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`Trials@uspto.gov
`571-272-7822
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`Paper 58
`Entered: June 24, 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
`CBM2015-00172 (Patent No. 7,783,556 B1)
`CBM2015-00179 (Patent No. 7,533,056 B2)2
`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
`Denying Motion for Additional Discovery
`37 C.F.R. § 42.5
`
`
`
`1 Case CBM2016-00035 has been joined with this proceeding.
`2 Case CBM2016-00040 has been joined with this proceeding.
`
`
`
`CBM2015-00161 (Patent No. 6,766,304 B2)
`CBM2015-00172 (Patent No. 7,783,556 B1)
`CBM2015-00179 (Patent No. 7,533,056 B2)
`CBM2015-00181 (Patent No. 7,676,411 B2)
`CBM2015-00182 (Patent No. 6,772,132 B1)
`
`
`INTRODUCTION
`
`
`
`A conference call was held on June 13, 2016 between counsel for the
`
`parties and Judges Petravick and Plenzler. A transcript of the call appears in
`
`the record. Ex. 21403 (“Tr.”). During the call, Patent Owner requested the
`
`discovery of 1) certain documents produced by the Petitioners in the related
`
`district court litigation (“Litigation Documents”), 2) transcripts of
`
`depositions held on June 8, 9, and 13, 2016 (“Deposition Transcripts”), and
`
`3) other information from certain databases (“Databases”). Ex. 3004.
`
`Petitioners opposed the discovery request.
`
`
`
`During the call, we authorized Patent Owner to file a motion for
`
`additional discovery in each of these proceedings no later than June 15, 2016
`
`and for Petitioners to file an opposition no later than June 17, 2016. Tr.
`
`32:5–33:8. We limited the motion for additional discovery to 12 pages, not
`
`including “a separate listing of the documents that you’re seeking discovery
`
`of.” Id. at 32:19–21.
`
`
`
`Late on June 15, 2016 through the early hours of June 16, 2015 (see
`
`Ex. 3004), Patent Owner filed in each of these proceedings 1) a sealed
`
`motion for additional discovery submitted for “Board Only” (Paper 54), 2) a
`
`redacted motion for additional discovery (Paper 52, “Mot.”), 3) some
`
`documents for which Patent Owner seeks discovery (Exs. 2143–2151, 2154,
`
`2156–2158), 4) a listing of the Litigation Documents and Deposition
`
`
`3 For the purposes of this Order, CBM2015-00161 is representative and all
`citations are to papers in CBM2015-00161 unless otherwise noted.
`
`
`2
`
`
`
`CBM2015-00161 (Patent No. 6,766,304 B2)
`CBM2015-00172 (Patent No. 7,783,556 B1)
`CBM2015-00179 (Patent No. 7,533,056 B2)
`CBM2015-00181 (Patent No. 7,676,411 B2)
`CBM2015-00182 (Patent No. 6,772,132 B1)
`
`Transcripts (Ex. 2152), 5) a listing of the Databases (Ex. 2153), 6) a table
`
`explaining the relevance of the Litigation Documents, Deposition
`
`Transcripts, and Databases (Ex. 2155), and 7) a motion to seal (Paper 53).
`
`The filings are identical in each proceeding. Mot. 1, n. 1.
`
`
`
`On June 16, 2016, Petitioners, via email, requested a conference call
`
`to seek authorization for a motion to strike the motion for additional
`
`discovery.4 See Ex. 3005, 2–3. We responded, via email, that we would
`
`consider the matter and that Petitioners’ authorization to file an opposition to
`
`the motion for additional discovery was withdrawn. Id. No conference call
`
`was held.
`
`
`
`For the reasons that follow, we determine that Patent Owner’s motion
`
`for additional discovery is procedurally and substantively deficient and deny
`
`the motion without the need for an opposition from Petitioners.
`
`
`
`
`
`DISCUSSION
`
`A. Routine Discovery
`
`As an initial matter, we address Patent Owner’s assertion that the
`
`requested discovery is routine discovery. During the June 13, 2016
`
`conference call, Patent Owner contended that its requested discovery is
`
`routine discovery under 37 C.F.R. § 41.51(b)(1)(i) and 41.51(b)(1)(iii). Tr.
`
`5:10–22. We explained that the requested discovery did not fall under
`
`
`4 Petitioners’ request for authorization to file a motion to strike the motion
`for additional discovery is moot because we deny the motion for additional
`discovery.
