Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 24
`Entered: January 14, 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.
`
`Case CBM2015-00181
`Patent No. 7,676,411 B2
`
`
`
`
`
`
`
`
`
`Before SALLY C. MEDLEY, MEREDITH C. PETRAVICK, and
`JEREMY M. PLENZLER, Administrative Patent Judges.
`
`PLENZLER, Administrative Patent Judge.
`
`
`
`
`
`
`
`DECISON
`Denying Motion for Additional Discovery
`37 C.F.R. § 42.51
`
`
`
`
`571-272-7822
`
`
`
`
`Paper 24
`Entered: January 14, 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.
`
`Case CBM2015-00181
`Patent No. 7,676,411 B2
`
`
`
`
`
`
`
`
`
`Before SALLY C. MEDLEY, MEREDITH C. PETRAVICK, and
`JEREMY M. PLENZLER, Administrative Patent Judges.
`
`PLENZLER, Administrative Patent Judge.
`
`
`
`
`
`
`
`DECISON
`Denying Motion for Additional Discovery
`37 C.F.R. § 42.51
`
`
`
`
`
`CBM2015-00181
`Patent 7,676,411 B2
`
`Patent Owner filed a motion for additional discovery on November
`
`19, 2015 (Paper 16, “Mot.”), and Petitioner filed an opposition to the motion
`on November 27, 2015 (Paper 19, “Opp.”). Patent Owner filed a reply on
`December 3, 2015. Paper 21, (“Reply”). Patent Owner seeks discovery on
`the issue of whether CQG, Inc. and CQG, LLC (collectively, “CQG”) is an
`unnamed real-party-in-interest (“RPI”) in this proceeding. 1 Patent Owner
`argues that CQG is an unnamed RPI because CQG allegedly prepared the
`petition in this proceeding. See Mot. 1.
`In covered business method patent reviews, additional discovery may
`be ordered if the party moving for the discovery shows good cause as to why
`the additional discovery is needed. 37 C.F.R. §§ 42.51(b)(2), 42.224. As
`stated in the legislative history, “[g]iven the time deadlines imposed on these
`proceedings, it is anticipated that, regardless of the standards imposed in [35
`U.S.C. §§ 316, 326], PTO will be conservative in its grants of discovery.”
`154 Cong. Rec. S9988-89 (daily ed. Sept. 27, 2008) (statement of Sen. Kyl).
` As the movant, Patent Owner bears the burden of establishing good
`cause. 37 C.F.R. §§ 42.51(b)(2) , 42.224. We generally consider five
`factors (the “Garmin/Bloomberg factors”) in determining whether good
`cause exists for granting additional discovery requests. See Garmin Int’l,
`Inc. v. Cuozzo Speed Techs. LLC, Case IPR2012-00001, slip op. at 6–7
`(PTAB Mar. 5, 2013) (Paper 26) (informative), as modified by Bloomberg,
`Inc. v. Market-Alerts Pty, Ltd., Case CBM2013-00005, slip op. at 4 (PTAB
`May 29, 2013) (Paper 32). These factors are: (1) there must be more than a
`
`
`1 Section 322(a) of Title 35 of the United States Code provides that a
`petition for post grant review under 35 U.S.C. § 321 may be considered only
`if, among other things, the petition identifies all real parties-in-interest.
`35 U.S.C. § 322(a)(2).
`
`2
`
`
`
`CBM2015-00181
`Patent 7,676,411 B2
`
`mere possibility of finding something useful; (2) a party may not seek
`another party’s litigation positions or the underlying basis for those
`positions; (3) a party should not seek information that reasonably can be
`generated without a discovery request; (4) instructions and questions should
`be easily understandable; and (5) the discovery requests must not be overly
`burdensome to answer. Garmin, slip op. at 6–7; Bloomberg, slip op. at 5.
`The first Garmin/Bloomberg factor considers whether there exists
`more than “mere possibility” or “mere allegation that something useful [to
`the proceeding] will be found.” Garmin, slip op. at 6; Bloomberg, slip op.
`at 5. Under this factor, a party should provide a specific factual reason for
`reasonably expecting that discovery will be useful. Bloomberg, slip op. at 5.
`In this context, “useful” means favorable in substantive value to the moving
`party’s contention. Id. “[T]he requester of information should already be in
`possession of a threshold amount of evidence or reasoning tending to show
`beyond speculation that something useful will be uncovered.” Garmin¸slip
`op. at 7.
`
`Patent Owner alleges that the additional discovery will produce
`communications between Petitioner and CQG showing that CQG prepared
`the petition for this proceeding. See Mot. 4–6. Patent Owner argues that
`this information is useful because it will establish that CQG is an RPI. Id. at
`4, 6–8. Whether a non-identified party is a real party-in-interest to a
`proceeding is a highly fact-dependent question. Office Patent Trial Practice
`Guide, 77 Fed. Reg. 48,756, 48,759 (Aug. 14, 2012) (“Trial Practice Guide”)
`(citing Taylor v. Sturgell, 553 U.S. 880 (2008)). “A common consideration
`is whether the non-party exercised or could have exercised control over a
`party’s participation in a proceeding.” Trial Practice Guide, 77 Fed. Reg. at
`
`3
`
`
`
`CBM2015-00181
`Patent 7,676,411 B2
`
`48,759 (citing Taylor, 553 U.S. at 895). “The concept of control generally
`means that ‘it should be enough that the nonparty has the actual measure of
`control or opportunity to control that might reasonably be expected between
`two formal coparties.’” Id. (quoting Charles Wright, et al., 18A
`Federal Practice & Procedure §§ 4449, 4451 (2d ed. 2011)
`Patent Owner contends that Petitioner and CQG acknowledge that
`CQG prepared the petition for this proceeding. Mot. at 4–6. To support its
`contentions, Patent Owner relies on statements made in the related district
`court proceeding. Id. These statements are taken from documents titled
`“Response of Certain Defendants to Trading Technologies’ ‘Emergency’
`Motion” (Ex. 2002) and “Supplemental Response of Certain Defendants to
`TT’s Emergency Motion” (Ex. 2003). Those statements and some
`additional information, for context, are reproduced below.
