`Tel: 571-272-7822
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`Paper 12
`Entered: August 17, 2016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
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`IBG LLC,
`INTERACTIVE BROKERS LLC, TRADESTATION GROUP, INC., and
`TRADESTATION SECURITIES, INC.,
`Petitioner,
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`v.
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`TRADING TECHNOLOGIES INTERNATIONAL, INC.,
`Patent Owner.
`_______________
`
`Case CBM2016-00051
`Patent 7,904,374 B2
`_______________
`
`
`Before SALLY C. MEDLEY, MEREDITH C. PETRAVICK, and
`JEREMY M. PLENZLER, Administrative Patent Judges.
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`PLENZLER, Administrative Patent Judge.
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`SCHEDULING ORDER
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`CBM2016-00051
`Patent 7,904,374 B2
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`A.
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`INITIAL CONFERENCE CALL
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`No initial conference call is scheduled for this case. The parties are
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`encouraged to contact the Board to request a call if any issues arise during
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`trial. The parties are directed to the following matters:
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`1.
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`Discovery Disputes
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`The panel encourages parties to resolve disputes relating to discovery
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`on their own and in accordance with the precepts set forth in 37 C.F.R. §
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`42.1(b). To the extent that a dispute arises between the parties relating to
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`discovery, the parties shall meet and confer to resolve such a dispute before
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`contacting the Board. If a party has in its possession documents that are
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`subject to a protective order issued by a court in another proceeding, that
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`party should request relief from that court.
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`If attempts to resolve the dispute fail, a party may request a
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`conference call with the Board and the other party in order to seek
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`authorization to move for relief. In any request for a conference call with
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`the Board to resolve a discovery dispute, the requesting party shall: (1)
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`certify that it has complied with the requirements outlined above in an effort
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`to resolve the dispute; (2) identify with specificity the issues for which
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`agreement has not been reached; (3) identify the precise relief to be sought;
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`and (4) propose specific dates and times at which both parties are available
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`for the conference call.
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`2. Motion to Amend
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`Patent Owner is reminded that it must confer with the Board before
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`filing a Motion to Amend. 37 C.F.R. § 42.221(a). Patent Owner should
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`contact the Board to request a conference in sufficient time to ensure that the
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`conference is conducted at least two weeks before DUE DATE 1. Patent
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`CBM2016-00051
`Patent 7,904,374 B2
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`Owner and Petitioner are directed to the rules governing Motions to Amend,
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`with particular regard to applicable page limits. 37 C.F.R. §§ 42.24(a)(1),
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`42.24(b)(3), 42.24(c)(3), 42.221(b).
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`3.
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`Confidential Information
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`The parties must file confidential information using the appropriate
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`availability indicator in PRPS (e.g., “Board and Parties Only”), regardless of
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`whose confidential information it is. It is the responsibility of the party
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`whose confidential information is at issue, not necessarily the proffering
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`party, to file the motion to seal.
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`A protective order does not take effect until a protective order is filed
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`in the case and approved by the Board. If a motion to seal is filed by either
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`party, the proposed protective order should be presented as an exhibit to the
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`motion. The parties are urged to operate under the Board’s default
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`protective order. See Default Protective Order, Office Patent Trial Practice
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`Guide, 77 Fed. Reg. 48,756, App. B (Aug. 14, 2012). If the parties propose
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`a protective order deviating from the default protective order, they should
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`submit the proposed order jointly. A marked-up comparison of the proposed
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`and default protective orders should be presented as an additional exhibit to
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`the motion to seal, so that differences are highlighted. The parties should
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`contact the Board if they cannot agree on the terms of the proposed
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`protective order.
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`a.
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`Redactions
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`Redactions should be limited strictly to isolated passages consisting of
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`confidential information. The thrust of the underlying argument or evidence
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`must be discernable from the redacted version.
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`Patent 7,904,374 B2
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`b.
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`Confidential Information in Final Written Decision
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`Information subject to a protective order will become public if
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`identified in a final written decision in this proceeding. A motion to
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`expunge the information will not necessarily prevail over the public interest
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`in maintaining a complete and understandable file history. See Office Patent
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`Trial Practices Guide, 77 Fed. Reg. at 48, 761.
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`B. DUE DATES
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`This order sets due dates for the parties to take action after institution
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`of the proceeding. The parties may stipulate to different dates for DUE
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`DATES 1 through 5 (earlier or later, but no later than DUE DATE 6). A
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`notice of the stipulation, specifically identifying the changed due dates, must
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`be promptly filed. The parties may not stipulate to an extension of DUE
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`DATES 6 and 7.
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`In stipulating to different times, the parties should consider the effect
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`of the stipulation on times to object to evidence (37 C.F.R. § 42.64(b)(1)), to
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`supplement evidence (37 C.F.R. § 42.64(b)(2)), to conduct cross-
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`examination (37 C.F.R. § 42.53(d)(2)), and to draft papers depending on the
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`evidence and cross-examination testimony (see section B, below). The
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`parties should be mindful that pursuant to 37 C.F.R. § 42.300(c), the
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`pendency of the review is normally no more than one year. See 35 U.S.C. §
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`326 (11). The effect of any stipulations on the ability to complete review
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`within the one year will be taken into account should a party request any
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`other extensions of time from the Board. The parties are reminded that the
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`Testimony Guidelines appended to the Office Trial Practice Guide, 77 Fed.
