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` H O N O R A B L E M E R E D I T H C . P E T R A V I C K
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` U N I T E D S T A T E S P A T E N T A N D T R A D E M A R K O F F I C E
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`I B G L L C , I N T E R A C T I V E B R O K E R S L L C , T R A D E S T A T I O N
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`G R O U P , I N C . , T R A D E S T A T I O N S E C U R I T I E S , I N C . ,
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`T R A D E S T A T I O N T E C H N O L O G I E S , I N C . , a n d I B F X ,
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` UNITED STATES PATENT AND TRADEMARK OFFICE
`
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
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` ----------------------------------------------
`
`TRADESTATION GROUP, INC. and TRADESTATION
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`SECURITIES, INC.,
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` Petitioner,
`
` vs.
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` TRADING TECHNOLOGIES INTERNATIONAL, INC.,
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` Patent Owner.
`
`-----------------------------------------------
`
` Case CBM2015-00161; Patent 6,766,304 B2
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` Case CBM2015-00172; Patent 7,783,556 B1
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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, INTERACTIVE BROKERS LLC, TRADESTATION
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`GROUP, INC., TRADESTATION SECURITIES, INC.,
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`TRADESTATION TECHNOLOGIES, INC., IBFX, INC.,
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`CQG, INC., and CQGT, LLC,
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` Petitioner,
`
` vs.
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`TRADING TECHNOLOGIES INTERNATIONAL, INC.,
`
` Patent Owner.
`
`-----------------------------------------------
`
` Case CBM2015-00179; Patent 7,533,056 B2
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` ~ ~ ~ ~ ~
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` JUDGE PETRAVICK: Ms. Kurcz, after
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`the conference, could you make sure that the
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`transcript gets filed into the case, as an
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`exhibit.
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` MS. KURCZ: I will, Your Honor.
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` JUDGE PETRAVICK: Thank you. We
`
`will hear from the Patent Owner first, since
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`they requested the call. Let's start with the
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`supplemental briefing issue.
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` MS. KURCZ: Thank you, Your Honor.
`
`Patent Owner respectfully requests
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`authorization to file additional submissions
`
`pursuant to 37 CFR Section 42.20.
`
` Specifically, Patent Owner requests
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`permission to provide a submission to explain
`
`the relevance of the following decisions that
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`issued, after Patent Owner's July 21, 2016
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`response.
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` I would like to address a few
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`issues to establish why there is good cause for
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`this relief. First of all, the timing of this
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`request. The cases that we have cited before
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`Your Honors are all intervening. That is, they
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`issued between the time after we filed our
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`Patent Owner's response in July, through the
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`present time.
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` As trial is just a few weeks away,
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`now is an appropriate time to present
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`intervening case law that's issued to date,
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`cases that are highly relevant to issues that
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`are before this tribunal, in which, Trading
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`Technologies would like to address at the
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`hearing before Your Honors.
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` The scope of Trading Technologies'
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`request is also reasonable. Trading
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`Technologies requests filing of a summary, with
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`respect for each case, contained in one paper.
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`That would be akin to a citation of a
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`supplemental authority that would be filed in
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`the Federal Circuit. That is for each case,
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`we're proposing three hundred and fifty words
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`to address the portion of the case that is
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`relevant to the issues before Your Honors, as
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`well as how it relates to pending arguments
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`from both sides.
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` Trading Technologies would not
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`object to Petitioners filing a similar paper.
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`In the conferral, Petitioner has indicated that
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`they may also be interested in filing a paper
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`as well.
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` Trading Technologies would also
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`propose that each side could file a three
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`hundred fifty-word response with respect to
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`each case that is raised by the other side,
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`which, again, would be in accordance with
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`appellate practice for a similar citation of
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`supplemental authority.
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` And, Trading Technologies' basis
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`for its request -- we are seeking only to find
`
`cases that we believe are impactful to the
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`issues before Your Honors. They are
`
`significant cases that, all cases that Trading
`
`Technologies would have included in its Patent
`
`Owner's response, had they issued prior to the
`
`filing our Patent Owner's response.
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` For instance, with respect to 101,
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`you know, the Supreme Court has said that it is
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`appropriate to compare claims of prior cases
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`against those before Your Honors.
