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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
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`IBG LLC and INTERACTIVE BROKERS LLC,
`Petitioners
`
`v.
`
`TRADING TECHNOLOGIES INTERNATIONAL, INC.,
`Patent Owner
`_____________
`
`Case CBM2016–00009
`Patent 7,685,055 B2
`_____________
`
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`PETITIONERS’ MOTION TO EXCLUDE
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`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313–1450
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`Petitioners’ Motion to Exclude
`CBM2016-00009
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`TABLE OF CONTENTS
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`I.
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`INTRODUCTION ............................................................................................... 1
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`II. ARGUMENT ...................................................................................................... 3
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`A.
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`B.
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`C.
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`D.
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`E.
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`eSpeed Jury Verdict Form and Docket Entry: Exhibits 2030, 2032 ......... 3
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`Gould-Bear Declaration: Exhibit 2168 ....................................................... 4
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`Thomas Declaration: Exhibit 2169 (¶¶ 127-128) ....................................... 5
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`The eSpeed and CGQ Deposition Excerpts: Exhibits 2292-2296 .............. 7
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`The Abilock Declarations: Exhibits 2334 and 2339 .................................. 8
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`III. CONCLUSION ................................................................................................... 9
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`Petitioners’ Motion to Exclude
`CBM2016-00009
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`I.
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`INTRODUCTION
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`Petitioners file this motion pursuant to 37 C.F.R. § 42.64(c) and in
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`accordance with the Joint Stipulation to Move Due Dates 4 and 5. (Paper 46.) The
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`Board should exclude Patent Owner Trading Technologies International, Inc.’s
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`(“TT”) Exhibits 2030, 2032, 2168, 2169 (¶¶ 127-128), 2292-2296, 2334 and 2339
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`because these documents are irrelevant and/or constitute hearsay to which no
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`exception applies.
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`TT knows that its evidence suffers from significant admissibility problems.
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`Indeed, TT preemptively sought a blanket waiver from the Board so that it could
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`rely on a “large volume of documents produced in previous district court cases”
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`without regard to the Board’s Rules and Federal Rules of Evidence 802 and 901.
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`(Paper 22 at 2–3.) The Board denied TT’s request. (See id.) Having been denied
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`permission to do so, TT proceeded to file numerous documents from the district
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`court cases, including Exhibits 2030, 2032 and 2292-2296, without regard to the
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`Board’s order and the rules governing this proceeding. (See Paper 25 (Patent
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`Owner’s Updated Exhibit List).) That evidence should be stricken.
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`The ’055 patent was not at issue in TT’s prior litigations and has a different
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`effective filing date than the patents that were at issue. TT has failed to show that
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`Exhibits 2030, 2032 and 2292-2296, presented at different trials, before different
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`tribunals, involving different parties, and involving different patents, have “any
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`Petitioners’ Motion to Exclude
`CBM2016-00009
`tendency to make a fact [of consequence in determining this action] more or less
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`probable than it would be without the evidence.” FRE 401.
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`In addition, Exhibits 2030, 2032, 2292-2296 violate the prohibition on
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`hearsay. See FRE 802. Absent one of the well-established exceptions to hearsay,
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`such as the unavailability of a declarant, hearsay is inadmissible.
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`TT’s attempt to circumvent the admissibility rules regarding Exhibits 2292-
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`2296 by summarizing, characterizing, and/or quoting from these documents in
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`paragraphs 127-128 of the declaration of its expert, Mr. Thomas (Exhibit 2169), is
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`also improper. Rule 702 permits an expert to offer opinions based on his
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`specialized knowledge in the field. But these portions of Mr. Thomas’ declaration
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`are not opinions of Mr. Thomas. Rather, Mr. Thomas purports to offer factual
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`testimony that is not based on his own perception but is instead based upon his
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`review of the inadmissible deposition testimony recorded in Exhibits 2292-2296.
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`TT may not use Mr. Thomas as a mere conduit for impermissible hearsay. The
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`testimony contained in paragraphs 127-128 of Exhibit 2169 is improper and should
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`be excluded.
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`TT has failed to show that Exhibit 2168, prepared for prior CBM
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`proceedings involving different patents, is relevant to the matters at issue in this
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`proceeding. The testimony therein is limited to the claims of U.S. Patent Nos.
