UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD

Transcription

1 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 CBM PETITIONERS OPPOSITION TO PATENT OWNER S MOTION TO EXCLUDE Mail Stop PATENT BOARD Patent Trial and Appeal Board U.S. Patent and Trademark Office P.O. Box 1450 Alexandria, VA

2 TABLE OF CONTENTS CBM I. Introduction... 1 II. TSE is relevant and has been properly authenticated A. TSE is relevant for at least resolving the factual issues undergirding the 101 and CBM-eligibility analyses... 2 B. TSE has been properly authenticated TSE has been authenticated under FRE 901(b)(1) TSE is self-authenticated under FRE 902(11) TSE is authenticated under FRE 901(b)(4) Patent Owner deposed Mr. Kawashima twice and still has no basis to dispute his testimony or the authenticity of Exhibit III. The 2005 Kawashima deposition transcript is not impermissible hearsay IV. Mr. Thomas s testimony is highly probative and admissible V. Conclusion...13

3 UPDATED EXHIBIT LIST CBM Ex. No. Description 1001 U.S. Patent No. 7,412,416 B2 to Friesen et al. ( ʼ416 patent ) 1002 File History of Application Ser. No. 11/417,522, which became the 416 patent, as filed and obtained from PAIR ( 416 File History ) 1003 U.S. Patent No. 7,533,056 to Friesen et al. ( ʼ056 patent ) 1004 INTENTIONALLY SKIPPED 1005 TD Ameritrade Holding Corp. v. Trading Techs. Int l, Inc., CBM , Paper 19 ( 131 Ins. Dec. ) 1006 TD Ameritrade Holding Corp. v. Trading Techs. Int l, Inc., CBM , Paper 24 ( 131 Reh g Dec. ) 1007 TD Ameritrade Holding Corp. v. Trading Techs. Int l, Inc., CBM , Paper 38 ( 131 POR ) 1008 IBG LLC v. Trading Techs. Int l, Inc., CBM , Paper 21 ( 179 POPR ) 1009 Trading Techs. Int l. v. CQG, No. 05-cv-4811, Slip. Op. (N.D. Ill. Feb. 24, 2015) ( TT v. CQG Slip. Op. ) 1010 Transcript of the Deposition of Christopher Thomas, April 28, 2015 ( Thomas Tr. ) 1011 Redacted Second Corrected Expert Report of Christopher Thomas, Trading Technologies International, Inc. v. CQG, Inc., Case No. 1:05-CV (N.D. Ill. Dec. 12, 2013) ( Thomas Report ) 1012 Expert Declaration of Kendyl A. Román ( Román Decl. ) 1013 Curriculum Vitae of Kendyl A. Román ( Román CV ) 1014 List of Materials Considered by Kendyl A. Román ( Román List of Materials ) 1015 Futures/Option Purchasing System Trading Terminal Operation Guidelines, Tokyo Stock Exchange ( TSE JP ) 1016 Certified Translation of System for Buying and Selling Futures and Options Transaction Terminal Operational Guidelines ( TSE ) 1017 Certificate of Translation for System for Buying and Selling Futures and Options Transaction Terminal Operational Guidelines ( TSE Certificate ) 1018 Deposition Transcript of Atsushi Kawashima, Trading Technologies International, Inc., v. espeed, Inc., Case No. 04-cv-5312, United States District Court, Northern District of Illinois, Eastern Division, dated November 21, 2005 ( Kawashima Dep. Tr. ) 1019 U.S. Patent No. 5,619,631 to Schott ( Schott ) - i -

