Richard M. Bemben
`
`From:
`Sent:
`To:
`Cc:
`
`Subject:
`
`Emsley, Rachel <Rachel.Emsley@finnegan.com>
`Wednesday, April 13, 2016 5:04 PM
`Trials
`Rob Sokohl; Lori Gordon; Jon Strang; Richard M. Bemben; tt-patent-
`cbm@tradingtechnologies.com; Trading-Tech-CBM; PTAB Account
`RE: Telephone Conference Request for Discovery Issue in CBM2015-00179, -00181, and
`-00182
`
`Your Honors,
`
`
`We hope that the following will clarify the issues Patent Owner proposes for this call and distinguish those
`issues from other issues relating to Mr. Kawashima’s testimony.
`
`
`The Issues for the Requested Call
`
`
`Patent Owner seeks Mr. Kawashima’s deposition, which would normally be self-executing routine discovery.
`But, the Board’s intervention to order this discovery is necessary here because we are outside the normal
`circumstances envisioned by the rules.
`
`
`Normally, Mr. Kawashima’s direct testimony would have been provided in an affidavit prepared for this
`proceeding, and that testimony would be subject to routine discovery. But, in these proceedings, Mr.
`Kawashima’s direct testimony was submitted in the form of a deposition transcript. Petitioners have taken the
`position that:
`
`
`(1) they are not required to make Mr. Kawashima available for deposition under routine
`discovery, 37 C.F.R. § 42.51(b)(1), because he did not provide affidavit testimony “for
`this proceeding;” and
`
`(2) that the “Board [has not] ordered [Petitioners] to make Mr. Kawashima available for
`deposition.”
`
`
`
`Thus, the proceedings have fallen outside the scope of the situations specifically covered by the
`self-executing provisions of the rules.
`
`
`Because we are outside of the situations specifically covered by the rules, the Board’s
`intervention is needed to resolve the resulting discovery dispute. Indeed, the rules, anticipating
`that such situations may arise, permit the Board to address circumstances such as these by
`“otherwise order[ing]” that Mr. Kawashima be made available for cross-examination under
`routine discovery. See 37 C.F.R. § 42.51(b)(1); see also 37 C.F.R. § 42.5(a). Patent Owner’s first
`request is that the Board order Petitioner to make Mr. Kawashima available for deposition (to
`provide Patent Owner with a full and fair opportunity to examine the issues in this proceeding).
`
`If this first request is denied, while Patent Owner does not believe additional discovery of Mr.
`Kawashima should be its burden, Patent Owner asks that the Board grant us leave to file a
`motion for this additional discovery. Petitioners have stated that they oppose such a request for
`additional discovery under 37 C.F.R. § 42.51(b)(2).
`
`
`1
`
`IBG 1040
`IBG v. Trading Technologies
`CBM2015-00182
`
`
`
`From:
`Sent:
`To:
`Cc:
`
`Subject:
`
`Emsley, Rachel <Rachel.Emsley@finnegan.com>
`Wednesday, April 13, 2016 5:04 PM
`Trials
`Rob Sokohl; Lori Gordon; Jon Strang; Richard M. Bemben; tt-patent-
`cbm@tradingtechnologies.com; Trading-Tech-CBM; PTAB Account
`RE: Telephone Conference Request for Discovery Issue in CBM2015-00179, -00181, and
`-00182
`
`Your Honors,
`
`
`We hope that the following will clarify the issues Patent Owner proposes for this call and distinguish those
`issues from other issues relating to Mr. Kawashima’s testimony.
`
`
`The Issues for the Requested Call
`
`
`Patent Owner seeks Mr. Kawashima’s deposition, which would normally be self-executing routine discovery.
`But, the Board’s intervention to order this discovery is necessary here because we are outside the normal
`circumstances envisioned by the rules.
`
`
`Normally, Mr. Kawashima’s direct testimony would have been provided in an affidavit prepared for this
`proceeding, and that testimony would be subject to routine discovery. But, in these proceedings, Mr.
`Kawashima’s direct testimony was submitted in the form of a deposition transcript. Petitioners have taken the
`position that:
`
`
`(1) they are not required to make Mr. Kawashima available for deposition under routine
`discovery, 37 C.F.R. § 42.51(b)(1), because he did not provide affidavit testimony “for
`this proceeding;” and
`
`(2) that the “Board [has not] ordered [Petitioners] to make Mr. Kawashima available for
`deposition.”
`
`
`
`Thus, the proceedings have fallen outside the scope of the situations specifically covered by the
`self-executing provisions of the rules.