`
`3
`
`
`
`CBM2015-00161 (Patent No. 6,766,304 B2)
`CBM2015-00172 (Patent No. 7,783,556 B1)
`CBM2015-00179 (Patent No. 7,533,056 B2)
`CBM2015-00181 (Patent No. 7,676,411 B2)
`CBM2015-00182 (Patent No. 6,772,132 B1)
`
`routine discovery, but falls under additional discovery under 37 C.F.R. §
`
`41.51(b)(2)(i). Id. at 13:1–14:14. In its motion for additional discovery,
`
`Patent Owner again asserts that the requested discovery is routine discovery
`
`because “it is facially contrary to Petitioners’ positions” or inconsistent with
`
`the Petitioners’ position that the challenged claims of the patents at issue are
`
`obvious and not technological. See Mot. 1, n. 3, Mot. 3.
`
`
`
`Under 37 C.F.R. § 41.51(b)(1)(iii), “[u]nless previously served, a
`
`party must serve relevant information that is inconsistent with a position
`
`advanced by the party during the proceeding concurrent with the filing of the
`
`documents or things that contains the inconsistency” [privileged information
`
`excepted]. As explained in Garmin Int’l, Inc. v. Cuozzo Speed Techs. LLC,
`
`Case IPR2012-00001, slip op. at 3–4 (PTAB Mar. 5, 2013) (Paper 26)
`
`(precedential),
`
`routine discovery under 37 C.F.R. § 41.51(b)(1)(iii) is narrowly
`directed to specific information known to the responding party
`to be inconsistent with a position advanced by that party in the
`proceeding, and not broadly directed to any subject area in
`general within which the requesting party hopes to discover
`such inconsistent information.
`
`Here, Patent Owner’s discovery request is overly broad and not narrowly
`
`tailored to relevant information known to the Petitioners to be inconsistent
`
`with a position advanced by the Petitioners in the proceeding. Patent
`
`Owner’s requested discovery, thus, falls into additional discovery under 37
`
`C.F.R. § 42.51(b)(2).
`
`
`
`4
`
`
`
`CBM2015-00161 (Patent No. 6,766,304 B2)
`CBM2015-00172 (Patent No. 7,783,556 B1)
`CBM2015-00179 (Patent No. 7,533,056 B2)
`CBM2015-00181 (Patent No. 7,676,411 B2)
`CBM2015-00182 (Patent No. 6,772,132 B1)
`
`
`B. Motion for Additional Discovery
`
`i. Procedural Deficiencies
`
`
`
`Before turning to the merits, we address several procedural
`
`deficiencies of the motion for additional discovery. First, the Board
`
`authorized Patent Owner to file a 12 page motion for additional discovery
`
`and “a separate listing of the documents that you’re seeking discovery of.”
`
`Tr. 32:19–21. In addition to a 12 page motion for additional discovery and
`
`separate listings of the documents for which Patent Owner is seeking
`
`discovery (Ex. 2152, 2153), Patent Owner filed a single-spaced, 9 page table
`
`summarizing the relevance of the requested discovery (Ex. 2155). The table
`
`has 115 entries summarizing the relevance of the requested discovery. The
`
`motion for additional discovery mentions 15 documents or databases of the
`
`requested discovery. The motion for additional discovery cites to, relies
`
`upon, and essentially incorporates by reference the table to argue that most
`
`of the requested discovery is relevant, and does not, itself, address the
`
`relevance of all of the requested discovery. See Mot. 1, n. 2 (“The relevance
`
`of each document is listed in Exhibit 2155.”), Mot. 3 (“TT has only
`
`summarized each document[’]s relevance in Ex. 2155”). The table
`
`essentially increases the 12 page motion for additional discovery to at least
`
`21 pages, exceeding the page limit set by us. The motion for additional
`
`discovery, thus, fails to comply with our order. Additionally, the motion for
`
`additional discovery fails to comply with 37 C.F.R. § 42.6(a)(3), which
`
`prohibits incorporation of arguments from one document into another. We,
`
`thus, will not consider the arguments in Ex. 2155.
`
`5
`
`
`
`CBM2015-00161 (Patent No. 6,766,304 B2)
`CBM2015-00172 (Patent No. 7,783,556 B1)
`CBM2015-00179 (Patent No. 7,533,056 B2)
`CBM2015-00181 (Patent No. 7,676,411 B2)
`CBM2015-00182 (Patent No. 6,772,132 B1)
`
`
`
` Second, the motion for additional discovery includes a request for an
`
`extension of the time for filing the Patent Owner’s Response. Mot. 12 (“TT
`
`seeks an extension to the time for its Response.”). Although not labeled as
`
`such, Patent Owner’s request is a motion for an extension of time. See 37
`
`C.F.R. § 42.20(a) (“Relief . . . must be requested in the form of a motion.”).