4 Ex. No. Description 1020 U.S. Patent No. 5,646,992 to Subler et al. ( Subler ) 1021 INTENTIONALLY SKIPPED 1022 U.S. Patent No. 5,136,501 to Silverman et al. ( Silverman ) 1023 U.S. Patent No. 5,297,031 to Gutterman et al. ( Gutterman ) 1024 WO 90/11571 to Belden 1025 Mark J. Powers, Starting Out in Futures Trading, Sixth Edition, 2001 ( Powers ) 1026 History of the American and NASDAQ Stock Exchanges 1027 David M. Weiss, After the Trade is Made, 1993 ( Weiss ) 1028 INTENTIONALLY LEFT BLANK 1029 Alan Cooper, About Face: The Essentials of User Interface Design, First Edition, ( Cooper ) 1030 Ben Shneiderman, Designing the User Interface: Strategies for Effective Human-Computer Interaction, Third Edition, 1998 ( Shneiderman ) 1031 INTENTIONALLY SKIPPED 1032 INTENTIONALLY SKIPPED 1033 Richard W. Arms Jr., Profits in Volume - Equivolume Charting, 1971 ( Arms ) 1034 INTENTIONALLY SKIPPED 1035 Inside Macintosh, Promotional Edition, Apple Computer, Inc., 1985 ( Inside Macintosh ) 1036 Valerie Illingworth, and I. C. Pyle, Dictionary of Computing, 4th Ed, Oxford University Press, 1996 ( Oxford Dictionary ) 1037 U.S. Patent No. 1,760,287 to Schippers ( Schippers ) 1038 INTENTIONALLY SKIPPED 1039 INTENTIONALLY SKIPPED 1040 Merriam-Webster s Collegiate Dictionary, Tenth Edition, TradeStation Gr p, Inc. v. Trading Techs. Int l, Inc., CBM , Paper 29 ( 161 Ins. Dec. ) 1042 U.S. Patent No. 5,347,452 to Bay, Jr. ( Bay ) 1043 Transcript of the Deposition of Atushi Kawashima, IBG, LLC et al. v. Trading Techs. Int l, Inc., CBM , , and , June 17, Declaration of Robert E. Sokohl SERVED (NOT FILED) - ii -

5 Ex. No. Description 1046 Exhibit No. 1 from the Deposition of Atushi Kawashima, IBG, LLC et al. v. Trading Techs. Int l, Inc., CBM , , and , June 17, Certified English Translation of Exhibit No. 1 from the Deposition of Atushi Kawashima, IBG, LLC et al. v. Trading Techs. Int l, Inc., CBM , , and , June 17, Certification of Translation of Exhibit No. 1 from the Deposition of Atushi Kawashima, IBG, LLC et al. v. Trading Techs. Int l, Inc., CBM , , and , June 17, Exhibit No. 2 from the Deposition of Atushi Kawashima, IBG, LLC et al. v. Trading Techs. Int l, Inc., CBM , , and , June 17, Certified English Translation of Exhibit No. 2 from the Deposition of Atushi Kawashima, IBG, LLC et al. v. Trading Techs. Int l, Inc., CBM , , and , June 17, Certification of Translation of Exhibit No. 2 from the Deposition of Atushi Kawashima, IBG, LLC et al. v. Trading Techs. Int l, Inc., CBM , , and , June 17, Exhibit No. 3 from the Deposition of Atushi Kawashima, IBG, LLC et al. v. Trading Techs. Int l, Inc., CBM , , and , June 17, Certified English Translation of Exhibit No. 3 from the Deposition of Atushi Kawashima, IBG, LLC et al. v. Trading Techs. Int l, Inc., CBM , , and , June 17, Certification of Translation of Exhibit No. 3 from the Deposition of Atushi Kawashima, IBG, LLC et al. v. Trading Techs. Int l, Inc., CBM , , and , June 17, Exhibit No. 4 from the Deposition of Atushi Kawashima, IBG, LLC et al. v. Trading Techs. Int l, Inc., CBM , , and , June 17, Certified English Translation of Exhibit No. 4 from the Deposition of Atushi Kawashima, IBG, LLC et al. v. Trading Techs. Int l, Inc., CBM , , and , June 17, Certification of Translation of Exhibit No. 4 from the Deposition of Atushi Kawashima, IBG, LLC et al. v. Trading Techs. Int l, Inc., CBM , , and , June 17, Deposition Transcript of Christopher H. Thomas, IBG LLC et al. v. Trading Techs. Int l, Inc., CBM , May 8, iii -

