Paper No.
`Filed: August 30, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
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`
`
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`
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`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
`
`IBG LLC, INTERACTIVE BROKERS LLC,
` TRADESTATION GROUP, INC., and
`TRADESTATION SECURITIES, INC.,
`
`Petitioner,
`v.
` TRADING TECHNOLOGIES INTERNATIONAL, INC.,
`
`Patent Owner.
`_________________
`Case CBM2016-00032
`U.S. Patent 7,212,999 B2
`
`
`
`
`
`
`
`
`Patent Owner’s Objections to
`Evidence Pursuant to 37 C.F.R. § 42.64
`
`
`
`
`
`
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`
`
`Filed: August 30, 2016
`
`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.,
`
`Petitioner,
`v.
` TRADING TECHNOLOGIES INTERNATIONAL, INC.,
`
`Patent Owner.
`_________________
`Case CBM2016-00032
`U.S. Patent 7,212,999 B2
`
`
`
`
`
`
`
`
`Patent Owner’s Objections to
`Evidence Pursuant to 37 C.F.R. § 42.64
`
`
`
`
`
`
`
`
`
`
`Case CBM2016-00032
`U.S. Patent 7,212,999 B2
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`
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`Pursuant to 37 C.F.R. § 42.64(b)(1), Patent Owner objects to the following
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`Petitioner Exhibits:
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` 1012 (Expert Declaration of Kendyl A. Roman);
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` 1015 (“Futures/Option Purchasing System Trading Terminal
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`Operation Guidelines,” Tokyo Stock Exchange);
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` 1016 (Certified Translation of “System for Buying and Selling
`
`Futures and Options Transaction Terminal Operational Guidelines”);
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` 1017 (Certificate of Translation for “System for Buying and Selling
`
`Futures and Options Transaction Terminal Operational Guidelines”);
`
` 1018 (Deposition Transcript of Atsushi Kawashima, Trading
`
`Technologies International, Inc., v. eSPEED, Inc., Case No. 04-cv-
`
`5312, United States District Court, Northern District of Illinois,
`
`Eastern Division, dated November 21, 2005);
`
` 1019 (U.S. Patent No. 5,619,631 to Schott);
`
` 1020 (U.S. Patent No. 5,646,992 to Subler et al.);
`
` 1021 (U.S. Patent No. 5,689,651 to Lozman);
`
` 1022 (U.S. Patent No. 5,136,501 to Silverman et al.);
`
` 1023 (U.S. Patent No. 55,297,031 to Gutterman et al.);
`1
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`
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`Case CBM2016-00032
`U.S. Patent 7,212,999 B2
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` 1024 (WO 90/11571 to Belden, et al.);
`
` 1025 (Mark J. Powers, “Starting Out in Futures Trading,” Sixth
`
`Edition, 2001);
`
` 1026 (History of the American and NASDAQ Stock Ex-changes);
`
` 1027 (David M. Weiss, “After the Trade is Made,” 1993);
`
` 1028 (Sunny J. Harris, “Trading 101 – How to Trade Like a Pro,”
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`1996);
`
` 1029 (Alan Cooper, “About Face: The Essentials of User Interface
`
`Design,” First Edition, 1995);
`
` 1030 (Ben Schneiderman, “Designing the User Interface”, Strategies
`
`for Effective Human-Computer Interaction Third Edition, 1998);
`
` 1031 (Edward R. Tufte, “The Visual Display of Quantitative
`
`Information,” 1983);
`
` 1032 (Edward R. Tufte, “Envisioning Information,” Third Edition,
`
`December 1992);
`
` 1033 (Richard W. Arms Jr., “Profits in Volume - Equivolume
`
`Charting,” 1975);
`
`2
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`
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`Case CBM2016-00032
`U.S. Patent 7,212,999 B2
` 1034 (Vernon L. Smith, “An Experimental Study of Competitive
`
`Market Behavior,” The Journal of Political Economy, Vol. LXX, No.
