Paper No. ____
`Filed: February 25, 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. 7,783,556
`_____________________________
`
`
`
`PETITIONER’S MOTION FOR JOINDER
`UNDER 35 U.S.C. § 325(c) AND 37 C.F.R. §§ 42.22 AND 42.222(b)
`
`
`
`
`
`
`
`
`Filed: February 25, 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. 7,783,556
`_____________________________
`
`
`
`PETITIONER’S MOTION FOR JOINDER
`UNDER 35 U.S.C. § 325(c) AND 37 C.F.R. §§ 42.22 AND 42.222(b)
`
`
`
`
`
`
`
`
`
`Motion for Joinder
`U.S. Patent No. 6,766,304
`
`I.
`
`STATEMENT OF PRECISE RELIEF REQUESTED
`
`Petitioners IBG LLC and Interactive Brokers LLC (collectively, “IBG” or
`
`“Petitioners”) respectfully submit this motion for joinder together with a petition for
`
`covered business method review (“the petition”) of claims 1-22 of U.S. Patent No.
`
`7,783,556 (“the ’556 patent”), assigned to Trading Technologies International, Inc.
`
`(“TT” or “Patent Owner”). Pursuant to 35 U.S.C. § 325(c) and 37 C.F.R. § 42.222(b),
`
`IBG requests that this proceeding be joined with TradeStation Group, Inc. and
`
`TradeStation Securities, Inc. v. Trading Technologies International, Inc., CBM2015-
`
`00172 (“the ’172 CBM review”).
`
`II.
`
`INTRODUCTION
`
`IBG is filing this petition and joinder motion to ensure that trial is completed
`
`in the event that the current petitioners in the ’172 CBM review reach settlement with
`
`Patent Owner. Given that Patent Owner has already settled with at least one other
`
`defendant accused of infringing the ’556 patent, this is a significant concern.
`
`Moreover, joinder of IBG’s petition with the ’172 CBM review would allow for
`
`consolidation of the proceedings and promote efficient resolution of the two
`
`petitions.
`
`IBG’s request for joinder is timely because the Board issued its institution
`
`decision instituting trial in the ’172 CBM review on February 12, 2016, less than one
`
`month ago. IBG’s petition is also narrowly tailored to the identical grounds of
`
`unpatentability for which trial was instituted on the ’172 petition and relies on the
`
`- 1 -
`
`
`
`same analysis and evidence.1 Accordingly, joinder of the petition to the ’172 CBM
`
`review is appropriate. In addition, joinder is appropriate because it will efficiently
`
`resolve the validity of the claims of the ’556 patent in a single proceeding, without
`
`prejudicing the parties to the ’172 CBM review.
`
`Absent termination of TradeStation Securities, Inc. and TradeStation Group,
`
`Inc. (collectively, “TradeStation”) as parties to the proceeding, IBG anticipates
`
`participating in a limited capacity. To the extent that IBG does participate, IBG will
`
`coordinate with TradeStation to consolidate any filings, manage questioning at
`
`deposition, manage presentations at the hearing, ensure that briefing and discovery
`
`occur within the time normally allotted, and avoid redundancies.
`
`IBG has conferred with counsel for TradeStation regarding the subject of this
`
`motion. TradeStation has indicated that it does not oppose joinder.
`
`III. BACKGROUND
`
`TT has asserted the ’556 patent against numerous companies, including IBG
`
`and TradeStation, in litigation consolidated as TRADING TECHNOLOGIES
`
`INTERNATIONAL, INC. v. OPEN E CRY, LLC, OPTIONSXPRESS HOLDINGS,
`
`INC., ROSENTHAL COLLINS GROUP, LLC, TRADESTATION SECURITIES, INC.,
`
`
`
`1 IBG’s exhibits are identical to the exhibits submitted with the petition in the
`
`’172 CBM review except for the use of a substitute Ex. 1006 that demonstrates that
`
`IBG, as opposed to TradeStation, has been sued for infringement of the ’556 patent.
`
`
`
`- 2 -
`
`
`
`TRADESTATION GROUP, INC., IBG, LLC, TD AMERITRADE, INC., TD
`
`AMERITRADE HOLDING CORP., THINKORSWIM GROUP, INC., INTERACTIVE
`
`BROKERS, LLC, CQG, INC., CQGT, LLC, FUTUREPATH TRADING LLC,
`
`SUNGARD DATA SYSTEMS, INC., SUNGARD INVESTMENT VENTURES LLC,
`
`GL TRADE AMERICAS, INC., STELLAR TRADING SYSTEMS, LTD., STELLAR
`
`TRADING SYSTEMS, INC., ESPEED MARKETS, LP, BGC CAPITAL MARKETS,
`
`LP, ECCOWARE LTD., CUNNINGHAM TRADING SYSTEMS, LLC,
`
`CUNNINGHAM COMMODITIES, LLC, TRADEHELM, INC., Case No. 10-cv-0715,
`
`in the Northern District of Illinois.
