Trials@uspto.gov
`571.272.7822
`
` Paper No. 97
`
` Entered: September 1, 2016
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`IBG LLC, INTERACTIVE BROKERS LLC,
`TRADSTATION GROUP, INC., TRADESTATION SECURITIES, INC.,
`TRADESTATION TECHNOLOGIES, INC., and IBFX, INC.,
`Petitioner,
`
`v.
`
`TRADING TECHNOLOGIES INTERNATIONAL, INC.,
`Patent Owner.
`
`CBM2015-00161 (Patent No. 6,766,304 B2)1
`CBM2015-00179 (Patent No. 7,533,056 B2)
`CBM2015-00181 (Patent No. 7,676,411 B2)
`CBM2015-00182 (Patent No. 6,772,132 B1)
`
`
`
`
`Before SALLY C. MEDLEY, MEREDITH C. PETRAVICK, and
`JEREMY M. PLENZLER, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`
`DECISION
`Denying Patent Owner’s Motions to Submit
`Supplemental Information and Briefing
`37 C.F.R. § 42.223(b)
`
`
`
`1 Case CBM2016-00035 has been joined with this proceeding.
`
`
`
`
`
`
`
`

`

`CBM2015-00161 (Patent 6,766,304 B2)
`CBM2015-00179 (Patent 7,533,056 B2)
`CBM2015-00181 (Patent 7,676,411 B2)
`CBM2015-00182 (Patent 6,772,132 B1)
`
`
`
`On August 16, 2016, Patent Owner filed, in each of the above listed
`proceedings, a Motion to Submit Supplemental Information and Briefing in
`both unredacted and redacted forms. Papers 89, 90 (“Motion(s) to Submit”
`or “Mot.”).2 In each of the above listed proceedings, Petitioner filed an
`Opposition (Paper 92; “Opposition” or “Opp.”), and Patent Owner filed a
`Reply in both unredacted and redacted forms (Papers 94, 95; “Reply”).
`Patent Owner also filed Motions to Seal the unredacted versions of its
`motions and replies (Papers 91 and 93; “Motions to Seal”). For the reasons
`stated below, the Motions to Submit are denied and the Motions to Seal are
`dismissed.
`
`ANALYSIS
`On June 27, 2016, Patent Owner filed its Patent Owner Responses.
`
`Paper 64. According to Patent Owner, it did not include certain documents
`and arguments in connection with its Responses, because it was prevented
`from doing so due to a protective order in the related district court
`proceeding. Mot. 2. On July 1, 2016, Patent Owner sought relief from the
`district court protective order, which the district court granted on July 7,
`2016. Mot. 4. On August 10, 2016, Patent Owner requested leave to file
`motions for supplemental information and briefing in each of the above
`listed proceedings. We authorized Patent Owner to file the Motions to
`Submit (Paper 86), and on August 16, 2016, Patent Owner did so.
`Patent Owner moves to submit supplemental information and briefing
`in the form of ten documents and ten pages of additional briefing pursuant to
`
`
`2 Citations are to CBM2015-00161. This decision references only the
`redacted Motion to Submit.
`
`2
`
`

`

`CBM2015-00161 (Patent 6,766,304 B2)
`CBM2015-00179 (Patent 7,533,056 B2)
`CBM2015-00181 (Patent 7,676,411 B2)
`CBM2015-00182 (Patent 6,772,132 B1)
`
`
`
`37 C.F.R. § 42.223(b). Mot. 2, 6–7. The ten documents Patent Owner seeks
`to enter into the record are as follows:
`1) Deposition Transcript of John Bartleman dated June 8, 2016
`(Ex. 2150);
`2) Deposition Transcript of John Bartleman dated June 9, 2016;
`3) TradeStation Matrix Requirements, dated May 19, 2003 (Ex.
`2144);
`4) Trading Technologies Webpage describing MD Trader, dated
`April 11, 2003;
`5) Trading Options with TradeStation OptionStation, dated
`April 13, 2010 (Ex. 2145);
`6) Barron’s Presentation dated February 15, 2011 (Ex. 2143);
`7) Email from J. Bartleman, dated December 20, 2008;3
`8) Deposition Transcript of Milan Galik dated June 13, 2016
`(Ex. 2154);
`9) Email from M. Galik, dated June 14, 2010 (Ex. 2156);4 and
`10) Email from M. Galik, dated July 19, 2011 (Ex. 2158).
`
`As the moving party, Patent Owner bears the burden of proving that it
`is entitled to the requested relief. 37 C.F.R. § 42.20(c). Pursuant to
`37 C.F.R. § 42.223(b), a party seeking to submit supplemental information
`more than one month after the date a trial is instituted “must show why the
`supplemental information reasonably could not have been obtained earlier,
`and that consideration of the supplemental information would be in the
`interests-of-justice.”
`
`Patent Owner presents two arguments why it could not have obtained
`the above documents earlier as follows: 1) Patent Owner did not receive all
`of the documents, testimony, or authentication of the evidence until the
`
`
`3 Patent Owner does not seek to file this exhibit in CBM2015-00179.
`4 Patent Owner does not seek to file this exhibit in CBM2015-00179.
`
`
`3
`
`