6 Ex. No. Description 1059 Deposition Transcript of Christopher H. Thomas, IBG LLC et al. v. Trading Techs. Int l, Inc., CBM , January 27, Deposition Transcript of Christopher H. Thomas, IBG LLC et al. v. Trading Techs. Int l, Inc., CBM , August 17, Growth and Change in the Eighties, New York Stock Exchange Annual Report, Terrell, E., History of the American and NASDAQ Stock Exchanges, Business Reference Services, September Rustin, R., Stock Exchange s New Home May Feature Push- Button Trades Via Private Offices, The Wall Street Journal, May 13, Slip Opinion, Trading Technologies International, Inc. v. CQG, Inc., et al., Appeal No (Fed. Cir. Jan. 18, 2017) Memorandum Opinion and Order, Trading Technologies International, Inc. v. CQG, Inc., et al., Case No. 05-cv-4811 (N.D. Ill.), February 24, Merriam-Webster Collegiate Dictionary, Eleventh Edition, Webster s New World College Dictionary, Fourth Edition, Declaration of Adam Kessel in Support of Pro Hac Vice Motion 1069 Patent Owner s Motion to Exclude, IBG LLC, et al. v. Trading Technologies International, Inc., CBM , September 23, Transcript of Conference Call Between Board and Parties, IBG LLC, et al. v. Trading Technologies International, Inc., CBM , CBM , and CBM , June 6, Final Written Decision, IBG LLC, et al. v. Trading Technologies International, Inc., CBM , September 23, SERVED EXHIBITS (NOT FILED) Ex. No. Description 1045 Updated Certificate of Translation for System for Buying and Selling Futures and Options Transaction Terminal Operational Guidelines - iv -

7 I. Introduction CBM The Board should deny Patent Owner s Motion to Exclude (Paper 29). Patent Owner seeks to exclude TSE (Exs and 1016) because it allegedly lacks relevance and is not properly authenticated. (Paper 29 at 1-5.) Patent Owner is wrong because TSE which, inter alia, is probative of the state of the art at the time of the alleged invention is relevant for resolving the factual inquiries that undergird the 101 and CBM-eligibility analyses. Mr. Kawashima, the author of TSE, twice authenticated the document: first in his 2005 deposition; then again in his 2016 deposition. Patent Owner participated in both depositions. Patent Owner also seeks to exclude the transcript of Mr. Kawashima s 2005 deposition (Ex. 1018), alleging that it is impermissible hearsay. (Paper 29 at 5-7.) Ironically, Patent Owner now argues that Exhibit 1018 does not satisfy the residual exception to hearsay. In CBM , Patent Owner argued the exact opposite an inconsistent position that Patent Owner neglects to disclose to the Board and Petitioners. (Ex at 3-6.) And, Mr. Kawashima s 2016 deposition (Ex. 1043), held at the behest of Patent Owner in these CBM proceedings, cured any and all hearsay objections to his 2005 testimony. Finally, Patent Owner seeks to exclude cross-examination testimony of its own expert that Patent Owner finds unfavorable. Patent Owner s expert, Mr. Thomas, admitted that certain claims of a related patent do not improve computers

8 (See, e.g., Ex. 1060, 248, ) His testimony is relevant to the issue of patent eligibility. Patent Owner had a full and fair opportunity to rehabilitate Mr. Thomas regarding the testimony at-issue through redirect. It chose not to. Accordingly, the Board should deny Patent Owner s Motion to Exclude. II. TSE is relevant and has been properly authenticated. A. TSE is relevant for at least resolving the factual issues undergirding the 101 and CBM-eligibility analyses. TT incorrectly argues that TSE (Ex (Japanese-language original) and 1016 (certified English translation)) are not relevant because [t]he Board did not institute on any invalidity grounds involving TSE. (Paper 29 at 2.) TSE is relevant in this proceeding for at least resolving the factual issues undergirding the 101 analysis and the CBM-eligibility analysis. Although 101 eligibility is a question of law, it is rife with underlying factual issues. Ultramercial, Inc. v. Hulu, LLC, 722 F.3d 1335, 1339 (Fed. Cir. 2013), vacated on other grounds sub nom. WildTangent, Inc. v. Ultramercial, LLC, 134 S. Ct (2014); see also Listingbook, LLC v. Mkt. Leader, Inc., 144 F. Supp. 3d 777, (M.D.N.C. 2015). [P]ragmatic analysis of 101 is facilitated by considerations analogous to those of 102 and 103 as applied to the particular case. Internet Patents Corp. v. Active Networks, Inc., 790 F.3d 1343, 1347 (Fed. Cir. 2015). And in a similar vein, the technological invention inquiry in the CBM-eligibility test asks whether the claimed subject matter as a whole - 2 -

