Paper No. ____
`Filed: February 17, 2016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________________
`
`IBG LLC and INTERACTIVE BROKERS LLC,
`Petitioners,
`
`v.
`
`TRADING TECHNOLOGIES INTERNATIONAL, INC.,
`Patent Owner.
`_____________________________
`
`Patent No. 6,766,304
`_____________________________
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`
`
`PETITIONER’S MOTION FOR JOINDER
`UNDER 35 U.S.C. § 325(c) AND 37 C.F.R. §§ 42.22 AND 42.222(b)
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`Filed: February 17, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________________
`
`IBG LLC and INTERACTIVE BROKERS LLC,
`Petitioners,
`
`v.
`
`TRADING TECHNOLOGIES INTERNATIONAL, INC.,
`Patent Owner.
`_____________________________
`
`Patent No. 6,766,304
`_____________________________
`
`
`
`PETITIONER’S MOTION FOR JOINDER
`UNDER 35 U.S.C. § 325(c) AND 37 C.F.R. §§ 42.22 AND 42.222(b)
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`
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`Motion for Joinder
`U.S. Patent No. 6,766,304
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`I.
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`STATEMENT OF PRECISE RELIEF REQUESTED
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`Petitioners IBG LLC and Interactive Brokers LLC (collectively, “IBG” or
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`“Petitioners”) respectfully submit this motion for joinder together with a petition for
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`covered business method review (“the petition”) of claims 1-40 of U.S. Patent No.
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`6,766,304 (“the ’304 patent”), assigned to Trading Technologies International, Inc.
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`(“TT” or “Patent Owner”). Pursuant to 35 U.S.C. § 325(c) and 37 C.F.R. § 42.222(b),
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`IBG requests that this proceeding be joined with TradeStation Group, Inc. and
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`TradeStation Securities, Inc. v. Trading Technologies International, Inc., CBM2015-
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`00161 (“the ’161 CBM review”).
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`II.
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`INTRODUCTION
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`IBG is filing this petition and joinder motion to ensure that trial is completed
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`in the event that the current petitioners in the ’161 CBM review reach settlement with
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`Patent Owner. Given that Patent Owner has already settled with at least one other
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`defendant accused of infringing the ’304 patent, this is a significant concern.
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`Moreover, joinder of IBG’s petition with the ’161 CBM review would allow for
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`consolidation of the proceedings and promote efficient resolution of the two
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`petitions.
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`IBG’s request for joinder is timely because the Board issued its institution
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`decision instituting trial in the ’161 CBM review on January 27, 2016, less than one
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`month ago. IBG’s petition is also narrowly tailored to the identical ground of
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`unpatentability for which trial was instituted on the ’161 petition and relies on the
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`same analysis and evidence. Accordingly, joinder of the petition to the ’161 CBM
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`review is appropriate. In addition, joinder is appropriate because it will efficiently
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`resolve the validity of the claims of the ’304 patent in a single proceeding, without
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`prejudicing the parties to the ’161 CBM review.
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`Absent termination of TradeStation Securities, Inc. and TradeStation Group,
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`Inc. (collectively, “TradeStation”) as parties to the proceeding, IBG anticipates
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`participating in a limited capacity. To the extent that IBG does participate, IBG will
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`coordinate with TradeStation to consolidate any filings, manage questioning at
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`deposition, manage presentations at the hearing, ensure that briefing and discovery
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`occur within the time normally allotted, and avoid redundancies.
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`IBG has conferred with counsel for TradeStation regarding the subject of this
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`motion. TradeStation has indicated that it does not oppose joinder.
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`III. BACKGROUND
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`Beginning in 2005, TT began asserting a number of patents, including the ’304
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`patent, against numerous companies. In August 2005, CQGT, LLC and CQG, Inc.
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`(collectively, “CQG”) filed a complaint for declaratory judgment of non-
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`infringement and invalidity of the ’304 patent. See CQG v. Trading Techs. Int’l,
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`CBM2015-00057, Paper 13 p. 2 (July 10, 2015). Later that same month, Patent
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`Owner sued CQG for infringement of the ’304 patent. Id. at 2-3. Patent Owner
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`subsequently sued TD Ameritrade, Inc. and TD Ameritrade Holding Corp.
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`(collectively “TD Ameritrade”), TradeStation, and IBG in separate actions
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`commenced in 2010.
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`The ’304 patent has also been the subject of a number of petitions for covered
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`business method review. First, TD Ameritrade filed a CBM review petition on May
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`20, 2014. Ex. 1005. While the Board found that the ’304 patent was eligible for CBM
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`review, it denied the petition based on deficiencies in the proposed grounds of
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`challenge. Ex. 1003.
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`On January 9, 2015, CQG filed a CBM review petition directed to the ’304
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`patent. See CQG, CBM2015-0057, Paper 3. On July 10, 2015, the Board denied
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`institution of the CQG petition based on CQG’s filing of a declaratory judgment
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`action challenging the validity of the ’304 patent. CQG, CBM2015-00057, Paper 13.
