Paper No. ______
`Filed: March 29, 2017
`
`
`
`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.,
`
`Petitioners,
`
`v.
`
`TRADING TECHNOLOGIES INTERNATIONAL, INC.,
`
`Patent Owner.
`
`
`
`CBM2016-00051
`U.S. Patent 7,904,374
`
`
`
`PATENT OWNER’S MOTION TO EXCLUDE
`UNDER 37 C.F.R. § 42.64(c)
`
`
`
`
`
`
`Filed: March 29, 2017
`
`
`
`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.,
`
`Petitioners,
`
`v.
`
`TRADING TECHNOLOGIES INTERNATIONAL, INC.,
`
`Patent Owner.
`
`
`
`CBM2016-00051
`U.S. Patent 7,904,374
`
`
`
`PATENT OWNER’S MOTION TO EXCLUDE
`UNDER 37 C.F.R. § 42.64(c)
`
`
`
`
`
`
`
`CBM2016-00051
`U.S. Patent 7,904,374
`
`
`TABLE OF CONTENTS
`
`I.
`
`INTRODUCTION ........................................................................................... 1
`
`II.
`
`STANDARD .................................................................................................... 1
`
`III. TSE SHOULD BE EXCLUDED .................................................................... 1
`
`A.
`
`TT Timely Objected .............................................................................. 1
`
`B.
`
`TSE Has Not Been Authenticated under FRE 901 ............................... 2
`
`1.
`
`2.
`
`The 2005 Kawashima deposition testimony is
`hearsay......................................................................................... 2
`
`Even if the 2005 Kawashima deposition testimony
`was admissible, the deposition testimony raises
`more doubt than it resolves. ........................................................ 3
`
`IV. CONCLUSION ................................................................................................ 5
`
`
`
`
`
`i
`
`
`
`CBM2016-00051
`U.S. Patent 7,904,374
`
`
`I.
`
`INTRODUCTION
`
`Pursuant to 37 C.F.R. §§ 42.64(c) and 42.61(a) and the Federal Rules of
`
`Evidence, Patent Owner Trading Technologies International, Inc. (“TT”)
`
`respectfully moves to exclude TSE (Ex. 1003) because Petitioners have failed to
`
`meet the authentication requirements of FRE 901 and because the only purportedly
`
`authenticating evidence (Ex. 1009, the transcript of a 2005 deposition of Atshushi
`
`Kawashima) is hearsay under FRE 801. Moreover, this purportedly authenticating
`
`evidence was not cited by Petitioners in any paper and should be excluded for
`
`irrelevancy.
`
`II.
`
`STANDARD
`
`A Motion to Exclude must (a) identify where in the record the objection was
`
`made, (b) identify where in the record the evidence sought to be excluded was
`
`relied upon by an opponent, (c) address objections to exhibits in numerical order,
`
`and (d) explain the objection. Office Patent Trial Practice Guide, 77 Fed. Reg.
`
`48,756, 48,767 (Aug. 14, 2012).
`
`III. TSE SHOULD BE EXCLUDED
`
`A. TT Timely Objected
`
`TT timely objected to Exhibit 1003 in objections filed August 31, 2016.
`
`1
`
`
`
`CBM2016-00051
`U.S. Patent 7,904,374
`
`Paper 14 at 4-7. Petitioners rely upon TSE (Ex. 1003) in their Petition and Reply to
`
`establish what were purportedly conventional and well-known techniques. Pet.,
`
`Paper 3 at 14, 37; Reply, Paper 23 at 7.
`
`B.
`
`TSE Has Not Been Authenticated under FRE 901
`
`The Federal Rules of Evidence apply to the current proceedings. 37 C.F.R. §
`
`42.62. Fed. R. Evid. 901 requires parties to authenticate documents. To satisfy the
`
`requirement of authenticating or identifying an item of evidence, the proponent
`
`must produce evidence sufficient to support a finding that the item is what the
`
`proponent claims it is. Fed. R. Evid. 901(a).
`
`Petitioners have cited to no such evidence to support a finding that TSE is
`
`authentic. To the extent that Petitioners intend to rely on the transcript of a 2005
`
`deposition of Atshushi Kawashima (Ex. 1009) as purportedly authenticating TSE,
`
`this transcript is insufficient in multiple respects.
`
`1.
`
`The 2005 Kawashima deposition testimony is hearsay
`
`The 2005 Kawashima deposition was conducted in a district court case, not
`
`any of the CBM proceedings. Ex. 1009 at 1. As a result, the 2005 Kawashima
`
`deposition is, by definition, hearsay.
`
`FRE 801 defines hearsay as “a statement that: (1) the declarant does not
`
`make while testifying at the current trial or hearing; and (2) a party offers in
`
`evidence to prove the truth of the matter asserted in the statement.” Since
`
`2
`
`
`
`CBM2016-00051
`U.S. Patent 7,904,374
`
`
`testimony by Mr. Kawashima in the district court case was not made “while
`
`testifying at the current trial or hearing,” to the extent such testimony is used to
`
`prove the authenticity of TSE, it must be considered hearsay.
