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`Paper No. ____
`Filed: July 5, 2017
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`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
`_________________
`
`Case CBM2016-00087
`U.S. Patent 7,412,416 B2
`_________________
`
`PATENT OWNER’S MOTION TO EXCLUDE
`UNDER 37 C.F.R. § 42.64(c)
`
`
`
`
`
`
`
`
`Case CBM2016-00087
`U.S. Patent 7,412,416 B2
`
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`TABLE OF CONTENTS
`
`I.
`
`INTRODUCTION ........................................................................................... 1
`
`II.
`
`STANDARD .................................................................................................... 1
`
`III. TSE (EXS. 1015, 1016) SHOULD BE EXCLUDED ..................................... 1
`
`A.
`
`TT Timely Objected .............................................................................. 1
`
`B.
`
`C.
`
`TSE is not Relevant to any Ground Instituted by the Board ................. 2
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`TSE Has Not Been Authenticated ......................................................... 2
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`IV. THE KAWASHIMA TRANSCRIPT (EX. 1018) SHOULD BE
`EXCLUDED .................................................................................................... 4
`
`A.
`
`TT Timely Objected .............................................................................. 4
`
`B.
`
`The 2005 Kawashima Deposition Testimony is Hearsay ..................... 5
`
`V.
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`CERTAIN PORTIONS OF THOMAS’ TESTIMONY SHOULD BE
`EXCLUDED .................................................................................................... 7
`
`A.
`
`TT Timely Objected .............................................................................. 7
`
`B.
`
`C.
`
`Petitioners Rely on This Evidence in Their Reply ................................ 7
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`The Probative Value of the Cited Testimony is Outweighed By
`Prejudice and Confusion ....................................................................... 7
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`i
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`Case CBM2016-00087
`U.S. Patent 7,412,416 B2
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`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”)
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`respectfully moves to exclude the TSE exhibits (Exhibits 1015, 1016) as not
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`relevant and not authenticated; the 2005 Kawashima deposition transcript (Exhibit
`
`1018) as inadmissible hearsay; and certain deposition testimony of Christopher
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`Thomas (Ex. 1060) under FRE 403 because those portions’ probative value is
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`substantially outweighed by a danger of unfair prejudice and confusing the issues
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`as a result of vague questioning.
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`II.
`
`STANDARD
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`A Motion to Exclude must (a) identify where in the record the objection was
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`made, (b) identify where in the record the evidence sought to be excluded was
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`relied upon by an opponent, (c) address objections to exhibits in numerical order,
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`and (d) explain the objection. Office Patent Trial Practice Guide, 77 Fed. Reg.
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`48,756, 48,767 (Aug. 14, 2012).
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`III. TSE (EXS. 1015, 1016) SHOULD BE EXCLUDED
`
`A. TT Timely Objected
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`Petitioners relied on TSE in the Petition as a ground of invalidity. Pet. at 42-
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`84. But the Board did not institute on any ground of invalidity involving TSE.
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`1
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`Case CBM2016-00087
`U.S. Patent 7,412,416 B2
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`I.D. at 15-23. TT timely objected to TSE on December 15, 2016 as not relevant to
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`any grounds instituted by the Board as well as not being authenticated. Paper 13.
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`B.
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`TSE is not Relevant to any Ground Instituted by the Board
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`The Board did not institute on any invalidity grounds involving TSE. I.D. at
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`15-23. Thus, the TSE exhibits (Exs. 1015, 1016) are not probative on any issue
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`remaining in this proceeding. They should therefore be excluded under FRE 401
`
`and 402. See Apple Inc. v. Smartflash LLC, CBM2014-00106, Paper 52, p. 25
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`(PTAB Sep. 25, 2015) (excluding evidence not relied upon).
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`C. TSE Has Not Been Authenticated
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`The Federal Rules of Evidence apply to the current proceedings. 37 C.F.R. §
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`42.62. FRE 901 requires parties to authenticate documents. To satisfy the
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`requirement of authenticating or identifying an item of evidence, the proponent
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`must produce evidence sufficient to support a finding that the item is what the
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`proponent claims it is. Fed. R. Evid. 901(a).
`
`Petitioners can cite to no evidence sufficiently authenticating TSE. To the
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`extent Petitioners may attempt to rely on a transcript of a 2005 deposition of
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`Atshushi Kawashima (Ex. 1018), this transcript does not sufficiently authenticate
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`TSE because it should be excluded as being inadmissible hearsay for the reasons
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`set forth below in Section IV. But even if Kawashima is not excluded (which it
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`should be), Kawashima remains deficient.
