From: Emsley, Rachel [mailto:Rachel.Emsley@finnegan.com]
`Sent: Wednesday, June 08, 2016 4:24 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: Rob Sokohl <RSOKOHL@skgf.com>; Lori Gordon (LGORDON@skgf.com) <LGORDON@skgf.com>;
`rbemben@skgf.com; phillips@fr.com; Adam Kessel (Kessel@fr.com) <Kessel@fr.com>;
`mrosato@wsgr.com; margenti@wsgr.com; PTAB@skgf.com; gannon@mbhb.com;
`sigmond@mbhb.com; tt-patent-cbm@tradingtechnologies.com; Trading-Tech-CBM <Trading-Tech-
`CBM@finnegan.com>
`Subject: Request for Board Call (Discovery) in CBM2015-00161, -171, -179, -181, and 182.
`
`Your Honors,
`
`Patent Owner requests a call with the Board to discuss discovery it seeks from Petitioners’ in
`matters CBM2015-00161, -171, -179, -181, and 182.
`
`On a telephone conference of May 11, 2016, the parties and your Honors discussed the
`production of certain information in the PTAB proceeding. See CBM2015-00181, Paper No.
`47, at 5-7. At that time, the Board denied discovery, but extended the deadlines for Patent
`Owner’s Responses to June 17, “to allow Patent Owner to review any produced documents [in
`the litigation] prior to filing its Patent Owner’s Responses.” Despite the stay, the District
`Court allowed limited discovery to go forward because of its potential relevance to the PTAB
`proceedings.
`
`Some documents have now been produced by TradeStation and reviewed (in part), and Patent
`Owner seeks production of a subset of those documents (which Patent Owner has identified to
`Petitioners by Bates number) in the PTAB proceeding, in addition to the transcripts from the
`three depositions held this week and next in the District Court. Patent Owners also seek
`documents referring to customers, which, we understand were collected by Petitioners’ but
`withheld from production in the district court.
`
`TradeStation disputes the documents’ relevance. Mr. Borsand has reviewed the documents and
`discussed the relevance of specific documents with TradeStation’s PTAB counsel. He has
`explained that the documents are highly relevant and contrary to Petitioners’ positions. For
`example, many of the documents praise the claimed invention as compared to the prior art,
`evidence customer requests for claimed features, evidence implementation of the claimed
`features long after the claimed invention, discuss the importance of the claimed features, show
`evidence of copying, and describe the claimed features’ advantages over the conventional
`prior art screens using superlatives, etc. Patent Owner believes that the limited documents it
`has seen and identified to TradeStation show that additional highly-relevant documents exist
`and should be produced.
`
`

`
`
`TradeStation has not agreed to production of the documents and testimony, and nearly all of
`the documents that have been produced thus-far remain subject to protective order in the
`district court. Patent Owner seeks an order for the production of the documents and transcripts
`in the PTAB under routine discovery or, alternatively, as additional discovery. Should the
`Board need further information, Patent Owner seeks authorization for a Motion for Additional
`Discovery. To facilitate a full discussion of the documents, Patent Owner also seeks guidance
`from the Board regarding TradeStation’s position that the documents cannot be made available
`in the PTAB, at least to the Board for a determination.
`
`Patent Owner and Petitioners are available for a Board call on Thursday from 11:00 AM to 1
`PM (eastern).
`
`Thanks,
`Rachel
`
`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
`
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