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` So, with respect to the McRo and
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`Amdocs cases, we'd like to cite out to Your
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`Honors as to how those cases are relevant and
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`analogous to Trading Technologies' claims.
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`And, why that sheds light on the eligibility of
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`Trading Technologies' claim.
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` With respect to 103 issues, issues
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`of whether or not the claims are obvious, we
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`believe that the cases that we have identified
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`before Your Honors shed light on arguments to
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`establish why Petitioners cannot have been
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`found to have met their burden under 103. For
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`instance, with respect to GoPro, this case
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`sheds light on the fact that TSE is not prior
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`art.
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` With respect to Immunivasive (ph.),
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`this sheds light on a couple of issues. The
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`first being that there must be specific
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`evidence of a motivation to combine. And,
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`secondly, that there are APA standards on an
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`opportunity to respond.
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` A Petitioner cannot make a new
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`argument in their Reply, because it's a private
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`patent owner's ability to adequately and fairly
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`respond, because there is no other avenue to
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`address that. And, that's depriving Trading
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`Technologies of its due process.
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` Also, relevant to motivation to
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`combine is the Apple v. Samsung case, which we
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`have also identified before Your Honors, which
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`is this en banc's opinion that says that there
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`must be actual evidence of a specific
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`motivation to combine.
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` JUDGE PETRAVICK: Let me ask you a
`
`question.
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` MS. KURCZ: Yes, Your Honor.
`
` JUDGE PETRAVICK: These 103 cases,
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`they're not presenting new law. In raising
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`these --
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` MS. KURCZ: Well --
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` JUDGE PETRAVICK: -- cases, right?
`
`Motivation to combine is not new law, I mean,
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`requiring motivation is not new law. It didn't
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`come out of these new cases.
`
` And, in fact, in your Patent
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`Owner's response, you do argue that there's no
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`motivation to combine.
`
` What's new that's added by these
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`cases, other than, you know, they're cases that
`
`seek new law that would apply to this briefing?
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`Other than, that you want to cite more cases
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`that further support what you've already argued
`
`in your Patent Owner's response. What's new?
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` MS. KURCZ: Sure, Your Honor.
`
`Well, you know, like with respect to Apple v.
`
`Samsung, that is actually an en banc opinion,
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`so that would be controlling over, I would say,
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`a non-en banc opinion.
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` And, we think that it's
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`significant. There isn't, for instance, at the
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`Federal Circuit, there's not a rule that you
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`can only cite Supreme Court authority, instead,
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`the rule is whether or not the authority is
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`significant.
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` And, we believe that these cases
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`are highly significant to the issues before
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`Your Honors, because it applies factual
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`scenarios under governing standards creating
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`new law. And, certainly, with respect to 101
`
`issues as well, the Supreme Court, itself, has
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`said that when analyzing patent eligibility,
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`the Court should look at, and compare and
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`contrast, claims of other cases.
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` And, the Court should always look
`
`at --
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` JUDGE PETRAVICK: Ma'am, I'm --
`
` MS. KURCZ: -- case law that's
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`relevant.
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` JUDGE PETRAVICK: I'm familiar with
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`the 103 issues.
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` MS. KURCZ: I'm sorry to get off
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`track, Your Honor.
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` JUDGE PETRAVICK: That's fine. Let
`
`me ask you another question.
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` MS. KURCZ: Sure.
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` JUDGE PETRAVICK: I mean, GoPro is
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`a Board case that's not precedential, and not
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`binding this Panel. So, what would be new on
`
`that, especially, for a printed publication
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`issue, which is fact specific?
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` MS. KURCZ: We think that the facts
`
`in GoPro are highly, highly analogous to those
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`before Your Honors.
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` JUDGE PETRAVICK: I mean, it's not
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`new law, correct? I mean, this is applying old
`
`law.
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` MS. KURCZ: Well, it's certainly
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`another panel opinion to be highly persuasive
`
`to other panels. And, there also cannot be
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`conflicting panels. And, so, there cannot be a
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`ruling that conflicts with GoPro.
`
` So, that's, you know, our basis is
`
`that this Court should apply --
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` JUDGE PETRAVICK: You're asking for
`
`us to file a briefing about what the case says.
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`But, these are. I mean, you're telling us that
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`Page 12
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`you really want to compare to the facts. And,
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`these are the facts for specific
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`determinations.
