TD Ameritrade v. Trading Technologies International: Granting Motion to Expunge CBM2014-00131, 133, 135-137
Tuesday, September 9, 2014

Takeaway: If a party can show that a piece of evidence is not necessary for the proceeding, that party may be successful in expunging said evidence.

In its Decision, the Board granted Petitioner’s Motion to Expunge one of its exhibits to the Petition. The exhibit was titled “Memorandum from James M. Hilmert to eSpeed file regarding direct examination of TSE’s 30(b)(6) witness” (“the Hilmert memo”).  Petitioner argued that it should be expunged because it is a confidential document of a third party that is not needed to decide whether to institute review of the involved patents and is only cited to once in the Petition.  Patent Owner stated that expunging the Hilmert memo would prejudice it because Petitioner may attempt to limit the scope of discovery in future requests based upon the removal of the memo or limit Patent Owner’s ability to cross-examine Petitioner’s declarant on materials considered in forming his opinion.

The Board, noting that the rules require the “just speedy, and inexpensive resolution of every proceeding,” 37 C.F.R. § 42.1(b), found that Petitioner met its burden of proof to establish that the Hilmert memo should be expunged from the record by demonstrating that the Hilmert memo is minimally relied upon in the Petitions and that there is another exhibit that it relies on in support of the Petitions that is even better than the Hilmert memo for evidencing the contents of a deposition. Therefore, the Hilmert memo is not necessary to these proceedings, and may add unnecessary complexities that will hinder the ability to resolve the proceedings in a just, speedy, and inexpensive resolution.  The Board also found that Patent Owner’s reasons for prejudice were too speculative.  Finally, the Board noted that the evidence will be expunged prior to the due date for Patent Owner’s preliminary response; therefore, Patent Owner will have one less piece of evidence to consider.

TD Ameritrade Holding Corp., TD Ameritrade, Inc., and TD Ameritrade Online Holdings Corp. v. Trading Technologies International, Inc., CBM2014-00131; CBM2014-00133; CBM2014-00135; CBM2014-00136; CBM2014-00137
Paper 16: Decision on Petitioner’s Motion to Expunge Exhibit
Dated: September 2, 2014
Patents 7,533,056; 7,676,411; 6,772,132; 6,766,304; 7,685,055
Before: Sally C. Medley, Meredith C. Petravick, and Philip J. Hoffmann
Written by: Medley

 

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