Paper No. ______
`Filed: April 12, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`IBG LLC;
`INTERACTIVE BROKERS LLC;
`TRADESTATION GROUP, INC.; and
`TRADESTATION SECURITIES, INC.,
`
`Petitioners,
`
`v.
`
`TRADING TECHNOLOGIES INTERNATIONAL, INC.,
`
`Patent Owner.
`
`
`
`CBM2016-00032
`U.S. Patent 7,212,999
`
`
`
`PATENT OWNER’S OPPOSITION TO PETITIONERS’
`MOTION TO EXCLUDE
`
`
`
`
`Filed: April 12, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`IBG LLC;
`INTERACTIVE BROKERS LLC;
`TRADESTATION GROUP, INC.; and
`TRADESTATION SECURITIES, INC.,
`
`Petitioners,
`
`v.
`
`TRADING TECHNOLOGIES INTERNATIONAL, INC.,
`
`Patent Owner.
`
`
`
`CBM2016-00032
`U.S. Patent 7,212,999
`
`
`
`PATENT OWNER’S OPPOSITION TO PETITIONERS’
`MOTION TO EXCLUDE
`
`
`
`
`
`CBM2016-00032
`U.S. Patent 7,212,999
`
`
`TABLE OF CONTENTS
`
`I.
`
`INTRODUCTION ........................................................................................... 1
`
`II.
`
`STANDARD .................................................................................................... 1
`
`III.
`
`eSPEED JURY VERDICT (EXHIBIT 2030) ................................................. 1
`
`IV. GOULD-BEAR AND OLSEN DECLARATIONS AND
`ATTACHMENTS (EXHIBITS 2168, 2174, 2183-89, and 2192-
`94) .................................................................................................................... 2
`
`A.
`
`B.
`
`C.
`
`The Gould-Bear and Olsen Declarations and Attachments
`Are Relevant .......................................................................................... 2
`
`Experts are Permitted to Rely on Hearsay ............................................ 4
`
`The Gould-Bear and Olsen Declarations and Attachments
`Qualify As an Exception To The Hearsay Rule .................................... 4
`
`V.
`
`CONCLUSION ................................................................................................ 7
`
`
`
`
`
`i
`
`
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`CBM2016-00032
`U.S. Patent 7,212,999
`
`
`I.
`
`INTRODUCTION
`
`37 C.F.R. § 42 governs these proceedings, and it “shall be construed to
`
`secure the just, speedy, and inexpensive resolution of every proceeding.” § 42.1(b).
`
`The “just” requirement mandates that the Board consider all of the evidence
`
`introduced by Patent Owner Trading Technologies International, Inc. (“TT”).
`
`II.
`
`STANDARD
`
`As the movant, Petitioners bear the burden of proving that the challenged
`
`exhibits are inadmissible. Liberty Mutual Insurance Co. v. Progressive Casualty
`
`Insurance Co., CBM2012-00002, Paper 66 at 59 (January 23, 2014); 37 C.F.R. §
`
`42.20(c). Petitioners have failed to meet this burden. As a matter of policy, the
`
`Board disfavors excluding evidence; “it is better to have a complete record of the
`
`evidence submitted by the parties than to exclude particular pieces.” Id. at 60-61.
`
`III. eSPEED JURY VERDICT (EXHIBIT 2030)
`
`This exhibit is offered for the relevant purpose of showing how another
`
`party and a jury reacted to the evidence in these proceedings. See, e.g., Paper 12 at
`
`10. Specifically, TT offered Exhibit 2030 for the purpose of disqualifying TSE as
`
`prior art. Petitioners argue the evidence is irrelevant because it relates to a
`
`different proceeding with different evidentiary standards. Paper 39 at 1. These
`
`arguments carry no weight because whether the evidence was from a different
`
`proceeding with a different evidentiary standard is irrelevant when determining
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`1
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`CBM2016-00032
`U.S. Patent 7,212,999
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`whether TSE qualifies as prior art. TSE’s prior art status doesn’t depend on what it
`
`is asserted against or where it is asserted. Thus, Exhibit 2030 is relevant to this
`
`proceeding.
