783,556 B1)
`CBM2015-00179 (Patent No. 7,533,056 B2)
`CBM2015-00181 (Patent No. 7,676,411 B2)
`CBM2015-00182 (Patent No. 6,772,132 B1)
`CBM2016-00009 (Patent No. 7,685,055 B2)
`
`Ex. 3001, 1–2. Petitioners opposed Patent Owner’s request.
`
`During the call, Patent Owner argued that it is prejudiced by having to
`
`comply with FRE 802 and FRE 901 because of the alleged large volume of
`
`documents produced in previous district court cases, upon some of which it
`
`might possibly rely in its Patent Owner’s Responses. According to Patent
`
`Owner, it would be prejudiced by having to obtain evidence and/or
`
`depositions to address any objections made by Petitioner’s under FRE 802
`
`and FRE 901 for a large volume of documents.
`
`Petitioners opposed Patent Owner’s request. Petitioners responded
`
`that it would be prejudiced if it was precluded from such objections, as
`
`provided for in 37 C.F.R. § 42.64(b)(1). According to Petitioners, they were
`
`not party to the previous district court proceedings and, thus, not part of or
`
`aware of any agreements the parties to the previous district court cases may
`
`have made regarding admissibility. Petitioners contend they have not had
`
`the opportunity to review any of the discussed documents and, thus, do not
`
`know if they will or will not object to such documents.
`
`Except for certain exclusions not applicable to the issue here,
`
`Rule 42.62(a) provides that the Federal Rules of Evidence shall apply to a
`
`proceeding. 37 C.F.R. § 42.62(a). Based on the information presented
`
`during the call, we declined to waive Rule 42.62(a). See 37 C.F.R. § 42.5(a)
`
`(providing that the Board may waive the Rules). Patent Owner did not
`
`establish sufficiently that it would be prejudiced by having to comply with
`
`our Rule and FRE 802 and FRE 901. Patent Owner’s argument was based
`
`3
`
`
`
`CBM2015-00161 (Patent No. 6,766,304 B2)
`CBM2015-00172 (Patent No. 7,783,556 B1)
`CBM2015-00179 (Patent No. 7,533,056 B2)
`CBM2015-00181 (Patent No. 7,676,411 B2)
`CBM2015-00182 (Patent No. 6,772,132 B1)
`CBM2016-00009 (Patent No. 7,685,055 B2)
`
`upon speculation as Petitioners have not yet objected to the admissibility of
`
`any such documents. Further, Patent Owner was not certain of the number
`
`of documents or which documents from the previous district court cases it
`
`intended to rely upon and had not yet established whether it would be
`
`difficult or costly to obtain evidence and/or depositions, if Petitioners made
`
`any objections. Additionally, waiving the FRE would be prejudicial to
`
`Petitioners because it would deprive them of an opportunity provided by our
`
`Rules to object to the documents. Petitioners were not party to the previous
`
`litigation. We, thus, declined to depart from our Rules and the FRE, and
`
`Patent Owner’s requests to waive FRE 802 and FRE 901 was denied.
`
`
`
`ii. Additional Discovery
`
`Patent Owner requested additional discovery in the form of subpoenas
`
`to facilitate depositions. Ex. 3001, 2. Petitioners opposed the request.
`
`We considered Patent Owner’s request for authorization to file a
`
`motion for additional discovery. Patent Owner’s request was premature.
`
`During the conference call, Patent Owner was uncertain about the amount of
`
`testimonial evidence or what testimonial evidence from the previous district
`
`court case it will rely upon in its Patent Owner’s Responses. Patent Owner
`
`also was uncertain as to whether subpoenas were needed to obtain the
`
`desired testimony or whether the witnesses would be willing to provide the
`
`desired testimony. Further, Petitioners have not yet objected to the
`
`4
`
`
`
`CBM2015-00161 (Patent No. 6,766,304 B2)
`CBM2015-00172 (Patent No. 7,783,556 B1)
`CBM2015-00179 (Patent No. 7,533,056 B2)
`CBM2015-00181 (Patent No. 7,676,411 B2)
`CBM2015-00182 (Patent No. 6,772,132 B1)
`CBM2016-00009 (Patent No. 7,685,055 B2)
`
`admissibility of any such testimonial evidence. The need for any subpoenas,
`
`thus, was speculative.
