Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 64
`Entered: January 4, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`IBG LLC and INTERACTIVE BROKERS LLC,
`Petitioner,
`
`v.
`
`TRADING TECHNOLOGIES INTERNATIONAL, INC,
`Patent Owner.
`_______________
`
`CBM2016-00009
`Patent 7,685,055 B2
`_______________
`
`
`Before SALLY C. MEDLEY, MEREDITH C. PETRAVICK, and
`JEREMY M. PLENZLER, Administrative Patent Judges.
`
`PETRAVICK, Administrative Patent Judge.
`
`
`
`ORDER
`Denying Authorization to file
`Supplemental Authority and to file a Motion to Strike
`37 C.F.R. § 42.20 (b)
`
`
`
`On December 14, 2016, a conference call was held between counsel
`
`for the parties and Judges Medley, Petravick, and Plenzler. A transcript of
`the call appears in the record. Ex. 2343. Patent Owner requested the call to
`
`
`Tel: 571-272-7822
`
`Paper 64
`Entered: January 4, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`IBG LLC and INTERACTIVE BROKERS LLC,
`Petitioner,
`
`v.
`
`TRADING TECHNOLOGIES INTERNATIONAL, INC,
`Patent Owner.
`_______________
`
`CBM2016-00009
`Patent 7,685,055 B2
`_______________
`
`
`Before SALLY C. MEDLEY, MEREDITH C. PETRAVICK, and
`JEREMY M. PLENZLER, Administrative Patent Judges.
`
`PETRAVICK, Administrative Patent Judge.
`
`
`
`ORDER
`Denying Authorization to file
`Supplemental Authority and to file a Motion to Strike
`37 C.F.R. § 42.20 (b)
`
`
`
`On December 14, 2016, a conference call was held between counsel
`
`for the parties and Judges Medley, Petravick, and Plenzler. A transcript of
`the call appears in the record. Ex. 2343. Patent Owner requested the call to
`
`
`
`CBM2016-00009
`Patent 7,685,055 B2
`
`seek authorization to file supplemental submissions and authorization to file
`a motion to strike. For the reasons below, Patent Owner’s requests are
`denied.
`
`Supplemental Submissions
`Patent Owner requested authorization to file additional submissions
`explaining the relevance of the following decisions that issued after the
`Patent Owner’s Response was filed on July 21, 2016: In re Nuvasive, Inc.,
`No. 2015-1670 (Fed. Cir. Dec. 7, 2016); GoPRo, Inc. v. Contour IP Holding
`LLC, IPR2015-01080, Paper 55, 18–28 (PTAB Oct. 26, 2016); Apple Inc. v.
`Samsung Elecs. Co., 839 F.3d 1034 (Fed. Cir. Oct. 7, 2016); Arendi S.A.R.L.
`v. Apple Inc., 832 F.3d 1355 (Fed. Cir. Aug. 10, 2016); Amdocs (Israel) Ltd.
`v. Openet Telecom, Inc., No. 2015-1180 (Fed. Cir. Nov. 1, 2016); and
`McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir.
`Sept. 13, 2016). Ex. 3005, 3–4. Petitioner opposed Patent Owner’s request.
`Patent Owner’s request is denied. As the movant, Patent Owner has
`the burden of proof of establishing that it is entitled to the relief requested.
`37 C.F.R. § 42.20(c). Based upon the information presented during the call
`(see Ex. 2343), we determine that Patent Owner did not establish good cause
`to file the additional submissions. Patent Owner did not sufficiently explain
`why these decisions add some more than what was already discussed in its
`substantive papers. For example, Patent Owner indicated that GoPRo, Inc.,
`a non-precedential, non-binding Board decision, relates to the meaning of
`printed publication under 35 U.S.C. § 102(b). In GoPRo, Inc., the Board
`applied the standard for determining whether a prior art is a printed
`publication enunciated in Blue Calypso, LLC v. Groupon, Inc., 815 F.3d
`1331, 1348 (Fed. Cir. 2016). IPR2015-01080, Paper 55, 21. The Patent
`
` 2
`
`
`
`
`
`
`
`CBM2016-00009
`Patent 7,685,055 B2
`
`Owner’s Response already addresses the standard from Blue Calypso. Paper
`32, 44.
`In as much as Patent Owner’s request was an attempt to make the
`Board aware of these decision, we see no harm in making the decisions of
`record. The Board is generally aware of decisions issued by it and the
`Federal Circuit. Per this order, the decisions are made of record.
