Paper No. ______
`Filed: March 24, 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.
`
`
`
`CBM2016-00054
`U.S. Patent 7,693,768
`
`CBM2016-0090
`U.S. Patent 7,725,382
`
`
`
`PATENT OWNER’S OPPOSITION
`TO PETITIONERS’ MOTION TO STRIKE
`
`
`
`
`Filed: March 24, 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.
`
`
`
`CBM2016-00054
`U.S. Patent 7,693,768
`
`CBM2016-0090
`U.S. Patent 7,725,382
`
`
`
`PATENT OWNER’S OPPOSITION
`TO PETITIONERS’ MOTION TO STRIKE
`
`
`
`
`
`CBM2016-00054 (U.S. Patent 7,693,768)
`CBM2016-00090 (U.S. Patent 7,725,382)
`
`
`TABLE OF CONTENTS
`
`I.
`
`INTRODUCTION ........................................................................................... 1
`
`II.
`
`TT’S POR DOES NOT INCORPORATE ARGUMENTS ............................ 1
`
`A.
`
`Exhibit 2233 .......................................................................................... 1
`
`B.
`
`TT’s Alleged String Cites ..................................................................... 6
`
`III.
`
`STRIKING EXHIBITS IS AN INAPPROPRIATE REMEDY ...................... 9
`
`IV. CONCLUSION ..............................................................................................13
`
`
`
`
`
`i
`
`
`
`CBM2016-00054 (U.S. Patent 7,693,768)
`CBM2016-00090 (U.S. Patent 7,725,382)
`
`
`I.
`
`INTRODUCTION
`
`Petitioners fail to establish that any arguments were improperly incorporated
`
`by reference in TT’s Patent Owner Response (“POR”). Petitioners further fail to
`
`establish that striking incorporated exhibits is the appropriate remedy under 37
`
`C.F.R. § 42.6(a)(3). The Board should deny Petitioners’ motion for either or both
`
`of these reasons.
`
`II. TT’S POR DOES NOT INCORPORATE ARGUMENTS
`
`Petitioners have failed to establish that TT’s POR improperly incorporates
`
`by reference arguments from Exhibit 2233, or the exhibits cited in the alleged
`
`string cites. The Board should deny Petitioners’ request to strike these exhibits for
`
`this reason alone.
`
`A. Exhibit 2233
`
`First, TT’s PORs do not incorporate arguments from Exhibit 2233 because
`
`Exhibit 2233 does not contain arguments. Exhibit 2233 is evidence. See Silicon
`
`Labs., Inc. v. Cresta Technology Corp. et al, IPR2015-00626, Paper 65, p. 17
`
`(PTAB Aug. 11, 2016) (denying motion to strike for improper incorporation by
`
`reference, explaining that “42.6(a)(3) prohibits incorporation of arguments, and an
`
`expert declaration, such as that at issue here, generally is considered evidence, not
`
`argument.”) (emphasis added).
`
`1
`
`
`
`CBM2016-00054 (U.S. Patent 7,693,768)
`CBM2016-00090 (U.S. Patent 7,725,382)
`
`Specifically, Exhibit 2233 is a claim chart prepared by TT’s technical expert,
`
`Mr. Thomas, showing his expert opinion on how TT’s commercial product,
`
`MD_Trader and the accused products fall within the scope of the claims. Ex.
`
`2169, ¶76 (“In Exhibit 2233, I explain how all versions of TT’s MD Trader meet
`
`each and every element of several exemplary claims of the ‘382 patent, as well as
`
`how Petitioners’ products meet each and every element of these same claims.”); id.
`
`at ¶125 (“Petitioners’ products . . . also embody the ‘382 patent, as I set forth in
`
`Exhibit 2233.”); see also ‘768 CBM, Ex. 2169, ¶¶76, 122. This claim chart is not
`
`an argument; it is evidence from TT’s technical expert that supports TT’s argument
`
`that the claimed invention was embodied by TT in a commercial product. Indeed,
`
`TT makes these arguments throughout its POR, as summarized by several
`
`examples below:
`
`• “The invention turned conventional screens on their head by fixing the
`
`price levels along a price axis so that the inside market moves up and
`
`down relative to the price axis.” (‘768 POR at 36-37; see also ‘382
`
`POR at 41.)
`
`• “The claimed invention was embodied by TT in a commercial
`
`product, MD_Trader, in the fall of 2000. Ex.2169, ¶97; Ex. 2233.”
`
`(‘768 POR at 37; see also ‘382 POR at 42.)