`
`On August 12, 2015, TradeStation filed a CBM petition challenging the
`
`validity of claims 1-22 of the ’556 patent. See CBM2015-00172, Paper 2. The Board
`
`issued its institution decision in the ’172 CBM review on February 12, 2016,
`
`instituting trial on all claims. See CBM2015-000172, Paper 18.
`
`IBG’s petition raises the identical grounds of unpatentability as were raised in
`
`the ’172 CBM review and instituted by the Board, and is essentially a copy of
`
`TradeStation’s petition in the ’172 CBM review. See, generally, Petition.
`
`IV. ARGUMENT
`
`A.
`
`Legal Standard
`
`The Leahy-Smith America Invents Act permits joinder of like review
`
`proceedings, including joinder of a covered business method review to another
`
`covered business method review. 35 U.S.C. § 325(c); 37 C.F.R. 42.222. In deciding
`
`whether to exercise its discretion and allow joinder of proceedings, the Board
`
`
`
`- 3 -
`
`
`
`considers several factors including: (1) the reasons why joinder is appropriate, (2)
`
`whether the party to be joined has presented any new grounds of unpatentability, (3)
`
`what impact, if any, joinder would have on the trial schedule for the existing review,
`
`and (4) how briefing and discovery may be simplified. Dell Inc. v. Network-1
`
`Security Solutions, Inc., IPR2013-00385, Paper 17 p. 4 (July 29, 2013); see also
`
`Skimlinks, Inc. v. Linkline, Inc., CBM2015-00087, Paper 14 p. 24 (June 15, 2015)
`
`(citing Frequently Asked Question H5, http://www.uspto.gov/patents-application-
`
`process/appealing-patent-decisions/trials/patent-review-processing-system-prps-0).
`
`B.
`
`IBG’s Motion for Joinder Is Timely
`
`Joinder may be requested no later than one month after the institution date of a
`
`covered business method review for which joinder is requested. 37 C.F.R.
`
`§ 42.222(b). The Board issued its institution decision in the ’172 CBM review on
`
`February 12, 2016, less than one month ago. Accordingly, IBG’s request for joinder
`
`is timely.
`
`C.
`
`The Relevant Factors Weigh in Favor of Joinder
`
`Each of the four factors considered by the Board weighs in favor of joinder. As
`
`discussed below, granting joinder will not enlarge the scope of the ’172 CBM review
`
`and will not impact the schedule in that proceeding.
`
`1.
`
`Joinder is Appropriate
`
`Joinder with the ’172 CBM review is appropriate because the petition is not
`
`only limited to the same § 101 grounds raised in TradeStation’s petition, but also
`
`relies on the same analysis submitted by TradeStation. Indeed, the petition is virtually
`
`
`
`- 4 -
`
`
`
`identical with respect to the analysis regarding the ’556 patent’s eligibility for CBM
`
`review, claim construction, and the asserted grounds of challenge under § 101.
`
`Moreover, the petition does not assert any grounds of challenge not already raised or
`
`instituted in the ’172 CBM review. The Board recognizes a “policy preference for
`
`joining a party that does not present new issues that might complicate or delay an
`
`existing proceeding.” Enzymotec Ltd. v. Neptune Techs. & Bioresources, Inc.,
`
`IPR2014-00556, Paper 19 p. 6 (July 9, 2014); see also 157 Cong. Rec. S1376 (daily
`
`ed. Mar. 8, 2011) (statement of Sen. Kyl) (“The Office anticipates that joinder will be
`
`allowed as of right ... for example, a party that files an identical petition will be
`
`joined to that proceeding.”).
`
`Joinder of the petition to the ’172 CBM review will promote the efficient
`
`determination of validity of all claims of the ’556 patent, as it will consolidate
`
`identical challenges to the validity of the ’556 patent. If the Board institutes a
`
`separate CBM review of the ’556 patent based on IBG’s petition in addition to the
`
`instituted ’172 CBM review proceeding, the Board would be required to determine
`
`the same issues in multiple proceedings, requiring duplicative efforts and creating a
`
`risk of inconsistent results.
`
`Moreover, granting IBG’s joinder motion will further the interests of justice in
`
`that it will permit IBG to protect its interests related to the validity of the ’556
`
`patent—interests which could be prejudiced if IBG is not permitted to be joined. On
`
`the other hand, permitting joinder will not prejudice TradeStation or Patent Owner, as
`
`IBG raises no issues that are not already before the Board so joinder would not affect
`
`
`
`- 5 -
`
`
`
`the timing or content of any of TradeStation’s or Patent Owner’s responses.
