Takeaway: Arguments that rely upon statements made in an exhibit that is later expunged would be considered attorney argument, which is to be given little or no weight, such that there would be no need for cross examination of the person who made the statements.

In its Order, the Board granted Patent Owner’s request to expunge an exhibit and denied Petitioner’s request that Patent Owner be ordered to file a corrected Patent Owner Response.

Patent Owner requested a conference call with the Board, seeking to expunge Exhibit 2011, which is a trial transcript from Trading Technologies International, Inc. v. eSpeed, Inc., Case No. 1:04-CV-05312 (N.D. Ill. Sept. 17, 2007). Patent Owner had cited to the testimony of Mr. Harris Brumfield found in the exhibit in its Patent Owner Response. However, because Mr. Brumfield’s testimony was only relied upon sparingly and was not necessary to the proceedings, Patent Owner requested that the exhibit be expunged. By expunging the exhibit, Patent Owner explained that cross examination of Mr. Brumfield would not be necessary, thereby saving the parties’ expenses.

Petitioner did not object to expunging the exhibit, “provided that Patent Owner file a corrected Patent Owner Response to remove not only citations to Exhibit 2011, but also text and statements surrounding the citations.” Without removal of the text from the Patent Owner Response, Petitioner argued it would suffer prejudice because it could not cross examine Mr. Brumfield.

The Board stated during the call that requiring Patent Owner to file a corrected Patent Owner Response would “impeded the just, speedy, and inexpensive resolution of these proceedings.” Further, the Board stated that Petitioner would suffer no prejudice if the Patent Owner Response were not corrected and the exhibit expunged. In this regard, the Board indicated that the comments with respect to Mr. Brumfield’s testimony in the Patent Owner Response, without the supporting document, “would be based on attorney argument and would be given little or no weight.” Therefore, Petitioner would not have reason to cross examine Mr. Brumfield and would suffer no prejudice.

Accordingly, the Board expunged Exhibit 2011 without requiring the filing of a corrected Patent Owner Response.

TD Ameritrade Holding Corp. et al. v. Trading Technologies Int’l, Inc., CBM2014-00133, CBM2014-00135
Paper 41: Order on Conduct of the Proceeding
Dated: May 15, 2015
Patents: 7,676,411; 6,772,132
Before: Sally C. Medley, Meredith C. Petravick, and Philip J. Hoffmann
Written by: Medley