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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.
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`TRADING TECHNOLOGIES INTERNATIONAL, INC.,
`Patent Owner
`_____________
`
`Case CBM2016–00009
`Patent 7,685,055 B2
`_____________
`
`
`PETITIONERS’ RESPONSE TO PATENT OWNER’S
`DECEMBER 13, 2016 MOTION FOR OBSERVATION (PAPER 52)
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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 file their Response to Patent Owner’s (PO) Motion for
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`Petitioners’ Response to Paper 52
`CBM2016-00009
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`Observation on Cross-Examination Testimony of Petitioner’s Declarant David Rho
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`(Paper 52) (“Motion”) in accordance with modified Due Date 5 (Paper 46).
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`The Board should give no weight to PO’s purported observations because
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`they mischaracterize Mr. Rho’s testimony, ignore relevant testimony, and
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`ultimately fail to contradict any of Petitioners’ positions in this proceeding.
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`Additionally, each of PO’s observations is deficient on its face because it fails to
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`explain why the identified testimony is allegedly relevant. Office Patent Trial
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`Practice Guide, 77 Fed. Reg. 48753, 48768 (Aug. 14, 2012) (the proper form of
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`observations include: “The testimony is relevant because __.”).
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`I. Response to PO’s first observation
`PO’s first observation alleges that Mr. Rho’s testimony at Exhibit 2342,
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`page 34, lines 10-21, “is relevant to Patent Owner’s request that this opinion, along
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`with the arguments made by Petitioner that rely on this opinion be stricken from
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`Petitioner’s Reply.” (Motion at 1.)
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`PO’s first observation is deficient because it fails (1) to identify where PO
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`made its alleged “request”; (2) to identify which portion(s) of Petitioners’ Reply
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`the identified testimony is allegedly relevant to; and (3) to explain why the
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`identified testimony is allegedly relevant. PO’s first observation also ignores
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`relevant testimony. Rho testified that Exhibit 1004 (“Rho Dec. I”) includes the
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`- 1 -
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`same “overview of TSE” as Exhibit 1035 (“Rho Dec. II”). (Exhibit 2342 at 20:5-
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`Petitioners’ Response to Paper 52
`CBM2016-00009
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`21:16.) The “overview of TSE” in Rho Dec. I describes modes and functions of
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`TSE relied upon in Rho Dec. II. (Compare Rho Dec. I at ¶¶ 28-36, with, Rho Dec.
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`II at ¶¶ 5, 11-19, 21, 23-25.)
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`II. Response to PO’s second observation
`PO’s second observation alleges that Mr. Rho’s testimony at Exhibit 2342,
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`page 37, line 7, to page 38, line 6, “is relevant to Patent Owner’s request that this
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`opinion, along with the arguments made by Petitioner that rely on this opinion, be
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`stricken from Petitioner’s Reply.” (Motion at 2.)
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`PO’s second observation is deficient because it fails (1) to identify where PO
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`made its alleged “request”; (2) to identify which portion(s) of Petitioners’ Reply
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`the identified testimony is allegedly relevant to; and (3) to explain why the
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`identified testimony is allegedly relevant. PO’s second observation also fails to
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`establish that any portion of Petitioners’ Reply or Rho Dec. II should be stricken
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`because (in addition to ignoring the testimony discussed in Petitioners’ Response
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`to PO’s first observation supra) the identified testimony demonstrates that the
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`referenced portion of Rho Dec. II responds to “TT’s interpretation of the term price
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`levels.” (Exhibit 2342 at 37:7-38:6.) 37 C.F.R. § 42.23(b) (“A reply may only
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`respond to arguments raised in the corresponding . . . patent owner response.”)
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`(emphasis added).
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`- 2 -
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`III. Response to PO’s third observation
`PO’s third observation alleges that Mr. Rho’s testimony at Exhibit 2342,
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`Petitioners’ Response to Paper 52
`CBM2016-00009
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`page 55, lines 4-9, “is relevant to the weight and sufficiency of Mr. Rho’s opinion
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`set forth in paragraphs 22-25 of his Reply declaration (Exhibit 1035) regarding the
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`‘adjusting’ claim limitation.” (Motion at 3.)
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`PO’s third observation is deficient because it does not explain why the
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`identified testimony is allegedly relevant. PO’s third observation also ignores
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`relevant testimony. Mr. Rho testified that he reviewed the ’055 patent’s file history
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`(Rho Dec. I at ¶ 5), which demonstrates that Mr. Rho is familiar with the intrinsic
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`record of the ’055 patent.
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`IV. Response to PO’s fourth observation
`PO’s fourth observation alleges that Mr. Rho’s testimony at Exhibit 2342,
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`page 81, line 7, to page 82, line 5, “is relevant to the weight and sufficiency of Mr.
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`Rho’s opinion (set forth in paragraphs 22-25 of his Reply declaration (Exhibit
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`1035)) that ‘a PHOSITA would have understood that transitioning or “adjusting”
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`from a “Board x4” display to a “Board x 2” display would add 13 price levels.’”
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`(Motion at 3-4.)