`
`Moreover, as discussed below, IBG is amenable to coordinating with TradeStation on
`
`filings such that Patent Owner will not suffer any additional costs or burdens in
`
`preparing motions and arguments. Additionally, TradeStation does not oppose IBG’s
`
`joinder request. Accordingly, because of the substantially identical petitions involved
`
`here, joinder is appropriate.
`
`2.
`
`No New Grounds of Unpatentability Are Presented
`
`The petition does not present any new ground of unpatentability. As
`
`mentioned above, the grounds of challenge set forth in the petition are substantially
`
`identical to the grounds presented in the ’172 CBM review.
`
`3.
`
`No Impact on the Trial Schedule for the ’172 CBM Review
`
`Granting this motion for joinder will have no impact on the trial schedule for
`
`the ’172 CBM review proceeding because the Board only recently issued its
`
`institution decision in that proceeding. Because the ’172 CBM review is still in its
`
`early stages, joinder will not prevent the Board from issuing a final written decision
`
`in a timely manner. If the Board grants this joinder request, the joined proceeding can
`
`continue on the schedule set by the Board in the ’172 CBM review, which would
`
`substantially minimize any burden on the Board and the parties.
`
`Moreover, IBG’s petition does not raise any issues that are not already before
`
`the Board. Thus, TT does not need to specifically address any issues raised by IBG,
`
`and thus, joinder would have no impact on the timing or cost of the proceeding.
`
`
`
`- 6 -
`
`
`
`4.
`
`Joinder Will Simplify Discovery and Briefing
`
`Given that the petition is practically identical to TradeStation’s petition with
`
`respect to the ground of unpatentability instituted in the ’172 CBM review, the Board
`
`may adopt procedures similar to those used in related cases to simplify briefing and
`
`discovery during trial. See, e.g., Samsung Elecs. Co., Ltd. v. e-Watch, Inc., IPR2015-
`
`00611, Paper 9 pp. 5-8 (July 10, 2015); Skimlinks, CBM2015-00087, Paper 14 pp.
`
`23-28. Specifically, the Board may order petitioners to consolidate filings. IBG is
`
`willing to allow TradeStation to have primary responsibility for filings on behalf of
`
`all petitioners. Unless and until TradeStation settles with Patent Owner, IBG is
`
`willing to be limited to separate filings, if any, of a reasonable number of pages (e.g.,
`
`seven pages) directed only to points of disagreement with TradeStation with the
`
`understanding that it will not be permitted any separate arguments in further of those
`
`advanced in TradeStation’s consolidated filings. See, e.g., Samsung, IPR2015-00611,
`
`Paper 9 pp. 6-7.
`
`Further, no additional depositions will be needed and depositions will be
`
`completed within ordinary time limits. Moreover, IBG will coordinate with
`
`TradeStation to consolidate filings, manage questioning at depositions, manage
`
`presentations at the hearing, ensure that briefing and discovery occur within the time
`
`normally allotted, and avoid redundancies. These procedures should simplify briefing
`
`and discovery.
`
`
`
`- 7 -
`
`
`
`V. CONCLUSION
`
`For the forgoing reasons, Petitioner respectfully requests that this motion be
`
`granted and that this proceeding be joined with the ’172 CBM review.
`
`
`
`
`
`
`
`Respectfully submitted,
`
`/ Michael T. Rosato /
`Michael T. Rosato, Lead Counsel
`Reg. No. 52,182
`
`
`
`
`
`
`
`
`
`
`Dated: February 25, 2016
`
`
`
`
`
`
`
`- 8 -
`
`
`
`Certificate of Service
`
`Pursuant to 37 C.F.R. §§ 42.6(e) and 42.105(a), this is to certify that I caused
`
`to be served a true and correct copy of the foregoing Petitioner’s Motion for Joinder
`
`Pursuant to 35 U.S.C. § 325(c) and 37 C.F.R. §§ 42.22 and 42.222(b) by overnight
`
`courier (Federal Express or UPS), on this 25th day of February, 2016, on the Patent
`
`Owner at the correspondence address of the Patent Owner as follows:
`
`
`Trading Technologies International, Inc.
`22 S. Riverside Plaza, Suite 1100
`Chicago, Illinois 60606
`
`
`
`MBHD/Trading Technologies
`300 South Wacker Drive
`Suite 3200
`Chicago, Illinois 60606
`
`
`/ Michael T. Rosato /
`Michael T. Rosato, Lead Counsel
`Reg. No. 52,182
`
`
`
`
`
`
`
`
`
`Dated: February 25, 2016
`
`
`
`
`
`
`
`
`
`- 9 -
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