`
`2
`
`
`
`CBM2016-00054 (U.S. Patent 7,693,768)
`CBM2016-00090 (U.S. Patent 7,725,382)
`
`
`• “[Brumfield’s] solution was to combine a price axis with relative
`
`movement with single action order entry that occurs by selecting a
`
`location corresponding to a price level along the price axis to both set
`
`a price and send the order.” (‘768 POR at 74; see also ‘382 POR at
`
`72-73.)
`
`• “As noted above, TT first introduced the invention in the late summer
`
`of 2000 under the trade name MD_Trader. Ex.2169, ¶97; Ex. 2233.
`
`Even though it was launched about two years after Brumfield first
`
`conceived of the invention, MD_Trader was the first product available
`
`in the industry that combined a price axis with relative movement and
`
`single action order entry, as set forth in the claims.” (‘768 POR at 74-
`
`75; see also ‘382 POR at 73.)
`
`See also ‘768 POR at 48-49; ‘382 POR at 51 (“This unexpected benefit has a direct
`
`nexus to the claimed features. Indeed, the faster order entry is a direct result of the
`
`claimed order entry region with fixed locations corresponding to price levels,
`
`wherein the fixed locations receive single action commands to set parameters and
`
`send trade orders.”); see also ‘768 POR at 49; ‘382 POR at 51-52 (“The
`
`[invention’s] unexpected result of improved visualization was a direct result of the
`
`claimed features, namely “updating the display of the first indicator such that the
`
`first [/second] indicator is moved relative to the price axis.”)
`
`3
`
`
`
`CBM2016-00054 (U.S. Patent 7,693,768)
`CBM2016-00090 (U.S. Patent 7,725,382)
`
`
`Tellingly, Petitioners do not, and cannot, challenge that the MD_Trader
`
`embodies the claimed invention. Petitioners’ motion to strike is instead a collateral
`
`attack on TT’s secondary consideration evidence, as nexus between secondary
`
`considerations and the invention are presumed for any commercial embodiment of
`
`an invention. WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1329 (Fed. Cir. 2016).
`
`Petitioners devote several pages of their motion explaining exactly how
`
`many words and how many pages comprise Exhibit 2233. Mot., pp. 3-6. But
`
`Petitioners cite no authority for the proposition that the length of an exhibit has
`
`anything to do with whether that exhibit amounts to an improperly-incorporated
`
`argument rather than evidence. In fact, Petitioners’ sole basis that Exhibit 2233 is
`
`an improperly-incorporated argument is that it is many pages and in the form of a
`
`claim chart. Petitioners fail to conduct any actual analysis of Exhibit 2233 (other
`
`than counting the pages and words) and fail to explain why Exhibit 2233
`
`constitutes an argument and not evidence. Instead, Petitioners simply reiterate
`
`their conclusion that Exhibit 2233 is argument and ask the Board to “strike both
`
`Exhibit 2233s in their entirety.” Mot., p. 8.
`
`To be sure, Exhibit 2233 is an expert’s technical analysis of MD_Trader and
`
`Petitioners’ products in the form of a claim chart. And attached to this claim chart
`
`are several exhibits, three of which are historic MD_Trader manuals. Petitioners
`
`appear to advance a rule that a claim chart (and attendant exhibits) is an argument
`
`4
`
`
`
`CBM2016-00054 (U.S. Patent 7,693,768)
`CBM2016-00090 (U.S. Patent 7,725,382)
`
`because it is a claim chart. (Indeed, they provide no other reason that Exhibit 2233
`
`violates Rule 42.6(a)(3).) But this exhibit does not become an argument simply by
`
`being in the form of a claim chart; nor does it become incorporated simply by
`
`being cited in an expert declaration or by a POR. Chevron North Am., Inc. et al. v.
`
`Milwaukee Elec. Tool Corp., IPR2015-00596, Paper 80, p. 19 (P.T.A.B. July 28,
`
`2016) (agreeing that mere citation of documents is not an improper incorporation
`
`by reference).
`
`The Office recognized as much in its 2015 Amendments to the Rules of
`
`Practice for Trials before the PTAB, explaining that “the Office has always been
`
`mindful of the concerns that claim charts may be used improperly by parties to
`
`circumvent page limits.” and cautioning that “a party could present its case by
`
`including argument in claim charts.” 80 Fed. Reg. 50,720, 50,738 (Aug. 20, 2015)
`
`(emphasis added). This permissive language reinforces that claim charts are not
`
`automatically arguments and are not automatically incorporated by reference when
`
`cited.
