Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 38
`Entered: April 7, 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.,
`Petitioner,
`
`v.
`
`TRADING TECHNOLOGIES INTERNATIONAL, INC.,
`Patent Owner.
`_______________
`
`CBM2016-00054 (Patent 7,693,768 B1)
`CBM2016-00090 (Patent 7,725,382 B2)1
`_______________
`
`
`Before SALLY C. MEDLEY and MEREDITH C. PETRAVICK,
` Administrative Patent Judges.
`
`PETRAVICK, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`1 This Order addresses the same or similar issue in the proceedings listed
`above. Therefore, we issue one Order to be filed in each proceeding. The
`parties, however, are not authorized to use this style of filing.
`
`
`
`Tel: 571-272-7822
`
`Paper 38
`Entered: April 7, 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.,
`Petitioner,
`
`v.
`
`TRADING TECHNOLOGIES INTERNATIONAL, INC.,
`Patent Owner.
`_______________
`
`CBM2016-00054 (Patent 7,693,768 B1)
`CBM2016-00090 (Patent 7,725,382 B2)1
`_______________
`
`
`Before SALLY C. MEDLEY and MEREDITH C. PETRAVICK,
` Administrative Patent Judges.
`
`PETRAVICK, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`1 This Order addresses the same or similar issue in the proceedings listed
`above. Therefore, we issue one Order to be filed in each proceeding. The
`parties, however, are not authorized to use this style of filing.
`
`
`
`
`CBM2016-00054 (Patent 7,693,768 B1)
`CBM2016-00090 (Patent 7,725,382 B2)
`
`
`
`On March 17, 2017, Petitioner filed motions to strike Exhibits 2233
`
`and certain string citations in the Patent Owner’s Responses (“PORs”).
`
`Paper 292, 1. Patent Owner filed an opposition to the motion. Paper 30.
`
`According to Petitioner, the PORs improperly incorporate by
`
`reference the entirety of Exhibits 2233 to establish a nexus for Patent
`
`Owner’s alleged objective evidence of nonobvious without explaining in the
`
`PORs how the evidence establishes the nexus. Id. at 5–8. Similarly,
`
`Petitioner argues that Patent Owner improperly incorporates arguments from
`
`other exhibits by reference through use of certain string citations in the
`
`PORs. Id. at 8–11 (listing the string citations). Petitioner argues that the
`
`improper incorporation by reference is prejudicial to it because incorporation
`
`by reference disregards our Rules; floods the proceedings with a “mountain”
`
`of documents; requires Petitioner’s to play archeologist and speculate as to
`
`Patent Owner’s interpretation of these incorporated material; fails to put
`
`Petitioner on notice of Patent Owner’s arguments; and improperly requires
`
`Petitioner to respond within the 5,600 word limit for a Petitioner’s Reply.
`
`Id. at 11–13.
`
`
`
`Patent Owner disputes that it improperly incorporated arguments by
`
`reference from Exhibits 2233 and by certain string citations. Paper 30, 1.
`
`According to Patent Owner, Exhibits 2233 and the other cited exhibits do
`
`not contain arguments, but contain evidence, and, thus, do not improperly
`
`incorporate arguments into the PORs. Id. at 1–9. For example, Patent
`
`
`2 For the purposes of this Order, CBM2016-0054 is representative and all
`citations are to papers in CBM2016-0054 unless otherwise noted.
`
`
` 2
`
`
`
`
`
`
`
`CBM2016-00054 (Patent 7,693,768 B1)
`CBM2016-00090 (Patent 7,725,382 B2)
`
`Owner argues that the claim chart contained in Exhibit 2233 is not argument
`
`but evidence because it was prepared by its declarant Mr. Thomas. Id. at 2.
`
`Further, Patent Owner argues that the remedy for improper incorporation by
`
`reference is not exclusion. Id. at 9–10. Patent Owner argues that the proper
`
`remedy is for the Board to consider only arguments made in the PORs itself.
`
`Id. 10–12.
`
`
`
`We are persuaded by Petitioner that the PORs improperly incorporate
`
`by reference arguments. Cisco Systems, Inc. v. C-Cation Technologies,
`
`LLC, IPR2014-00454 (PTAB Aug. 29, 2014) (Paper 12) (“Cisco”) is a
`
`Board informative opinion and is instructional here. In Cisco, the petition
`
`included multiple citations to a declaration, which included claim charts
`
`purporting to show how certain claim elements were met by the prior art. Id.