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`Reg. at 48,772 (Appendix D), apply to this proceeding. The Board may
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`impose an appropriate sanction for failure to adhere to the Testimony
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`Guidelines. 37 C.F.R. § 42.12. For example, reasonable expenses and
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`attorneys’ fees incurred by any party may be levied on a person who
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`impedes, delays, or frustrates the fair examination of a witness.
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`1.
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`DUE DATE 1
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`The patent owner may file—
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`a. A response to the petition (37 C.F.R. § 42.220), and
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`b. A motion to amend the patent (37 C.F.R. § 42.221).
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`The patent owner must file any such response or motion to amend by
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`DUE DATE 1. If the patent owner elects not to file anything, the patent
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`owner must arrange a conference call with the parties and the Board. The
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`patent owner is cautioned that any arguments for patentability not raised in
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`the response will be deemed waived.
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`2.
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`DUE DATE 2
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`The petitioner must file any reply to the patent owner’s response and
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`opposition to the motion to amend by DUE DATE 2.
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`3.
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`DUE DATE 3
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`The patent owner must file any reply to the petitioner’s opposition to
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`patent owner’s motion to amend by DUE DATE 3.
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`4.
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`DUE DATE 4
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`a. Each party must file any motion for an observation on the cross-
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`examination testimony of a witness (see section C, below) by DUE DATE 4.
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`b. Each party must file any motion to exclude evidence (37 C.F.R
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`§ 42.64(c)) and any request for oral argument (37 C.F.R. § 42.70(a)) by
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`DUE DATE 4.
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`5.
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`DUE DATE 5
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`a. Each party must file any reply to an observation on cross-
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`examination testimony by DUE DATE 5.
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`b. Each party must file any opposition to a motion to exclude evidence
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`by DUE DATE 5.
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`6.
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`DUE DATE 6
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`Each party must file any reply for a motion to exclude evidence by
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`DUE DATE 6.
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`7.
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`DUE DATE 7
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`The oral argument (if requested by either party) is set for DUE
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`DATE 7.
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`C.
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`CROSS-EXAMINATION
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`Except as the parties might otherwise agree, for each due date—
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`1. Cross-examination begins after any supplemental evidence is due.
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`37 C.F.R. §§ 42.53(d)(2).
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`2. Cross-examination ends no later than a week before the filing date
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`for any paper in which the cross-examination testimony is expected to be
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`used. Id.
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`D. MOTION FOR OBSERVATION ON CROSS-EXAMINATION
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`A motion for observation on cross-examination provides the parties
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`with a mechanism to draw the Board’s attention to relevant cross-
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`examination testimony of a witness, since no further substantive paper is
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`permitted after the reply. See Office Trial Practice Guide, 77 Fed. Reg. at
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`48,768. The observation must be a concise statement of the relevance of
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`precisely identified testimony to a precisely identified argument or portion
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`of an exhibit. Each observation should not exceed a single, short paragraph.
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`The parties may respond to the observation. Any response must be equally
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`concise and specific.
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`Patent 7,904,374 B2
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`DUE DATE APPENDIX
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`DUE DATE 1……………….……………………………November 15, 2016
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`Patent Owner’s response to the petition
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`Patent Owner’s motion to amend the patent
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`DUE DATE 2………………………………………….…….February 8, 2017
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`Petitioner’s reply to patent owner response to petition
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`Petitioner’s opposition to motion to amend
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`DUE DATE 3…….………………………………..…………..March 8, 2017
`Patent Owner’s reply to petitioner opposition to motion to amend
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`DUE DATE 4……………………………...…………………March 29, 2017
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`Motion for observation regarding cross-examination of a witness
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`Motion to exclude evidence
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`Request for oral argument
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`DUE DATE 5…….……..…………………..……..…………..April 12, 2017
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`Response to observation
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`Opposition to motion to exclude
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`DUE DATE 6…….……………………………..…………...…April 19, 2017
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`Reply to opposition to motion to exclude
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`DUE DATE 7….……………..………………………..…………May 3, 2017
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`Oral argument (if requested)
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`CBM2016-00051
`Patent 7,904,374 B2
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`PETITIONER:
`John C. Phillips
`Kevin Su
`FISH & RICHARDSON P.C.
`CBM41919-0013CP1@fr.com
`PTABInbound@fr.com
`
`Michael T. Rosato
`WILSON SONSINI GOODRICH & ROSATI
`mrosato@wsgr.com
`
`
`PATENT OWNER:
`Erika H. Arner
`Joshua L. Goldberg
`Kevin D. Rodkey
`Rachel Emsley
`Cory C. Bell
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
`erika.arner@finnegan.com
`joshua.goldberg@finnegan.com
`kevin.rodkey@finnegan.com
`rachel.emsley@finnegan.com
`cory.bell@finnegan.com
`
`Michael D. Gannon
`Leif R. Sigmond, Jr.
`MCDONNELL, BOEHNEN HULBERT & BERGHOFF LLP
`gannon@mbhb.com
`sigmond@mbhb.com
`
`Steven F. Borsand
`TRADING TECHNOLOGIES INTERNATIONAL, INC.
`tt-patent-cbm@tradingtechnologies.com
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