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` So, what would be good cause for
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`adding cases that are just applying, you know,
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`old law, law that you've already argued in your
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`Patent Owner's response?
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` MS. KURCZ: Your Honor, again, I
`
`don't think that this is, you know, I disagree
`
`with that it is old law. I believe, that any
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`time there's a new case that applies facts in a
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`different way that that is new law. That
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`should be examined. It can't be conflicting.
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` Especially, for instance, in GoPro,
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`where the factual scenario is highly analogous,
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`and that there's no evidence it was ever
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`submitted to (inaudible.) There cannot be
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`conflicting rulings from panels against that.
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` So, we submit that Your Honors, you
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`know, must look at these other cases. They're
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`significant. We should, at least, be entitled
`
`to make our argument.
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` JUDGE PETRAVICK: So, what you
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`really want is not only do you want to tell us
`
`about these cases, with the most cases cited,
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`Page 13
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`you want to provide, you know, quick, more
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`substantial briefings.
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` MS. KURCZ: Well, Your Honor, we --
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` JUDGE PETRAVICK: You want to apply
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`them to the facts of this case.
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` MS. KURCZ: Your Honor, we've only
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`asked for three hundred fifty words. You
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`really can't do a lot of that in three hundred
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`fifty words. We thought that that would be
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`similar to what happens at the Federal Circuit.
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` And, so, we really can't go through
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`all the facts, as you would know, in three
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`hundred and fifty words.
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` But, what we hoped to do was to try
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`to, at least, provide a road map to Your
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`Honors, as to why these cases are highly
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`relevant, and should be highly persuasive to
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`these issues. And, with respect to Apple,
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`that's an en banc opinion as well. That's
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`control.
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` JUDGE PETRAVICK: Okay. I
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`understand what you're looking for. Do you
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`have anything else on this topic?
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` MS. KURCZ: I just wanted to point
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`out one other issue, if I may, Your Honor, is
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`that, as I said in the e-mail, Petitioners do
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`not object to identification of the Amdocs and
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`the McRo cases.
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` And, I believe, that they're, and
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`I'll let them speak. But, I believe, that they
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`agree that we could brief, you know, that they
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`may, at least, want to cite other cases as
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`well.
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` And, I'll reserve the rest of the,
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`you know, I know we had sent another e-mail to
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`Your Honor. Were you planning on addressing
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`that at the end of Petitioner's --
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` JUDGE PETRAVICK: We'll address
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`that next. Yes, one topic at a time.
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` MS. KURCZ: Okay. Thank you, Your
`
`Honor.
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` JUDGE PETRAVICK: Petitioner.
`
` MR. SOKOHL: Yes, Your Honor.
`
`Thank you. So, we're not opposed to parties
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`bringing relevant, positive precedential cases
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`to the Court's attention. But, as you point
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`out, there's no new law being cited in these
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`cases.
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` And, as to turn in a briefing, I
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`think counsel just provided you the relevance
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`of these cases, or, at least, in their view.
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` It appears to us that Trading
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`Technologies just wants to continuously bring
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`101 and 103 cases to the Court's attention.
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`And, we do disagree strongly with the relevance
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`of these cases. I'm not going to go through
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`each case.
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` But, Apple, and Samsung, and Wynd
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`are just not relevant in this case. The fact
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`that one case is en banc doesn't make it
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`instructive of the issues in this case. They
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`were just reversing a Panel decision. They
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`didn't even hold oral hearings in this case.
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` The case cited by Trading
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`Technologies from the Board, the GoPro case, as
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`you pointed out, Your Honor, is a mock
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`precedential panel decision that is really
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`irrelevant.
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` It's the Federal Circuit case law
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`that is relevant. That's been cited by both
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`parties in their briefs. That's the
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`controlling law. That's the precedential law.
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`That's the laws that the Court has to follow.
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` And, in citing the two 101 cases, I
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`agree with counsel that every, you know, the
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`101 cases can be instructive. But, there are
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`going to be countless 101 cases between now and
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`prior written authorization.
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` And, we're going to be seeking some
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`guidance as to what the appropriate mechanism,
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`and the character of the case is that should be
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`brought to the Board's attention.
