Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 6
`Entered: March 8, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`TRADESTATION GROUP, INC. and
`TRADESTATION SECURITIES, INC.,
`Petitioner,
`
`v.
`
`TRADING TECHNOLOGIES INTERNATIONAL, INC.,
`Patent Owner.
`
`CBM2016-00035 (Patent No. 6,766,304 B2)
` CBM2016-00040 (Patent No. 7,783,556 B1)1
`
`Before SALLY C. MEDLEY, MEREDITH C. PETRAVICK, and
`JEREMY M. PLENZLER, Administrative Patent Judges.
`
`PETRAVICK, Administrative Patent Judge.
`
`
`
`
`
`
`
`
`
`
`
`ORDER
`Conduct of Proceeding
`37 C.F.R. § 42.5
`
`
`
`On March 7, 2016, a conference call was held to discuss motions to
`join CBM2016-00035 and CBM2016-00040 with CBM2015-00161 and
`
`
`1 This Order addresses the same or similar issues in the proceedings listed
`above. Therefore, we issue one Order to be filed in each proceeding. The
`parties, however, are not authorized to use this style of filing.
`
`
`571-272-7822
`
`
`
`
`Paper 6
`Entered: March 8, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`TRADESTATION GROUP, INC. and
`TRADESTATION SECURITIES, INC.,
`Petitioner,
`
`v.
`
`TRADING TECHNOLOGIES INTERNATIONAL, INC.,
`Patent Owner.
`
`CBM2016-00035 (Patent No. 6,766,304 B2)
` CBM2016-00040 (Patent No. 7,783,556 B1)1
`
`Before SALLY C. MEDLEY, MEREDITH C. PETRAVICK, and
`JEREMY M. PLENZLER, Administrative Patent Judges.
`
`PETRAVICK, Administrative Patent Judge.
`
`
`
`
`
`
`
`
`
`
`
`ORDER
`Conduct of Proceeding
`37 C.F.R. § 42.5
`
`
`
`On March 7, 2016, a conference call was held to discuss motions to
`join CBM2016-00035 and CBM2016-00040 with CBM2015-00161 and
`
`
`1 This Order addresses the same or similar issues in the proceedings listed
`above. Therefore, we issue one Order to be filed in each proceeding. The
`parties, however, are not authorized to use this style of filing.
`
`
`
`CBM2016-00035 (Patent No. 6,766,304 B2)
`CBM2016-00040 (Patent No. 7,783,556 B1)
`
`CBM2015-00172, respectively. Paper 3.2 Counsel for IBG LLC and
`Interactive Brokers LLC (collectively, “Petitioner”), counsel for
`TradeStation Group, Inc. and TradeStation Securities, Inc. (collectively,
`“TradeStation”)3, counsel for Trading Technologies International, Inc.
`(“Patent Owner”)4, and Judges Medley, Petravick, and Plenzler participated
`on the call. The purpose of the call was to determine whether Patent Owner
`opposed the motions for joinder and whether, in light of the motions for
`joinder, it was willing to waive its right to file a preliminary response.
`Patent Owner indicated that it does not oppose joinder if the Board decides
`to institute covered business method reviews in CBM2016-00035 and
`CBM2016-00040, but that it was unwilling to waive its right to file a
`preliminary response. The Board indicated that it would consider shortening
`the time period for filing a preliminary response.
`Section 323 of the Statute provides a patent owner with a right to file
`a preliminary response within a time period set by the Director. 35 U.S.C. §
`323; 37 C.F.R § 42.207(a). Section 42.207(b) of our Rules sets the deadline
`for filing a preliminary response to no later than three months after the date
`of a notice indicating that the petition has been granted a filing date. 37
`
`
`2 All citations are to CBM2016-00035 unless otherwise noted. During the
`conference call, Patent Owner requested authorization to file a motion to
`stay related proceeding CBM2015-00161. We will address that issue in a
`separate order.