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`6,766,304; 6,772,132; and 7,676,411, which are not at issue in this proceeding and
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`Petitioners’ Motion to Exclude
`CBM2016-00009
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`have a different effective filing date than the ’055 patent.
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`TT has also failed to show that Exhibits 2334 and 2339 are relevant to the
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`matters at issue in this proceeding. These declarations, from a translator who
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`testified about how a Japanese reader (i.e., a layperson) would have understood
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`certain portions of TSE (Exhibit 1007), are not relevant to the obviousness
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`determination. Obviousness is determined from the perspective of a person of
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`ordinary skill in the art at the time of the invention, not a layperson.
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`II. ARGUMENT
`A.
`eSpeed Jury Verdict Form and Docket Entry: Exhibits 2030, 2032
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`The Board should exclude Exhibits 2030 and 2032, which purport to be a
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`jury verdict form and docket entry, respectively, associated with Trading
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`Technologies Int’l, Inc. v. eSpeed, Inc., No. 1:04-cv-05312. TT offered Exhibit
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`2030 as evidence that TSE does not qualify as prior art. (See Paper 11 at 71; Paper
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`32 at 48 n.8.) It offers Exhibit 2032 for the same purpose. (See Paper 11 at 71.)
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`Petitioners timely objected to Exhibits 2030 and 2032 on the basis of, among other
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`things, lack of relevance and hearsay. (Paper 23 at 13-14.)
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`Neither the jury’s findings nor the district court’s decision are probative of
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`any issue before the Board. Accordingly, this evidence is irrelevant and
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`inadmissible. See FRE 401. The ’055 patent was not at issue in the eSpeed
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`litigation and it has a different effective filing date than the patents that were at
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`Petitioners’ Motion to Exclude
`CBM2016-00009
`issue in eSpeed. The fact that the eSpeed jury found that a third party defendant did
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`not meet its burden of proving the patents at issue in that litigation obvious under
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`the clear and convincing evidence standard is not relevant to whether Petitioners
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`have met their burden of demonstrating the ’055 patent to be unpatentable under
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`the preponderance of the evidence standard. Nor are these documents relevant to
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`whether the ’055 patent claims eligible subject matter under 35 U.S.C. § 101.
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`Accordingly, Exhibits 2030 and 2032 should be excluded as irrelevant. See FRE
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`401.
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`The Board should also exclude these exhibits because they are hearsay being
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`offered for the truth of the matter asserted. FRE 801. Exhibits 2030 and 2032 do
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`not meet any of the conditions set forth in FRE 801(d) such that they could be
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`deemed non-hearsay. Accordingly, the Board should exclude these exhibits from
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`the record.
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`B. Gould-Bear Declaration: Exhibit 2168
`The Board should exclude the Gould-Bear Declaration (Exhibit 2168) under
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`FRE 402 because it is not relevant to the matters at issue in this proceeding. See
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`FRE 401. TT relies on Mr. Gould-Bear’s testimony to refute that the ’055 patent is
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`eligible for CBM review and that the ’055 patent is not patent eligible. (Paper 32 at
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`24 (patent eligibility); 27, 29, 30, 31, 32 (CBM eligibility).) Petitioners timely
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`objected to Exhibit 2168 for lack of relevance. (Paper 34 at 5-6.)
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`Petitioners’ Motion to Exclude
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`Mr. Gould-Bear did not review the ’055 patent or its claims. (Exhibit 2168,
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`¶ 1, 21 (listing materials reviewed).) His testimony is directed solely to U.S. Patent
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`Nos. 6,766,304; 6,772,132; and 7,676,411, which are not at issue in this
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`proceeding and have a different effective filing date than the ’055 patent. (Id. at ¶ 1
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`(the ’411 patent is mistakenly referenced as “7,767,411” in this paragraph).) Mr.
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`Gould-Bear does not indicate or suggest that his testimony is applicable to the ’055
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`patent. Thus, Mr. Gould-Bear’s testimony regarding the claims of the ’304, ’132
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`and ’411 patents does not have “any tendency to make a fact [of consequence in
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`determining this action] more or less probable than it would be without the
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`evidence.” FRE 401. Accordingly, Exhibit 2168 should be excluded as irrelevant.
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`See FRE 401.
