`Filed: April 19, 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 REPLY IN SUPPORT OF ITS
`MOTION TO EXCLUDE UNDER 37 C.F.R. § 42.64(c)
`
`
`
`
`
`
`
`CBM2016-00032
`U.S. Patent 7,212,999
`
`
`I.
`
`THE THOMAS TESTIMONY SHOULD BE EXCLUDED
`
`Petitioners do not dispute that Mr. Thomas’ testimony was given in response
`
`to vague and ambiguous questions. And Petitioners do not dispute that they are
`
`using this testimony in a confusing and misleading manner to argue that Mr.
`
`Thomas testified that the claimed inventions do not improve computers. Opp., p. 1
`
`(asserting that “Mr. Thomas, admitted that the claimed inventions do not improve
`
`computers. (See, e.g., Ex. 1047 at 248, 263-69.)”). Instead, Petitioners defer to the
`
`Board’s ability to accord the evidence “appropriate weight.” Id. at 2. But the
`
`Board’s ability to accord evidence “appropriate weight” does not entitle Petitioners
`
`to rely on testimony elicited by vague and ambiguous questions. Thus, even
`
`though the Board can appropriately disregard the evidence, it should also exclude
`
`the evidence.
`
`Petitioners also claim that because Mr. Thomas answered the questions at
`
`all, the testimony should not be excluded. Id. (“Having been instructed, and free to
`
`seek clarification as needed, the answers provided are in accordance with the
`
`ground rules for cross-examination.”). But the fact that the witness is entitled to
`
`seek clarification does not cure an objectionable question. See Office Patent Trial
`
`Practice Guide, 77 Fed. Reg. 48,756, 48,772 (Aug. 14, 2012) (“An objection at the
`
`time of the examination—whether to evidence, to a party’s conduct, to the officer’s
`
`qualifications, to the manner of taking the testimony, or any aspect of the
`
`1
`
`
`
`CBM2016-00032
`U.S. Patent 7,212,999
`
`
`testimony—must be noted on the record, but the examination still proceeds;
`
`testimony is taken subject to any such objection.”). Patent Owner timely objected
`
`to objectionable questioning. Ex. 1047 at 248, 263-269. Mr. Thomas’ answers do
`
`not obviate these objections and do not moot Patent Owner’s motion to exclude.
`
`Indeed, Mr. Thomas did not admit that the claimed inventions do not
`
`improve computers. Mr. Thomas simply stated what was not explicitly recited by
`
`the claims. The probative value of this testimony is substantially outweighed by a
`
`danger of unfair prejudice and confusing the issues as the result of vague
`
`questioning. Accordingly, it should be excluded under FRE 403.
`
`II. CONCLUSION
`
`The Board should grant Patent Owner’s Motion to Exclude
`
`Respectfully submitted,
`
`
`
`
`
`Date: April 19, 2017
`
`MCDONNELL BOEHNEN HULBERT &
`BERGHOFF LLP
`
`/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
`
`
`
`
`2
`
`
`
`CBM2016-00032
`U.S. Patent 7,212,999
`
`
`CERTIFICATION OF SERVICE
`
`Pursuant to 37 CFR §§ 42.6(s)(4) and 42.205(b), the undersigned certified
`
`that on April 19, 2017, a complete and entire copy or this PATENT OWNER’S
`
`REPLY IN SUPPORT OF ITS 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 19, 2017
`
`By:
`
`
`
`
`
`3
`
`
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