`
`2, April 1962);
`
` 1036 (Inside Macintosh, Promotional Edition, Apple Computer, Inc.,
`
`1985);
`
` 1037 (U.S. Patent No. 1,760,287 to Schippers);
`
` 1038 (Valerie Quercia et al., “X Window System User’s Guide,”
`
`OSF/Motif 1.2 Edition, The Definitive Guides to the X Window
`
`System, Vol. 3, August 1993);
`
` 1039 (U.S. Patent No. 5,454,104 to Steidlmeyer); and
`
` 1040 (WO 97/06492 to Jackson).
`
`I.
`
`OBJECTION TO PETITIONER EXHIBIT 1012
`
`Patent Owner objects to Exhibit 1012 because it contains unreliable
`
`testimony under FRE 702 and Daubert v. Merrell Dow Pharm., Inc., 509 U.S. 579
`
`(1993). In particular, Mr. Román’s declaration includes numerous purported
`
`“expert” opinions on matters about which Mr. Román is not qualified to offer such
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`“expert” testimony. Mr. Román has insufficient knowledge, skill, experience,
`
`training, and education regarding trading and/or trading GUI design. Yet Mr.
`
`Román repeatedly opines about the understanding of a person of ordinary skill in
`
`3
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`
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`Case CBM2016-00032
`U.S. Patent 7,212,999 B2
`the art in the relevant time period with respect to such subjects. See, e.g., ¶¶ 73,
`
`75, 89, 91, 104, 111, 113-116, 119-121, 129-130, 144, 146, 154, 162, 170, 186,
`
`198, and 199.
`
`Patent Owner also objects to Exhibit 1012 under FRE 401 and 402 as
`
`irrelevant, or, in the alternative, under FRE 403 as prejudicial and a waste of time.
`
`Petitioner relies on Exhibit 1012 to explain how the prior art allegedly contains
`
`features of the claims of the ’999 patent. However, Exhibit 1012 is irrelevant to the
`
`single § 101 ground instituted by the Board, and is therefore inadmissible under
`
`FRE 401 and 402 because it lacks a tendency to make any fact at issue in this
`
`proceeding more or less probable, or, in the alternative, under FRE 403 as
`
`prejudicial and a waste of time.
`
`II.
`
`OBJECTION TO PETITIONER EXHIBITS 1015-1017 and 1019-1040
`
`Patent Owner objects to Exhibits 1015-1017 and 1019-1040 to the extent
`
`that Petitioner relies on their contents for the truth of the matters asserted therein.
`
`Exhibits 1015-1017 and 1019-1040 are inadmissible hearsay under FRE 801 and
`
`802, and no exception applies.
`
`4
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`
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`Case CBM2016-00032
`U.S. Patent 7,212,999 B2
`OBJECTION TO PETITIONER EXHIBITS 1015-1017
`
`III.
`
`Petitioner has submitted no evidence to authenticate Exhibit 1015, and
`
`deficient evidence for Exhibit 1016 as set forth below, making both inadmissible
`
`under FRE 901.
`
`Patent Owner also objects to Exhibit 1015-1017 under FRE 602. Petitioner
`
`fails to provide a credible translation of TSE and fail to conform with the Board’s
`
`rules for submitting translations of foreign language documents. In particular, 37
`
`C.F.R. § 42.63(b) requires that “[w]hen a party relies on a document or is required
`
`to produce a document in a language other than English, a translation of the
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`document into English and an affidavit attesting to the accuracy of the translation
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`must be filed with the document.” The record lacks such an affidavit under Rule
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`42.63(b) attesting to the accuracy because Mr. Cohen: (1) incorrectly refers to
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`“2014.05.19 - 1003 – TSE” as an English translation; and (2) on information and
`
`belief, he did not, himself, translate the Japanese language TSE into English,
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`thereby demonstrating his lack of personal knowledge regarding the matter for
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`which he is testifying. See FRE 602 (requiring personal knowledge to testify to a
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`matter). Exhibit 1017 is noncompliant with 37 C.F.R. § 42.63(b). This makes
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`Exhibit 1015 and 1016 inadmissible under 37 C.F.R. § 42.61(a) (“Evidence that is
`
`not taken, sought, or filed in accordance with this subpart is not admissible.”).