`3 TradeStation is the petitioner in both CBM2015-00161 and CBM2015-
`00172.
`4 Mandatory notices indicating counsel for Patent Owner have not yet been
`filed in CBM2016-00035 and CBM2016-00040. Counsel for Patent Owner
`in CBM2015-00161 and CBM2015-00172, however, indicated that they also
`represent Patent Owner in CBM2016-00035 and CBM2016-00040.
`
`2
`
`
`
`CBM2016-00035 (Patent No. 6,766,304 B2)
`CBM2016-00040 (Patent No. 7,783,556 B1)
`
`C.F.R. § 42.207(b). However, “[t]imes set by rule are default and may be
`modified by order.” 37 C.F.R. § 42.5(b).
`
`The Board instituted covered business method patent review in
`CBM2015-00161 and CBM2015-00172 on January 27, 2016 and February
`12, 2016, respectively. In CBM2016-00035, the petition challenges the
`claims of the same patent under the sole ground under 35 U.S.C. § 101, for
`which we instituted covered business method patent review in CBM2015-
`00161. Likewise, in CBM2016-00040, the petition challenges the claims of
`the same patent under the sole ground under 35 U.S.C. § 101, for which we
`instituted covered business method patent review in CBM2015-00172. The
`grounds in the respective petitions appear to be substantively identical. See
`Paper 4, 5.
`
`Petitioner indicated during the call that, should covered business
`method patent review be instituted and its motions for joinder be granted, it
`would not object to taking a “back seat” role to TradeStation. For example,
`separate filings from Petitioner in the joined proceedings would require prior
`authorization from the Board. TradeStation indicated that it did not object to
`joining the proceedings or to such condition.
`During the call, Patent Owner indicated concern about expediting its
`preliminary responses due to the closeness of the deadlines for filing a patent
`owner’s response in CBM2015-00161, CBM2015-00172, and other
`instituted related covered business method patent review proceedings. We
`recognize that shortening the time period may impose some burden on
`Patent Owner. However, the advantages, should the proceedings be joined,
`outweigh any burden that may be imposed upon the Patent Owner. Any
`burden should be minimal as Patent Owner is familiar with the challenges to
`
`3
`
`
`
`CBM2016-00035 (Patent No. 6,766,304 B2)
`CBM2016-00040 (Patent No. 7,783,556 B1)
`
`the claims of the patents on grounds under 35 U.S.C. § 101 and other
`pertinent issues, having filed preliminary responses in CBM2015-00161,
`CBM2015-00172, and other related proceedings that involve Petitioner.
`Under these circumstances, it is appropriate to expedite the preliminary
`response due date to March 29, 2016. See 37 C.F.R. § 42.1(b).
`Should the Patent Owner decided to oppose the motions for joinder,
`Patent Owner must file its opposition no later than March 29, 2016.
`
`Accordingly, it is:
`ORDERED that the deadline for filing a patent owner’s preliminary
`response and an opposition to Petitioner’s motion for joinder in CBM2016-
`00035 or CBM2016-00040 is reset to March 29, 2016.
`
`
`
`4
`
`
`
`
`
`CBM2016-00035 (Patent No. 6,766,304 B2)
`CBM2016-00040 (Patent No. 7,783,556 B1)
`
`PETITIONER:
`
`Michael T. Rosato
`Matthew A. Argenti
`Robert E. Sokohl
`WILSON SONSINI GOODRICH & ROSATI
`mrosato@wsgr.com
`margenti@wsgr.com
`RSOKOHL@skgf.com
`
`PATENT OWNER:
`MBHB/TRADING TECHNOLOGIES
`300 South Wacker Drive, Suite 3200
`Chicago, IL 60606
`
`and
`
`Leif R. Sigmond, Jr.
`McDonnell Boehnen Hulbert &
`Berghoff LLP
`300 South Wacker Drive, Suite 3000
`Chicago, IL 60606
`
`
`
`5
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