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`C. Thomas Declaration: Exhibit 2169 (¶¶ 127-128)
`Several portions of the Declaration of Christopher Thomas (Exhibit 2169),
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`TT’s expert, exceed the proper boundaries of expert testimony and should be
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`stricken from the record. TT relies on Thomas’s declaration testimony throughout
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`its POR. (See Paper 32 at 10, 20, 33-43, 46, 54-80, and 83-87.) Petitioners timely
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`objected to Exhibit 2169 on the basis of, among other things, inadmissible hearsay
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`and improper expert testimony in violation of at least FRE 701, 702 and 703.
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`(Paper 34 at 6-7.) The Board should exclude the portions of Exhibit 2169 that
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`merely repeat, summarize, and/or characterize hearsay statements made by
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`Petitioners’ Motion to Exclude
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`declarants outside of this proceeding, including paragraphs ¶¶ 127-128.
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`The Federal Rules contemplate that an expert’s testimony will be based on
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`three sources: (1) first hand observation by the expert; (2) presentation at trial; or
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`(3) the kinds of facts or data that that an expert in the field would reasonably rely
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`on in forming an opinion. FRE 703, 1972 Advisory Committee Notes. None of
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`these sources apply to the testimony set forth below.
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`Paragraphs 127-128 of the Thomas Declaration summarize, characterize,
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`and/or quote from deposition transcripts from TT’s prior litigations, which
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`involved patents that are not at issue in this proceeding. (Exhibit 2169, ¶ 127 (Ex.
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`2292); ¶ 128 (Exs. 2292, 2293, 2294, 2295, 2296).) Not only is this prior testimony
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`irrelevant, it is impermissible hearsay. (See Section II.D, infra.)
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`While an expert may generally rely on hearsay, expert testimony cannot be
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`used as a vehicle to evade the hearsay requirement. See United States v. Dukagjini,
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`326 F.3d 45, 57–59 (2nd Cir. 2003). Rule 702 requires that expert testimony be
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`“based on sufficient facts or data” to be admissible. FRE 702(b). By simply
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`repeating or summarizing the hearsay testimony discussed, Thomas has crossed the
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`line from permissibly relying on hearsay to form his expert opinion to
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`impermissibly being a mere conduit for hearsay. Dukagjini, 326 F.3d at 57–59; see
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`also Lakah v. UBS AG, 996 F. Supp. 2d 250, 259 (S.D.N.Y. 2014). The Board
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`should exclude the rank hearsay portions of Exhibit 2169, including paragraphs
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`Petitioners’ Motion to Exclude
`CBM2016-00009
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`127-128.
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`D. The eSpeed and CGQ Deposition Excerpts: Exhibits 2292-2296
`The Board should exclude Exhibits 2292–2296 (“eSpeed/CQG Transcripts”)
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`because they are not relevant and contain hearsay to which no valid exception
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`applies. These exhibits are not cited in TT’s POR, but TT’s technical expert Mr.
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`Thomas relies upon these transcripts to support the assertions in his declaration
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`(Ex. 2169) regarding the alleged technical nature of the claims of the ’055 patent.
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`(See Section II.C., supra.) Petitioners timely objected to each of the eSpeed/CQG
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`Transcripts on the basis of, among other things, relevance and hearsay. (See Paper
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`34 at 5-7.)
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`The eSpeed/CQG Transcripts purport to be excerpts of deposition transcripts
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`from TT’s prior litigations, to which Petitioners were not parties. The ’055 patent
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`was not at issue in these litigations and has a different effective filing date than the
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`patents that were at issue. The testimony contained in these transcripts, presented
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`at a different trial, before a different tribunal, involving different parties, and
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`regarding the claims of different patents, does not have “any tendency to make a
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`fact [of consequence in determining this action] more or less probable than it
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`would be without the evidence.” FRE 401.
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`Further, the statement in the eSpeed/CQG Transcripts are hearsay, as none
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`were made while testifying for the current proceeding and all are being offered for
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`Petitioners’ Motion to Exclude
`CBM2016-00009
`the truth of the matters asserted. FRE 801. None of these statements fall under any
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`proper hearsay exception. For example, TT has not shown that the witnesses are
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`unavailable. See FRE 804. Nor has TT shown that any specific exception under
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`FRE 803. Likewise, the residual exception does not apply here as TT cannot
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`credibly argue that the eSpeed/CQG Transcripts are somehow more probative
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`evidence that any other evidence it could have obtained through reasonable efforts.
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`See FRE 807. Accordingly, the Board should exclude the eSpeed/CQG
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`Transcripts.