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`The merits of CQG’s petition were not reached. Id.
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`On July 20, 2015, TradeStation filed a CBM petition challenging the validity
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`of claims 1-40 of the ’304 patent. See TradeStation, CBM2015-00161, Paper 2. In its
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`petition, TradeStation acknowledges that portions of its petition, including the
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`supporting expert declaration, are substantially identical to CQG’s petition and
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`exhibits. Id. at 4. The Board issued its institution decision in the ’161 CBM review on
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`January 27, 2016, instituting trial on all claims.
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`IBG’s petition raises the identical ground of unpatentability as was raised in
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`the ’161 CBM review and instituted by the Board, and is essentially a copy of
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`TradeStation’s petition in the ’161 CBM review with respect to the challenge under
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`§ 101, while omitting the challenge under § 112 that was denied institution. See,
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`generally, Petition.
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`IV. ARGUMENT
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`A.
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`Legal Standard
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`The Leahy-Smith America Invents Act permits joinder of like review
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`proceedings, including joinder of a covered business method review to another
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`covered business method review. 35 U.S.C. § 325(c); 37 C.F.R. 42.222. In deciding
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`whether to exercise its discretion and allow joinder of proceedings, the Board
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`considers several factors including: (1) the reasons why joinder is appropriate, (2)
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`whether the party to be joined has presented any new grounds of unpatentability, (3)
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`what impact, if any, joinder would have on the trial schedule for the existing review,
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`and (4) how briefing and discovery may be simplified. Dell Inc. v. Network-1
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`Security Solutions, Inc., IPR2013-00385, Paper 17 p. 4 (July 29, 2013); see also
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`Skimlinks, Inc. v. Linkline, Inc., CBM2015-00087, Paper 14 p. 24 (June 15, 2015)
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`(citing Frequently Asked Question H5, http://www.uspto.gov/patents-application-
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`process/appealing-patent-decisions/trials/patent-review-processing-system-prps-0).
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`B.
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`IBG’s Motion for Joinder Is Timely
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`Joinder may be requested no later than one month after the institution date of a
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`covered business method review for which joinder is requested. 37 C.F.R.
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`§ 42.222(b). The Board issued its institution decision in the ’161 CBM review on
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`January 27, 2016, less than one month ago. Accordingly, IBG’s request for joinder is
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`timely.
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`C.
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`The Relevant Factors Weigh in Favor of Joinder
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`Each of the four factors considered by the Board weighs in favor of joinder. As
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`discussed below, granting joinder will not enlarge the scope of the ’161 CBM review
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`and will not impact the schedule in that proceeding.
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`1.
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`Joinder is Appropriate
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`Joinder with the ’161 CBM review is appropriate because the petition is not
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`only limited to the same § 101 ground raised in TradeStation’s petition, but also
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`relies on the same analysis submitted by TradeStation. Indeed, the petition is virtually
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`identical with respect to the analysis regarding the ’304 patent’s eligibility for CBM
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`review, claim construction, and the asserted ground of challenge under § 101.
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`Moreover, the petition does not assert any grounds of challenge not already raised or
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`instituted in the ’161 CBM review. The Board recognizes a “policy preference for
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`joining a party that does not present new issues that might complicate or delay an
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`existing proceeding.” Enzymotec Ltd. v. Neptune Techs. & Bioresources, Inc.,
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`IPR2014-00556, Paper 19 p. 6 (July 9, 2014); see also 157 Cong. Rec. S1376 (daily
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`ed. Mar. 8, 2011) (statement of Sen. Kyl) (“The Office anticipates that joinder will be
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`allowed as of right ... for example, a party that files an identical petition will be
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`joined to that proceeding.”).
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`Joinder of the petition to the ’161 CBM review will promote the efficient
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`determination of validity of all claims of the ’304 patent, as it will consolidate
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`identical challenges to the validity of the ’304 patent. If the Board institutes a
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`separate CBM review of the ’304 patent based on IBG’s petition in addition to the
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`instituted ’161 CBM review proceeding, the Board would be required to determine
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`the same issues in multiple proceedings, requiring duplicative efforts and creating a
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`risk of inconsistent results.
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`Moreover, granting IBG’s joinder motion will further the interests of justice in
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`that it will permit IBG to protect its interests related to the validity of the ’304
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`patent—interests which could be prejudiced if IBG is not permitted to be joined. On
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`the other hand, permitting joinder will not prejudice TradeStation or Patent Owner, as
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`IBG raises no issues that are not already before the Board so joinder would not affect
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`the timing or content of any of TradeStation’s or Patent Owner’s responses.
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`Moreover, as discussed below, IBG is amenable to coordinating with TradeStation on
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`filings such that Patent Owner will not suffer any additional costs or burdens in
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`preparing motions and arguments. Additionally, TradeStation does not oppose IBG’s
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`joinder request. Accordingly, because of the substantially identical petitions involved
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`here, joinder is appropriate.