9 recites a technological feature that is novel and unobvious over the prior art, and solves a technical problem using a technical solution. 37 C.F.R (b). TSE is relevant to these issues. It is probative of the state of the art at the time of the alleged invention, of what was conventional and well known, and of whether the claimed invention is novel and unobvious over the prior art. Indeed, the Petition relies on TSE in its 101 analysis (Paper 3 at 34), as well as its 103 analysis (passim). Patent Owner fails to identify any unfair prejudice, confusion of issues, misleading of the fact-finder, undue delay, waste of time, or needless presentation of evidence, see FRE 403, caused by TSE. Because TSE is relevant to issues in this proceeding and Patent Owner fails to show otherwise, the Board should not exclude TSE. B. TSE has been properly authenticated. Petitioner has produced unequivocal and unrebutted evidence showing that Exhibit 1015 is a true and correct copy of the 1998 manual issued by the Tokyo Stock Exchange. That evidence meets the requirements for authentication under each of Fed. R. Evid. 901 and 902. Because Petitioner properly authenticated TSE in numerous ways, and Patent Owner offers no evidence suggesting that TSE is not what Petitioner purports it is, Patent Owner s request to exclude Exhibits 1015 and 1016 should be denied

10 1. TSE has been authenticated under FRE 901(b)(1). Fed. R. Evid. 901(b)(1) provides that evidence may be authenticated by the testimony of a witness with knowledge. The 2005 deposition of Mr. Kawashima (Ex. 1018) provides such evidence of authenticity for Exhibit Mr. Kawashima s 2005 deposition testimony establishes that: (1) Exhibit 1015 is the current futures options trading system -- trade manual (compare Ex at 1 (marked DX 179 with bates numbering TSE ); with Ex. 1018, 9:19-10:9); (2) the document was prepared and disseminated in 1998 by the Tokyo Stock Exchange (Ex. 1018, 10:19-24, 12:22-24); (3) Mr. Kawashima had personal knowledge of that, as he was in charge of preparing this document (Id. at 11:3); (4) he prepared Exhibit 1015 in the ordinary course of business, as a regular practice of the Tokyo Stock Exchange (Id. at 11:4-14); and (5) Exhibit 1015 was maintained thereafter at the Tokyo Stock Exchange in the ordinary course of business. (Id. at 11:15-24.) Mr. Kawashima s 2005 deposition testimony is more than sufficient to support a finding that [Exhibit 1015] is what [Petitioner] claims it is. Fed. R. Evid. 901(a). Patent Owner has offered no evidence suggesting that the TSE manual is not what Petitioner purports it is. 2. TSE is self-authenticated under FRE 902(11). Exhibit 1015 is self-authenticated under Fed. R. Evid. 902(11) because it comes from the business records of the Tokyo Stock Exchange. Mr. Kawashima s - 4 -

11 testimony establishes that preparation and maintenance of manuals, such as the TSE manual, was a regularly conducted activity by the Tokyo Stock Exchange. (See, e.g., Ex. 1018, 11:4-24.) Mr. Kawashima was an employee with the requisite knowledge during the relevant timeframe to establish this. (Id. at 5:15-21.) Manuals prepared in the ordinary course of business fall under the business record exception and meet the authentication standard. Dataquill Ltd. v. Handspring, Inc., 2002 WL at *3 (N.D. Ill. Dec. 23, 2002). Mr. Kawashima s testimony stands unrebutted that Exhibit 1015 was prepared and maintained as a regularly conducted activity in the ordinary course of business. (Ex. 1018, 11:4-24.) Fed. R. Evid. 803(6)(B)-(D). When Mr. Kawashima testified in 2005 as to its authenticity, the document was only seven years old. (Ex. 1018, 10:19-24.) Fed. R. Evid. 803(6)(A). Patent Owner has not shown, nor can it, that the source of information or the method or circumstances of preparation indicate a lack of trustworthiness. Fed. R. Evid. 803(6)(E). Accordingly, all of the requirements for authenticating Exhibit 1015 as a record of regularly conducted activity are satisfied in this case. Fed. R. Evid. 902(11). 3. TSE is authenticated under FRE 901(b)(4). Although not necessary, Exhibit 1015 is also authenticated under Fed. R. Evid. 901(b)(4) which provides that appearance, contents, substance, internal patterns, or other distinctive characteristics of the item, taken together with all the - 5 -

