`
`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
`Patent 7,212,999 B2
`_____________
`
`
`PETITIONER’S OPPOSITION TO
`PATENT OWNER’S MOTION TO EXCLUDE
`
`
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313–1450
`
`
`
`
`
`
`
`
`
`
`
`CBM2016-00032
`Patent 7,212,999 B2
`
`I.
`
`Introduction
`
`The Board should deny Patent Owner’s Motion to Exclude (Paper 41).
`
`Patent Owner seeks to exclude cross-examination testimony of its own expert that
`
`Patent Owner finds unfavorable. Patent Owner’s expert, Mr. Thomas, admitted
`
`that the claimed inventions do not improve computers. (See, e.g., Ex. 1047 at 248,
`
`263-69.) His testimony is relevant to the issue of patent eligibility. Patent Owner
`
`had a full and fair opportunity to rehabilitate Mr. Thomas regarding the testimony
`
`at-issue through redirect. It chose not to do so.
`
`Accordingly, the Board should deny Patent Owner’s Motion to Exclude.
`
`II. Argument
`A. The testimony is highly probative and admissible.
`Patent Owner urges the Board to exclude choice portions of Mr. Thomas’
`
`cross-examination testimony. (Paper 41 at 1-7 (citing Ex. 1047 at 248, 263-69).)
`
`Essentially, Patent Owner seeks to exclude unfavorable testimony; not irrelevant,
`
`prejudicial, confusing, or misleading testimony.
`
`Fed. R. Evid. 403 provides that evidence may be excluded if its probative
`
`value is substantially outweighed by the danger of unfair prejudice, confusing the
`
`issues, misleading the fact-finder, undue delay, wasting time, and/or presenting
`
`needlessly cumulative evidence. Here, the material sought to be excluded consists
`
`of admissions explaining how the ’999 claims are not directed to various
`
`
`
`- 1 -
`
`
`
`CBM2016-00032
`Patent 7,212,999 B2
`technological improvements. These admissions are highly probative of patent
`
`eligibility.
`
`Patent Owner appears to rely on the “unfair prejudice ” or “confusing”
`
`aspects of Fed. R. Evid. 403. (Paper 41 at 8.) But there is no danger of confusing or
`
`misleading the Board. The Board is perfectly capable of according these
`
`admissions appropriate weight in view of all the evidence. And Patent Owner has
`
`failed to demonstrate even a remote likelihood that the statements will be
`
`misinterpreted or misunderstood. Patent Owner may disagree with the legal
`
`conclusions to be drawn from these admissions; but that is not a cognizable basis
`
`for excluding evidence.
`
`And, as a general policy, it is not unfairly prejudicial to place the burden of
`
`seeking clarification on the testifying expert. In fact, this has long been the Board’s
`
`practice.1 Here, counsel for Petitioner properly instructed the witness. (Ex. 1047 at
`
`
`1 Cf. U.S. PATENT & TRADEMARK OFFICE, Standing Order of January 3, 2006
`
`Governing Contested Cases Assigned to Trial Division, Board of Patent Appeals
`
`and Interferences, Cross Examination Guidelines, Appendix, p. 72 (Jan. 2006),
`
`available https://www.uspto.gov/web/offices/dcom/bpai/Standing-Order.pdf
`
`(“Guideline [1] At the beginning of a cross examination, the party conducting the
`
`cross examination must instruct the witness on the record to ask deposing counsel,
`
`
`
`
`
`- 2 -
`
`
`
`CBM2016-00032
`Patent 7,212,999 B2
`5:21-6:4.) Having been instructed, and free to seek clarification as needed, the
`
`answers provided are in accordance with the ground rules for cross-examination.
`
`Patent Owner’s attempt to erase truthful, albeit unfavorable, responses given by its
`
`expert should be denied.
`
`III. Conclusion
`The Board should deny Patent Owner’s Motion to Exclude.
`
`
`
`Date: April 12, 2017
`
`1100 New York Avenue, N.W.
`Washington, D.C. 20005–3934
`(202) 371–2600
`
`
`
`Respectfully submitted,
`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
`
`
`
`rather than the witness’s own counsel, for clarifications, definitions or explanations
`
`of any words, questions or documents presented during the cross examination. The
`
`witness must follow these instructions”). See also Hall v. Clifton Precision, 150
`
`F.R.D. 525 (E.D. Pa. 1993) (serving as the model for the Standing Order).
`
`
`
`- 3 -
`
`
`
`CBM2016-00032
`Patent 7,212,999 B2
`CERTIFICATE OF SERVICE (37 C.F.R. § 42.6(e))
`The undersigned hereby certifies that the foregoing PETITIONER’S
`
`OPPOSITION TO PATENT OWNER’S MOTION TO EXCLUDE was served
`
`electronically via e–mail on April 12, 2017, in its entirety on Attorneys for Patent
`
`Owner:
`
`
`Leif R. Sigmond, Jr. (Lead Counsel) sigmond@mbhb.com
`Michael D. Gannon (Back-up Counsel) gannon@mbhb.com
`Jennifer M. Kurcz (Back-up Counsel) kurcz@mbhb.com
`Cole B. Richter (Back-up Counsel) richter@mbhb.com
`MCDONNELL, BOEHNEN, HULBERT & BERGHOFF LLP
`
`Steven F. Borsand (Back-up Counsel) tt-patent-cbm@tradingtechnologies.com
`Jay Q. Knobloch (Back-up Counsel) jay.knobloch@tradingtechnologies.com
`Trading Technologies International, Inc.
`
`Respectfully submitted,
`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
`
`
`
`
`
`
`
`
`Date: April 12, 2017
`
`1100 New York Avenue, N.W.
`Washington, D.C. 20005–3934
`(202) 371–2600
`
`
`
`
`
`
`
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