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`2
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`Case CBM2016-00087
`U.S. Patent 7,412,416 B2
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`Indeed, rather than supporting a finding under FRE 901(a) that TSE is what
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`Petitioners claim it is (i.e., that TSE is the same document allegedly distributed by
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`the Tokyo Stock Exchange in 1998), the 2005 Kawashima deposition transcript
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`ultimately raises doubts as to the authenticity of the document.
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`For example, in the deposition, Mr. Kawashima draws a conclusion about
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`the authenticity of TSE, a document of hundreds of pages, based on the perceived
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`absence of a mark in “looking briefly through” the document. Specifically, he
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`testified:
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`Q Is this entire document, this document identified as Defendant’s
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`Exhibit 179, from August 24 of 1998?
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`A Yes.
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`Q How do you know?
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`A Because when we replace sections there is a mark indicating a
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`correction at the bottom of the page. And just looking briefly through
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`this document, I didn’t see that mark and therefore I thought that was
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`the original date.
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`Ex. 1018, pp. 97-98.
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`Further, when asked how one would know if a distributed manual were the
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`same as a particular copy, Mr. Kawashima merely makes the conclusory assertion
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`that a comparison would reveal whether a distributed copy was the same, without
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`3
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`Case CBM2016-00087
`U.S. Patent 7,412,416 B2
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`any detail as to how such a comparison would be carried out how what level of
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`scrutiny might be required. Specifically, he testified:
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`Q Is there any way to tell that the manual that was distributed is the
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`same as Defendant's Exhibit 179?
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`A If you were to compare this with the distributed manual you would
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`be able to tell.
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`Ex. 1018, p. 99.
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`Finally, Mr. Kawashima’s testimony cannot be relied upon as to
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`authentication because he is not a disinterested witness. Kawashima’s employer,
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`the Tokyo Stock Exchange, challenged TT’s Japanese counterpart to U.S. Patent
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`No. 6,766,304, which was asserted in the litigation in which Kawashima
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`previously testified. CBM2015-00179, Paper No. 77 at 40-41.
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`In view of the above, Petitioners have not produced evidence sufficient to
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`support a finding that TSE is what Petitioners claim it is. TSE should thus be
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`excluded.
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`IV. THE KAWASHIMA TRANSCRIPT (EX. 1018) SHOULD BE
`EXCLUDED
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`A. TT Timely Objected
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`Petitioner relied on Ex. 1018 in an attempt to establish that TSE was
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`publicly accessible and therefore qualifies as prior art under 35 U.S.C. § 102. Pet.
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`4
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`Case CBM2016-00087
`U.S. Patent 7,412,416 B2
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`at 18-19. TT anticipates that Petitioner will also attempt on rely on Ex. 1018 in an
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`attempt to authenticate TSE under FRE 901. TT timely objected to Ex. 1018 on
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`December 15, 2016 as hearsay to which no exception applies. Paper 13.
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`B.
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`The 2005 Kawashima Deposition Testimony is Hearsay
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`The 2005 deposition transcript of Atshushi Kawashima (Ex. 1018) is hearsay
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`because this deposition was conducted in a district court case, not any of the CBM
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`proceedings. Ex. 1018 at 1. As a result, the 2005 Kawashima deposition is, by
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`definition, hearsay.
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`FRE 801 defines hearsay as “a statement that: (1) the declarant does not
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`make while testifying at the current trial or hearing; and (2) a party offers in
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`evidence to prove the truth of the matter asserted in the statement.” Because
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`testimony by Mr. Kawashima in the district court case was not made “while
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`testifying at the current trial or hearing,” to the extent such testimony is used to
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`establish any fact at issue in this proceeding, it must be considered hearsay.
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`No exception to this hearsay rule applies to Exhibit 1018. For instance,
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`Petitioners cannot show that the residual exception to the hearsay rules applies here
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`because this 2005 transcript is not more probative than any other evidence that
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`Petitioners could have obtained through reasonable efforts. To qualify under the
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`“residual exception” to the hearsay rule, FRE 807, a “statement must: (1) have
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`equivalent circumstantial guarantees of trustworthiness; (2) be offered as evidence
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`5
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`Case CBM2016-00087
`U.S. Patent 7,412,416 B2
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`of a material fact; (3) be more probative on the point for which it is offered than
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`any other evidence that the proponent can obtain through reasonable efforts; and
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`(4) be in the interests of justice to admit.” Apple Inc. v. VirnetX Inc., IPR2015-
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`00811, Paper 44 at 69 (Sep. 8, 2016) (citing Fed. R. Evid. 807).
