Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 9
`Entered: November 24, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`TRADESTATION GROUP, INC, and
`TRADESTATION SECURITIES, INC.,
`Petitioner,
`
`IBG LLC, INTERACTIVE BROKERS LLC,
`TRADSTATION GROUP, INC., TRADESTATION SECURITIES, INC.,
`TRADESTATION TECHNOLOGIES, INC., IBFX, INC., CQG, INC., and
`CQGT, LLC,
`Petitioner,
`
`IBG LLC, INTERACTIVE BROKERS LLC,
`TRADSTATION GROUP, INC, TRADESTATION SECURITIES, INC.,
`TRADESTATION TECHNOLOGIES, INC., and IBFX, INC.,
`Petitioner,
`
`IBG LLC, INTERACTIVE BROKERS LLC, CQG, INC., and CQGT, LLC,
`Petitioner,
`
`v.
`
`TRADING TECHNOLOGIES INTERNATIONAL, INC.,
`Patent Owner.
`
`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)
`CBM2016-00009 (Patent No. 7,685,055 B2)
`
`
`
`
`
`Before SALLY C. MEDLEY, MEREDITH C. PETRAVICK, and PHILIP J.
`HOFFMANN Administrative Patent Judges.
`
`
`571-272-7822
`
`
`
`
`Paper 9
`Entered: November 24, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`TRADESTATION GROUP, INC, and
`TRADESTATION SECURITIES, INC.,
`Petitioner,
`
`IBG LLC, INTERACTIVE BROKERS LLC,
`TRADSTATION GROUP, INC., TRADESTATION SECURITIES, INC.,
`TRADESTATION TECHNOLOGIES, INC., IBFX, INC., CQG, INC., and
`CQGT, LLC,
`Petitioner,
`
`IBG LLC, INTERACTIVE BROKERS LLC,
`TRADSTATION GROUP, INC, TRADESTATION SECURITIES, INC.,
`TRADESTATION TECHNOLOGIES, INC., and IBFX, INC.,
`Petitioner,
`
`IBG LLC, INTERACTIVE BROKERS LLC, CQG, INC., and CQGT, LLC,
`Petitioner,
`
`v.
`
`TRADING TECHNOLOGIES INTERNATIONAL, INC.,
`Patent Owner.
`
`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)
`CBM2016-00009 (Patent No. 7,685,055 B2)
`
`
`
`
`
`Before SALLY C. MEDLEY, MEREDITH C. PETRAVICK, and PHILIP J.
`HOFFMANN Administrative Patent Judges.
`
`
`
`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)
`CBM2016-00009 (Patent No. 7,685,055 B2)
`
`PETRAVICK, Administrative Patent Judge.
`
`
`
`ORDER1
`Conduct of Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`On November 23, 2015, a conference call was held involving counsel
`for the respective parties and Judges Medley, Petravick, and Hoffmann.
`Patent Owner initiated the call to discuss the following topics: 1)
`authorization for Patent Owner to file a motion to dismiss; 2) Patent
`Owner’s intention to suggest the need for an expanded panel; 3)
`authorization for Patent Owner to file a motion to terminate, consolidate, or
`stay pending reexaminations related to CBM2015-000179 and CBM2016-
`00009; and 4) confirmation of procedures for notifying the Board of
`communications with Under Secretary of Commerce for Intellectual
`Property and Director of the United State Patent and Trademark Office
`Michelle Lee.
`
`
`Motion to Dismiss
`Patent Owner requested authorization to file a single motion to
`
`dismiss all of these proceedings. The motion to dismiss would address
`
`1 This Order addresses the same or similar issues in the proceedings listed
`above. Therefore, we issue one Order to be filed in each proceeding. The
`parties, however, are not authorized to use this style of filing.
`
`
`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)
`CBM2016-00009 (Patent No. 7,685,055 B2)
`
`issues that are allegedly common to all proceedings; specifically, whether
`the Board should dismiss the petitions because the Petitioners are allegedly a
`litigation joint defense group that is abusing the process by serially filing
`covered business method patent review petitions and because the patents are
`not covered business method patents.
`
`Petitioners opposed the request because additional briefing is
`unwarranted. According to Petitioners, the issue of whether or not a patent
`is a covered business method patent is unique in each proceeding and such
`arguments are properly made in a preliminary response.
`Based upon the information presented during the call, the Board
`denied Patent Owner authorization to file a motion to dismiss. A separate
`motion to dismiss would not be warranted as Patent Owner may include
`such arguments in its preliminary responses in CBM2015-00179,
`CBM2015-00181, CBM2015-00182, and CBM2016-00009, which have not
`yet been filed.
`In CBM2015-00161 and CBM2015-00172, Preliminary responses
`have been filed. The Board authorized Patent Owner to file a replacement
`preliminary response, incorporating such arguments. Any replacement
`preliminary response must be filed no later than November 30, 2015 and
`must comply with the 80 page limit set out in 37 C.F.R. § 42.24(a)(1).
`
`
`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)
`CBM2016-00009 (Patent No. 7,685,055 B2)
`
`Expanded Panel Suggestion
`Patent Owner indicated an intention to suggest the need for an
`
`expanded panel to consider whether the patents are covered business method
`patents.