`
`
`Motion to Strike
`On November 11, 2015, Patent Owner requested authorization to file
`
`a motion to strike Petitioner’s Reply (Paper 42) because it allegedly raises
`new arguments for the first time. Ex. 3006, 1–2. At that time, the Board
`authorized Patent Owner to file a listing identifying the portions of the Reply
`that allegedly raise new arguments and authorized Petitioner to file a listing
`identifying where the alleged new arguments were first raised in the record.
`Id. at 1. The listings appear in the record as Papers 44 and 48.
`
`On December 14, 2016, Patent Owner again requested authorization
`to file a motion to strike, arguing that cross examination testimony of David
`Rho indicated that the Reply and the supporting Declaration of Mr. Rho
`contained new arguments. Ex. 3005, 2. Petitioner denied that Mr. Rho’s
`testimony indicated such and opposed Patent Owner’s request. Id. at 1.
`
`Patent Owner’s request to file a motion to strike is denied. Pursuant
`to 37 C.F.R. § 42.23(b), the Reply may only respond to arguments raised in
`the Patent Owner Response. The Board is capable of determining for itself
`whether the Reply complies with this rule. When making the final decision,
`we will consider the listings filed by the parties. Arguments that we
`determine fail to comply with Rule 42.23(b) will not be considered.
`
` 3
`
`
`
`
`
`
`
`CBM2016-00009
`Patent 7,685,055 B2
`
`During the December 14, 2016 conference call, Patent Owner
`
`requested authorization to file briefing to address the alleged new arguments
`should Patent Owner’s request to file a motion to strike be denied. Ex. 2343,
`19:24–21:10. Patent Owner’s request to file additional briefing (i.e., a sur-
`reply) is denied. If we determine that the Reply contains new arguments,
`then those arguments will not be considered. There is no need for a sur-reply
`to address arguments that are not considered. If we determine that the Reply
`does not contain new argument, then Patent Owner had opportunity to
`address the arguments in the Patent Owner’s Response. Patent Owner has
`not established good cause to file a sur-reply.
`
`
`
`Additional Matter
`
`On December 21, 2016, via email, Petitioner and Patent Owner jointly
`requested that the Board waive the requirement of 37 C.F.R. § 42.70(b) that
`the parties serve demonstratives at least seven business days before the
`hearing — here, December 27, 2016. The parties requested that the Board
`allow service of demonstratives on December 29, 2016 because of the short
`time period until the hearing and intervening holidays. Ex. 3007. Via reply
`email, the Board granted the parties’ request. Id.
`
`It is:
`
`ORDERED that Patent Owner’s request for authorization to file
`
`additional submissions explaining the relevance of the above decisions is
`denied;
`
`FURTHER ORDERED that Patent Owner’s request for authorization
`to file a motion to strike is denied; and
`
` 4
`
`
`
`
`
`
`
`CBM2016-00009
`Patent 7,685,055 B2
`
`FURTHER ORDERED that Patent Owner’s request for authorization
`
`to file a sur-reply to address alleged new arguments in the Petitioner’s Reply
`is denied.
`
`
`
` 5
`
`
`
`
`
`
`
`CBM2016-00009
`Patent 7,685,055 B2
`
`PETITIONER:
`
`Robert E. Sokohl
`Lori Gordon
`Richard M. Bemben
`STERN, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`lgordon-ptab@skgf.com
`rsokohl-ptab@skgf.com
`rbemben-ptab@skgf.com
`PTAB@skgf.com
`
`
`PATENT OWNER:
`
`Leif Sigmond
`Cole Richter
`Michael Gannon
`Leif Sigmond
`Jennifer Kurcz
`MCDONNELL BOEHNEN HULBERT & BERGHOFF LLP
`sigmond@mbhb.com
`richter@mbhb.com
`gannon@mbhb.com
`sigmond@mbhb.com
`kurcz@mbhb.com
`
`Kevin Rodkey
`Rachel Emsley
`Cory Bell
`Joshua Goldberg
`Erika Arner
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
`kevin.rodkey@finnegan.com
`rachel.emsley@finnegan.com
`cory.bell@finnegan.com
`joshua.goldberg@finnegan.com
`erika.arner@finnegan.com
`
`
`
` 6
`
`
`
`
`
`
`
`CBM2016-00009
`Patent 7,685,055 B2
`
`Steven F. Borsand
`Jay Knobloch
`TRADING TECHNOLOGIES INTERNATIONAL, INC.
`tt-patent-cbm@tradingtechnologies.com
`jay.knobloch@tradingtechnologies.com
`
`
`
` 7
`
`
`
`
`
`
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