`

`CBM2015-00161 (Patent 6,766,304 B2)
`CBM2015-00179 (Patent 7,533,056 B2)
`CBM2015-00181 (Patent 7,676,411 B2)
`CBM2015-00182 (Patent 6,772,132 B1)
`
`
`
`second week of June 2016; and 2) Petitioner objected to Patent Owner’s
`filing of any of Petitioners’ confidential information in the instant
`proceedings that were submitted under the district court’s protective order.
`Mot. 2.
`
`As to the first argument, Patent Owner does not explain sufficiently
`the availability of the documents it now seeks to file in these proceedings.
`Based on the dates listed on the documents themselves, or described by
`Patent Owner,5 only three of the ten documents contain a date sometime in
`June of 2016. The rest predate June 2016 significantly. Further, Patent
`Owner indicates that it obtained at least four of the ten documents from
`Petitioner prior to June 2016. For example, Patent Owner indicates that
`Petitioner produced Exhibit 2144 on December 23, 2015. Mot. 11. Patent
`Owner argues that certain portions of the June 2016 documents authenticate
`some of the earlier documents, and that it did not discover the relevance of
`one document (number 4 from the above list) until June 8, 2016. See, e.g.
`Mot. 9, 12. Patent Owner, however, does not explain why it needed to wait
`to authenticate the documents produced by Petitioner before filing those
`documents in these proceedings or why it waited until June 2016 to
`authenticate documents described as having dates, in some instances, many
`years ago. For example, Patent Owner argues that the deposition of John
`Bartleman obtained on June 8 and 9, 2016 authenticates Exhibit 2144; a
`document described as TradeStation Matrix Requirements, which has a May
`2003 date and which was produced on December 23, 2015. Id. Patent
`
`
`5 Some of the documents were filed previously in the proceedings, while
`others have not been filed per Board instructions. See, e.g., Paper 86, 2.
`
`4
`
`

`

`CBM2015-00161 (Patent 6,766,304 B2)
`CBM2015-00179 (Patent 7,533,056 B2)
`CBM2015-00181 (Patent 7,676,411 B2)
`CBM2015-00182 (Patent 6,772,132 B1)
`
`
`
`Owner has not explained why it waited until June 2016 to authenticate
`Exhibit 2144. No sufficient explanation in that regard is provided. Nor does
`Patent Owner explain the circumstances surrounding its late discovery that
`the one document was relevant. Mot. 12. The document (number 4 from the
`above list) dates back to 2003. The document has not changed and
`presumably was available to Patent Owner many months before it filed its
`responses. For these reasons, we are not persuaded by Patent Owner’s first
`argument.
`We also are not persuaded by Patent Owner’s second argument.
`Patent Owner argues that Petitioner prevented Patent Owner from filing the
`documents. Mot. 2–5. In particular, Patent Owner argues that the
`documents are protected by a district court protective order, and that
`Petitioner has relied on paragraph 11 of the protective order to object to the
`submission of documents in the instant proceedings. Id. at 2, fn 3.6
`Paragraph 19 of the protective order, however, includes that the “order is
`without prejudice to the right of any party to seek relief from the Court upon
`good cause shown, from any of the provisions contained herein.” Ex. 2407,
`19. Accordingly, a party may seek relief from the protective order from the
`district court. It is not apparent to us, as Patent Owner asserts, that the relief
`had to come from Petitioner.
`
`
`6 Paragraph 11 from the April 22, 2011 district court protective order,
`includes that protected “material shall not be used for any purpose other than
`in this Proceeding. Specifically, but without limitation, it shall not be used
`in any proceedings in any other court, tribunal, or patent office (including in
`any opposition, reexamination or other proceeding).” Ex. 2407, 10.
`
`5
`
`

`

`CBM2015-00161 (Patent 6,766,304 B2)
`CBM2015-00179 (Patent 7,533,056 B2)
`CBM2015-00181 (Patent 7,676,411 B2)
`CBM2015-00182 (Patent 6,772,132 B1)
`
`
`
`Patent Owner argues that it was diligent in obtaining the documents it
`seeks to submit. In support of its diligence arguments, Patent Owner argues
`that it contacted Petitioner on several occasions in May and June 2016,
`requesting Petitioner to agree that Patent Owner could use the information it
`now seeks to submit, but Petitioner objected. Mot. 2–3. Patent Owner also
`argues that on July 1, 2016 it sought, and on July 7, 2016 was granted, relief
`from the district court protective order to file certain materials in an offer of
`proof before us. Mot. 4.
`Petitioner filed the first petition in these proceedings on July 20, 2015,
`and we instituted review in the first of these proceedings January 27, 2016.
`See, e.g., Papers 2, 29. Patent Owner was put on notice several months prior
`to May of 2016 of the challenges to the instant patents. Yet, Patent Owner
`does not explain why it waited until May 2016 to seek Petitioner’s
`agreement on evidence protected under the district court’s order, and, more
`importantly, why Patent Owner did not go to the district court to seek relief
`from the protective order prior to July of 2016.7 Patent Owner made a
`litigation decision to wait until a little more than one month before its Patent
`
`
`7 Patent Owner was aware at least two weeks prior to the time its Patent
`Owner Responses were due that it needed to seek relief from the district
`court protective order. See, e.g., Ex. 2140, 5:19–24; see also Paper 60, 10.
`Although Patent Owner previously represented that it believed a motion was
`filed in the district court seeking relief from the protective order two weeks
`before its Patent Owner Responses were due (Ex. 2140, 5:22–24), the instant
`motion appears to indicate otherwise. Mot. 2–3 (indicating that an earlier
`motion “noticed June 15” with the district court was withdrawn from
`consideration). Based on the record before us, it appears that Patent Owner
`did not file such a motion with the district court for consideration until July
`1, 2016, after Patent Owner filed its Responses. Mot. 3–4.
`
`6
`
`