`
`
`Because we are outside of the situations specifically covered by the rules, the Board’s
`intervention is needed to resolve the resulting discovery dispute. Indeed, the rules, anticipating
`that such situations may arise, permit the Board to address circumstances such as these by
`“otherwise order[ing]” that Mr. Kawashima be made available for cross-examination under
`routine discovery. See 37 C.F.R. § 42.51(b)(1); see also 37 C.F.R. § 42.5(a). Patent Owner’s first
`request is that the Board order Petitioner to make Mr. Kawashima available for deposition (to
`provide Patent Owner with a full and fair opportunity to examine the issues in this proceeding).
`
`If this first request is denied, while Patent Owner does not believe additional discovery of Mr.
`Kawashima should be its burden, Patent Owner asks that the Board grant us leave to file a
`motion for this additional discovery. Petitioners have stated that they oppose such a request for
`additional discovery under 37 C.F.R. § 42.51(b)(2).
`
`
`1
`
`IBG 1040
`IBG v. Trading Technologies
`CBM2015-00182
`
`
`
`The Issues not for this Call
`
`
`The Panel and the parties had a prior call related to Mr. Kawashima’s testimony. The issue for that call,
`however, was whether Petitioners could be given extra time to supplement its evidence in response to Patent
`Owner’s objections, beyond the 10-day period allowed in the rules. The issue was not whether Mr. Kawashima
`would be made available from cross-examination.
`
`
`Regards,
`Rachel Emsley
`
`
`Rachel L. Emsley
`Attorney at Law
`Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
`Two Seaport Lane
`Boston, MA 02210-2001
`617.646.1624 | fax: 202.408.4400 | rachel.emsley@finnegan.com | www.finnegan.com
`
`NOTICE: This e-mail is sent by a law firm and may contain information that is confidential, protected, or privileged. If you
`are not the intended recipient, please delete the email and any attachments and notify us immediately.
`
`
`From: Vignone, Maria [mailto:Maria.Vignone@USPTO.GOV] On Behalf Of Trials
`Sent: Wednesday, April 13, 2016 12:50 PM
`To: Emsley, Rachel; Trials
`Cc: Rob Sokohl; Lori Gordon (LGORDON@skgf.com); Jon Strang (JSTRANG@skgf.com); rbemben@skgf.com; tt-patent-
`cbm@tradingtechnologies.com; Trading-Tech-CBM; PTAB@skgf.com
`Subject: RE: Telephone Conference Request for Discovery Issue in CBM2015-00179, -00181, and -00182
`
`
`Dear Counsel,
`
`
`The panel is unable to ascertain if a conference call is necessary. Please provide more information expressly explaining
`the requested relief Patent Owner seeks.
`
`
`Thank you,
`
`
`Maria Vignone
`Paralegal Operations Manager
`Patent Trial and Appeal Board
`703‐756‐1288
`
`
`
`
`From: Emsley, Rachel [mailto:Rachel.Emsley@finnegan.com]
`Sent: Tuesday, April 12, 2016 6:03 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: Rob Sokohl <RSOKOHL@skgf.com>; Lori Gordon (LGORDON@skgf.com) <LGORDON@skgf.com>; Jon Strang
`(JSTRANG@skgf.com) <JSTRANG@skgf.com>; rbemben@skgf.com; tt‐patent‐cbm@tradingtechnologies.com; Trading‐
`Tech‐CBM <Trading‐Tech‐CBM@finnegan.com>; PTAB@skgf.com
`Subject: Telephone Conference Request for Discovery Issue in CBM2015‐00179, ‐00181, and ‐00182
`
`
`Your Honors,
`
`
`2
`
`
`
`Patent Owner requests a call with the Board to address the procurement of Mr. Kawashima’s deposition (in CBM2015‐
`00179, ‐00181, and ‐00182), whether under routine or additional discovery. See, e.g., CBM2015‐00179, Ex. 1007. The
`parties are available for a telephone conference on Thursday from 12 pm‐3 pm.
`
`
`Thanks,
`Rachel Emsley
`Back‐up Counsel for Patent Owner
`
`
`Rachel L. Emsley
`Attorney at Law
`Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
`Two Seaport Lane
`Boston, MA 02210-2001
`617.646.1624 | fax: 202.408.4400 | rachel.emsley@finnegan.com | www.finnegan.com
`
`NOTICE: This e-mail is sent by a law firm and may contain information that is confidential, protected, or privileged. If you
`are not the intended recipient, please delete the email and any attachments and notify us immediately.
`
`
`
`This e-mail message is intended only for individual(s) to whom it is addressed and may contain information that is privileged, confidential, proprietary, or otherwise
`exempt from disclosure under applicable law. If you believe you have received this message in error, please advise the sender by return e-mail and delete it from
`your mailbox. Thank you.
`
`
`
`
`
`This e-mail message is intended only for individual(s) to whom it is addressed and may contain information that is privileged, confidential, proprietary, or otherwise
`exempt from disclosure under applicable law. If you believe you have received this message in error, please advise the sender by return e-mail and delete it from
`your mailbox. Thank you.
`
`3
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