`
`at 7–10. The declaration was cited to support conclusory statements for
`
`which the Petition did not otherwise provide an argument or explanation. Id.
`
`at 7–10. The Board determined that this practice amounted to improper
`
`incorporation of argument by reference. Id. at 10 (citing 37 C.F.R. §
`
`42.6(a)(3)).
`
`
`
`Here, for similar reasons as discussed in Cisco, Patent Owner’s
`
`citation to Exhibits 2233 and other certain string citations amount to
`
`improper incorporation by reference. For example, Petitioner cites to the
`
`entirety of Exhibits 2233 to support conclusory statements that its
`
`commercial products embody each claim element to establish the required
`
`nexus to evidence of commercial success. See e.g., Paper 21, 37, 50, 61.
`
`Exhibits 2233 contains 890 pages of multiple documents. One of the
`
`documents is a claim chart purporting to show how Patent Owner’s
`
`commercial products embody each claim element and was allegedly created
`
` 3
`
`
`
`
`
`
`
`CBM2016-00054 (Patent 7,693,768 B1)
`CBM2016-00090 (Patent 7,725,382 B2)
`
`by Patent Owner’s declarant Mr. Thomas. See Ex. 2169 ¶ 76, Ex. 2233, 1–
`
`11. The citations to Exhibits 2223 support conclusory statements for which
`
`the PORs does not otherwise provide an argument or explanation and, thus,
`
`amount to improper incorporation by reference. See Cisco at 7–10, 37
`
`C.F.R. § 42.6(a)(3).
`
`
`
`As explained in Cisco, “[o]ne purpose of the prohibition against
`
`incorporation by reference is to eliminate abuses that arise from
`
`incorporation,” including circumvention of the word limit imposed on PORs.
`
`Cisco at 10 (citations omitted). Improper incorporation by reference
`
`imposes on the Board’s time by asking us to sift through the exhibits to
`
`locate specific arguments. Id. Further, as Petitioner points out, improper
`
`incorporation by reference prejudices the Petitioner because it requires
`
`Petitioner to respond to the arguments within the 5,600 word limit for a
`
`Petitioner’s Reply.
`
`
`
`We, however, are not persuaded by Petitioner that the proper remedy
`
`is to strike or expunge Exhibits 2233 and the certain string citations. The
`
`appropriate remedy is for us not to consider such arguments. See Cisco at
`
`10. Petitioner will not be prejudiced by arguments that are not considered.
`
`We, thus, will not consider any arguments that are not adequately explained
`
`in the PORs, themselves.
`
`During a conference call held on March 9, 2017, Petitioner requested
`
`an increase in the word count limit for the Petitioner Reply to 8,600 words.
`
`Petitioner argued that the increase was needed to address the arguments
`
`allegedly incorporated by reference into the Patent Owner Responses. At
`
`that time, we held Petitioner’s request for a word count increase in abeyance
`
`pending a decision on Petitioner’s motion to strike. We stated that we would
`
` 4
`
`
`
`
`
`
`
`CBM2016-00054 (Patent 7,693,768 B1)
`CBM2016-00090 (Patent 7,725,382 B2)
`
`consider the request for an increase in word count limit for Petitioner’s
`
`Reply at the time we address Petitioner’s motions. Upon consideration,
`
`Petitioner’s request for an increase in the word count limit for the Petitioner
`
`Reply to 8,600 words is denied. There is no need to increase the word count
`
`limit to respond to arguments, which will not be considered.
`
`
`
`
`
`
`
`It is:
`
`ORDERED that Petitioner’s motions to strike are denied; and
`
`FURTHER ORDERED that Petitioner’s request for an increase in the
`
`word count limit for the Petitioner Reply to 8,600 words is denied.
`
`
`
`PETITIONER:
`
`Robert Sokohl
`rsokohl-ptab@skgf.com
`
`Lori Gordon
`lgordon-PTAB@skgf.com
`
`Richard Bemben
`rbemben-PTAB@skgf.com
`
`PATENT OWNER:
`
`Leif Sigmond, Jr.
`sigmond@mbhb.com
`
`Cole Richter
`richter@mbhb.com
`
`
`
` 5
`
`
`
`
`
`
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