`
`Petitioners’ cases are distinguishable. In each, the Board specifically found
`
`that a party presented arguments in an expert declaration or in a claim chart – and
`
`refused to consider (but did not strike) such arguments. For instance, in
`
`Medtronic, it was unclear “what products [Patent Owner’s expert] is mapping to
`
`the claims.” Medtronic, Inc. v. Nuvasive, Inc., IPR2014-00034, Paper 44, p. 27
`
`5
`
`
`
`CBM2016-00054 (U.S. Patent 7,693,768)
`CBM2016-00090 (U.S. Patent 7,725,382)
`
`
`(PTAB Apr. 3, 2015). The Board concluded that Patent Owner improperly
`
`incorporated by reference arguments made by its expert. Id. Similarly, in Cisco,
`
`the Board found improper incorporation of invalidity arguments made in a claim
`
`chart and an expert declaration. Cisco Systems, Inc. v. C-Cation Technologies,
`
`LLC, IPR2014-00454, Paper 12, pp. 7-10 (PTAB Aug. 29, 2014). Likewise, in
`
`MasterImage, the Board declined to consider secondary consideration arguments
`
`made in an expert declaration. MasterImage 3D, Inc. v. RealD Inc., IPR2015-
`
`00040, Paper 85, pp. 37-39 (PTAB Apr. 14, 2016). And in Conopco, like the
`
`others, the Board simply declined to consider arguments made in an expert
`
`declaration. Conopco, Inc. v. The Proctor & Gamble Co., IPR2013-00505, Paper
`
`69, p. 27 (PTAB Feb. 10, 2015).
`
`Here, however, Exhibit 2233 does not contain arguments – let alone
`
`arguments incorporated by reference into the POR. Petitioners provide no
`
`independent analysis of Exhibit 2233 to establish that it contains arguments or is
`
`incorporated by reference, other than by noting its existence. Indeed, Exhibit 2233
`
`is not an improperly-incorporated argument.
`
`B.
`
`TT’s Alleged String Cites
`
`Second, TT’s POR does not incorporate arguments made in exhibits cited in
`
`alleged string cites. Petitioners appear to argue that because TT cited many
`
`exhibits, TT is incorporating arguments from those exhibits in violation of Rule
`
`6
`
`
`
`CBM2016-00054 (U.S. Patent 7,693,768)
`CBM2016-00090 (U.S. Patent 7,725,382)
`
`
`42.6(a)(3). But, like above with respect to Exhibit 2233, Petitioners have not
`
`established that any of the exhibits complained of contain arguments. Nor have
`
`Petitioners established that citing many exhibits amounts to incorporating alleged
`
`arguments from those exhibits. The Board should deny Petitioners’ motion with
`
`respect to the alleged string cites.
`
`TT does not rely on any arguments presented in the cited documents to make
`
`its case. Indeed, the cited exhibits do not contain arguments. Rather, the
`
`documents are factual evidence cited to support TT’s arguments set forth in its
`
`POR. For instance, many of the exhibits Petitioners complain of are excerpts of
`
`declarations, excerpts of testimony given during trials, and excerpts of documents
`
`(including emails) produced during litigations, including Petitioners’ own
`
`documents produced by Petitioners during litigation. None of these documents
`
`contain arguments. Assuredly, Petitioners’ own documents do not contain
`
`arguments supporting the patentability of TT’s claims that TT is incorporating by
`
`reference into its POR.
`
`Petitioners do not provide any example of any argument presented in any of
`
`these exhibits. Instead, they complain that TT cited many exhibits, and because of
`
`this, such exhibits are improperly incorporated by reference. Mere citations to
`
`documents do not amount to improper incorporation by reference. Chevron,
`
`IPR2015-00596, Paper 80, at 19 (agreeing that mere citation of documents is not
`
`7
`
`
`
`CBM2016-00054 (U.S. Patent 7,693,768)
`CBM2016-00090 (U.S. Patent 7,725,382)
`
`
`an improper incorporation by reference). Petitioners cite no authority to the
`
`contrary. Instead, they advance a rule that any citation of an exhibit needs a
`
`corresponding description of what the exhibit is, how the exhibit is relevant, and
`
`how that exhibit supports the arguments. But such a requirement is absent from
`
`the Trial Practice Guide, the Code of Federal Regulations, or any other Board
`
`order. Like any other citation in legal memoranda, exhibits that TT cites in its
`
`POR are relevant because they directly support the argument or proposition
`
`advanced in the sentence(s) immediately preceding the cite.
