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November 20, 2014

TD Ameritrade v. Trading Technologies International, Inc.: Denying Authorization to File a Motion to Disqualify, Motion to Present Live Demo, and Motion to Expunge

Takeaway: A live demo may not be authorized to accompany a preliminary response because it is akin to new testimony.

In its Order, the Board addressed three separate issues. First, the Board declined to authorize Petitioner to file a motion to disqualify Patent Owner’s counsel or a motion for additional discovery related to the motion to disqualify. Second, the Board declined to authorize Patent Owner to present a live demo in support of its Preliminary Response. Third, the Board declined to authorize Petitioner to file a motion to expunge Exhibit 1006.

Motion to Disqualify Patent Owner’s Counsel and Related Request for Additional Discovery

Petitioner argues that, at a time shortly after the filing of the Petitions in these proceedings, both Petitioner and Patent Owner were clients of Finnegan, Henderson, Farabow, Garrett & Dunner, LLP (“Finnegan”). Accordingly, Petitioner alleges that Finnegan has a conflict of interest according to the American Bar Association’s (“ABA”) Model Rule of Professional Conduct 1.7 and violates the terms of an engagement agreement between Finnegan and Petitioner. Finnegan disputed the allegations stating that Finnegan no longer represented Petitioner when it engaged Patent Owner. “Disqualification is resolved on a case-by-case basis, where the moving party bears a heavy burden of proving facts showing that disqualification is necessary.” The Board was not persuaded that a motion to disqualify should be filed, because both parties agree that Finnegan no longer represents Petitioner, and Petitioner makes no allegations that Finnegan possesses confidential information gained from Petitioner related to these proceedings.

Request to Present a Live Demo

Patent Owner requested to present a live demonstration of the invention in support of its Preliminary Response to show that the patented invention is technical, not a business method. The Board did not authorize the live demonstration, because it likens in kind to new testimony evidence, which is not appropriate in a preliminary response.

Motion to Expunge

Petitioner requested to expunge an exhibit described as a memo written by a lawyer which summarizes a deposition that was inadvertently filed as a public exhibit. However, the Board declined to grant authorization for a motion to expunge this exhibit, because it had been in the public record for some time and it related to Patent Owner’s granted request for additional discovery.

TD Ameritrade Holding Corp., TD Ameritrade, Inc., and TD Ameritrade Online Holdings Corp. v. Trading Technologies International, Inc., CBM2013-00131; CBM2013-00133; CBM2013-00135; CBM2013-00136; CBM2013-00137
Paper 10: Order on Conduct of the Proceeding
Dated: July 24, 2014
Patents 7,533,056; 7,676,411; 6,772,132; 6,766,304; 7,685,055
Before: Jameson Lee, Meredith C. Petravick, and Philip J. Hoffmann
Written by: Petravick

©2014 Drinker Biddle & Reath LLP. All Rights Reserved

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