`
`2.
`
`Even if the 2005 Kawashima deposition testimony was
`admissible, the deposition testimony raises more doubt than
`it resolves.
`
`Rather than supporting a finding under FRE 901(a) that TSE is what
`
`Petitioners claim it is, the 2005 Kawashima deposition transcript ultimately raises
`
`additional doubts as to the authenticity of the document.
`
`For example, in the deposition, Mr. Kawashima draws a conclusion about
`
`the authenticity of TSE, a document of hundreds of pages, based on the perceived
`
`absence of a mark in “looking briefly through” the document. Specifically, he
`
`testified:
`
`Q Is this entire document, this document identified as Defendant’s
`
`Exhibit 179, from August 24 of 1998?
`
`A Yes.
`
`Q How do you know?
`
`A Because when we replace sections there is a mark indicating a
`
`correction at the bottom of the page. And just looking briefly through
`
`this document, I didn’t see that mark and therefore I thought that was
`
`the original date.
`
`3
`
`
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`CBM2016-00051
`U.S. Patent 7,904,374
`
`
`Ex. 1009, pp. 97-98.
`
`Further, when asked how one would know if a distributed manual were the
`
`same as a particular copy, Mr. Kawashima merely makes the conclusory assertion
`
`that a comparison would reveal whether a distributed copy was the same, without
`
`any detail as to how such a comparison would be carried out how what level of
`
`scrutiny might be required. Specifically, he testified:
`
`Q Is there any way to tell that the manual that was distributed is the
`
`same as Defendant's Exhibit 179?
`
`A If you were to compare this with the distributed manual you would
`
`be able to tell.
`
`Ex. 1007, p. 99.
`
`Finally, Mr. Kawashima’s testimony cannot be relied upon as to
`
`authentication because he is not a disinterested witness. Kawashima’s employer,
`
`the Tokyo Stock Exchange, challenged TT’s Japanese counterpart to U.S. Patent
`
`No. 6,766,304, which was asserted in the litigation in which Kawashima
`
`previously testified. CBM2015-00179, Paper No. 77 at 40-41. Moreover, at his
`
`deposition in connection with co-pending proceedings,
`
`CBM2015-00179, -00181, -00182, when Mr. Kawashima was asked if he was
`
`attending voluntarily, he answered that he was present at the direction of the Tokyo
`
`Stock Exchange. Exhibit 1040, p. 9. Further, he acknowledged that he “did a
`
`4
`
`
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`CBM2016-00051
`U.S. Patent 7,904,374
`
`
`practice run or went through anticipated questions that might come out” with
`
`Petitioners counsel Lori Gordon and Natalie Morgan. Id. at pp 11-12.
`
`The 2016 Kawashima deposition does not resolve the deficiencies of the
`
`2005 deposition. Instead, it suggests that Mr. Kawashima could not have examined
`
`the document in a way that would have differentiated it from any other version. Ex.
`
`1040 at 45-46. Thus, the 2016 transcript also proves Mr. Kawashima’s bias. This
`
`bias establishes that his testimony should be given no weight. And as such, TSE
`
`stands unauthenticated.
`
`In view of the above, Petitioners have not produced evidence sufficient to
`
`support a finding that TSE is what Petitioners claim it is. TSE should thus be
`
`excluded.
`
`IV. CONCLUSION
`
`For these reasons, the Board should grant Patent Owner’s Motion to Exclude
`
`
`
`5
`
`
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`CBM2016-00051
`U.S. Patent 7,904,374
`
`
`Respectfully submitted,
`
`MCDONNELL BOEHNEN HULBERT &
`BERGHOFF LLP
`
`
`
`Date: March 29, 2017
`
`/Jennifer M. Kurcz/
`
`Jennifer M. Kurcz,
`Back-Up Counsel, Reg. No. 54,481
`
`Counsel for Patent Owner
`
`300 South Wacker Drive
`Chicago, Illinois 60606
`(312) 913-0001
`
`
`
`
`6
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`CBM2016-00051
`U.S. Patent 7,904,374
`
`
`CERTIFICATION OF SERVICE
`
`Pursuant to 37 CFR §§ 42.6(s)(4) and 42.205(b), the undersigned certified
`
`that on March 24, 2017, a complete and entire copy or this PATENT OWNER’S
`
`MOTION TO EXCLUDE was provided via email to the Petitioners by serving
`
`correspondence address of record as follows
`
`
`
`
`
`/Cole B. Richter/
`Cole B. Richter,
`Counsel for Patent Owner,
`Reg. No. 65,398
`
`John C. Phillips
`phillips@fr.com
`
`Kevin Su
`su@fr.com
`
`Michael T. Rosato
`mrosato@wsgr.com
`
`CBM41919-0013CP1@fr.com
`
`PTABInbound@fr.com
`
`
`
`Dated: March 29, 2017
`
`By:
`
`
`
`
`
`7
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`
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