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` I think it's noteworthy that
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`counsel continues to cite 101 cases, but, then,
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`leaves out a very highly relevant case from
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`Federal Circuit that came out about a week or
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`two ago, Apple v. Ameranth, A-M-E-R-A-N-T-H,
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`which is relevant to whether or not it is first
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`ineligible in a statutory subject matter. And,
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`the case concluded that --
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` JUDGE PETRAVICK: You don't have to
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`tell me about that case. I wrote the Panel,
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`the PTAB decision in that case.
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` MR. SOKOHL: Yes, perfect.
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` JUDGE PETRAVICK: I am intimately
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`familiar with the facts of that case.
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` MR. SOKOHL: Perfect. So, the
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`point is, is that they're not bringing all the
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`cases that are relevant to the Board's
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`attention. So, you know, we just don't think,
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`bringing cases to the Board's attention is one
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`thing, but, we don't think further briefing at
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`this time, would be instructive to the Board.
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`You are familiar with Federal Circuit Board's
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`decision, as she just points out.
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` JUDGE PETRAVICK: Yes.
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` MR. SOKOHL: And, I think, that
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`that's sufficient.
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` JUDGE PETRAVICK: All right. Thank
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`you. Patent Owner, do you have any other
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`comments on this topic?
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` MS. KURCZ: Only Your Honor, just
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`that these are our property rights. And, we
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`believe that we are entitled to present every
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`significant authority to Your Honors that
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`impact our property rights.
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` And, we believe that it should be,
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`you know, we're not asking for an unreasonable
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`length of a submission. We haven't asked for
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`every single case that was ever issued. We've
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`only identified ones that we believe are
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`significant and pertinent to the issues before
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`Your Honors. And, so, we respectfully request
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`authorization to file something short akin to a
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`citation of a supplemental authority.
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` JUDGE PETRAVICK: Okay. Thank you.
`
`Let's move onto topic No. 2. Patent Owner, can
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`you tell us about your request for
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`authorization for a Motion, your renewed
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`request for an authorization for a Motion to
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`Strike.
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` MS. KURCZ: Thank you, Your Honor.
`
`Trading Technologies renews its request to file
`
`a Motion to Strike Petitioner's reply. While
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`the Board previously allowed Trading
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`Technologies to file page and line numbers with
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`respect to arguments that Trading Technologies
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`had identified in Petitioner's reply that were
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`new.
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` Trading Technologies also wanted to
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`call to the Board's attention new testimony
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`from Petitioner's expert, Mr. Rowe, who
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`recently admitted that his Declaration
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`contained new arguments.
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` Specifically, with respect to
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`Section 4(a)3, which is switching from Board
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`times four to Board times two.
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` Mr. Rowe admitted that that wasn't,
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`his opinion on that was not in his prior
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`Declaration. It was a new opinion.
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` And, the same thing with respect to
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`Section 4(a)1(d) of Petitioner's reply
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`regarding TSE's compressed rolling mode is also
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`static. Mr. Rowe also admitted that that
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`opinion was not in his prior Declaration.
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` You know, importantly, Mr. Rowe
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`also admitted that he had rendered an opinion
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`without even examining the file history.
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` And, I think, all of this new
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`evidence really underscores the point we were
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`trying to make before is that, you know, it's
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`very evident to us that the Petitioner's reply
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`contains new arguments.
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` It's highly prejudicial to us to
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`have new arguments, never raised before in a
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`Petition, now, being raised for the first time
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`in a reply when we have no mechanism to respond
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`to that.
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` And, given the really tight
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`timeframe between now, and the trial on January
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`6th, is the only possible remedy that would
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`cure this problem in view of the compressed
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`timeframe would be to strike the Reply.
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` However, alternatively, if Trading
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`Technologies requests, if the Board is
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`Page 20
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`unwilling to strike the Reply before the trial
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`on January 6th, that Trading Technologies
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`requests the schedule be extended so Trading
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`Technologies can respond to these new arguments
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`with a short brief. We are proposing
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`sixty-five hundred words, an expert
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`Declaration, and, to fully respond to these
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`arguments.
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` Again, as I said, these are our
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`property rights. We should have an opportunity
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`to respond to every argument that's been
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`alleged, and asserted against these property
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`rights. And, the Federal Circuit --
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` JUDGE PETRAVICK: Let me ask you a
`
`question really quick.
