Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`Paper 10
` Entered: April 4, 2016
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`IBG LLC and INTERACTIVE BROKERS LLC,
`Petitioner,
`
`v.
`
`TRADING TECHNOLOGIES INTERNATIONAL, INC.,
`Patent Owner.
`_______________
`
`Case CBM2016-00035
`Patent 6,766,304 B2
`_______________
`
`
`
`Before SALLY C. MEDLEY, MEREDITH C. PETRAVICK, and
`JEREMY M. PLENZLER, Administrative Patent Judges.
`
`PETRAVICK, Administrative Patent Judge.
`
`
`
`DECISION
`
`Institution of Covered Business Method Patent Review
`and Grant of Motion for Joinder
`37 C.F.R. § 42.208
`37 C.F.R. § 42.222(b)
`
`
`Tel: 571-272-7822
`
`
`
`Paper 10
` Entered: April 4, 2016
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`IBG LLC and INTERACTIVE BROKERS LLC,
`Petitioner,
`
`v.
`
`TRADING TECHNOLOGIES INTERNATIONAL, INC.,
`Patent Owner.
`_______________
`
`Case CBM2016-00035
`Patent 6,766,304 B2
`_______________
`
`
`
`Before SALLY C. MEDLEY, MEREDITH C. PETRAVICK, and
`JEREMY M. PLENZLER, Administrative Patent Judges.
`
`PETRAVICK, Administrative Patent Judge.
`
`
`
`DECISION
`
`Institution of Covered Business Method Patent Review
`and Grant of Motion for Joinder
`37 C.F.R. § 42.208
`37 C.F.R. § 42.222(b)
`
`
`
`CBM2016-00035
`Patent 6,766,304 B2
`
`
`I.
`
`INTRODUCTION
`
`IBG LLC and Interactive Brokers LLC (collectively, “Petitioner”)
`
`filed a Petition (Paper 1, “Pet.”) requesting covered business method patent
`
`review of claims 1–40 (“challenged claims”) of U.S. Patent No. 6,766,304
`
`B2 (Ex. 1001, “the ’304 patent”) pursuant to § 18 of the Leahy-Smith
`
`America Invents Act, and concurrently filed a Motion for Joinder (Paper 3,
`
`“Mot.”). The Motion for Joinder seeks to join this proceeding with
`
`TradeStation Group, Inc. v. Trading Technologies International, Inc.,
`
`CBM2015-00161 (the “TradeStation CBM”). Mot. 1. Patent Owner did not
`
`file a Preliminary Response or an opposition to the Motion for Joinder
`
`before March 29, 2016. See Paper 6 (setting the due date to March 29,
`
`2016). During a conference call held on March 7, 2016, Patent Owner
`
`indicated that it did not oppose joinder if this proceeding is instituted. Ex.
`
`2001, 13.
`
`For the reasons described below, we institute a covered business
`
`method patent review of all the challenged claims and grant Petitioner’s
`
`Motion for Joinder.
`
`II.
`
`INSTITUTION OF COVER BUSINESS METHOD REVIEW
`
`The Petition asserts the identical ground on which we instituted
`
`review in the TradeStation CBM. Mot. 5–6. On January 27, 2016, we
`
`instituted a trial in the TradeStation CBM on the sole ground of claims 1–40
`
`being unpatentable under 35 U.S.C. § 101. Tradestation Group, Inc. v.
`
`Trading Technologies International, Inc., Case CBM2015-00161, slip. op. at
`
`32 (PTAB Jan. 27, 2016) (Paper 29). In view of the identity of the challenge
`
`in the instant Petition and in the petition in the TradeStation CBM, we
`
`
`
`2
`
`
`
`CBM2016-00035
`Patent 6,766,304 B2
`
`institute a covered business method patent review in this proceeding on the
`
`same ground, for the same reasons. See id. at 7–27.
`
`III. GRANT OF MOTION FOR JOINDER
`
`A covered business method patent review may be joined with another
`
`covered business method patent review, subject to the provisions of 35
`
`U.S.C. § 325(c), which governs joinder of covered business method patent
`
`review proceedings:
`
`(c) JOINDER. — If more than 1 petition for a post-grant review
`under this chapter is properly filed against the same patent and
`the Director determined that more than 1 of these petitions
`warrants the institution of a post-grant review under section 324,
`the Director may consolidate such reviews into a single
`post-grant review.
`
`As the moving party, Petitioner bears the burden of proving that it is
`
`entitled to the requested relief. 37 C.F.R. § 42.20(c). A motion for joinder
`
`should: (1) set forth the reasons joinder is appropriate; (2) identify any new
`
`grounds of unpatentability asserted in the petition; and (3) explain what
`
`impact (if any) joinder would have on the trial schedule for the existing
`
`review. See Frequently Asked Question H5, available at
`
`http://www.uspto.gov/patentsapplication-process/appealing-
`
`patentdecisions/trials/patent-reviewprocessing-system-prps-0.
`
`The Petition in this proceeding has been accorded a filing date of
`
`February 17, 2016 (Paper 4), which is within one month of the date of
`
`institution in the TradeStation CBM, which was instituted on January 27,
`
`2016. The Petition, therefore, was filed timely. 37 C.F.R. § 42.222(b).
