`
`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
`_____________
`
`
`PETITIONERS’ REPLY TO PATENT OWNER’S OPPOSITION
`TO PETITIONERS’ 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 exclude Patent Owner’s inadmissible evidence identified
`
`in Petitioners’ Motion to Exclude (Paper 39). Patent Owner’s Opposition (Paper
`
`45) does nothing to cure its evidentiary shortcomings.
`
`II. Argument
`eSpeed Jury Verdict Form (Exhibit 2030)
`A.
`The Board should exclude Exhibit 2030, which purports to be a jury verdict
`
`form associated with Trading Technologies Int’l, Inc. v. eSpeed, Inc., No. 04-cv-
`
`05312. As explained in Petitioners’ Motion to Exclude, Exhibit 2030 is not
`
`probative of any issue before the Board. (Paper 39, 1.) Patent Owner fails to refute
`
`this point. Patent Owner’s Opposition does not explain why a Jury Verdict form
`
`from an unrelated district court proceeding is relevant to whether the ’999 patent
`
`claims eligible subject matter under 35 U.S.C. § 101. (Paper 45, 1-2.) Because
`
`Patent Owner fails to explain the relevance of Exhibit 2030, the Board should
`
`exclude this exhibit as irrelevant. FRE 401.
`
`B. Mr. Gould-Bear’s Declaration and Attachments (Exhibits 2168 and
`2192-2194) and Dr. Olsen’s Declaration and Attachments (Exhibits
`2174 and 2183-2189)
`
`The Board should exclude Mr. Gould-Bear’s Declaration (including its
`
`attachments) and Dr. Olsen’s Declaration (including its attachments) because they
`
`are irrelevant and impermissible hearsay. (Paper 39, 2-4.)
`
`
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`- 1 -
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`
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`CBM2016-00032
`Patent 7,212,999 B2
`Mr. Gould-Bear and Dr. Olsen’s testimony are not relevant to the instant
`
`CBM proceeding because neither declarant analyzed the patent-at-issue (i.e., the
`
`’999 patent). As explained in Petitioners’ Motion to Exclude, Exhibit 2168 is Mr.
`
`Gould-Bear’s Declaration from CBM2016-00051, which is a CBM of U.S. Patent
`
`No. 7,904,374. Exhibits 2192-2194 are attachments to Mr. Gould-Bear’s
`
`Declaration. And, Exhibit 2174 is Dr. Olsen’s Declaration from CBM2016-00051,
`
`which is a CBM of U.S. Patent No. 7,904,374. Exhibits 2183-2189 are attachments
`
`to Dr. Olsen’s Declaration. (Paper 39, 2-4.) Compared to the ’999 patent, the ’374
`
`is a different patent, with different claims, and from a different patent family.
`
`Patent Owner does not dispute that neither Mr. Gould-Bear nor Dr. Olsen
`
`testified as to the ’999 patent. (Paper 45, 2-3.) Instead, it asserts that their
`
`testimony is relevant because it is “directed to graphical user interfaces (GUIs).”
`
`(Id. at 2.) Patent Owner’s argument falls flat because the instant CBM proceeding
`
`is not challenging whether all GUIs are patent eligible; it is challenging whether
`
`the specific claims of the ’999 patent are patent eligible. Because Patent Owner’s
`
`declarants (Mr. Gould-Bear and Dr. Olsen) failed to analyze the claims-at-issue,
`
`their testimony is irrelevant and should be excluded. (Paper 39, 2-4.)
`
`
`
`Mr. Gould-Bear and Dr. Olsen’s testimony (including all attachments)
`
`should also be excluded as impermissible hearsay. (Id.) Patent Owner asserts that
`
`the “residual exception” applies to this evidence because it has “the same
`
`
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`- 2 -
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`
`
`CBM2016-00032
`Patent 7,212,999 B2
`circumstantial guarantees of trustworthiness” as the testimony at issue in Apple v.