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`PO’s fourth observation is deficient because it does not explain why the
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`identified testimony is allegedly relevant. PO’s fourth observation also ignores
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`relevant testimony. Mr. Rho testified that it would have been obvious to a POSITA
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`- 3 -
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`to transition the same issue (i.e., same commodity) from Boardx4 display to
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`Petitioners’ Response to Paper 52
`CBM2016-00009
`
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`Boardx2 display. (Exhibit 2342 at 66:14-70:7.) Mr. Rho also explained how a
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`trader using TSE would transition from Boardx4 display to Boardx2 display (id. at
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`114:13-117:5), and that a POSITA would have understood that this transition
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`“meets the claim language in the ’055 patent.” (id. at 112:9-114:12; see also id. at
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`106:9-107:12). This testimony is also relevant to put the testimony cited by PO in
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`the proper context.
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`V. Response to PO’s fifth observation
`PO’s fifth observation alleges that Mr. Rho’s testimony at Exhibit 2342,
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`page 103, line 17, to page 104, line 3, “is relevant to whether transitioning from
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`TSE’s ‘Board x 4’ display to TSE’s ‘Board x 2’ display meets the ‘adjusting the
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`first plurality of price levels among a range of price levels . . .’ claim limitation.”
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`(Motion at 4-5.)
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`PO’s fifth observation is deficient because it does not explain why the
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`identified testimony is allegedly relevant.
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`VI. Response to PO’s sixth observation
`PO’s sixth observation alleges that Mr. Rho’s testimony at Exhibit 2342,
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`page 109, line 9, to page 110, line 3, “is relevant to whether ‘a PHOSITA would
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`have understood that transitioning or “adjusting” from a “Board x4” display to a
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`“Board x 2” display would add 13 price levels,’ and whether transitioning from
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`- 4 -
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`Petitioners’ Response to Paper 52
`CBM2016-00009
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`TSE’s ‘Board x 4’ display to TSE’s ‘Board x 2’ display meets the ‘adjusting’ claim
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`limitation.” (Motion at 5-6.)
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`PO’s sixth observation is deficient because it does not explain why the
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`identified testimony is allegedly relevant. PO’s sixth observation also ignores
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`relevant testimony. Mr. Rho testified that it would have been obvious to a POSITA
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`to transition the same issue (i.e., same commodity) from Boardx4 display to
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`Boardx2 display. (Exhibit 2342 at 69:19-70:7.) Mr. Rho also explained how a
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`trader using TSE would transition from Boardx4 display to Boardx2 display (id. at
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`114:13-117:5), that a POSITA would have understood that this transition “meets
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`the claim language in the ’055 patent” (id. at 112:9-114:12), and that in most
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`situations a trader would expect the center price to remain the same during the
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`transition from Boardx4 display to Boardx2 display (id. at 106:9-107:12). This
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`testimony is also relevant to put the testimony cited by PO in the proper context.
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`VII. Response to PO’s seventh observation
`PO’s seventh observation alleges that Mr. Rho’s testimony at Exhibit 2342,
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`page 111, lines 5-18, “is relevant to whether ‘a PHOSITA would have understood
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`that transitioning or “adjusting” from a “Board x4” display to a “Board x 2”
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`display would add 13 price levels,’ and whether transitioning from TSE’s ‘Board x
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`4’ display to TSE’s ‘Board x 2’ display meets the ‘adjusting’ claim limitation.”
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`(Motion at 6-7.)
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`- 5 -
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`PO’s seventh observation is deficient because it does not explain why the
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`Petitioners’ Response to Paper 52
`CBM2016-00009
`
`
`identified testimony is allegedly relevant. PO’s seventh observation also ignores
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`relevant testimony. Mr. Rho testified that it would have been obvious to a POSITA
`
`to transition the same issue (i.e., same commodity) from Boardx4 display to
`
`Boardx2 display. (Exhibit 2342 at 69:19-70:7.) Mr. Rho also explained how a
`
`trader using TSE would transition from Boardx4 display to Boardx2 display (id. at
`
`114:13-117:5), that a POSITA would have understood that this transition “meets
`
`the claim language in the ’055 patent” (id. at 112:9-114:12), and that in most
`
`situations a trader would expect the center price to remain the same during the
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`transition from Boardx4 display to Boardx2 display (id. at 106:9-107:12). This
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`testimony is also relevant to put the testimony cited by PO in the proper context.
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`Date: December 20, 2016
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`1100 New York Avenue, N.W.
`Washington, D.C. 20005-3934
`(202) 371-2600
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`
`
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`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`/Richard M. Bemben/
`
`
`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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`- 6 -
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`Petitioners’ Response to Paper 52
`CBM2016-00009
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`CERTIFICATION OF SERVICE
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`The undersigned hereby certifies that on December 20, 2016, the attached
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`PETITIONERS’ RESPONSE TO PATENT OWNER’S DECEMBER 13,
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`2016 MOTION FOR OBSERVATION (PAPER 52) was served electronically
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`via e-mail 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
`Cole B. Richter, Reg. No. 65,398
`richter@mbhb.com
`MCDONNELL BOEHNEN HULBERT & BERGHOFF LLP
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`
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`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`/Richard M. Bemben/
`
`
`Richard M. Bemben, Reg. No. 68,658
`Attorney for Petitioners
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`
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`
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`Date: December 20, 2016
`
`1100 New York Avenue, N.W.
`Washington, D.C. 20005-3934
`(202) 371-2600
`
`
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