12 circumstances is sufficient to satisfy Fed. R. Evid. 901(a). The certified English translation of Exhibit 1015 confirms that Exhibit 1015 bears the name of the Tokyo Stock Exchange Operation System Division and the date August, (Ex at 5.) Exhibit 1015 shows a distinctive layout with a large number of unique illustrations. Exhibit 1015 also includes the bates numbering applied in connection with the related district court action, Trading Technologies International, Inc. v. espeed, Case No. 04-cv (Ex. 1015, marked DX 179 with bates numbers TSE , and page numbering 1-1, etc.) This branding is distinctive and confirms Exhibit 1015 is what Petitioner claims it to be. (Compare Ex (first page marked DX 179 ; bates numbers TSE ) with Ex. 1018, 9:19-10:9.) In view of this, Petitioner has laid a sufficient foundation to establish that Exhibit 1015 is authentic under Fed. R. Evid. 901(b)(4). See, e.g., Ericsson Inc. v. Intellectual Ventures I LLC, IPR , Paper 41 at 12 (May 18, 2015) (finding collection of papers with sequential pages authenticated). Petitioner also served supplemental evidence providing additional support that Exhibit 1015 is what it purports to be. This includes Mr. Kawashima s 2016 deposition transcript and deposition exhibits (Exs. 1043, ), and evidence that TT disclosed the same, bates-stamped version of TSE to the Office during prosecution of U.S. Patent No. 8,185,467, and that Exhibit 1015 was obtained from - 6 -

13 the file history of the 467 patent. (Ex. 1044, Sokohl Decl. 1.) Thus, there is no question that Exhibit 1015 is the same TSE manual referred to in the 2005 Kawashima deposition, authenticated by the 2005 Kawashima deposition transcript. Furthermore, independent of Kawashima s 2005 deposition testimony (Ex. 1018), Petitioner authenticated Exhibit 1015 during Mr. Kawashima s second deposition. (Ex. 1043, 45:7-46:3.) Thus, regardless of whether his prior testimony is considered, Exhibit 1015 has been properly authenticated. 4. Patent Owner deposed Mr. Kawashima twice and still has no basis to dispute his testimony or the authenticity of Exhibit Patent Owner fails to mention in its motion that it deposed Mr. Kawashima in It first deposed Mr. Kawashima in 2005, resulting in the transcript offered as Exhibit Exhibit 1018 authenticates the TSE manual. But Petitioner made Mr. Kawashima available for cross-examination in these CBM proceedings specifically to allow Patent Owner to ask questions about the TSE manual and his alleged bias. (See Ex. 1070, 9:18-10:9 (Counsel for Patent Owner stating, We understand that Mr. Kawashima won t be made available again and we ve conditionally agreed that this single deposition will be allowed admissibility in all of the proceedings, even those not yet filed, to the extent that TSE is being used in the same way. ); see also Ex. 1043, 26:22-27:25.) - 7 -