`
`VirnetX and as the declarations created for these proceedings. (Paper 45, 4-6
`
`(citing IPR2015-00811, Paper 44).) That is not true. And, Patent Owner’s
`
`interpretation of Rule 807 eviscerates the rule against hearsay, which provides only
`
`limited exceptions for testimony in prior proceedings. See FRE 804(b)(1).
`
`FRE 807 does not confer “a broad license” on judges “to admit hearsay
`
`statements that do not fall within one of the other exceptions.” Neste Oil OYJ v.
`
`REG Synthetic Fuels, LLC, IPR2013-00578, Paper 53, at 10 (P.T.A.B. Mar. 12,
`
`2015) (citation omitted). It only applies in “exceptional cases.” Id. This case is not
`
`exceptional, and Patent Owner has not shown otherwise. Thus, FRE 807 does not
`
`cure Patent Owner’s hearsay evidence. Nor does Patent Owner cite precedential
`
`authority holding that testimony from another proceeding is always admissible
`
`before the Board. Indeed, it cannot. See, e.g., Captioncall, L.L.C. v. Ultratec, Inc.,
`
`IPR2015-00637, Paper 98, at 16-17 (P.T.A.B. Sept. 7, 2016).
`
`Patent Owner’s reliance on Apple is misplaced. First, the Board in Apple
`
`determined that the residual exception applied where the proponent analyzed each
`
`factor of FRE 807 “in detail.” See Apple Inc. v. Virnetx, IPR2015-00811, Paper
`
`44, at 69 (P.T.A.B. Sept. 8, 2016). Here, Patent Owner provides no substantive
`
`analysis under FRE 807(a)(3) or (4). Patent Owner’s assertion that it will be
`
`“deprived of due process” if the Board excludes its evidence (Paper 45, 6) is
`
`
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`- 3 -
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`
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`CBM2016-00032
`Patent 7,212,999 B2
`meritless and does not satisfy FRE 807(a)(4), see Captioncall, Paper 98, at 17.
`
`Holding Patent Owner to the same set of evidentiary rules as every other party
`
`before the Board is not a denial of due process.
`
`Second, as outlined by the Board, the residual exception to the hearsay rule
`
`is to be reserved for “exceptional cases.” However, the Board in Apple merely
`
`adopted the petitioner’s analysis without explaining why that case was
`
`“exceptional.” See id. at 68-70. Here, Patent Owner has not explained why this
`
`case is exceptional. It is not exceptional.
`
`Finally, the Apple Exhibits, which were from another proceeding, were
`
`submitted by a petitioner to establish that a document was prior art (the same
`
`purpose for which they were used in the other proceeding). And, the Apple
`
`Exhibits were specifically tailored to a factual issue. By contrast, Mr. Gould-Bear
`
`and Dr. Olsen’s testimony is directed to GUIs generally, and has absolutely no
`
`probative value in assessing the ’999 patent claims (which, again, neither declarant
`
`reviewed).
`
`Thus, for this proceeding, the Board should not follow Apple’s lead. Instead,
`
`it should exclude Mr. Gould-Bear’s Declaration (including its attachments) and Dr.
`
`Olsen’s Declaration (including its attachments) because they are impermissible
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`hearsay.
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`
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`- 4 -
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`
`
`III. Conclusion
`For the reasons set forth above and in Petitioners’ Motion to Exclude, the
`
`Board should exclude Patent Owner’s Exhibits 2030, 2168, 2174, 2183-2189, and
`
`CBM2016-00032
`Patent 7,212,999 B2
`
`2192-2194.
`
`
`
`Date: April 19, 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.
`
`/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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`- 5 -
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`
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`CBM2016-00032
`Patent 7,212,999 B2
`CERTIFICATE OF SERVICE (37 C.F.R. § 42.6(e))
`The undersigned hereby certifies that the foregoing PETITIONERS’
`
`REPLY TO PATENT OWNER’S OPPOSITION TO PETITIONERS’
`
`MOTION TO EXCLUDE was served electronically via e-mail on April 19, 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 19, 2017
`
`1100 New York Avenue, N.W.
`Washington, D.C. 20005–3934
`(202) 371–2600
`
`
`
`
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`
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