`
`In its Motion for Joinder, Petitioner contends that the Petition
`
`raises the identical ground of unpatentability as was raised in
`the ’161 CBM review and instituted by the Board, and is
`
`
`
`3
`
`
`
`CBM2016-00035
`Patent 6,766,304 B2
`
`
`essentially a copy of TradeStation’s petition in the ’161 CBM
`review with respect to the challenge under § 101.
`
`Mot. 3. The identity of its ground with that in the TradeStation CBM means
`
`that Patent Owner will not be prejudiced because the joinder of Petitioner to
`
`the TradeStation CBM will not require Patent Owner to perform any
`
`additional analysis because it does not raise any issues that are not already
`
`before the Board. Id. at 6. Patent Owner does not oppose joinder. Id.
`
`Petitioner asserts that it is willing to consolidate filings with
`
`TradeStation Group, Inc. and TradeStation Securities, Inc. (collectively,
`
`“TradeStation”). Id. During a conference call held March 7, 2016, however,
`
`Petitioner indicated that it would be willing to take a “backseat” role to
`
`TradeStation, in which it would not be allowed to file any separate papers
`
`without prior authorization from the Board. Ex. 2001, 18–19. TradeStation
`
`indicated it agreed to such an arrangement. Id. at 19.
`
`Petitioner asserts that joinder will have no impact on the trial schedule
`
`of the TradeStation CBM because the TradeStation CBM is still in its early
`
`stages. Mot. 7.
`
`On this record, we find that joinder is appropriate and we grant
`
`Petitioner’s Motion for Joinder.
`
`IV. ORDER
`
`In view of the foregoing, it is
`
`ORDERED that Petitioner’s Motion for Joinder is granted;
`
`FURTHER ORDERED that CBM2016-00035 is hereby instituted and
`
`consolidated with CBM2015-00161;
`
`
`
`4
`
`
`
`CBM2016-00035
`Patent 6,766,304 B2
`
`
`FURTHER ORDERED that the ground on which CBM2015-00161
`
`was instituted is unchanged and no other grounds are included in the joined
`
`proceeding;
`
`FURTHER ORDERED that the Scheduling Order entered in
`
`CBM2015-00161 (Paper 30) remains unchanged and shall govern the
`
`schedule of the joined proceedings;
`
`FURTHER ORDERED that, throughout the joined proceeding,
`
`TradeStation will file all papers on behalf of TradeStation, IBG LLC, and
`
`Interactive Brokers LLC jointly in the joined proceeding as consolidated
`
`filings, and will identify each such paper as “Consolidated;”
`
`FURTHER ORDERED that IBG LLC and Interactive Brokers LLC
`
`will not make any separate filings without prior authorization from the
`
`Board;
`
`FURTHER ORDERED that, except as otherwise agreed by all parties,
`
`TradeStation will conduct any cross-examination and other discovery on
`
`behalf of TradeStation, IBG LLC, and Interactive Brokers LLC, and that
`
`Patent Owner is not required to provide separate discovery responses or
`
`additional deposition time as a result of the joinder;
`
`FURTHER ORDERED that CBM2016-00035 is terminated under
`
`37 C.F.R. § 42.72 and all further filings in the joined proceedings are to be
`
`made in CBM2015-00161;
`
`FURTHER ORDERED that a copy of this Decision will be entered
`
`into the record of CBM2015-00161; and
`
`FURTHER ORDERED that the case caption in CBM2015-00161
`
`shall be changed to reflect joinder with this proceeding in accordance with
`
`the attached example.
`
`
`
`5
`
`
`
`CBM2016-00035
`Patent 6,766,304 B2
`
`
`FOR PETITIONER:
`
`Michael T. Rosato
`Matthew A. Argenti
`Robert E. Sokohl
`WILSON SONSINI GOODRICH & ROSATI
`mrosato@wsgr.com
`margenti@wsgr.com
`RSOKOHL@skgf.com
`
`
`
`FOR PATENT OWNER:
`
`Erika H. Arner
`Joshus L. Goldberg
`Kevin D. Rodkey
`Rachel L. Emsley
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
`erika.arner@finnegan.com
`joshua.goldberg@finnegan.com
`kevin.rodkey@finnegan.com
`rachel.emsley@finnegan.com
`
`
`
`Steven F. Borsand
`TRADING TECHNOLOGIES INTERNATIONAL, INC.
`tt-patent-cbm@tradingtechnologies.com
`
`
`
`
`
`6
`
`
`
`Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`Paper 10
` Entered: April 4, 2016
`
`
`
`
`
`
`
`Example Case Caption for Joined Proceeding
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`TRADESTATION GROUP INC.,
`TRADESTATION SECURITIES, INC., IBG LLC, and
`INTERACTIVE BROKERS LLC.,
`Petitioner,
`
`v.
`
`TRADING TECHNOLOGES INTERNATIONAL, INC.,
`Patent Owner.
`_______________
`
`Case CBM2015-001611
`Patent 6,766,304 B2
`_______________
`
`
`
`
`1 Case CBM2016-00035 has been joined with this proceeding.
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