`Tel: 571-272-7822
`
`
`Paper No. 8
`Entered: March 29, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CME GROUP, INC.,
`Petitioner,
`
`v.
`
`VOLATILITY PARTNERS, LLC,
`Patent Owner.
`____________
`
`Case CBM2016-00024
`Patent RE43,435 E
`____________
`
`
`Before MICHAEL W. KIM, TRENTON A. WARD, and KEVIN W. CHERRY,
`Administrative Patent Judges.
`
`WARD, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`CBM2016-00024
`Patent RE43,435 E
`
`
`A first conference call was held on March 23, 2016 and attended by the
`above-identified panel members and respective counsel for the parties. The
`conference was scheduled to discuss Patent Owner’s request to submit a
`declaration, along with its Preliminary Response, limited to the issue of
`Petitioner’s standing with respect to a covered business method patent review of
`US. Patent No. RE43,435 E (“ the’ 435 patent”). During the conference, Petitioner
`indicated that it would not oppose such a submission, by Patent Owner, if the
`declaration was limited to the identification and entry of documentary evidence
`similar to the Declaration of Julie Winkler submitted by Petitioner along with its
`Petition. See Ex. 1005. The call was concluded to permit the parties to discuss
`Petitioner’s proposal.
`A second conference call was held on March 29, 2016 and attended by the
`above-identified panel members and respective counsel for the parties. The
`conference was scheduled, at Patent Owner’s request, to discuss its inability to
`reach an agreement with Petitioner regarding the scope of the proposed
`declaration. During the call, Patent Owner stated that it seeks permission to file a
`Declaration of Mr. Robert Krause, inventor of the ’435 patent, strictly limited to
`testimony regarding the alleged lack of standing of the Petitioner to request a
`covered business method patent review of the ’435 patent. Patent Owner indicated
`that, contrary to Petitioner’s request, the declaration cannot be limited to
`introducing documentary evidence like the Winkler Declaration (Ex. 1005),
`because Mr. Krause’s testimony will attempt to establish a negative, namely, that
`Petitioner has not been sued for infringement nor has it been charged with
`infringement of the ’435 patent in accordance 37 C.F.R. § 42.302. Petitioner
`objects to the submission of such a declaration on the grounds that it will not have
`the ability to cross-examine the declarant prior to the Board’s institution decision.
`
` 2
`
`
`
`
`
`
`
`CBM2016-00024
`Patent RE43,435 E
`
`
`37 C.F.R. § 42.207 states that a “preliminary response shall not present new
`testimony evidence beyond that already of record, except as authorized by the
`Board.” Patent Owner argues that a limited waiver of this rule is warranted in this
`case. Specifically, Patent Owner agreed during the conference call to the
`following limitations on the requested submission: (1) only one declaration, the
`Declaration of Mr. Robert Krause, would be submitted along with the Preliminary
`Response, (2) the declaration will not rely upon or introduce additional
`documentary evidence, and (3) the declaration will not exceed three pages. In
`view of the circumstances in this case and the limited nature of this request, we
`determine that it is appropriate to grant Patent Owner’s request. We understand
`Petitioner’s concerns regarding the lack of an opportunity to cross-examine the
`declarant and will account for those concerns in assigning weight to the declaration
`for purposes of the decision to institute. Accordingly, Patent Owner’s request for
`authorization to file a declaration, as limited above, along with the Patent Owner’s
`Preliminary Response is granted.
`
`
`ORDER
`
`Accordingly, it is hereby
`ORDERED that Patent Owner may file a Declaration of Mr. Robert Krause
`along with its Preliminary Response, which shall not rely upon or introduce
`additional documentary evidence and shall not exceed three pages.
`
`
` 3
`
`
`
`
`
`
`
`
`
`CBM2016-00024
`Patent RE43,435 E
`
`For PETITIONER:
`Michael Hawes
`michael.hawes@bakerbotts.com
`
`Brad Bowling
`brad.bowling@bakerbotts.com
`
`Ali Dhanani
`ali.dhanani@bakerbotts.com
`
`
`
`For PATENT OWNER:
`David P. Lentini
`david.lentini@gmail.com
`
`
`
` 4
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
