Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 48
`Entered: June 9, 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.
`
`CBM2015-00179 (Patent No. 7,533,056 B2)
`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 Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`On June 6, 2016, a conference call was held between counsel for
`Petitioners, counsel for Patent Owner, and Judges Medley, Petravick and
`
`
`571-272-7822
`
`
`
`
`Paper 48
`Entered: June 9, 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.
`
`CBM2015-00179 (Patent No. 7,533,056 B2)
`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 Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`On June 6, 2016, a conference call was held between counsel for
`Petitioners, counsel for Patent Owner, and Judges Medley, Petravick and
`
`
`
`CBM2015-00179 (Patent No. 7,533,056 B2)
`CBM2015-00181 (Patent No. 7,676,411 B2)
`CBM2015-00182 (Patent No. 6,772,132 B1)
`
`Plenzler. Petitioner provided a court reporter and transcript of the call
`appears in the record (Ex. 10521).
`
`
`i. Deposition Length
`
`Mr. Kawashima, Petitioner’s witness, is scheduled to be cross-
`examined on June 17, 2016. During the call, Petitioner requested that cross-
`examination be limited to four hours because the scope of Mr. Kawashima’s
`testimony is limited to the sole issue of the date of public accessibility of the
`TSE reference. Patent Owner requested that cross-examination be limited to
`seven hours, as provided for in 37 C.F.R. § 42.53(b)(2). Although Patent
`Owner indicated that it did not foresee using the entire seven hours for cross-
`examination, it argued that there was no reason to deviate from the Rule.
`Patent Owner also argued that if translators were required, the pace of the
`cross-examination could be slowed.
`
`Upon consideration of the information presented during the call, the
`Board limited cross-examination of Mr. Kawashima to five hours. See 37
`C.F.R. § 42.53(b)(2) (allowing the Board to set the time limit for cross-
`examination). Unlike most cross-examination in covered business method
`patent review proceedings, the cross-examination of Mr. Kawashima is
`limited to one issue. The Board, indicated, however that if translation
`impeded the cross-examination to such an extent that additional time is
`necessary, the parties may agree to an extension of time.
`
`
`1 For the purposes of this Order, CBM2015-00179 is representative and all
`citations are to papers in CBM2015-00179 unless otherwise noted.
`
`
`2
`
`
`
`CBM2015-00179 (Patent No. 7,533,056 B2)
`CBM2015-00181 (Patent No. 7,676,411 B2)
`CBM2015-00182 (Patent No. 6,772,132 B1)
`
`
`
`ii. Depositions in a Foreign Language
`37 C.F.R. § 42.53(e) states that “[i]f an interpreter will be used during
`
`the deposition, the party calling the witness must initiate a conference with
`the Board at least five business days before the deposition.” During the call,
`Petitioner indicated that an interpreter may be used during Mr. Kawashima’s
`deposition.
`
`Rule 42.53 governs the taking of testimony, including cross-
`examination testimony. In addition to adhering to the requirements of that
`rule, the following guidelines are to be used when conducting a deposition in
`a foreign language. See Ariosa Diagnostics v. ISIS Innovation Ltd., Case
`IPR2012-00022, Paper 55 (PTAB Aug. 7, 2013). Below, “party” refers to
`the party proffering the witness, and “opponent” refers to the party cross-
`examining the witness.
`1. The party proffering the witness is responsible for providing a “first
`interpreter” who can interpret using a consecutive mode of
`interpretation.
`2. At least three (3) business days before the cross-examination
`deposition, the party shall provide to the opponent the name, business
`address, business telephone number, e-mail address, and resume of the
`first interpreter.
`3. The opponent may engage the services at the counsel table of a
`“second interpreter.”
`4. At least three (3) business days before the cross-examination
`deposition, the opponent shall provide to the party the name, business
`
`3
`
`
`
`CBM2015-00179 (Patent No. 7,533,056 B2)
`CBM2015-00181 (Patent No. 7,676,411 B2)
`CBM2015-00182 (Patent No. 6,772,132 B1)
`
`address, business telephone number, e-mail address, and resume of the
`second interpreter.
`5. The consecutive mode of interpretation shall be used.
`6. If the second interpreter has a disagreement with the first interpreter
`regarding the interpretation of the question and/or the answer, the
`second interpreter should inform counsel by note. If counsel desires
`to raise the disagreement on the record, the second interpreter, using
`the consecutive mode, will be allowed to interpret the question for the
`witness, as well as the witness' answer to the second interpreter's
`interpretation of the question.