`
`
`
`iii. Question of Routine Discovery
`
`
`
`Patent Owner requested “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.” Ex. 3001, 2. Patent
`
`Owner questioned whether Petitioner should have produced such evidence
`
`as routine discovery, because such evidence allegedly would be inconsistent
`
`with Petitioners’ positions regarding obviousness in the Petitions.
`
`Alternatively, Patent Owner requested authorization to file a motion for
`
`additional discovery to obtain such evidence.
`
`Petitioners disputed that they were required to provide such evidence
`
`as part of routine discovery and opposed Patent Owner’s alternative request
`
`for additional discovery.
`
`
`
`Under 37 C.F.R. § 41.51(b)(1)(iii), “[u]nless previously served, a
`
`party must serve relevant information that is inconsistent with a position
`
`advanced by the party during the proceeding concurrent with the filing of the
`
`documents or things that contains the inconsistency” [privileged information
`
`excepted]. Routine discovery under Rule 41.51(b)(1)(iii) is narrowly
`
`directed to specific information known to the responding party to be
`
`5
`
`
`
`CBM2015-00161 (Patent No. 6,766,304 B2)
`CBM2015-00172 (Patent No. 7,783,556 B1)
`CBM2015-00179 (Patent No. 7,533,056 B2)
`CBM2015-00181 (Patent No. 7,676,411 B2)
`CBM2015-00182 (Patent No. 6,772,132 B1)
`CBM2016-00009 (Patent No. 7,685,055 B2)
`
`inconsistent with a position advanced by that party in the proceeding, and
`
`not broadly directed to any subject area in general within which the
`
`requesting party hopes to discover such inconsistent information. See
`
`Garmin Int’l v. Cuozzo Speed Techs LLC, IPR2012-00001, Paper 26, 3–4
`
`(PTAB Mar. 5, 2013) (precedential).
`
`
`
`Based upon the information presented during the call, we are not
`
`persuaded by Patent Owner that Petitioners failed to comply with the routine
`
`discovery requirement of 37 C.F.R. § 42.51(b)(iii). Petitioners confirmed
`
`during the conference call that they had complied.
`
`
`
`As for Patent Owner’s alternative request to file a motion for
`
`additional discovery, we were not persuaded to authorize Patent Owner to
`
`file a motion for additional discovery. The information presented by Patent
`
`Owner during the conference call was insufficient to warrant the filing of a
`
`motion for additional discovery. Patent Owner did not demonstrate,
`
`sufficiently, more than a mere possibility that something useful will be
`
`discovered. See Bloomberg, Inc. v. Markets-Alert Pty, Ltd., CBM2013-
`
`00005, Paper 32 (PTAB May 29, 2013) (precedential) (indicating that a
`
`factor for establishing good cause for additional discovery includes whether
`
`there is more than a possibility or mere allegations that something useful
`
`will be uncovered).
`
`Further, Patent Owner indicated that although the related district court
`
`case had been stayed, Petitioners were still required to provide discovery
`
`responses by June 10, 2016. Thus, if it exists, Patent Owner may obtain the
`
`6
`
`
`
`CBM2015-00161 (Patent No. 6,766,304 B2)
`CBM2015-00172 (Patent No. 7,783,556 B1)
`CBM2015-00179 (Patent No. 7,533,056 B2)
`CBM2015-00181 (Patent No. 7,676,411 B2)
`CBM2015-00182 (Patent No. 6,772,132 B1)
`CBM2016-00009 (Patent No. 7,685,055 B2)
`
`requested evidence through discovery in the related district court
`
`proceeding. See id (indicating that another factor is whether the request
`
`information can be obtained without additional discovery).
`
` Patent Owner’s alternative request for authorization to file a motion
`
`for additional discovery was denied.
`
`
`
`iv. Extension of Time
`
`Patent Owner requested “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.” Ex. 3001, 2. As discussed above, although
`
`the related district court case had been stayed, Petitioners were still required
`
`to provide discovery responses by June 10, 2016. Patent Owner requested
`
`the extension of time to allow Patent Owner to review any produced
`
`documents prior to filing its Patent Owner’s Responses. Petitioners opposed
`
`the request because the due date for filing the Patent Owner’s Responses had
`
`already been extended by stipulation in some of these proceedings. See
`
`Papers 42, 26.