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`Here, the 2005 Kawashima testimony does not qualify under the residual
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`hearsay exception because it is not more probative that any other evidence
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`Petitioner could have obtained through reasonable efforts. FRE 807(a)(2). Indeed,
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`Kawashima made himself available for cross-examination in related CBM
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`proceedings. CBM2016-00054, Ex. 2163. Indeed, Petitioners examined Mr.
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`Kawashima at this 2016 deposition. Id., pp. 44-60. Further, Petitioners’ counsel
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`even met with Mr. Kawashima prior to this deposition. Id. at 11:18 – 12:2, 13:23-
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`25 (“Q: Now, yesterday, you met with Ms. Gordon and Ms. Morgan for about how
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`long? A: Three hours or so.”).
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`Thus, Petitioners had ample opportunity to obtain evidence more probative
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`than a 2005 deposition transcript. Petitioners could have obtained a declaration
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`from Kawashima during the time they privately met with him prior to his 2016
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`deposition. They also could have elicited testimony at his deposition addressing
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`the deficiencies of the 2005 Kawashima testimony. They did not. As such, the
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`2005 Kawashima transcript is not more probative than other evidence they could
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`have obtained through reasonable efforts. The 2005 Kawashima transcript thus
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`6
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`Case CBM2016-00087
`U.S. Patent 7,412,416 B2
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`does not qualify for the residual hearsay exception and should be excluded as
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`hearsay.
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`V. CERTAIN PORTIONS OF THOMAS’ TESTIMONY SHOULD BE
`EXCLUDED
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`A. TT Timely Objected
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`TT timely objected to the relevant testimony during the deposition. Ex.
`
`1060 at 248, 263-269.
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`B.
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`Petitioners Rely on This Evidence in Their Reply
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`Petitioners rely upon pages 248 and 263-269 of the Thomas deposition
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`transcript (Ex. 1060) in their Reply at page 8. Paper 23 at 7.
`
`C. The Probative Value of the Cited Testimony is Outweighed By
`Prejudice and Confusion
`
`The answers at page 248 and 263-269 in Exhibit 1060 were in response to
`
`vague and ambiguous questions yielding irrelevant testimony that Petitioners are
`
`using in a confusing and misleading manner to imply that the claimed inventions
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`do not improve computers.
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`9 Q. So I'm going to ask my question again.
`
`10 Does the GUI in Claim 1 in any way improve the
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`11 speed of the computer?
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`12 MR. GANNON: Object to the form.
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`13 BY MR. SOKOHL:
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`7
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`Case CBM2016-00087
`U.S. Patent 7,412,416 B2
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`14 Q. And you said that's not how it
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`15 improves the function of the computer.
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`16 A. Correct.
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`17 Q. Okay. Does it improve the efficiency?
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`18 Does the GUI tool of Claim 1 improve the
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`19 efficiency of the computer in any way?
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`20 MR. GANNON: Object to the form.
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`21 THE WITNESS: The GUI from Claim 1
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`22 improvements the functionality of the computer by
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`1 specifically the combination of the elements of
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`2 the claim.
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`* * *
`
`5 Q. Okay. You can read it but at the end
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`6 of the day I'm asking you whether or not those
`
`7 elements as recited in Claim 1 processed the data
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`8 faster than a Figure 2 type GUI?
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`9 MR. GANNON: Object to the form.
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`10 BY MR. SOKOHL:
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`11 Q. If you don't know, you don't know. I
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`12 mean I don't know how to rephrase that question.
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`8
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`Case CBM2016-00087
`U.S. Patent 7,412,416 B2
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`13 A. Okay. This has got nothing to do with
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`14 the patent or the claim?
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`15 Q. It does have to do with the patent.
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`16 Does Claim 1 recite a GUI? What
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`17 does Claim 1 recite? If you're going to just
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`18 repeat the claim, that's fine. But do you have a
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`19 generalization for what Claim 1 recites?
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`20 A. A GUI tool.
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`21 Q. Okay. Does the GUI tool of Claim 1
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`22 cause the recited computer from Claim 1 to process
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`1 data faster than a Figure 2 type GUI tool?
`
`2 MR. GANNON: Object to the form,
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`3 scope.
`
`4 THE WITNESS: This isn't about
`
`5 processing data. There's nothing claiming
`
`6 processing data.
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`7 BY MR. SOKOHL:
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`8 Q. Okay. Does it make the computer more
`
`9 efficient?
`
`10 A. There's nothing claiming to make the
`
`9
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`Case CBM2016-00087
`U.S. Patent 7,412,416 B2
`
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`11 computer -- well, first of all, you have to define
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`12 what making the computer more efficient is.