`
`Patent Owner did not seek and we did not grant authorization for a motion
`
`for an extension of time, but only granted authorization for a motion for
`
`additional discovery. See generally Tr.; see 37 C.F.R. 42.20(b) (“A motion
`
`will not be entered without Board authorization.”). In addition, Patent
`
`Owner combined the motion for an extension of time with the motion for
`
`additional discovery, and combined motions are not permitted (37 C.F.R. §
`
`42.6(3)(a)).
`
`
`
`Third, Patent Owner’s motion for additional discovery and
`
`accompanying exhibits were untimely filed in some, but not all, of these
`
`proceedings. The motion for additional discovery was due no later than June
`
`15, 2016. See Tr. 32:5–33:8. In CBM2015-00172, for example, only the
`
`redacted motion for additional discovery and motion to seal were filed on
`
`June 15, 2016. The remaining papers, including the sealed motion for
`
`additional discovery and table explaining the relevance of the Litigation
`
`Documents, Deposition Transcripts, and Databases were filed on June 16,
`
`6
`
`
`
`CBM2015-00161 (Patent No. 6,766,304 B2)
`CBM2015-00172 (Patent No. 7,783,556 B1)
`CBM2015-00179 (Patent No. 7,533,056 B2)
`CBM2015-00181 (Patent No. 7,676,411 B2)
`CBM2015-00182 (Patent No. 6,772,132 B1)
`
`2016. See Ex. 3005 (email from Patent Owner indicating that some papers
`
`and documents were filed in the early morning hours of June 16, 2015).5
`
`
`
`The Board has discretion to dismiss a motion based on procedural
`
`deficiencies. See 37 C.F.R. § 42.71(a). Nonetheless, in the interest of
`
`efficiency, we consider the merits of the motion for additional discovery,
`
`and deny the motion for the following additional reasons.
`
`
`
`ii. Analysis of the Merits
`
`In covered business method patent reviews, additional discovery may
`
`be ordered if the party moving for the discovery shows good cause as to why
`
`the additional discovery is needed. 37 C.F.R. § 42.51(b)(2), 37 C.F.R. §
`
`42.324. As stated in the legislative history, “[g]iven the time deadlines
`
`imposed on these proceedings, it is anticipated that, regardless of the
`
`standards imposed in [35 U.S.C. §§ 316, 326], PTO will be conservative in
`
`its grants of discovery.” 154 Cong. Rec. S9988–89 (daily ed. Sept. 27, 2008)
`
`(statement of Sen. Kyl).
`
` As the movant, Patent Owner bears the burden of establishing good
`
`cause. Id. We generally consider five factors (the “Garmin/Bloomberg
`
`factors”) in determining whether good cause exists for granting additional
`
`discovery requests. See Garmin, slip op. at 6–7, as modified by Bloomberg,
`
`Inc. v. Market-Alerts Pty, Ltd., Case CBM2013-00005, slip op. at 4 (PTAB
`
`
`5 On June 16, 2016, Patent Owner sent an email to the Board requesting that
`its late filings and service be deemed timely. Ex. 3005. Patent Owner’s
`request is moot because we deny the motion for additional discovery.
`
`7
`
`
`
`CBM2015-00161 (Patent No. 6,766,304 B2)
`CBM2015-00172 (Patent No. 7,783,556 B1)
`CBM2015-00179 (Patent No. 7,533,056 B2)
`CBM2015-00181 (Patent No. 7,676,411 B2)
`CBM2015-00182 (Patent No. 6,772,132 B1)
`
`May 29, 2013) (Paper 32) (precedential). These factors are: (1) there must
`
`be more than a mere possibility of finding something useful; (2) a party may
`
`not seek another party’s litigation positions or the underlying basis for those
`
`positions; (3) a party should not seek information that reasonably can be
`
`generated without a discovery request; (4) instructions and questions should
`
`be easily understandable; and (5) the discovery requests must not be overly
`
`burdensome to answer. Garmin, slip op. at 6–7; Bloomberg, slip op. at 5.
`
`The first Garmin/Bloomberg factor considers whether there exists
`
`more than “mere possibility” or “mere allegation that something useful [to
`
`the proceeding] will be found.” Garmin, slip op. at 6; Bloomberg, slip op. at
`
`5. Under this factor, a party should provide a specific factual reason for
`
`reasonably expecting that discovery will be useful. Bloomberg, slip op. at 5.