`
`IV. GOULD-BEAR AND OLSEN DECLARATIONS AND
`ATTACHMENTS (EXHIBITS 2168, 2174, 2183-89, and 2192-94)
`
`A. The Gould-Bear and Olsen Declarations and Attachments Are
`Relevant
`
`This exhibit is offered for the relevant purpose of patent eligibility. Indeed,
`
`as Petitioners point out, Mr. Gould-Bear did not review the ‘999 patent or its
`
`claims in Exhibit 2168. Regardless of whether Mr. Gould-Bear indicated his
`
`testimony was applicable to the ‘999 patent, his analysis and opinions were
`
`directed to graphical user interfaces (GUIs). And indeed the ‘999 patent claims a
`
`GUI. See, e.g., Exhibit 1001, 14:7-47.
`
`For example, Mr. Gould-Bear states “. . . graphical user interfaces are
`
`inherently technology . . . .” and that
`
`[a] POSITA would know that rearranging the makeup of known GUI
`
`elements (structures) on a computer screen often dictates a dramatic
`
`change in the functionality of the GUI. And because the makeup of
`
`any set of user interface structures – whether involving numerical
`
`display regions, lists, table cells, graphical buttons, or what have you
`
`– establishes the specific meaning and technical capabilities of that
`
`2
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`CBM2016-00032
`U.S. Patent 7,212,999
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`user interface, such functionality cannot, by definition, avoid being
`
`deemed technology.
`
`Ex. 2168 at ¶¶ 3, 38. Likewise, Mr. Olsen states:
`
`For example, buttons, sliders, exist in both fields for study, and just as
`
`changes to these features may provide an improvement in a
`
`mechanical device, improving the equivalent features in a GUI allows
`
`a computer to function better or even in ways that were not previously
`
`conceived,
`
`* * *
`
`In my opinion, at least two basic GUI principles, which are scientific
`
`and engineering-based, cause users to perceive the claimed GUI as an
`
`improvement over prior GUIs, namely: human visual search, and
`
`optimizing human effort.
`
`Ex. 2174, at ¶¶ 6, 15. These statements are equally applicable to the ‘999
`
`patent because the ‘999 patent is likewise directed to the construction,
`
`makeup, and functionality of a GUI and shares common elements with the
`
`‘374 patent analyzed by Messrs. Gould-Bear and Olsen. Thus, Messrs.
`
`Gould-Bear’s and Olsen’s testimony regarding the claims of ‘374 patent and
`
`other TT patents are directly relevant to this proceeding.
`
`3
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`CBM2016-00032
`U.S. Patent 7,212,999
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`B.
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`Experts are Permitted to Rely on Hearsay
`
`To the extent Petitioners are arguing that the attachments to the Olsen and
`
`Gould-Bear declarations should be excluded for being hearsay (and to the extent
`
`such attachments are hearsay, which Patent Owner does not concede), this
`
`argument fails because experts are permitted to rely on hearsay. Generally, experts
`
`are permitted leeway with respect to hearsay evidence; an expert could, “for
`
`example, help to identify, gauge the reliability of, and interpret evidence that
`
`would otherwise elude, mislead, or remain opaque to a layperson.” Marvel
`
`Characters, Inc. v. Kirby, 726 F.3d 119, 136 (2d Cir. 2013). Marvel further
`
`explains that “such a witness might offer background knowledge or context that
`
`illuminates or places in perspective past events.” Id. at 136.
`
`Moreover, “an expert is permitted to disclose hearsay for the limited purpose
`
`of explaining the basis for his expert opinion.” United States v. Dukagjini, 326
`
`F.3d 45, 58 (2d Cir. 2003). This is what Messrs. Gould-bear and Olsen are doing
`
`here. These experts are relying on such attachments, in part, as a basis for their
`
`opinion that GUIs are technology.
`
`C. The Gould-Bear and Olsen Declarations and Attachments Qualify
`As an Exception To The Hearsay Rule
`
`Federal Rule of Evidence 807 provides a “residual exception” to the hearsay
`
`rule. To fall under the exception, a “statement must: (1) have equivalent
`
`4
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`CBM2016-00032
`U.S. Patent 7,212,999
`
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`circumstantial guarantees of trustworthiness; (2) be offered as evidence of a
`
`material fact; (3) be more probative on the point for which it is offered than any
`
`other evidence that the proponent can obtain through reasonable efforts; and (4) be
`
`in the interests of justice to admit.” Id. at 69 (citing Fed. R. Evid. 807). As
`
`recognized by the Board in Apple, the residual exception is to be reserved for
`
`“exceptional cases.” Id. at 69 (citing Conoco Inc. v. Dep’t of Energy, 99 F.3d 387,
`
`392 (Fed. Cir. 1996), as amended on rehearing in part (Jan. 2, 1997)). But “[t]rial
`
`courts are accorded wide discretion in applying the residual hearsay exception.”