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` MS. KURCZ: Sure.
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` JUDGE PETRAVICK: I'll interject
`
`here. So, we've already let you file. Our
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`rules say that no new arguments are going to be
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`considered. We've already let you file a
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`listing what you consider, allege to be the new
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`arguments. And, last night, you filed a Motion
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`for Observation, you know, pointing out what
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`you think is Mr. Rowe's testimony on this
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`issue.
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`Page 21
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` And, our rules say that new
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`arguments, or improper arguments that are not
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`within the scope of the Reply, aren't
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`considered. Why isn't that sufficient?
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` You've already had an opportunity
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`to point out to us what you think, or what you
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`allege are the new arguments.
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` If they're not considered, then,
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`why is that not sufficient? Why do you need to
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`file a briefing on the issue?
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` MS. KURCZ: That's a good question,
`
`Your Honor, thank you. At this point, we don't
`
`know what the Board will rule yet. I mean,
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`those are pending before Your Honors, and there
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`hasn't been a ruling.
`
` I mean, we feel very confident in
`
`our position. However, we believe we would be
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`greatly prejudiced absent striking of those
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`arguments. And, we're trying to explore and
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`exhaust every possible remedy to address that
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`issue.
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` And, so, that's why we're
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`alternatively proposing briefings in the event
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`that we don't --
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` JUDGE PETRAVICK: Why do you need
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`briefings --
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` MS. KURCZ: -- hear by now.
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` JUDGE PETRAVICK: Why do you need
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`briefings to consider arguments that can't be
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`considered under the rules?
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` MS. KURCZ: Well, my only point is
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`that I don't know how Your Honors are ruling
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`yet. And, to fully protect Trading
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`Technologies' interests, we are seeking,
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`alternatively, if we don't hear, you know, very
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`soon on the ruling, we're not going to know,
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`prior to the hearing if, you know, what is in
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`and out.
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` And, presumably, Petitioners may
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`seek to try to raise these arguments. And, we
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`will not have a mechanism to address and
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`respond to these arguments. It's, of course
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`not in our response, because they weren't in
`
`the Petition, you know. They weren't in the
`
`institution decision.
`
` So, we just want to make sure that
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`we're exhausting every avenue to fully address
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`these arguments to the extent that the Board
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`does not make a ruling on this soon, then,
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`Trading Technologies alternatively requests,
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`Page 23
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`you know, an extension of the schedule.
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` Of course, we would much rather
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`prefer that the Board just strike the new
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`arguments now so we know what's in and out.
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` But, alternatively, if you know the
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`Board's not inclined to do that, we just don't
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`want to be in this situation where the Board
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`disagrees with us, and we're not able to
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`respond to the new arguments.
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` JUDGE PETRAVICK: Okay.
`
`Mr. Sokohl, would you like to respond?
`
` MR. SOKOHL: Yes, Your Honor.
`
`Without getting into the substance of the
`
`issue, we, obviously, disagree that the
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`Petitioner has not supplied fair arguments.
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` The Board has already provided
`
`Trading Technologies' relief. They've provided
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`a listing, we wrote responses to that listing.
`
`Mr. Rowe's issues did not change anything.
`
` As to further briefing, I would
`
`note that this request is just untimely.
`
`Trading Technologies first notified the Board
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`on November 14th. But, no mention of
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`supplemental briefing was made at that time.
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` We are almost three weeks away from
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`Page 24
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`the hearing, with two major holidays in
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`between. Trading Technologies now wants to
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`file a supplemental briefing along with a
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`Declaration. I hear for the first time today
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`they want sixty-five hundred words, which is
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`more words than we got for an entire reply.
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` We would need to have to file a
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`supplemental reply to that, depose their
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`witness, file observations. It is just not
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`feasible to do all that in this timeframe.
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` And, I think, that Trading
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`Technologies should have asked if they wanted
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`supplemental briefing prior to this. So, at
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`the bottom, we think the request is untimely.
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` Furthermore, as counsel for Trading
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`Technologies points out, Mr. Rowe, merely said
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`that the opinion and his supplemental
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`Declaration did appear in his original
`
`Declaration. That doesn't mean he says that
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`these are new arguments. That doesn't mean
`
`that Petitions and other evidence, Petitioners
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`didn't support the Reply.