`
`In this context, “useful” means favorable in substantive value to the moving
`
`party’s contention. Id. The requester of information should already be in
`
`possession of a threshold amount of evidence or reasoning tending to show
`
`beyond speculation that something useful will be uncovered.” Garmin¸slip
`
`op. 7.
`
`
`
`We are not persuaded by Patent Owner’s arguments (Mot. 7–9) that
`
`there exists more than mere possibility or mere allegation that something
`
`useful to the proceeding will be found. Patent Owner fails to sufficiently
`
`provide specific factual reasons to reasonably expect that the requested
`
`discovery will be useful. For example, Patent Owner only mentions 8
`
`specific documents in its discussion of the first Bloomberg factor (Exhibits
`
`2143, 2144, 2146–2148, and 2151). Mot. 7–9. But even for those
`
`8
`
`
`
`CBM2015-00161 (Patent No. 6,766,304 B2)
`CBM2015-00172 (Patent No. 7,783,556 B1)
`CBM2015-00179 (Patent No. 7,533,056 B2)
`CBM2015-00181 (Patent No. 7,676,411 B2)
`CBM2015-00182 (Patent No. 6,772,132 B1)
`
`documents, Patent Owner includes only a brief parenthetical describing the
`
`documents, followed by a general allegation that these documents are
`
`relevant to secondary considerations of non-obviousness. Id. As for the
`
`databases requested, Patent Owner states “[r]egarding the documents on Ex.
`
`2153 [i.e., the Databases], although these items have not yet been produced
`
`in litigation, the existence of these documents (and their relevance) is more
`
`than a mere possibility or allegation.” Mot. 9. This statement is a mere
`
`assertion and does not sufficiently establish the required specific factual
`
`reasons. The first Garmin/Bloomberg factor weighs in favor of denying
`
`discovery.
`
`The third Garmin/Bloomberg factor considers whether the sought-
`
`after information could reasonably be generated without a discovery request.
`
`Garmin, slip op. at 6; Bloomberg, slip op. at 5. In this regard, Patent Owner
`
`argues that “[t]he Documents relate to Petitioners’ internal analysis and
`
`perceptions. . . . This information can only be obtained from TS and IB, the
`
`sole parties in control of such documents. TT cannot independently generate
`
`this information.” Mot. 10.
`
`We are not persuaded by Patent Owner’s argument. Patent Owner has
`
`not provided sufficient explanation or reasoning as to why the requested
`
`discovery could not reasonably be generated without a discovery request.
`
`For example, contrary to Patent Owner’s assertion that the documents can
`
`only be obtained from Petitioners, Exhibit 2152 appears to be a brochure
`
`directed to the public and the brochure includes a world-wide-web address.
`
`Patent Owner does provide any explanation as to why Exhibit 2152 can only
`
`9
`
`
`
`CBM2015-00161 (Patent No. 6,766,304 B2)
`CBM2015-00172 (Patent No. 7,783,556 B1)
`CBM2015-00179 (Patent No. 7,533,056 B2)
`CBM2015-00181 (Patent No. 7,676,411 B2)
`CBM2015-00182 (Patent No. 6,772,132 B1)
`
`be obtained from Petitioners and cannot be generated without a discovery
`
`request. Moreover, as for the documents which Patent Owner already has in
`
`its possession, Patent Owner indicated during the June 13, 2016 conference
`
`call that it filed a motion for permission from the District Court to use that
`
`information in this proceeding. See Ex. 2040, 5:22–24. As for those
`
`documents, this discovery request would not be necessary if the District
`
`Court authorized Patent Owner to use the documents in this proceeding. We
`
`determine that the third Garmin/Bloomberg factor weighs in favor of
`
`denying the Motion.
`
`The remaining Garmin/Bloomberg factors weigh in favor of granting
`
`the motion for additional discovery, but do not outweigh the first and third
`
`factors favoring denial. In addition, the procedural deficiencies noted above
`
`weigh in favor of denial. We, thus, deny Patent Owner’s motion for
`
`additional discovery.
`
`
`
`It is hereby
`
`ORDER
`
`ORDERED that Patent Owner’s motion for additional discovery is
`
`denied.
`
`
`
`
`
`
`
`
`
`
`
`10
`
`
`
`CBM2015-00161 (Patent No. 6,766,304 B2)
`CBM2015-00172 (Patent No. 7,783,556 B1)
`CBM2015-00179 (Patent No. 7,533,056 B2)
`CBM2015-00181 (Patent No. 7,676,411 B2)
`CBM2015-00182 (Patent No. 6,772,132 B1)
`
`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
`
`
`
`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
`
`11
`
`
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