`Parties are not permitted to request panel expansion. The Chief
`Judge, on behalf of the Director, may act to expand a panel on a
`“suggestion” from a judge or panel. Whether to expand the panel on a
`“suggestion” involves consideration of whether the issue is one of conflict
`with an authoritative decision of our reviewing courts or a precedential
`decision of the Board, or whether the issue raises a conflict regarding a
`contrary legal interpretation of a statute or regulation. AOL, Inc. v. Coho
`Licensing LLC, Paper 12, IPR2014-00771 (Mar. 24, 2015) (informative);
`Conopco, Inc. v. Protecr & Gamble Co., Paper 25, IPR2014-00506 (Dec. 10,
`2014) (informative).
`Patent Owner may include in its preliminary response or replacement
`preliminary response a discussion of why it believes an expanded panel is
`needed.
`
`
`Motion to Terminate, Consolidate, or Stay Related Reexaminations
`Patent Owner requested authorization for a motion to terminate,
`consolidate, or stay reexamination proceedings related to the patents in
`CBM2015-00179 and CBM2016-00009. U.S. Patent No. 7,533,056 B2 is
`the subject of covered business method patent review CBM2015-00179 and
`
`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)
`CBM2016-00009 (Patent No. 7,685,055 B2)
`
`the subject of reexamination Control No. 90/013,578. U.S. Patent No.
`7,685,055 B2 is the subject of covered business method patent review
`CBM2016-00009 and the subject of reexamination Control No. 90/013,624.
`Petitioner did not oppose the motion.
`
`The Director has authority to stay a reexamination proceeding
`pursuant to 35 U.S.C. § 325(d), and the Board has authority to enter an order
`to effect such a stay pursuant to 37 C.F.R. § 42.222(a). See also 37 C.F.R. §
`42.3(a) (permitting the Board to exercise exclusive jurisdiction within the
`Office over an involved patent during the proceeding).
`
`The Board denied Patent Owner’s request to file a motion to
`terminate, consolidate, or stay the related reexamination in CBM2015-00179
`and CBM2016-00009. As noted by the panel during the conference call, the
`panel has not decided whether to institute a review in any of the instant
`proceedings. At such a preliminary stage, it would be premature to consider
`whether to stay the reexamination proceedings, which would not comport
`with the goal of administering the proceedings in a just, speedy and
`inexpensive way. 37 C.F.R. § 42.1. Should the Board decide not to institute
`review, any request to stay the reexamination proceedings would become
`moot. Patent Owner may renew its request if a decision to institute is
`entered in CBM2015-00179 and CBM2016-00009.
`
`
`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)
`CBM2016-00009 (Patent No. 7,685,055 B2)
`
`Letters to the Director
`
`Patent Owner identified several letters, regarding alleged abuse of the
`covered business method patent review process and post-grant review
`process, from Patent Owner to Under Secretary of Commerce for Intellectual
`Property and Director of the United States Patent and Trademark Office
`Michelle Lee, as related matters. See e.g., CBM2015-00161, Papers 6, 21,
`24, Exs. 2001, 2014, 2094.
`Our Rules require the parties to “identify any other . . . administrative
`matter that would affect, or be affected by, a decision in the proceeding” and
`to update the Board as to any changes. 37 C.F.R. § 42.8(a)(3), (b)(2). The
`Board indicated that such letters should continue to be listed as a related
`matter in the parties’ mandatory notices. A copy of any such letters should
`be filed as an exhibit, and attachments to the letters need not be filed.
`Petitioners requested authorization to file a reply to any preliminary
`response to address possible inconsistency with the letters. The Board
`denied Petitioners’ request, explaining that whether a trial is instituted in
`these proceedings will be based upon the merits of the substantive papers
`filed in the proceedings (e.g., petition and preliminary response), and not
`upon the letters.
`Counsel for Petitioner in CBM2014-00161 and CBM2015-00172 also
`inquired as to whether Petitioners could send a response to the letters to the
`Under Secretary and Director. The Board indicated that any such letters
`
`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)
`CBM2016-00009 (Patent No. 7,685,055 B2)
`
`should be served upon Patent Owner (see CBM2014-00181, Paper 15) and
`identified in the parties’ mandatory notices, as discussed above.
`
`Accordingly, it is:
`ORDERED that Patent Owner is not authorized to file a motion to
`dismiss in any of the proceedings;
`FURTHER ORDERED that Patent Owner may file a replacement
`preliminary response in each of CBM2015-00161 and CBM2015-00172, no
`later than November 30, 2015 and no more than 80 pages;
`FURTHER ORDERED that Patent Owner is not authorized to file a
`motion to stay the related reexamination in CBM2015-00179 or CBM2016-
`00009; and
`FURTHER ORDERED that Petitioners are not authorized to file a
`reply to any preliminary response in these proceedings.
`
`
`
`
`
`
`
`
`
`
`
`
`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)
`CBM2016-00009 (Patent No. 7,685,055 B2)
`
`
`PETITIONER:
`John C. Phillips
`Kevin Su
`phillips@fr.com
`CBM41919-0005CP1@fr.com
`
`Robert E. Sokohl
`Lori A. Gordon
`Jonathan M. Strang
`Richard M. Bemben
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`
`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, GARRETT & DUNNER, LLP
`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
`
`
`8
`
`
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