`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Paper No. ____
`Filed: July 25, 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
`_________________
`
`Case CBM2016-00087
`U.S. Patent 7,412,416 B2
`_________________
`
`PATENT OWNER’S REPLY IN SUPPORT OF ITS
`MOTION TO EXCLUDE
`
`
`
`
`
`
`Case CBM2016-00087
`U.S. Patent 7,412,416 B2
`
`
`TABLE OF CONTENTS
`
`I.
`
`TSE IS IRRELEVANT ................................................................................... 1
`
`II. KAWASHIMA IS HEARSAY ....................................................................... 2
`
`III. TSE HAS NOT BEEN AUTHENTICATED .................................................. 3
`
`IV. THE THOMAS TESTIMONY SHOULD BE EXCLUDED ......................... 4
`
`
`
`
`
`
`
`
`
`i
`
`
`
`Case CBM2016-00087
`U.S. Patent 7,412,416 B2
`
`
`I.
`
`TSE IS IRRELEVANT
`
`TSE is not relevant to any issue remaining in these proceedings. Petitioners
`
`argue that TSE is relevant to “factual issues undergirding the § 101 analysis and
`
`the CBM-eligibility analysis.” Opp. at 2. But belying this is Petitioners’ failure to
`
`set forth any analysis of how TSE demonstrates any of these factual issues.
`
`Indeed, Petitioners mention TSE just twice in the patent-eligibility section of their
`
`Petition: both times as mere “see” cites to one-sentence arguments regarding
`
`dependent claims 13, 23, and 24 with no further explanation of relevance. Pet. at
`
`34-35. Petitioners fail to discuss (or cite) TSE in connection with a CBM-
`
`eligibility analysis. And Petitioners fail to even cite TSE in their Reply.
`
`Two parenthetical cites with no explanation of relevance does not
`
`demonstrate that TSE is probative on any fact remaining in this proceeding. Thus,
`
`TSE should be excluded. Apple Inc. v. Smartflash LLC, CBM2014-00106, Paper
`
`52, p. 25 (PTAB Sep. 25, 2015) (excluding evidence not relied upon). Allowing
`
`Petitioners to rely on TSE for these arguments, which are apparently being made
`
`for the first time in an opposition to a motion to exclude, violates the APA and
`
`Patent Owner’s Due Process rights because it prevents Patent Owner from
`
`meaningfully responding. Dell Inc. v. Acceleron, LLC, 818 F.3d 1293, 1301 (Fed.
`
`Cir. 2016).
`
`1
`
`
`
`Case CBM2016-00087
`U.S. Patent 7,412,416 B2
`
`
`II. KAWASHIMA IS HEARSAY
`
`Petitioners argue that TT conceded that the Kawashima deposition transcript
`
`was admissible. But TT did not concede that the 2005 Kawashima deposition
`
`transcript was admissible, and TT did not concede that the deposition transcript
`
`authenticates Exhibit 1015 (“TSE”). E.g., CBM2016-00179, Paper 114. Rather, in
`
`other CBM proceedings, TT set forth an alternative argument that applied for that
`
`CBM proceeding: the deposition transcript and TT’s evidence from district court
`
`litigation should stand or fall together based on mutual hearsay objections. Id. at 6
`
`(“[t]o the extent the Board excludes any of Patent Owner’s evidence from district
`
`court litigation, which it should not, the Board should likewise exclude the 2005
`
`Kawashima transcript.”).
`
`Notably, Petitioners do not dispute that they could have obtained more
`
`probative evidence from Kawashima. As explained in TT’s motion, Petitioners
`
`could have obtained a declaration from Kawashima during the time they privately
`
`met with him prior to his 2016 deposition. They also could have elicited testimony
`
`at his deposition addressing the deficiencies of the 2005 Kawashima testimony.
`
`They did not. As such, the 2005 Kawashima transcript is not more probative than
`
`other evidence they could have obtained through reasonable efforts. See FRE
`
`807(a)(2). The 2005 Kawashima transcript thus does not qualify for the residual
`
`hearsay exception and should be excluded as hearsay.
`
`2
`
`
`
`Case CBM2016-00087
`U.S. Patent 7,412,416 B2
`
`
`III. TSE HAS NOT BEEN AUTHENTICATED
`
`Even if the Kawashima deposition transcript is admitted, it does not
`
`authenticate TSE. Indeed, this transcript is insufficient to establish that Exhibit
`
`1015 is the same document allegedly distributed in 1998 by the Tokyo Stock
`
`Exchange. See Pet. at 18-19, 37. As explained in TT’s motion, the 2005
`
`Kawashima transcript raises more doubt that it resolves. Mot. at 3-4. Specifically,
`
`TT highlighted portions of Kawashima that demonstrate that Kawashima was
`
`unable to authenticate TSE in a way that establishes that the TSE manual was the
`
`same document allegedly distributed in 1998 by the Tokyo Stock Exchange. Id.
