Case: 1:10-cv-00715 Document #: 562 Filed: 06/18/14 Page 1 of 6 PageID #:25679
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF ILLINOIS
`EASTERN DIVISION
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`Case No. 10 C 715
`(Consolidated with:
`10 C 716, 10 C 718,
`10 C 720, 10 C 721,
`10 C 726, 10 C 882,
`10 C 883, 10 C 884,
`10 C 885, 10 C 929,
`10 C 931)
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`Judge Virginia M. Kendall
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`TRADING TECHNOLOGIES
`INTERNATIONAL, INC.
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`Plaintiff,
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`v.
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`BCG PARTNERS, INC.
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`Defendant.
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`REPLY MEMORANDUM IN SUPPORT OF THE IBG DEFENDANTS’
`MOTION TO STAY PROCEEDINGS PURSUANT TO SECTION 18(b)
`OF THE AMERICA INVENTS ACT
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`Page 1 of 6
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`TRADING TECH EXHIBIT 2027
`IBG ET AL. v. TRADING TECH
`CBM2015-00181
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`

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`Case: 1:10-cv-00715 Document #: 562 Filed: 06/18/14 Page 2 of 6 PageID #:25680
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`Defendants IBG LLC and Interactive Brokers LLC (collectively, “IBG”) submit this
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`short brief in further support of its motion to stay these consolidated cases pending the outcome
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`of TD Ameritrade’s petitions for CBM Review and in response to TT’s opposition brief. IBG
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`has affirmatively requested that its case, Case No. 1:10-cv-00721, be stayed for all the reasons
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`set forth by TD Ameritrade. Dkt. No. 546. For those same reasons, it would be most efficient to
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`stay all the consolidated cases. IBG notes that at least TradeStation affirmatively supports this
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`(Dkt. No. 558) and none of the other defendants object to the requested stay.
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`TT’s arguments against a stay are not persuasive for the reasons TD Ameritrade
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`articulated in its reply brief (Dkt. No. 561), and IBG incorporates them here. In addition, TT’s
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`argument that this Court should deny defendants a stay because the non-petitioning defendants
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`(i.e., all defendants other than TD Ameritrade) have not affirmatively agreed to be bound by
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`estoppel (Opp. at 11) should be rejected. TT’s argument is contrary to the plain language of the
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`statute, is contrary to the legislative history, would have little practical benefit, and has been
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`rejected by Courts in post-AIA decisions.
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`First, the statute clearly applies estoppel to only CBM “petitioners” (like TD
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`Ameritrade) 1 but allows any “party” to request a stay. Compare AIA § 18(a)(1)(D) (“The
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`petitioner . . . may not assert . . . that the claim is invalid on any ground that the petitioner raised
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`during that transitional proceeding” (emphasis added)), with AIA § 18(b)(1) (“If a party seeks a
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`stay of a civil action . . . .” (emphasis added)). Congress could have extended estoppel to any
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`party moving for a stay, but did not.
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`1 IBG did not participate in the preparation or filing of the CBM petitions and is not participating
`in the review process at the USPTO. In fact, the other defendants were not informed of TD
`Ameritrade’s intention to file CBM petitions until just a few days before TD Ameritrade
`informed TT of its intentions.
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`-1-
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`Page 2 of 6
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`Case: 1:10-cv-00715 Document #: 562 Filed: 06/18/14 Page 3 of 6 PageID #:25681
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`Second, in adopting the four-factor test, Congress specifically intended that courts
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`consider those four factors exclusively and not consider whether the movant has agreed to be
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`bound by an extra-statutory estoppel:
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`By adopting this four-factor test, rather than one of the three-factor tests used by
`other courts, the amendment also precludes the use of additional factors that are
`not codified here and that have occasionally been used by some district
`courts. For example, a few courts have occasionally employed a different de
`facto fourth factor: whether the challenger offers ‘to forego invalidity arguments
`based on prior art patents and/or printed publications considered during an ex
`parte reexamination process.’ The proceeding authorized by this amendment, at
`subsection (b)(1)(D), sets its own standard for determining what issues may still
`be raised in civil litigation if a patent survives PTO review. By codifying the
`exclusive set of factors that courts are to consider when granting stays, the
`amendment precludes courts from inventing new factors such as extra-statutory
`estoppel tests.
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`See Dkt. No. 546-5 (emphasis added) (Ex. E, 157 Cong. Rec. S1364 (daily ed. Mar. 8, 2011)
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`(statement of Sen. Schumer)). Thus, this Court should not, as TT urges, consider whether any
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`defendant would or would not agree to an extra-statutory estoppel in deciding whether to grant a
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`stay.
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`Third, practically speaking, it is unlikely that other defendants will re-raise an argument
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`rejected by a final decision of the PTAB. If they do, TT has the PTAB’s determination in its
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`favor. Thus, the risk of “re-litigation” of the CBM grounds it unrealistic. Moreover, while the
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`benefits to be gained from a stay are real and many, requiring all defendants to agree to estoppel
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`gains little, only the elimination of the exact grounds raised in the CBM petitions.