`
`Petitioners pretend that TT’s citations force them (and the Board) to play
`
`“archeologist” with the record. Mot. at 2, 3, 10, 11, 13. But playing
`
`“archeologist” is different than simply looking at exhibits. Indeed, of the 44
`
`exhibits Petitioners accuse TT of string citing, 40 exhibits are 5 pages (or fewer) in
`
`length.1 Reviewing several single-page exhibits is hardly being an “archeologist.”
`
`Petitioners complain that they “must address many issues” in their limited
`
`Reply brief, implying that reviewing all of TT’s evidence is somehow unduly
`
`burdensome to Petitioners. Even if it were unduly burdensome, Petitioners have
`
`not explained why a large amount of evidence supporting patentability amounts to
`
`an improper incorporation by reference. Indeed, it does not. But even more to the
`
`
`1 21 of these exhibits are just one page.
`
`8
`
`
`
`CBM2016-00054 (U.S. Patent 7,693,768)
`CBM2016-00090 (U.S. Patent 7,725,382)
`
`
`point: Petitioners chose this venue and this proceeding. Petitioners chose the
`
`grounds of invalidity. Valuable and substantial patent rights are at stake at the
`
`request of Petitioners. As such, TT is entitled to present its arguments for
`
`patentability and provide the evidence that supports these arguments, despite that
`
`there may be a lot of evidence.2 That Petitioners dislike the evidence is not
`
`grounds for removing it under the veil of it being improperly incorporated.
`
`III. STRIKING EXHIBITS IS AN INAPPROPRIATE REMEDY
`
`Petitioners have not established that striking exhibits is an appropriate
`
`remedy when those exhibits contain arguments that have been incorporated by
`
`reference. The Board should deny Petitioners’ motion for this second,
`
`independent, reason.
`
`The remedy for a violation of Rule 42.6(a)(3) is not exclusion of the
`
`document from which an argument is improperly incorporated. Corning Inc. v.
`
`
`2 Notably, TT engaged in immense efforts to cull an overwhelming amount of
`
`evidence into an abbreviated set to present in this proceeding. Where appropriate,
`
`TT has excerpted large exhibits and provided pincites. Nevertheless, TT presented
`
`10 independent grounds of objective indicia supporting non-obviousness. That
`
`there may be many exhibits supporting these grounds should be understandable
`
`and, in fact, expected.
`
`9
`
`
`
`CBM2016-00054 (U.S. Patent 7,693,768)
`CBM2016-00090 (U.S. Patent 7,725,382)
`
`
`DSM IP Assets B.V., IPR2013-00046, Paper 81, p. 2 n.2 (PTAB May 1, 2014).
`
`The appropriate remedy is that the Board may ignore the incorporated argument.
`
`E.g., RICOH Americas Corp. et al. v. MPHJ Tech, Investments, LLC, IPR2013-
`
`00302, Paper 32 at 3 (P.T.A.B. Mar. 11, 2014) (denying request to dismiss a
`
`motion that allegedly improperly incorporates by reference, explaining that the
`
`proper remedy is that the “party who incorporates arguments by reference from
`
`one document into another document runs the risk that an argument would be
`
`overlooked,” and further that the opposing party has “an opportunity to address any
`
`alleged deficiencies in [its] opposition . . . .”); Texas Instruments Inc. v. Unifi
`
`Scientific Batteries, LLC, IPR2013-00213, Paper 27, p. 4 (P.T.A.B Apr. 17, 2014)
`
`(denying motion to strike for improper incorporation by reference explaining that
`
`“. . . we are not persuaded that a motion to strike is warranted.”); Nuvasive v.
`
`Warsaw Orthopedic, Inc., Case No. IPR2013-00206, Paper 46, p. 2 (PTAB March
`
`28, 2014) (same); Google, Inc. v. Visual Real Estate, Inc., IPR2014-01339, Paper
`
`39 at 37 (finding that when a party “does not explain adequately its objections to
`
`the cited portions . . . [it] has not met its burden of demonstrating that the cited
`
`portions . . . should be excluded.”).