`
`Id. (citing Doe v. United States, 976 F.2d 1071, 1076–77 (7th Cir. 1992), cert.
`
`denied 510 U.S. 812 (1993); United States v. North, 910 F.2d 843, 909 (D.C. Cir.
`
`1990) cert. denied 500 U.S. 941 (1991)).
`
`The Board’s recent Final Written Decision in Apple Inc. v. VirnetX Inc. is
`
`instructive. IPR2015-00811, Paper 44 at 68-70 (Sep. 8, 2016). In Apple, the
`
`Board addressed the admissibility of evidence similar to the Gould-Bear and Olsen
`
`declarations. At issue there were declarations that were prepared for other
`
`proceedings. Id. at 68. After recognizing that the party challenging the
`
`admissibility of the evidence “chose not to seek the opportunity to cross examine
`
`the declaration testimony,” which the Board had defined to include the district
`
`court trial and deposition testimony, the Board explained why the residual
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`5
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`CBM2016-00032
`U.S. Patent 7,212,999
`
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`exception of Federal Rule of Evidence 807 rendered the evidence admissible. Id.
`
`at 68-70.
`
`The Gould-Bear and Olsen declarations and attachments have the same
`
`circumstantial guarantees of trustworthiness as the testimony at issue in Apple, as
`
`well as those declarations actually created for these proceedings. See id. at 69-70.
`
`“The vast majority of testimony in inter partes reviews is admitted in paper form,
`
`as a declaration, instead of as live witness testimony. Thus, whether or not
`
`testimony is specifically created for a specific IPR or is created for another
`
`proceeding, if the declaration is sworn testimony and the witness is available for
`
`cross-examination, the testimony bears the same guarantees of trustworthiness.”
`
`Id. at 70. Here, like in Apple, this testimonial evidence is sworn testimony and the
`
`witnesses would have been available for cross-examination had Petitioners sought
`
`such cross examination. Thus, TT’s testimonial evidence from district court has
`
`the same circumstantial guarantees of trustworthiness as those declarations actually
`
`created for these proceedings.
`
`As required by Federal Rule of Evidence 807, this testimonial evidence is
`
`also offered as evidence of a material fact, more probative on the point for which it
`
`is offered than any other evidence that TT could obtain through reasonable efforts,
`
`and in the interests of justice to admit. And it is in the interests of justice to admit
`
`the evidence because TT will otherwise be deprived of due process.
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`6
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`CBM2016-00032
`U.S. Patent 7,212,999
`
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`V. CONCLUSION
`
`For these reasons, the Board should deny Petitioners’ motion to exclude.
`
`Respectfully submitted,
`
`MCDONNELL BOEHNEN HULBERT &
`BERGHOFF LLP
`
`
`
`Date: April 12, 2017
`
`/Jennifer M. Kurcz/
`
`Jennifer M. Kurcz,
`Back-Up Counsel, Reg. No. 54,481
`
`Counsel for Patent Owner
`
`300 South Wacker Drive
`Chicago, Illinois 60606
`(312) 913-0001
`
`
`
`
`7
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`CBM2016-00032
`U.S. Patent 7,212,999
`
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`CERTIFICATION OF SERVICE
`
`Pursuant to 37 CFR §§ 42.6(s)(4) and 42.205(b), the undersigned certified
`
`that on April 12, 2017, a complete and entire copy or this PATENT OWNER’S
`
`MOTION TO EXCLUDE was provided via email to the Petitioners by serving
`
`correspondence address of record as follows
`
`
`
`
`
`/Cole B. Richter/
`Cole B. Richter,
`Counsel for Patent Owner,
`Reg. No. 65,398
`
`Robert E. Sokohl
`rsokohl-PTAB@skgf.com
`
`Lori A. Gordon
`lgordon-PTAB@skgf.com
`
`Richard M. Bemben
`rbemben-PTAB@skgf.com
`
`Donald R. Banowit
`dbanowit-PTAB@skgf.com
`
`John C. Phillips
`PTABINBOUND@fr.com
`
`PTAB@skgf.com
`
`
`
`
`
`Dated: April 12, 2017
`
`By:
`
`
`
`
`
`8
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`
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