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` The purpose of the trial is to, as
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`the Federal Circuit pointed out, is to create a
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`record. And, the remarks that Trading
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`Page 25
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`Technologies complains about are directly
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`responsive to arguments set forth in their
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`appeal.
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` And, we are allowed to present our
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`counter-arguments, and that's what we have
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`done. At the end of the day, if the Board
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`doesn't accept Trading Technologies narrow time
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`construction, these arguments are mute anyway.
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` We believe that the ATA is a
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`two-way street. We are last presenting our
`
`arguments, particularly, when Trading
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`Technologies comes forth with narrow-claim
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`constructions. And, again, these are all
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`supported by the decision, as you pointed out
`
`in our list.
`
` Now, the appropriate vehicle for
`
`bringing Mr. Rowe's testimony to the Board's
`
`attention is a Motion for Observations, which
`
`they have filed yesterday. And, so, there's no
`
`need for further briefing. They've already
`
`brought testimony to the Board's attention.
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` Furthermore, yesterday, they also
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`filed, Trading Technologies, a Motion to
`
`Exclude, including a Motion to Exclude Portions
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`of the Reply.
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`Page 26
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` And, so, we would suggest that
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`they've already had their briefing on this
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`point.
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` JUDGE PETRAVICK: Thank you.
`
`Ms. Kurcz, any final thoughts?
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` MS. KURCZ: Thank you, Your Honor.
`
`We disagree that we waived anything as an
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`initial matter. This is new evidence that just
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`came out last week. It's a new basis to
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`further strike the Reply. We didn't have that
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`basis when we initially requested. And, we
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`haven't gotten a ruling on our request to
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`strike. And, so, that's the additional basis,
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`as to wanting to be able to fully respond.
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` And, I agree with Mr. Sokohl that
`
`there wouldn't be time. But, I think, that's
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`exactly why, if Your Honors aren't inclined to
`
`rule on the strike, that we should have an
`
`extension of time, you know, if Your Honors are
`
`not inclined to strike those portions of the
`
`Reply.
`
` The trial is to create a record.
`
`But, it's also to make sure that everyone's
`
`rights are being preserved, especially, the
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`Patent Owner's. We should be entitled to
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`Page 27
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`respond to the new arguments.
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` And, Mr. Rowe, his acknowledgement
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`that these are new arguments, they're new, his
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`new testimony in his reply Declaration. They
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`don't exist in the Petition.
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` In fact, you know, when Petitioners
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`even tried to respond to our citation of lines
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`and numbers, as to where it possibly could have
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`been, they don't fight to the grounds of
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`invalidity. And, those are the grounds of
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`invalidity that they argued in their Petition,
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`and that Your Honors --
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` JUDGE PETRAVICK: All right.
`
` MS. KURCZ: -- did execution on.
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` JUDGE PETRAVICK: We don't need to
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`argue the Motion to Strike on this phone call.
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` MS. KURCZ: Okay, Your Honor.
`
` JUDGE PETRAVICK: We're just
`
`deciding whether to authorize the Motion to
`
`Strike. So, we're not going to decide the
`
`substance. We're not going to hear the
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`substance of the issue right now.
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` MS. KURCZ: Okay. Understood, Your
`
`Honor. This last closing remark is that, you
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`know, if there isn't a ruling on the Motion to
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`Page 28
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`Strike, then, we would request, as I said, a
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`brief of sixty-five hundred words, an expert
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`Declaration, a response date within twenty-one
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`days, and Petitioner's, well, strike that.
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`And, then --
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` JUDGE PETRAVICK: Well, that point
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`is sort of premature. It's premature.
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` MS. KURCZ: Okay.
`
` JUDGE PETRAVICK: And, you would
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`have to establish good cause for that. It's
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`not, we're not doing an either or situation
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`here. When you request a motion, you need to
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`present a factual basis for good cause.
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` So, we're going to decide these two
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`issues, at this point in time. I believe, if
`
`we don't decide that your Motion to Strike is
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`authorized, I'm not really sure we can
`
`establish good cause for extra briefing.
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` That being said, we're going to
`
`take these issues under advisement. And, then,
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`we'll issue you an Order in due course on these
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`topics.
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` Are there any other issues that the
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`parties want to discuss today?
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` MR. SOKOHL: No, Your Honor.
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