`
`In perhaps the most egregious example of incorporation by reference, in
`
`Corning, the Patent Owner included a statement in its response stating that it
`
`incorporates by reference its arguments from its preliminary response. Corning
`
`10
`
`
`
`CBM2016-00054 (U.S. Patent 7,693,768)
`CBM2016-00090 (U.S. Patent 7,725,382)
`
`Inc., IPR2013-00046, Paper 81, p. 2 n.2 (citing Paper 43, 1 n.1). There, even
`
`where a party admitted that it incorporated arguments by reference, the Board did
`
`not strike the offending paper; it simply noted that it would “consider only
`
`arguments made in the response itself.” Id.
`
`Petitioner does not direct the Board to any instances where the Board struck
`
`or excluded exhibits, or even portions thereof, for being incorporated by reference.
`
`Indeed, no case cited by Petitioners ordered improperly-incorporated arguments
`
`stricken from the record. Medtronic, IPR2014-00034, Paper 44 at 27 (concluding
`
`that Patent Owner improperly incorporated by reference arguments made by its
`
`expert, but not striking the expert declaration, or even the arguments made in the
`
`expert declaration); Cisco, IPR2014-00454, Paper 12 at 7-10 (finding improper
`
`incorporation of invalidity arguments in expert declaration and claim chart, but not
`
`striking the declaration, claim charts, or any portions thereof); MasterImage,
`
`IPR2015-00040, Paper 85 at 37-39 (not striking any portions of an expert
`
`declaration containing arguments, but simply refusing to consider such
`
`arguments); Conopco, IPR2013-00505, Paper 69 at 27 (declining to consider
`
`arguments made in an expert declaration without striking such arguments).
`
`That the Board held that TT’s other PORs allegedly incorporated arguments
`
`does not counsel for striking exhibits here. Respectfully, TT disagrees with the
`
`Board that it incorporated anything by reference – let alone arguments from
`
`11
`
`
`
`CBM2016-00054 (U.S. Patent 7,693,768)
`CBM2016-00090 (U.S. Patent 7,725,382)
`
`exhibits. Indeed, refusing to consider evidence submitted by a technical expert that
`
`a commercial product contains certain features under the guise that TT is
`
`incorporating arguments is contrary to the law and unfairly denies TT its ability to
`
`put on a rebuttal case.
`
`Further, there was no notice to TT prior to filing its PORs in these
`
`proceedings that the Board was going to take this interpretation.3 Regardless, the
`
`Board did not strike exhibits in the ‘132 CBM or the ‘411 CBM. And Petitioners
`
`were fully capable of responding to TT’s assertions in their Reply brief and during
`
`the oral hearing without TT’s exhibits being stricken.
`
`Given this, striking exhibits or paragraphs of an expert declaration is
`
`inappropriate, even where such exhibits or paragraphs contain arguments that have
`
`been improperly incorporated by reference. Striking exhibits is especially
`
`inappropriate in this case where Petitioners have not established that the exhibits in
`
`question even contain arguments – let alone arguments that have been incorporated
`
`by reference. Plainly, Petitioners have not established that they are entitled to the
`
`relief they seek.
`
`
`3 The ‘768 POR was filed on January 20, 2017, and the ‘382 POR was filed
`
`February 27, 2017, whereas the ‘132 Final Written Decision was decided on
`
`February 28, 2017.
`
`12
`
`
`
`CBM2016-00054 (U.S. Patent 7,693,768)
`CBM2016-00090 (U.S. Patent 7,725,382)
`
`IV. CONCLUSION
`
`For these reasons, the Board should deny Petitioners’ motion to strike.
`
`Respectfully submitted,
`
`Date: March 24, 2017
`
`MCDONNELL BOEHNEN HULBERT &
`BERGHOFF LLP
`
`/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
`
`13
`
`
`
`CBM2016-00054 (U.S. Patent 7,693,768)
`CBM2016-00090 (U.S. Patent 7,725,382)
`
`
`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
`
`OPPOSITION TO PETITIONERS’ MOTION TO STRIKE was provided via email
`
`to the Petitioners by serving correspondence address of record as follows
`
`Robert E. Sokohl
`rsokohl-PTAB@skgf.com
`
`Lori A. Gordon
`lgordon-PTAB@skgf.com
`
`Richard M. Bemben
`rbemben-PTAB@skgf.com
`
`Donald R. Banowit
`dbanowit-PTAB@skgf.com
`
`John C. Phillips
`PTABINBOUND@fr.com
`
`PTAB@skgf.com
`
`
`
`
`
`/Cole B. Richter/
`Cole B. Richter,
`Counsel for Patent Owner,
`Reg. No. 65,398
`
`
`
`Dated: March 24, 2017
`
`By:
`
`
`
`
`
`14
`
`
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