`
`13 Q. Well, does it make it more
`
`14 efficient -- does it make the computer more
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`15 efficient in any way?
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`16 MR. GANNON: Object to the form.
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`17 BY MR. SOKOHL:
`
`18 Q. Does the GUI tool of Claim 1 make the
`
`19 computer more efficient in any way?
`
`20 MR. GANNON: Object to the form.
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`21 THE WITNESS: The elements of Claim 1
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`22 do not relate to making the computer more
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`1 efficient. That's not what is described in all of
`
`2 the elements of Claim 1.
`
`3 BY MR. SOKOHL:
`
`4 Q. Does the GUI tool of Claim 1 make the
`
`5 computer more reliable?
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`6 MR. GANNON: Object to the form.
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`7 THE WITNESS: Again, my answer is
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`8 going to be similar.
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`10
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`
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`Case CBM2016-00087
`U.S. Patent 7,412,416 B2
`
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`9 The elements of Claim 1 have
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`10 nothing to do with making a computer more
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`11 reliable. The elements of Claim 1 claim a new
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`12 type of GUI tool that has previously not been
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`13 described.
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`14 BY MR. SOKOHL:
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`15 Q. Okay. Does the computer in Claim 1
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`16 include a memory, if you know?
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`17 MR. GANNON: Object to the form,
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`18 scope.
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`19 THE WITNESS: It doesn't relate,
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`20 again, for the same reason my answer is going to
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`21 be that the claims, the elements of Claim 1 do not
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`22 relate to the memory of a computer, and they
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`1 relate, they describe the structure, makeup, and
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`2 function of a GUI tool.
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`3 BY MR. SOKOHL:
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`* * *
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`1 Q. Does the GUI tool of Claim 1 cause the
`
`2 computer to display the data to the screen faster
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`11
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`Case CBM2016-00087
`U.S. Patent 7,412,416 B2
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`3 than conventional GUI tools?
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`4 MR. GANNON: Object to the form,
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`5 scope.
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`6 THE WITNESS: Again, my answer is
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`7 going to be the elements of Claim 1 have nothing
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`8 to do with displaying data on a screen faster or
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`9 anything like that. They describe the structure,
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`10 makeup, and function of a GUI tool.
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`* * *
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`14 Q. Does the GUI tool of Claim 1 cause the
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`15 recited computer to communicate with the
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`16 electronic exchange any faster than conventional
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`17 GUI tools?
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`18 MR. GANNON: Object to the form,
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`19 scope.
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`20 THE WITNESS: Again, the elements of
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`21 Claim 1 do not cause the network -- it's nothing
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`22 to do with the network elements of the computer,
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`1 anything to do with that. They specifically
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`2 describe the structure, makeup, and function of a
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`12
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`Case CBM2016-00087
`U.S. Patent 7,412,416 B2
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`3 GUI tool.
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`4 BY MR. SOKOHL:
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`5 Q. Other than the way that the data is
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`6 displayed in the GUI tool of Claim 1, how else is
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`7 it functionally different from conventional
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`8 devices?
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`9 MR. GANNON: Object to the form,
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`10 foundation.
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`11 THE WITNESS: In exactly the way as
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`12 described in Claim 1.
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`Ex. 1060 at 248, 263-269. Rather than admit that the claimed invention does not
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`improve computers, Mr. Thomas simply stated what was not explicitly recited by
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`the claims. The probative value of this testimony is thus substantially outweighed
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`by a danger of unfair prejudice and confusing the issues as the result of vague
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`questioning. Accordingly, it should be excluded under FRE 403.
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`
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`13
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`
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`Date: July 5, 2017
`
`Case CBM2016-00087
`U.S. Patent 7,412,416 B2
`
`
`Respectfully submitted,
`
`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
`
`
`14
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`
`
`Case CBM2016-00087
`U.S. Patent 7,412,416 B2
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of the foregoing Patent
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`Owner’s Motion to Exclude was served on July 5, 2017, via email directed to
`
`counsel of record for the Petitioner at the following:
`
`Robert E. Sokohl
`rsokohl-PTAB@skgf.com
`
`Lori A. Gordon
`lgordon-PTAB@skgf.com
`
`Richard M. Bemben
`rbemben-PTAB@skgf.com
`
`John C. Phillips
`PTABINBOUND@fr.com
`
`PTAB@skgf.com
`
`
`
`
`
`
`Date: July 5, 2017
`
`
`
`
`
`/Cole B. Richter/
`
`
`
`
`
`
`
`
`
`15
`
`
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