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`2.
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`No New Grounds of Unpatentability Are Presented
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`The petition does not present any new ground of unpatentability. As
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`mentioned above, the ground of challenge set forth in the petition is substantially
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`identical to the ground presented in the ’161 CBM review.
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`The petition differs in a single way, which does not warrant denying this
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`motion. The petition in the ’161 CBM review included a ground of challenge based
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`on § 112. The Board did not institute trial based on that ground, and IBG has
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`therefore omitted it from its petition. The omission of the § 112 ground of challenge
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`does not change the substantive analysis presented in the § 101 ground of challenge
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`in any way.
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`3.
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`No Impact on the Trial Schedule for the ’161 CBM Review
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`Granting this motion for joinder will have no impact on the trial schedule for
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`the ’161 CBM review proceeding because the Board only recently issued its
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`institution decision in that proceeding. Because the ’161 CBM review is still in its
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`early stages, joinder will not prevent the Board from issuing a final written decision
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`in a timely manner. If the Board grants this joinder request, the joined proceeding can
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`continue on the schedule set by the Board in the ’161 CBM review, which would
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`substantially minimize any burden on the Board and the parties.
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`Moreover, IBG’s petition does not raise any issues that are not already before
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`the Board. Thus, TT does not need to specifically address any issues raised by IBG,
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`and thus, joinder would have no impact on the timing or cost of the proceeding.1
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`1 To the extent that TT may argue CQG is a real party-in-interest to IBG’s
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`petition, IBG has already addressed this in the petition by applying the same analysis
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`as is set forth by TradeStation in the petition for the ’161 CBM proceeding. See
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`Petition pp. 3-7. In addition, IBG notes that the Board has already denied TT’s
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`motion for discovery on this issue with respect to TradeStation in the ’161 CBM
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`review and ruled in its institution decision in that proceeding that Patent Owner has
`(continued)
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`4.
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`Joinder Will Simplify Discovery and Briefing
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`Given that the petition is practically identical to TradeStation’s petition with
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`respect to the ground of unpatentability instituted in the ’161 CBM review, the Board
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`may adopt procedures similar to those used in related cases to simplify briefing and
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`discovery during trial. See, e.g., Samsung Elecs. Co., Ltd. v. e-Watch, Inc., IPR2015-
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`00611, Paper 9 pp. 5-8 (July 10, 2015); Skimlinks, CBM2015-00087, Paper 14 pp.
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`23-28. Specifically, the Board may order petitioners to consolidate filings. IBG is
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`willing to allow TradeStation to have primary responsibility for filings on behalf of
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`all petitioners. Unless and until TradeStation settles with Patent Owner, IBG is
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`willing to be limited to separate filings, if any, of a reasonable number of pages (e.g.,
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`seven pages) directed only to points of disagreement with TradeStation with the
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`understanding that it will not be permitted any separate arguments in further of those
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`advanced in TradeStation’s consolidated filings. See, e.g., Samsung, IPR2015-00611,
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`Paper 9 pp. 6-7.
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`Further, no additional depositions will be needed and depositions will be
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`completed within ordinary time limits. Moreover, IBG will coordinate with
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`TradeStation to consolidate filings, manage questioning at depositions, manage
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`presentations at the hearing, ensure that briefing and discovery occur within the time
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`not identified any evidence demonstrating CQG is a real-party-in-interest. See
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`CBM015-00161, Paper 20 (generally) and Paper 29 pp. 27-30.
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`normally allotted, and avoid redundancies. These procedures should simplify briefing
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`and discovery.
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`V. CONCLUSION
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`For the forgoing reasons, Petitioner respectfully requests that this motion be
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`granted and that this proceeding be joined with the ’161 CBM review.
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`Respectfully submitted,
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`/ Michael T. Rosato /
`Michael T. Rosato, Lead Counsel
`Reg. No. 52,182
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`Dated: February17, 2016
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`Certificate of Service
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`Pursuant to 37 C.F.R. §§ 42.6(e) and 42.105(a), this is to certify that I caused
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`to be served a true and correct copy of the foregoing Petitioner’s Motion for Joinder
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`Pursuant to 35 U.S.C. § 325(c) and 37 C.F.R. §§ 42.22 and 42.222(b) by overnight
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`courier (Federal Express or UPS), on this 17th day of February, 2016, on the Patent
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`Owner at the correspondence address of the Patent Owner as follows:
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`
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`MBHB/TRADING TECHNOLOGIES
`300 South Wacker Drive, Suite 3200
`Chicago, IL 60606
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`Leif R. Sigmond, Jr.
`McDonnell Boehnen Hulbert &
`Berghoff LLP
`300 South Wacker Drive, Suite 3000
`Chicago, IL 60606
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`Dated: February 17, 2016
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`/ Michael T. Rosato /
`Michael T. Rosato, Lead Counsel
`Reg. No. 52,182
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