Emsley, Rachel
`
`From:
`Sent:
`To:
`
`Cc:
`
`Subject:
`
`Lori Gordon <LGORDON@skgf.com>
`Thursday, May 5, 2016 4:28 PM
`'Steve Borsand (TT)'; John Phillips; CBM41919-0004CP1@fr.com; CBM41919-0005CP1
`@fr.com; CBM41919-0002CP1@fr.com; PTABInbound@fr.com; Rob Sokohl; Rob Sokohl;
`Richard M. Bemben; mrosato@wsgr.com; margenti@wsgr.com
`tt-patent-cbm@tradingtechnologies.com; Arner, Erika; joshua.golderg@finnegan.com;
`Emsley, Rachel; Rodkey, Kevin; Bell, Cory; Trading-Tech-CBM; PTAB Account
`RE: compromise proposal re: discovery and evidence
`
`Steve – 
` 
`Petitioners are also interested in the cost‐effective management of these proceedings. But, as you can appreciate, 
`Petitioners also must be permitted to adequately defend our interests. We have fully considered the various proposals 
`and demands set forth in your e‐mail of May 2nd. Our response to each is provided below.  
` 
`1) Request that "Petitioners will not object to TT directly citing and relying on testimony": Petitioners are aware of no 
`rule that prohibits TT from directly citing to deposition testimony. However, at this time, Petitioners will not waive any 
`objections to that evidence or waive requests to depose witnesses offering that testimony.  Petitioners will re‐evaluate 
`the need to depose these witnesses when we see how TT has used their testimony in its responses. Any objections to 
`the evidence will be provided within the time frame set forth in the rules. 
` 
`2) Authenticity: At this time, Petitioners will not waive any objections to authenticity of the documents.  We will provide 
`any objections to the authenticity of the documents within the time frame set forth in the rules. 
` 
`3) Demand for discovery regarding "history of how and why accused products were developed and put into products, 
`as well as what trading GUI tools were in their products prior to the inclusion of accused products:  Your implication 
`that Petitioners are in some way obligated to provide you this discovery is baseless. We will address the merits of this 
`request when TT requests authorization to file a motion for additional discovery with the Board.  In the interest of 
`streamlining the process, Petitioners will oppose any motion for additional discovery and you can consider this email 
`exchange as satisfying the meet and confer requirements. 
` 
`Regards‐ 
`Lori Gordon 
`
`  
`
`From: Steve Borsand (TT) [mailto:steve.borsand@tradingtechnologies.com]
`Sent: Monday, May 02, 2016 7:57 PM
`To: John Phillips; CBM41919-0004CP1@fr.com; CBM41919-0005CP1@fr.com; CBM41919-0002CP1@fr.com;
`PTABInbound@fr.com; Rob Sokohl; Rob Sokohl; Lori Gordon; Richard M. Bemben; mrosato@wsgr.com;
`margenti@wsgr.com
`Cc: tt-patent-cbm@tradingtechnologies.com; Arner, Erika; joshua.golderg@finnegan.com; Emsley, Rachel; Rodkey,
`Kevin; Cory Bell; Trading-Tech-CBM; PTAB Account
`Subject: compromise proposal re: discovery and evidence
`
`
`Rob -
`
`
`
`
`
`This email relates to the issue of the substantial amount of evidence from the over 10 year
`litigation history of patents that are subject to the current CBMs. As I have told you, the patents
`claim an invention that proved to be revolutionary - changing an industry. The commercial
`1
`
`Page 1 of 4
`
`TRADING TECH EXHIBIT 2396
`IBG ET AL. v. TRADING TECH
`CBM2015-00182
`
`

`
`products that embody the patent were first offered by TT in the fall of 2000 and became a
`massive commercial success. After TT started achieving success in the marketplace, there was a
`long period in which TT's competitors copied the invention (either directly or indirectly) and
`offered competing products. As you know, some of the patents have been subject to scorched
`earth litigation by multiple, well-funded companies. There was a coordinated worldwide hunt for
`prior art by joint defendants and many non-defendants. There have been well over 100
`depositions and millions of documents produced by parties to the litigation and third parties. In
`this body of material, there is substantial evidence showing that the patents are valid. This
`includes evidence relating to the mindset of persons of ordinary skill in the art at the relevant time
`period and overwhelming objective indicia of non-obviousness. This body of evidence has been
`considered by previous forums that have confirmed the validity of the patents, including a jury,
`district court judges, and reexamination examiners.
`
`
`
`
`
`Most of this evidence was known to petitioners at the time the CBM petitions were filed. We
`have been working to get any remaining components of the evidence to petitioners - working
`through third party confidentiality/protective order issues. It is clear that TT is entitled to provide
`this evidence to the Board. If denied the ability to do so, TT will certainly be deprived of due
`process.
`
`
`
`I have explained to you that TT and its counsel have been working diligently to come up with a
`reasonable proposal for how this evidence can be used in these proceedings, keeping in mind the
`streamlined nature of the proceedings. We just completed a substantial portion of this process,
`which has been very time consuming and expensive. The second sheet of the attached spreadsheet
`identifies 65 third party witnesses who have provided testimony (by declaration, deposition
`and/or trial) that is relevant. There may even be more than this. These are witnesses who do not work
`
`for TT and over which TT has no control.
`
`
`
`
`
`Based on this, we have come up with the following compromise proposal, which the parties will
`jointly communicate to the Board:
`
`
`
`(1) Petitioners will not object to TT directly citing to and relying on the testimony of the 8 fact
`witnesses and Dr. Mellor identified on sheet 1 of the attached spreadsheet as affirmative evidence (as opposed to having an expert cite
`to and rely on this testimony, for which we need no agreement). This is only 9 of at least 65 total witnesses. We have identified the
`specific portions of the testimony to
`which we intend to cite and a brief explanation, as best we can now, of the relevance. To help
`streamline matters, we have chosen only witnesses who have previously been deposed. The
`depositions have either been produced or will be produced. Based on this, petitioners can
`determine whether they desire further cross-examination of the fact witnesses. If so, TT agrees that
`petitioners should have the opportunity for further questioning of those witnesses. This should be unnecessary for Dr. Mellor because
`petitioners have already agreed that TT could affirmatively cite to portions of his declaration that are similar to the cited portions of
`his deposition testimony. As part of this compromise, the parties will seek agreement from the Board in advance that subpoenas shall
`issue if necessary. If we reach such a deal, TT will agree to limit any additional non-expert declarants to no more than a handful.
`
`
`
`(2) TT also proposes that petitioners do not object to the authenticity of the 36 documents listed
`on sheet one of the attached. This is an incredibly small subset of the millions of documents
`produced in the litigation. The list identifies the documents and, as best we can now, the
`relevance. Many of the documents were emails produced by eSpeed that eSpeed never challenged
`based on authenticity. As part of this deal, we will agree to drop authenticity objections to the
`2
`
`Page 2 of 4
`
`

