Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 130
`Entered: October 26, 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
`CBM2015-00181 (Patent No. 7,676,411 B2)
`CBM2015-00182 (Patent No. 6,772,132 B1)
`
`
`Before SALLY C. MEDLEY, MEREDITH C. PETRAVICK and JEREMY
`M. PLENZLER, Administrative Patent Judges.
`
`PETRAVICK, Administrative Patent Judge.
`
`
`
`
`
`
`
`
`
`
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5
`
`
`
`
`
`
`1 Case CBM2016-00035 has been joined with this proceeding.
`
`
`571-272-7822
`
`
`
`
`Paper 130
`Entered: October 26, 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
`CBM2015-00181 (Patent No. 7,676,411 B2)
`CBM2015-00182 (Patent No. 6,772,132 B1)
`
`
`Before SALLY C. MEDLEY, MEREDITH C. PETRAVICK and JEREMY
`M. PLENZLER, Administrative Patent Judges.
`
`PETRAVICK, Administrative Patent Judge.
`
`
`
`
`
`
`
`
`
`
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5
`
`
`
`
`
`
`1 Case CBM2016-00035 has been joined with this proceeding.
`
`
`
`CBM2015-00161 (Patent No. 6,766,304 B2)
`CBM2015-00181 (Patent No. 7,676,411 B2)
`CBM2015-00182 (Patent No. 6,772,132 B1)
`
`
`On October 25, 2016, Patent Owner sent an email to trials@uspto.gov
`requesting 1) authorization to file a “Citation of Supplemental Authority” in
`CBM2015-00161, CBM2015-00181, and CBM2015-00182 and 2)
`authorization to file a “Supplemental Case Law Statement” in CBM2015-
`00181 and CBM2015-00182. For the reasons discussed below, Patent
`Owner’s requests are denied.
`
`First, Patent Owner requests permission to file a “Citation of
`Supplemental Authority” to bring to the Board’s attention precedential
`Federal Circuit cases that have issued on 35 U.S.C. § 101 and 35 U.S.C.
`§ 103 after substantive briefing concluded on September 9, 2016. Patent
`Owner’s email includes a list of the cases. The list includes Synopsis, Inc. v.
`Mentor Graphics Corp., No. 2015-1599 (Fed. Cir. Oct. 17, 2016);
`FairWarning IP, LLC v. Iatric Sys., Inc., No. 2015-1985 (Fed. Cir. Oct. 11,
`2016); Intellectual Ventures I LLC v. Symantec Corp., No. 2015-1769 (Fed.
`Cir. Sept. 30, 2016); Affinity Labs. of Tex. v. DirecTV Digital LLC, No.
`2015-1845 (Fed. Cir. Sept. 23, 2016); Affinity Labs. of Tex. v. Amazon.com
`Inc., No. 2015-2080 (Fed. Cir. Sept. 23, 2016); and McRo, Inc. v. Bandai
`Namco Games Am. Inc., No. 2015-1080 (Fed. Cir. Sept. 13, 2016) and
`indicates that these cases relate to analysis under 35 U.S.C. § 101. The list
`also includes Apple Inc. v. Samsung Electronics Co. Ltd., No. 2015-1171
`(Fed. Cir. Oct. 7, 2016) and indicates that this case relates to secondary
`considerations of obviousness and evidence relating to the motivation to
`combine teachings. Patent Owner’s email indicates that Petitioners do not
`object to an identification of the cases.
`
`
`
`2
`
`
`
`CBM2015-00161 (Patent No. 6,766,304 B2)
`CBM2015-00181 (Patent No. 7,676,411 B2)
`CBM2015-00182 (Patent No. 6,772,132 B1)
`
`Patent Owner’s first request is denied. There is no need for Patent
`
`Owner to file a separate “Citation of Supplemental Authority” paper to bring
`the cases to our attention. By listing the cases in its email, Patent Owner has
`already brought the cases to the Board’s attention, and per this order, those
`cases are made of record.
`
`Second, Patent Owner requests permission to file a “Supplemental
`Case Law Statement” in response to Petitioners’ Replies. In particular,
`Patent Owner seeks to provide a citation to and explain how J.T. Eaton &
`Co., Inc. v. Atlantic Paste & Glue Co., 106 F.3d 1563 (Fed. Cir. 1997)
`clarifies the proper legal standard that applies to the secondary
`considerations analysis. Patent Owner’s email indicates that Petitioners are
`opposed to supplemental briefing.
`
`Patent Owner’s second request is denied. In essence, Patent Owner is
`seeking to file a sur-reply to the Petitioners’ Replies. Patent Owner’s
`request is not timely. “A party should seek relief promptly after the need for
`relief is identified. Delay in seeking relief may justify a denial of relief
`sought.” 37 C.F.R. § 42.25(b). Petitioners’ Replies were filed on September
`9, 2016. Paper 105. 2 We cannot discern a sufficient reason as to why
`Patent Owner waited more than a month, until after oral argument, to request
`to file a sur-reply. Patent Owner’s email indicates that it intended to provide
`the citation and explanation during the oral argument. However, this is also
`not a sufficient reason, as parties are prohibited from raising new argument
`
`
`2 For the purposes of this Order, CBM2015-00181 is representative and all
`citations are to papers in CBM2015-00181 unless otherwise noted.
`
`
`3
`
`
`
`CBM2015-00161 (Patent No. 6,766,304 B2)
`CBM2015-00181 (Patent No. 7,676,411 B2)
`CBM2015-00182 (Patent No. 6,772,132 B1)
`
`at oral hearing. Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756,
`48,768 (Aug. 14, 2012)); see Paper 110, 3 (discussing the prohibition of new
`arguments at oral hearing).
`In addition, J.T. Eaton was decided on February 11, 1997. The Patent
`
`Owner’s Response was filed on June 27, 2016. Paper 71. Patent Owner
`could have included the citation to and explanation of J.T. Eaton in its Patent
`Owner’s Response.
`
`It is:
`ORDERED that Patent Owner’s request for authorization to file a
`“Citation of Supplemental Authority” in CBM2015-00161, CBM2015-
`00181, and CBM2015-00182 and to file a “Supplemental Case Law
`Statement” in CBM2015-00181 and CBM2015-00182 is denied.
`
`PETITIONER:
`Michael T. Rosato
`Matthew A. Argenti
`WILSON SONSINI GOODRICH & ROSATI
`mrosato@wsgr.com
`margenti@wsgr.com
`
`Robert Sokohl
`Lori Gordon
`Jonathan Strang
`Richard Bemben
`STERN, KESSLER, GOLDSTEIN & FOX
`Rsokohl-ptab@skgf.com
`Lgordon-ptab@skgf.com
`Jstrang-ptab@skgf.com
`Rbemben-ptab@skgf.com
`
`
`4
`
`
`
`CBM2015-00161 (Patent No. 6,766,304 B2)
`CBM2015-00181 (Patent No. 7,676,411 B2)
`CBM2015-00182 (Patent No. 6,772,132 B1)
`
`PATENT OWNER:
`Erika H. Arner
`Joshua L. Goldberg
`Kevin D. Rodkey
`Rachel L. Emsley
`FINNEGAN, HENDERSON, FARABOW,
`GARRET & DUNNER, LLP
`erika.arner@finnegan.com
`joshua.goldberg@finnegan.com
`kevin.rodkey@finnegan.com
`rache.emsley@finnegan.com
`
`Steven F. Borsand
`TRADING TECHNOLOGIES INTERNATIONAL, INC.
`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