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`Fourth, TT erroneously relies in its opposition upon a pre-AIA case (i.e., cases pre-
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`enactment of the exclusive four-factor test) in support of its estoppel argument.2 Such cases are
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`2 See Tesco Corp. v. Weatherford Int’l, Inc., 599 F. Supp. 2d 848 (S.D. Tex. 2009). While TT
`also relies upon Credit Acceptance Corp. v. Westlake Services, LLC, No. CV 13-01523 SJO
`(MRNx), 2013 WL 7144391, at *3 (C.D. Cal. Dec. 30, 2013) which is post-AIA, the court did
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`-2-
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`Page 3 of 6
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`Case: 1:10-cv-00715 Document #: 562 Filed: 06/18/14 Page 4 of 6 PageID #:25682
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`irrelevant. By contrast, in the AIA proceedings context, Courts have rejected TT’s argument and
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`found that there are benefits to be gained from a stay absent any estoppel. See Intellectual
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`Ventures II LLC v. Huntington Bancshares Inc., No. 2:13-CV-00785, 2014 WL 2589420, at *4
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`(S.D. Ohio June 10, 2014) (rejecting a proposal to condition a stay on the defendants’ agreement
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`to be estopped); Pi-Net Int’l, Inc. v. Hertz Corp., Nos. CV 12-10012, CV 12-4270, CV 12-4036,
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`2013 WL 7158011, at *4 (C.D. Cal. June 5, 2013) (simplification factor weighing in favor of a
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`stay despite the defendant not being bound by estoppel effects); e-Watch, Inc. v. ACTi Corp., No.
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`SA-12-CA-695-FB, 2013 WL 6334372, at *7 (W.D. Tex. Aug. 9, 2013), adopted by 2013 WL
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`6334304, at *1 (W.D. Tex. Aug. 26, 2013).
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`Today, TT filed as a “Notice of Filing Supplemental Authority” additional argument
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`regarding estoppel.3 Dkt. No. 560. Neither case TT relies upon supports its argument that the
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`Court should deny a stay because there is no extra-statutory estoppel applicable to the non-
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`petitioning defendants (like IBG). Both cases TT submits concern inter partes review – not
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`CBM Review. See Dkt. Nos. 560-1 & 2. Thus, neither court considered the express legislative
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`history described above that says that Courts should not consider extra-statutory estoppel in
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`considering whether to grant a stay in CBM cases. See Dkt. No. 546-5 (Ex. E, 157 Cong. Rec.
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`S1364 (daily ed. Mar. 8, 2011) (statement of Sen. Schumer)). TT’s “Supplemental Authority” is
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`inapposite.
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`not address whether extra-statutory estoppel should apply (or whether a lack of estoppel should
`preclude a stay) because there was no dispute regarding estoppel.
`3 IBG notes that TT could have included at least one of the cases it newly relies upon in its
`opposition but did not. TT also waited an entire week to make this submission – until mid-day
`on the deadline for IBG’s reply brief. TT’s submission is untimely. Further, TT’s submission is
`improper because it does not merely submit the allegedly new authority but includes additional
`argument. TT’s untimely and improper submission should be stricken.
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`-3-
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`Page 4 of 6
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`Case: 1:10-cv-00715 Document #: 562 Filed: 06/18/14 Page 5 of 6 PageID #:25683
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`Accordingly, TT’s argument that this Court should deny a stay unless all defendants
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`agree to an extra-statutory estoppel should be rejected. For the foregoing reasons, and for the
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`reasons set forth in support of TD Ameritrade’s Motion to Stay (Dkt. No. 546) and TD
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`Ameritrade’s Reply (Dkt. No. 561), IBG respectfully requests that the Court stay IBG’s case and
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`all the consolidated cases pending the outcome of TD Ameritrade’s petitions for CBM Review.
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`Dated: June 18, 2014
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`Respectfully submitted,
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`/s/ Natalie J. Morgan
`Michael Brett Levin
`Wilson Sonsini Goodrich & Rosati
`650 Page Mill Road
`Palo Alto, CA 94304
`(650) 493-9300
`
`Natalie J. Morgan
`Wilson Sonsini Goodrich & Rosati
`12235 El Camino Real, Suite 200
`San Diego, CA 92130
`(858) 350-2300
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`Steven P. Mandell (ARDC No. 6183729)
`MANDELL MENKES LLC
`One North Franklin St., Suite 3600
`Chicago, Illinois 60606
`Telephone: (312) 251-1000
`Facsimile: (312) 251-1010
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`Attorneys for Defendants IBG LLC and Interactive
`Brokers LLC
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`-4-
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`Page 5 of 6
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`Case: 1:10-cv-00715 Document #: 562 Filed: 06/18/14 Page 6 of 6 PageID #:25684
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`CERTIFICATE OF SERVICE
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`I hereby certify
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`that on June 18, 2014, I electronically filed
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`this REPLY
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`MEMORANDUM IN SUPPORT OF THE IBG DEEFNDANTS’ MOTION TO STAY
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`PROCEEDINGS PURSUANT TO SECTION 18(b) OF THE AMERICA INVENTS ACT
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`with the Clerk of the Court using the CM/ECF system which will send notification of such filing
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`to all counsel of record.
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`/s/ Natalie J. Morgan
`Natalie J. Morgan
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`-5-
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`Page 6 of 6