`
`TSE document (we will not drop our position that the document does not qualify as prior art or
`our objections to the testimony of Mr. Kawashima).
`
`
`
`The attached spreadsheet is meant to be a guide for discussions of a compromise. Nothing in this document or our proposal should be
`treated as an admission or a waiver with respect to any issue. Accordingly, this email and the attached documents should be treated
`similarly to a communication pursuant to FRE 408.
`
`
`
`
`
`This is a significant concession on TT's part - as again, TT is entitled to affirmatively use at least all of
`the evidence cited on sheet two and many more documents. Under this proposal, TT is also
`limited by the content of the questions, which were taken in a different proceeding without all of
`the issues here in mind. That brings me to a third point of our proposal - TT cannot be
`significantly prejudiced by such a deal. Since TT is willing to agree to only affirmatively use a
`fraction of evidence that is known to exist, TT will rely heavily on expert(s) to present other
`evidence. TT needs assurances that it will not be prejudiced because of this.
`
`
`
`If we cannot reach an agreement, the only way for TT to get a fair opportunity to defend against
`these CBMs would be to obtain new subpoenas and recreate the same discovery that has already
`occurred. Based on the shear volume of information (which was obtained over years of litigation
`and great expense), the expense and time necessary to achieve this will be enormous. Indeed, we
`believe it would be impossible within the confines of the CBM proceedings.
`
`
`
`
`
`As I have discussed with you, these proceedings are not typical because of the revolutionary
`nature of the invention and the volume of evidence supporting validity - the lionshare of which
`was known by petitioners before filing the CBMs. TT believes that, as a result, these types of
`patents should not be subject to these proceedings. Without waiving that position, TT makes the
`above proposal, which seeks a more than reasonable balance - one that favors petitioners and is an
`extreme compromise by TT.
`
`
`
`In addition to the above proposal, TT needs discovery from the petitioners relating to the history
`of how and why the accused products were developed and put into their products, as well as what
`trading GUI tools were in their products prior to the inclusion of the accused products. This
`evidence is in the form of documents and testimony. In the district court litigation, 30(b)(6)
`depositions are scheduled in mid-May and we are still waiting on the production of development
`documents from both petitioners. This discovery is highly relevant. We have litigated now against
`
`many providers of such GUIs. In each case, there were documents and other evidence relating to the decision and reasons why
`such screens were developed. Inevitably, such evidence shows that the screens were developed in direct or indirect response to
`TT. The fact that both IB and TS had no GUI tool anything like the patented invention in their products until many years after TT and
`after the priority dates of the patents and the reasons why are directly contrary to petitioners' claims that it would have been obvious to
`do so. So, we need to know when that discovery is going to be produced and have a
`discussion regarding changing the schedule to accomodate such discovery.
`
`
`
`
`
`Most of the testimony/documents in the spreadsheet were included in Josh’s April 8, 2016, email.
`As a courtesy, Finnegan will reproduce everything shortly. Some of the documents will need to
`be produced under a protective order. Can we agree to use the default protective order at 77 Fed.
`
`3
`
`Page 3 of 4
`
`

`
`Reg. 48771 for all currently pending CBMs between TT, TradeStation, and/or IBG, as we have
`done in the past? If so, please send us the signed acknowledgements for your team.
`
`
` 
`
`Thanks,
`
`
`
`
`
`Steve
`
`---------------------------------------------------------------------
`Steven F. Borsand
`Executive Vice President, Intellectual Property
`Trading Technologies, Inc.
`ph: +1.312.476.1018
`fax: +1.312.476.1182
`steve.borsand@tradingtechnologies.com
`----------------------------------------------------------------------
`
`
`4
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`Page 4 of 4