`
`Based on the information provided during the conference call, we
`
`were persuaded by Patent Owner to consider adjusting the Scheduling
`
`Orders for CBM2015-00161, CBM2015-00172, CBM2015-000179,
`
`CBM2015-000181, and CBM2015-000182. After consideration of the
`
`information presented during the call, and based on subsequent
`
`7
`
`
`
`CBM2015-00161 (Patent No. 6,766,304 B2)
`CBM2015-00172 (Patent No. 7,783,556 B1)
`CBM2015-00179 (Patent No. 7,533,056 B2)
`CBM2015-00181 (Patent No. 7,676,411 B2)
`CBM2015-00182 (Patent No. 6,772,132 B1)
`CBM2016-00009 (Patent No. 7,685,055 B2)
`
`representation by Patent Owner that it would not file a motion to amend in
`
`any of the proceedings, the DUE DATES are reset as follows:
`
`DUE DATE 1
`DUE DATE 2
`DUE DATE 3
`DUE DATE 4
`DUE DATE 5
`DUE DATE 6
`DUE DATE 7
`
`June 17, 2016
`September 2, 2016
`N/A
`September 23, 2016
`October 7, 2016
`October 14, 2016
`October 19, 2016
`
`Patent Owner indicated during the call, and later confirmed via email to the
`
`Board (Ex. 3002), that it would not file motions to amend in these
`
`proceedings. DUE DATE 3, thus, is not applicable to these proceedings. As
`
`can be seen from the above, the reset DUE DATEs allow for completion of
`
`these proceedings without the need to extend the deadline for the Board to
`
`issue its final written decisions. Patent Owner’s request to extend the
`
`deadline for the Board to issue its final written decision is denied.
`
`
`
`According to the Scheduling Order for CBM2016-00009, Patent
`
`Owner’s Response is due July 21, 2016. CBM2016-00009, Paper 21, 7.
`
`The Scheduling Order, thus, allows for sufficient time for Patent Owner to
`
`review any documents produced in the related district court proceeding prior
`
`to filing the Patent Owner’s Response in that proceeding. The Scheduling
`
`Order, thus, remains unchanged in CBM2016-00009.
`
`
`
`
`
`
`
`
`
`8
`
`
`
`CBM2015-00161 (Patent No. 6,766,304 B2)
`CBM2015-00172 (Patent No. 7,783,556 B1)
`CBM2015-00179 (Patent No. 7,533,056 B2)
`CBM2015-00181 (Patent No. 7,676,411 B2)
`CBM2015-00182 (Patent No. 6,772,132 B1)
`CBM2016-00009 (Patent No. 7,685,055 B2)
`
`PETITIONER:
`
`John Phillips
`philllips@fr.com
`
`Kevin Su
`CBM41919-0005CP1@fr.com
`
`Robert Sokohl
`Rsokohl-ptab@skgf.com
`
`Lori Gordon
`Lgordon-PTAB@skgf.com
`
`Richard Bemben
`Rbemben-PTAB@skgf.com
`
`
`
`PATENT OWNER:
`
`Erika Arner
`Erika.arner@finnegan.com
`
`Joshua Goldberg
`Joshua.goldberg@finnegan.com
`
`Kevin Rodkey
`Kevin.rodkey@finnegan.com
`
`Rachel Emsley
`Rachel.emsley@finnegan.com
`
`Michael Gannon
`gannon@mbhb.com
`
`9
`
`
`
`CBM2015-00161 (Patent No. 6,766,304 B2)
`CBM2015-00172 (Patent No. 7,783,556 B1)
`CBM2015-00179 (Patent No. 7,533,056 B2)
`CBM2015-00181 (Patent No. 7,676,411 B2)
`CBM2015-00182 (Patent No. 6,772,132 B1)
`CBM2016-00009 (Patent No. 7,685,055 B2)
`
`
`Leif Sigmond
`sigmond@mbhb.com
`
`Steven Borsand
`Steve.borsand@tradingtechnologies.com
`tt-patent-cbm@tradingtechnologies.com
`
`
`10
`
`
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