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`E.
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`The Abilock Declarations: Exhibits 2334 and 2339
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`The Board should exclude Exhibits 2334 and 2339 (“Abilock Declarations”)
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`under FRE 402 because they are not relevant to the matters at issue in this
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`proceeding. See FRE 401. TT relies on Mr. Abilock’s testimony to refute that the
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`’055 claims are obvious over TSE. (Paper 32 at 61-63, 67-68, 78.) Petitioners
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`timely objected to Exhibits 2334 and 2339 for lack of relevance. (Paper 34 at 5-6.)
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`Mr. Abilock’s testimony is not relevant to the obviousness determination.
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`Obviousness is determined from the perspective of “a person having ordinary skill
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`in the art to which the claimed invention pertains.” 35 U.S.C. § 103. Mr. Abilock is
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`a translator who testified about how a Japanese reader (i.e., a layperson) would
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`have understood certain portions of TSE (Exhibit 1007). Mr. Abilock held himself
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`out as an expert in Japanese-English translation, not as a technical expert. (Exhibit
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`Petitioners’ Motion to Exclude
`CBM2016-00009
`1037, 9:12-14; 12:16-13:1; 44:15-17; 55:22-57:14.) He did not analyze TSE from a
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`POSITA’s perspective (nor is he qualified to). Indeed, he testified that he has not
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`read the ’055 patent and has no opinion or understanding of a POSITA of the ’055
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`patent. (Id. at 13:14-15; 14:6-17; 55:17-21.) TT’s counsel confirmed that Mr.
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`Abilock’s analysis did not consider a POSITA. (Id. at 14:12-15.) Mr. Abilock’s
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`testimony does not have “any tendency to make a fact [of consequence in
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`determining this action] more or less probable than it would be without the
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`evidence,” FRE 401, and should be excluded.
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`III. CONCLUSION
`For the reasons set forth above, the Board should exclude Exhibits 2030,
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`2032, 2168, 2169 (¶¶ 127-128), 2292-2296, 2334 and 2339.
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`Date: December 13, 2016
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`1100 New York Avenue, N.W.
`Washington, D.C. 20005-3934
`(202) 371-2600
`
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`
`/Robert Sokohl/
`
`
`Robert E. Sokohl, Reg. No. 36,013
`Lori A. Gordon, Reg. No. 50,633
`Richard M. Bemben, Reg. No. 68,658
`Attorneys for Petitioners
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`Petitioners’ Motion to Exclude
`CBM2016-00009
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`CERTIFICATION OF SERVICE
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`The undersigned hereby certifies that on December 13, 2016, the attached
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`PETITIONERS’ MOTION TO EXCLUDE was served electronically via e-mail
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`upon the following counsel for Patent Owner, TT:
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`erika.arner@finnegan.com
`Erika H. Arner, Reg. No. 57,540
`joshua.goldberg@finnegan.com
`Joshua L. Goldberg, Reg. No. 59,369
`kevin.rodkey@finnegan.com
`Kevin D. Rodkey, Reg. No. 65,506
`rachel.emsley@finnegan.com
`Rachel L. Emsley, Reg. No. 63,558
`cory.bell@finnegan.com
`Cory C. Bell, Reg. No. 75,096
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
`Trading-Tech-CBM@finnegan.com
`
`
`tt-patent-cbm@tradingtechnologies.com
`Steven F. Borsand, Reg. No. 36,752
`jay.knobloch@tradingtechnologies.com
`Jay Q. Knobloch, Reg. No. 57,347
`TRADING TECHNOLOGIES INTERNATIONAL, INC.
`
`
`gannon@mbhb.com
`Michael D. Gannon, Reg. No. 36,807
`sigmond@mbhb.com
`Leif R. Sigmond, Jr., Reg. No. 35,680
`kurcz@mbhb.com
`Jennifer M. Kurcz, Reg. No. 54,481
`richter@mbhb.com
`Cole B. Richter, Reg. No. 65,398
`MCDONNELL BOEHNEN HULBERT & BERGHOFF LLP
`
`
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`
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`Date: December 13, 2016
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`1100 New York Avenue, N.W.
`Washington, D.C. 20005-3934
`(202) 371-2600
`
`
`
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`
`/Robert Sokohl/
`
`
`Robert E. Sokohl, Reg. No. 36,013
`Attorney for Petitioners
`
`
`
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