`
`5
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`Case CBM2016-00032
`U.S. Patent 7,212,999 B2
`Furthermore, Exhibit 1016 is an inherently subjective translation from Japanese to
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`English and prejudicial and misleading under FRE 403.
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`Patent Owner further objects to Exhibit 1015 under FRE 403 and FRE
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`1003. The copy of the Japanese language TSE document (Exhibit 1015) is illegible
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`in many places (e.g., 54-63, 91-120, 137-143) and therefore cannot be used to
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`verify the accuracy of the translation.
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`Patent Owner further objects to Exhibit 1016 under FRE 403. Exhibit 1016
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`substitutes nearly verbatim Patent Owner’s own translation of the TSE’s Chapter 7
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`for the inaccurate translation previously provided by Petitioner’s counsel.
`
`Compare Ex. 1016, 91-120 with CBM2016-00009, Ex. 2220, Appx. E. Despite
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`having copied Patent Owner’s translation into Exhibit 1016, on pages 7-25 and 7-
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`26 (see Exhibit 1016, 115-116), Petitioner omits two translator’s notes from Patent
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`Owner’s original translation. Exhibit 1016 is therefore incomplete, misleading,
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`and inadmissible under FRE 403.
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`IV.
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`OBJECTION TO PETITIONER EXHIBIT 1018
`
`Patent Owner objects to Exhibit 1018 to the extent that Petitioner relies on
`
`its contents for the truth of the matters asserted therein. Exhibit 1018 is
`
`inadmissible hearsay under FRE 801 and 802, and no exception applies.
`
`6
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`Case CBM2016-00032
`U.S. Patent 7,212,999 B2
`Patent Owner also objects to portions of Exhibit 1018 under FRE 401 and
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`402 as irrelevant, or in the alternative, under FRE 403 as prejudicial and waste of
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`time. Petitioner has cited only to 22 pages of the over 100-page exhibit. Pet. at 18.
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`The uncited portions are irrelevant, and, to the extent relevant, are prejudicial and a
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`waste of time.
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`V.
`
`OBJECTION TO PETITIONER EXHIBIT 1015-1017, 1019-1024, and
`
`1040
`
`Petitioner relies on Exhibits 1015-1017, 1019-1024, and 1040 as disclosing
`
`certain features of the claims of the ’999 patent. However, Exhibits 1015-1017,
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`1019-1024, and 1040 are irrelevant to the single § 101 ground instituted by the
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`Board, and are therefore inadmissible under FRE 401 and 402 because they lack a
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`tendency to make any fact at issue in this proceeding more or less probable.
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`
`Respectfully submitted,
`
`By: /Rachel L. Emsley/
`Rachel L. Emsley, Backup Counsel
`Registration No. 63,558
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`7
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`Dated: August 30, 2016
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`
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`Case CBM2016-00032
`U.S. Patent 7,212,999 B2
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of the foregoing Patent
`
`
`
`Owner’s Objections to Evidence Pursuant to 37 C.F.R. § 42.64 were served on
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`August 30, 2016, via email directed to counsel of record for the Petitioner at the
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`following:
`
`Robert Sokohl
`rsokohl-PTAB@skgf.com
`
`Lori Gordon
`lgordon-ptab@skgf.com
`
`Richard Bemben
`rbemben-PTAB@skgf.com
`
`PTAB@skgf.com
`
`
`
`/Maria Kennedy/
`Maria Kennedy
`Litigation Clerk
`
`Finnegan, Henderson, Farabow, Garrett
`& Dunner, LLP
`
`
`
`
`
`Dated: August 30, 2016
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