14 The second deposition took place on June 17, (Ex ) During this deposition Mr. Kawashima corroborated his prior testimony. (Id. at 45:7-61:3; 43:2-21; Exs ) Patent Owner conspicuously omits this testimony and cites nothing from the 2016 Kawashima deposition transcript in its motion. Having failed to support a challenge to the veracity or reliability of Mr. Kawashima s testimony, despite the opportunity to do so, Patent Owner has no reasonable basis to question authenticity. While Patent Owner criticizes the way Mr. Kawashima verified his identification of the TSE manual (based on his personal knowledge about how it was prepared), Patent Owner does not cite any legal authority in support of the standard it asks the Board to impose on Mr. Kawashima. (Paper 29 at 2-4.) Patent Owner s suggestion that Mr. Kawashima s testimony is conclusory does not establish untrustworthiness. (Ibid.) And its allegation that Mr. Kawashima is biased is merely self-serving speculation. (Ibid.) Patent Owner continues to accuse Mr. Kawashima of being biased merely because he is employed by the Tokyo Stock Exchange. (Id. at 4.) This is unsubstantiated. Despite being given a full and fair opportunity to cross-examine him extensively on his prior testimony and credibility, Patent Owner has repeatedly failed to discredit Mr. Kawashima or show that he is biased. Regardless of what Patent Owner subjectively believes, Patent Owner has failed to support its - 8 -

15 allegations with facts. The fact is that Mr. Kawashima wrote the TSE manual years before the Tokyo Stock exchange allegedly challenged Patent Owner s Japanese patent. (Ex. 1043, 46:12-47:1.) Mr. Kawashima testified that he was not involved in the alleged challenge to the Japanese patent. (Id. at 32:9-13.) Furthermore, Patent Owner s evidentiary objections are improper, as any alleged bias goes to the weight of the testimony, and not its admissibility. Polaris Wireless, Inc. v. Trueposition, Inc., IPR , Paper 62 at 39, 42 (Nov. 3, 2014) (weighing alleged bias based on the witness s position as the Vice President of Petitioner with significant financial interests including stock options; concluding that it was not significant). In sum, despite having two full and fair opportunities to cross-examine Mr. Kawashima on the TSE manual, Patent Owner still fails to point out any inconsistency or infirmity in his prior testimony. This cuts directly against Patent Owner s contention that the 2005 Kawashima deposition transcript ultimately raises doubts as to the authenticity of the document. (Paper 29 at 3.) It does not. Patent Owner has not met its burden to show that the TSE manual (Exhibit 1015) should be excluded from the record. III. The 2005 Kawashima deposition transcript is not impermissible hearsay. Patent Owner asserts that Petitioner failed to authenticate TSE (Exhibit 1015) because the 2005 Kawashima deposition transcript (Ex. 1018) which - 9 -

16 authenticates the TSE manual is allegedly hearsay. (Paper 29 at 4-7.) These arguments fail for two reasons. First, in CBM , Patent Owner conceded that the 2005 Kawashima deposition transcript is admissible. (Ex at 3-6; see also Ex at 68 ( In fact, Patent Owner appears to concede that Mr. Kawashima s testimony is not hearsay because it falls under an exception to the hearsay rule. ).) As previously conceded by Patent Owner, the 2005 Kawashima deposition transcript falls under the residual hearsay exception of Fed. R. Evid Exhibit 1018 is a professionally prepared deposition transcript taken before a notary public pursuant to the Fed. R. Civ. P. (Ex at 1.) There is no dispute that the deposition occurred when and where it did, and that Exhibit 1018 is a true and correct copy of what transpired. Mr. Kawashima gave his statement under oath. (Ex. 1018, 5:1-4.) As such, Exhibit 1018 has equivalent circumstantial guarantees of trustworthiness. Fed. R. Evid. 807(a)(1). Exhibit 1018 is also more probative than any other evidence Petitioner can obtain through reasonable efforts because it was taken close in time to when the TSE manual was prepared and disseminated. Fed. R. Evid. 807(a)(2), (3). Finally, admitting Exhibit 1018 into evidence is in the interests of justice because it will provide as complete a record as possible regarding the TSE manual. Fed. R. Evid. 807(a)(4)