`

`CBM2015-00161 (Patent 6,766,304 B2)
`CBM2015-00179 (Patent 7,533,056 B2)
`CBM2015-00181 (Patent 7,676,411 B2)
`CBM2015-00182 (Patent 6,772,132 B1)
`
`
`
`Owner Responses were due to contact Petitioner regarding the submission of
`hundreds of documents (see, e.g., Ex. 2395), not just the ones it now seeks to
`submit. Moreover, Patent Owner waited after its responses were filed to file
`a motion for consideration with the district court, seeking relief from the
`protective order. Importantly, Patent Owner does not provide an explanation
`for the period prior to May 2016, and thus, Patent Owner has failed to show
`why the information reasonably could not have been obtained at least prior
`to May 2016.
`
`Lastly, we have considered Patent Owner’s arguments that there is no
`burden or prejudice to Petitioner if Patent Owner is permitted to file
`supplemental information and briefing, because Petitioner may respond to
`such information and briefing in Petitioner’s replies. Mot. 7–8. Patent
`Owner’s arguments do not take into account that there likely would not be
`sufficient time for Petitioner to file and serve objections to the evidence, for
`Patent Owner to cure such objections, and for Petitioner to cross examine
`any of the testimonial evidence, all prior to filing Petitioner’s replies, which
`are due September 9, 2016. Paper 51. Petitioner likely would seek further
`adjustment to the already compressed schedule to respond to the additional
`information and briefing. As it is, and due to numerous previously made
`schedule adjustments, there is little to no room to spare for us to complete
`these proceedings within the one year statutory deadline. Moreover, Patent
`Owner has had ample time and opportunity to respond to the Petitions, and
`has done so by filing responses, each of which is at least 77 pages in length.
`Based on the record before us, we determine that authorizing Patent Owner
`to file supplemental information and supplemental briefing at this late
`
`7
`
`

`

`CBM2015-00161 (Patent 6,766,304 B2)
`CBM2015-00179 (Patent 7,533,056 B2)
`CBM2015-00181 (Patent 7,676,411 B2)
`CBM2015-00182 (Patent 6,772,132 B1)
`
`
`
`juncture would severely undermine the Board’s ability to administer and
`complete these proceedings in a just, speedy, and inexpensive way. 37
`C.F.R. § 42.1(b).
`For all of the above reasons, Patent Owner’s Motions to Submit are
`denied. Because we did not rely on the confidential information contained
`in either Patent Owner’s Motions to Submit or in its Replies in rendering
`this decision, we dismiss Patent Owner’s Motions to Seal and expunge the
`unredacted versions of those papers.
`It is
`ORDERED that Patent Owner’s Motions to File Supplemental
`Information and Briefing, filed in each of the above listed proceedings, are
`denied;
`FURTHER ORDERED that Patent Owner’s Motions to Seal in each
`of the above listed proceedings are dismissed; and
`FURTHER ORDERED that the confidential (nonredacted) versions of
`Patent Owner’s Motion to File Supplemental Information and Replies, filed
`in each of the above listed proceedings, are expunged from the records of the
`above listed proceedings.
`
`
`8
`
`

`

`
`
`CBM2015-00161 (Patent 6,766,304 B2)
`CBM2015-00179 (Patent 7,533,056 B2)
`CBM2015-00181 (Patent 7,676,411 B2)
`CBM2015-00182 (Patent 6,772,132 B1)
`
`
`PETITIONER:
`John C. Phillips
`phillips@fr.com
`
`Kevin Su
`CBM41919-0005CP1@fr.com
`
`Michael T. Rosato
`mrosato@wsgr.com
`
`Matthew A. Argenti
`margenti@wsgr.com
`
`
`
`PATENT OWNER:
`Erika Arner
`Erika.arner@finnegan.com
`
`Joshua Goldberg
`Joshua.goldberg@finnegna.com
`
`Kevin Rodkey
`Kevin.rodkey@finnegan.com
`
`Rachel Emsley
`Rachel.emsley@finnegan.com
`
`Steven Borsand
`tt-patent-cbm@tradingtechnologies.com
`
`
`
`9
`
`