`
`(citing Ex. 1018, pp. 97-99).
`
`Further, whether or not TSE is a business record or appears to be an
`
`authentic TSE document, nothing establishes that it is the “prior art” document to
`
`which Petitioners cite. Specifically, Petitioners argue that the document is
`
`authenticated under FRE 901(b)(4) because it has a distinctive layout and has
`
`illustrations as well as Bates numbering. Opp. at 5-6. But such characteristics of
`
`the purported TSE document do nothing to establish that the document is the same
`
`manual allegedly distributed by the Tokyo Stock Exchange in 1998. See Pet. at
`
`18-19. Indeed, these characteristics do nothing to establish that the document was
`
`publicly available such that it demonstrates what was well-known or conventional
`
`in the art at the time. Rather, these characteristics, at best, show that the purported
`
`3
`
`
`
`Case CBM2016-00087
`U.S. Patent 7,412,416 B2
`
`
`“prior art” TSE document is the same (or similar) TSE document other defendants
`
`have used in other related litigations. As such, it is not self-authenticated in any
`
`way that can establish it is prior art, or evidence of what was “well-known” or
`
`“conventional” at the time, in this proceeding.
`
`The 2016 deposition transcript does not corroborate the 2005 testimony.
`
`The portions cited by Petitioners do not establish that the TSE manual prepared by
`
`Kawashima was the same manual allegedly disseminated in 1998. Ex. 1043 at 45-
`
`61. These portions still suggest that Mr. Kawashima could not have examined the
`
`document in a way that would have differentiated it from any other version. Id.
`
`As explained in TT’s motion, the 2016 deposition transcript also proves Mr.
`
`Kawashima’s bias. Petitioners argue that any doubts go to the weight of the
`
`testimony, not to its admissibility. Opp. at 9. TT agrees. Mr. Kawashima’s bias
`
`goes to the weight that his testimony should be given. Mr. Kawashima’s testimony
`
`should be given no weight, so it cannot authenticate TSE.
`
`IV. THE THOMAS TESTIMONY SHOULD BE EXCLUDED
`
`Petitioners do not dispute that Mr. Thomas’ testimony was given in response
`
`to vague and ambiguous questions. And Petitioners do not dispute that they are
`
`using this testimony in a confusing and misleading manner to argue that Mr.
`
`Thomas testified that the claimed inventions do not improve computers. Opp. at 1-
`
`2 (asserting that “Mr. Thomas, admitted that certain claims of a related patent do
`
`4
`
`
`
`Case CBM2016-00087
`U.S. Patent 7,412,416 B2
`
`not improve computers. (See, e.g., Ex. 1060 at 248, 263-69.)”). Instead, Petitioners
`
`defer to the Board’s ability to accord the evidence “appropriate weight.” Id. at 12.
`
`But the Board’s ability to accord evidence “appropriate weight” does not entitle
`
`Petitioners to rely on testimony elicited by vague and ambiguous questions. Thus,
`
`the Board should exclude the evidence.
`
`Petitioners also claim that because Mr. Thomas answered the questions at
`
`all, the testimony should not be excluded. Id. at 13. But the fact that the witness is
`
`entitled to seek clarification does not cure an objectionable question. See Office
`
`Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,772 (Aug. 14, 2012) (“An
`
`objection at the time of the examination—whether to evidence, to a party’s
`
`conduct, to the officer’s qualifications, to the manner of taking the testimony, or
`
`any aspect of the testimony—must be noted on the record, but the examination still
`
`proceeds; testimony is taken subject to any such objection.”). Patent Owner timely
`
`objected to objectionable questioning. Ex. 1060 at 248, 263-269. Mr. Thomas’
`
`answers do not obviate these objections and do not moot Patent Owner’s motion.
`
`Indeed, Mr. Thomas did not admit that the claimed inventions do not
`
`improve computers. Mr. Thomas simply stated what was not explicitly recited by
`
`the claims. The probative value of this testimony is substantially outweighed by a
`
`danger of unfair prejudice and confusing the issues as the result of vague
`
`questioning. Accordingly, it should be excluded under FRE 403.
`
`5
`
`
`
`
`
`
`
`Date: July 25, 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
`
`
`6
`
`
`
`Case CBM2016-00087
`U.S. Patent 7,412,416 B2
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of the foregoing Patent
`
`Owner’s Reply in Support of its Motion to Exclude was served on July 25,
`
`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 25, 2017
`
`
`
`
`
`
`
`/Cole B. Richter/
`
`
`
`
`
`
`
`
`
`7
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