`7. If there is a disagreement as to interpretation, and the first and
`second interpreter cannot work out a mutually agreeable
`interpretation, an objection should be made on the record, and the first
`and second interpreter should specify on the record what they believe
`to be the correct interpretation.
`8. In such an event, the Board will determine which interpretation, if
`any, is to be accorded more weight.
`9. Collateral attacks with respect to the qualifications of any
`interpreter, or the manner in which any question or answer was
`interpreted, shall not be allowed after the conclusion of the deposition.
`10. Copies of any documents which an interpreter will be required to
`“sight translate” at the deposition shall be provided to the interpreter
`no later than two days before the deposition is to take place. Failure
`to timely provide the documents may result in their exclusion from
`
`4
`
`
`
`CBM2015-00179 (Patent No. 7,533,056 B2)
`CBM2015-00181 (Patent No. 7,676,411 B2)
`CBM2015-00182 (Patent No. 6,772,132 B1)
`
`evidence. Unless agreed to by both parties, the interpreter shall not
`reveal to opposing counsel the nature of any document so provided.
`11. If, at any time during the deposition, the interpreter is unable to
`interpret or translate a word, expression, or special term, the
`interpreter shall, on the record, advise the parties of the issue.
`12. An individual may not serve simultaneously as both an attorney
`for a party and as an interpreter.
`
`
`
`iii. Disputes During the Deposition
`
`Petitioner requested guidance concerning contacting the Board if a
`dispute arose during Mr. Kawashima’s cross-examination, which will occur
`in California. The Board indicated that the parties should follow the
`testimony guideline in Appendix D of the Trial Practice Guide. See Office
`Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,772 (Aug. 14, 2012)
`(Final Rule). Under the guidelines, an objection at the time of examination
`should be put on the record, but the examination still proceeds. Id.
`“Counsel may instruct a witness not to answer only when necessary to
`preserve a privilege, to enforce a limitation ordered by the Board, or to
`present a motion to terminate or limit the testimony.” Id.
`
` If the parties follow the testimony guidelines and the additional
`guidelines above, it is unlikely that the parties will need to contact the
`Board. As to Petitioner’s concern that the Board will be unavailable should
`a dispute arise, due to the Board’s headquarters and California being located
`in different time zones, Mr. Kawashima’s deposition may be scheduled for
`early in the day.
`
`5
`
`
`
`CBM2015-00179 (Patent No. 7,533,056 B2)
`CBM2015-00181 (Patent No. 7,676,411 B2)
`CBM2015-00182 (Patent No. 6,772,132 B1)
`
`iv. Request for Rehearing Withdrawn
`
`During the conference call, Petitioner withdrew its Request for
`Rehearing of the Board’s April 15, 2016 Order authorizing cross-
`examination of Mr. Kawashima (Paper 50). Ex. 1052, 13:13–14:13.
`
`
`It is:
`
`ORDERED that the above guidelines shall cover the taking of a
`
`deposition in a foreign language in these proceedings;
`
`FURTHER ORDERED that the conference call held on June 6, 2016,
`and this order meet the requirement of 37 C.F.R. § 42.53(e).
`
`
`PETITIONER:
`Robert Sokohl
`Lori Gordon
`Richard Bemben
`STERN, KESSLER, GOLDSTEIN & FOX
`Rsokohl-ptab@skgf.com
`Lgordon-ptab@skgf.com
`Rbemben-ptab@skgf.com
`
`John Phillips
`FISH & RICHARDSON, P.C.
`CBM41919-0007CP1@fr.com
`
`PATENT OWNER:
`Erika H. Arner
`Joshua L. Goldberg
`Kevin D. Rodkey
`Rachel L. Emsley
`FINNEGAN, HENDERSON, FARABOW, GARRET & DUNNER, LLP
`
`6
`
`
`
`CBM2015-00179 (Patent No. 7,533,056 B2)
`CBM2015-00181 (Patent No. 7,676,411 B2)
`CBM2015-00182 (Patent No. 6,772,132 B1)
`
`erika.arner@finnegan.com
`joshua.goldberg@finnegan.com
`kevin.rodkey@finnegan.com
`rachel.emsley@finnegan.com
`
`Steven F. Borsand
`TRADING TECHNOLOGIES INTERNATIONAL, INC.
`tt-patent-cbm@tradingtechnologies.com
`
`Michael D. Gannon
`Leif R. Sigmond, Jr.
`MCDONNELL BOEHNEN HULBERT & BERGHOFF LLP
`gannon@mbhb.com
`sigmond@mbhb.com
`
`7
`
`
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