`Defendants plan to request that the PTAB decide the validity of
`TT’s patents, by refiling challenges to most (if not all) of the
`patents-in-suit. . . . Given these very recent developments,
`Defendants respectfully request a short period of time to
`coordinate on these PTAB actions. Defendants expect a
`Covered Business Method Review Petition on one of the
`patents in suit to be filed by Monday, July 20 with additional
`petitions to be filed in the coming weeks.
`(Ex. 2002, 3) and
`Defendants have already advised the Court that they “plan to
`request that the PTAB decide the validity of TT’s patents, by
`refiling challenges to most (if not all) of the patents-in-suit
`[including those] which were on the cusp of trial [before the
`PTAB].” For CQG’s part, it is preparing to file CBMR
`petitions on the ’411, ’374, ’768, and ’724 patents in the next
`several weeks.
`
`4
`
`
`
`CBM2015-00181
`Patent 7,676,411 B2
`
`(Ex. 2003, 8). Based on these statements, Patent Owner contends that
`“Petitioners and CQG admitted to the district court that CQG prepared, or at
`least assisted with preparing, the petition for the ’411 patent.” Mot. 5.
`
`Petitioner argues that Patent Owner has not shown more than a mere
`possibility that something useful will be discovered. Opp. 5–10. In
`response, Patent Owner contends that “Petitioners do not deny cooperation,
`aid, or labor division with CQG.” Reply 1. We read Petitioner’s
`Opposition, however, as affirmatively representing that CQG did not control
`or have the opportunity to control this proceeding. See Opp. 2 (“[Patent
`Owner] twists and contorts these two statements to create the false
`impression that CQG participated as an RPI in the present proceeding.”).
`Petitioner notes that it was “diligent in properly naming all RPIs in this
`proceeding, and took pains to avoid creating a factual basis for the
`suggestion that CQG had any control over the content of this petition, or the
`decision to file it.” Id. at 7–8. We have no reason to question Petitioner’s
`representation of CQG’s lack of involvement. See 37 C.F.R. § 42.11
`(“Parties and individuals involved in the proceeding have a duty of candor
`and good faith to the Office during the course of a proceeding.”). And as
`pointed out by Petitioner, nothing of record persuasively contradicts that
`representation. In particular, CQG’s statement made in the related district
`court proceeding that “it” was preparing to file a petition on the involved
`patent does not mean that that petition was used by Petitioners in any way
`for this proceeding, or that CQG controlled or had opportunity to control the
`instant proceeding.
`As a result, Patent Owner’s evidence and reasoning do not tend to
`show that discovery will produce communications between Petitioner and
`
`5
`
`
`
`CBM2015-00181
`Patent 7,676,411 B2
`
`CQG showing that CQG controlled or had opportunity to control this
`proceeding.
`Even if we assume that the additional Garmin/Bloomberg factors
`weigh in favor of granting the requested discovery, Patent Owner has failed
`to show good cause as to why the additional discovery is needed because it
`has failed to establish that more than a mere possibility exists of finding
`something useful.
`Patent Owner’s arguments concerning RPX Corp. v. VirnetX Inc.,
`Case IPR2014–00171 (Mot. 6–8; Reply 5) are also unpersuasive because, as
`Petitioner notes (Opp. 12), Patent Owner has failed to establish that CQG
`had any involvement in preparing the petition for this proceeding.
`In considering the parties’ arguments and the Garmin/Bloomberg
`factors, we determine that Patent Owner has not met its burden in showing
`that there is “good cause” for additional discovery as required under
`37 C.F.R. § 42.224.
`
`Accordingly, it is:
`ORDERED that Patent Owner’s motion for additional discovery is
`denied.
`
`
`
`
`
`
`
`
`6
`
`
`
`CBM2015-00181
`Patent 7,676,411 B2
`
`PETITIONER:
`Robert E. Sokohl
`Lori Gordon
`Richard M. Bemben
`STERNE, KESSLER, GOLDSTEIN & FOX
`rsokohl-PTAB@skgf.com
`lgordon-ptab@skgf.com
`rbemben-PTAB@skgf.com
`PTAB@skgf.com
`
`PATENT OWNER:
`Erika H. Arner
`Kevin D. Rodkey
`Joshua L. Goldberg
`Rachel L. Emsley
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
`erika.arner@finnegan.com
`kevin.rodkey@finnegan.com
`joshua.goldberg@finnegan.com
`rachel.emsley@finnegan.com
`
`Steven F. Borsand
`TRADING TECHNOLOGIES INTERNATIONAL, INC.
`tt-patent-cbm@tradingtechnologies.com
`
`
`
`
`
`
`
`
`
`
`
`7
`
`
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