17 And again, Mr. Kawashima made himself available for cross-examination in these CBM proceedings. This resolves any hearsay concern with respect to Exhibit Specifically, Mr. Kawashima addressed his 2005 statements while testifying at the current trial or hearing and sat for cross-examination. Fed. R. Evid. 801(c)(1). Accordingly, Exhibit 1018 is not untrustworthy evidence and any hearsay objection has been cured. As such, TT s motion fails. IV. Mr. Thomas s testimony is highly probative and admissible. Patent Owner urges the Board to exclude choice portions of Mr. Thomas cross-examination testimony. (Paper 29 at 7-13 (citing Exhibit 1060, 248, ).) Essentially, Patent Owner seeks to exclude unfavorable testimony; not irrelevant, prejudicial, confusing, or misleading testimony. Fed. R. Evid. 403 provides that evidence may be excluded if its probative value is substantially outweighed by the danger of unfair prejudice, confusing the issues, misleading the fact-finder, undue delay, wasting time, and/or presenting needlessly cumulative evidence. Here, the material sought to be excluded consists of admissions explaining how certain related claims are not directed to various technological improvements. These admissions are highly probative of patent eligibility. Patent Owner appears to rely on the unfair prejudice or confusing aspects of Fed. R. Evid (Paper 29 at 13.) But there is no danger of confusing

18 or misleading the Board. The Board is perfectly capable of according these admissions appropriate weight in view of all the evidence. And Patent Owner has failed to demonstrate even a remote likelihood that the statements will be misinterpreted or misunderstood. Patent Owner may disagree with the legal conclusions to be drawn from these admissions; but that is not a cognizable basis for excluding evidence. And, as a general policy, it is not unfairly prejudicial to place the burden of seeking clarification on the testifying expert. In fact, this has long been the Board s practice. 1 Here, counsel for Petitioner properly instructed the witness. (Exhibit 1 Cf. U.S. PATENT & TRADEMARK OFFICE, Standing Order of January 3, 2006 Governing Contested Cases Assigned to Trial Division, Board of Patent Appeals and Interferences, Cross Examination Guidelines, Appendix, p. 72 (Jan. 2006), available ( Guideline [1] At the beginning of a cross examination, the party conducting the cross examination must instruct the witness on the record to ask deposing counsel, rather than the witness s own counsel, for clarifications, definitions or explanations of any words, questions or documents presented during the cross examination. The witness must follow these instructions ). See also Hall v. Clifton Precision, 150 F.R.D. 525 (E.D. Pa. 1993) (serving as the model for the Standing Order)

19 1060, 5:21-6:4.) Having been instructed, and free to seek clarification as needed, the answers provided are in accordance with the ground rules for crossexamination. Patent Owner s attempt to erase truthful, albeit unfavorable, responses given by its expert should be denied. V. Conclusion The Board should deny Patent Owner s Motion to Exclude. Date: July 18, New York Avenue, N.W. Washington, D.C (202) Respectfully submitted, STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C. /Richard M. Bemben/ Robert E. Sokohl (Reg. No. 36,013) Lori A. Gordon (Reg. No. 50,633) Richard M. Bemben (Reg. No. 68,658) Attorneys for Petitioners

20 CERTIFICATE OF SERVICE (37 C.F.R. 42.6(e)) CBM The undersigned hereby certifies that the foregoing PETITIONERS OPPOSITION TO PATENT OWNER S MOTION TO EXCLUDE and accompanying exhibits were served electronically via e mail on July 18, 2017, in their entireties on Attorneys for Patent Owner: Leif R. Sigmond, Jr. (Lead Counsel) sigmond@mbhb.com Michael D. Gannon (Back-up Counsel) gannon@mbhb.com Jennifer M. Kurcz (Back-up Counsel) kurcz@mbhb.com Cole B. Richter (Back-up Counsel) richter@mbhb.com MCDONNELL, BOEHNEN, HULBERT & BERGHOFF LLP Steven F. Borsand (Back-up Counsel) tt-patent-cbm@tradingtechnologies.com Jay Q. Knobloch (Back-up Counsel) jay.knobloch@tradingtechnologies.com Trading Technologies International, Inc. Date: July 18, New York Avenue, N.W. Washington, D.C (202) Respectfully submitted, STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C. /Richard M. Bemben/ Robert E. Sokohl (Reg. No. 36,013) Lori A. Gordon (Reg. No. 50,633) Richard M. Bemben (Reg. No. 68,658) Attorneys for Petitioners