Paper 71
`Trials@uspto.gov
`571-272-7822 Entered: March 26, 2014
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
`
`BLOOMBERG INC.; BLOOMBERG L.P.;
`BLOOMBERG FINANCE L.P.;
`THE CHARLES SCHWAB CORPORATION;
`CHARLES SCHWAB & CO., INC.;
`E*TRADE FINANCIAL CORPORATION; E*TRADE SECURITIES LLC;
`E*TRADE CLEARING LLC; OPTIONSXPRESS HOLDINGS INC.;
`OPTIONSXPRESS, INC.; TD AMERITRADE HOLDING CORP.;
`TD AMERITRADE, INC.; TD AMERITRADE IP COMPANY, INC.; and
`THINKORSWIM GROUP INC.
`Petitioner
`
`v.
`
`MARKETS-ALERT PTY LTD.
`Patent Owner
`____________________
`
`Case CBM2013-00005
`Patent 7,941,357
`
`___________________
`
`
`
`Before JAMESON LEE, SALLY C. MEDLEY, and JONI Y. CHANG,
`Administrative Patent Judges.
`
`
`MEDLEY, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 328(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822 Entered: March 26, 2014
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
`
`BLOOMBERG INC.; BLOOMBERG L.P.;
`BLOOMBERG FINANCE L.P.;
`THE CHARLES SCHWAB CORPORATION;
`CHARLES SCHWAB & CO., INC.;
`E*TRADE FINANCIAL CORPORATION; E*TRADE SECURITIES LLC;
`E*TRADE CLEARING LLC; OPTIONSXPRESS HOLDINGS INC.;
`OPTIONSXPRESS, INC.; TD AMERITRADE HOLDING CORP.;
`TD AMERITRADE, INC.; TD AMERITRADE IP COMPANY, INC.; and
`THINKORSWIM GROUP INC.
`Petitioner
`
`v.
`
`MARKETS-ALERT PTY LTD.
`Patent Owner
`____________________
`
`Case CBM2013-00005
`Patent 7,941,357
`
`___________________
`
`
`
`Before JAMESON LEE, SALLY C. MEDLEY, and JONI Y. CHANG,
`Administrative Patent Judges.
`
`
`MEDLEY, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 328(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`
`
`Case CBM2013-00005
`Patent 7,941,357
`
`
`I. INTRODUCTION
`
`Petitioner “Bloomberg” filed a petition on October 15, 2012,
`
`requesting a covered business method patent review of U.S. Patent No.
`
`7,941,357 (“the ’357 patent”) pursuant to section 18(a) of the Leahy-Smith
`
`America Invents Act (“AIA”).1 Paper 1 (“Pet.”). Patent Owner Markets-
`
`Alert filed a patent owner preliminary response. Paper 16 (“Prelim. Resp.”).
`
`Taking into account Markets-Alert’s preliminary response, the Board
`
`determined that it was more likely than not that the challenged claims are
`
`unpatentable. Pursuant to 35 U.S.C. § 324, the Board instituted this trial on
`
`March 29, 2013, as to claims 1-4 of the ’357 patent. Paper 18 (“Dec. on
`
`Inst.”).
`
`Subsequent to institution, Markets-Alert filed a patent owner response
`
`(Paper 38; “PO Resp.”) and a substitute motion to amend (Paper 42; “Mot.
`
`to Amend”)2 requesting cancellation of claims 1-4 and addition of proposed
`
`claims 5-8. Mot. to Amend 1-2. Bloomberg filed a reply to the patent
`
`owner response (Paper 51; “Pet. Reply”) and an opposition to the substitute
`
`motion to amend (Paper 50; “Opp.”). Markets-Alert filed a reply to the
`
`motion to amend. Paper 54 (“PO Reply”).
`
`Markets-Alert also filed a motion to exclude (Paper 58; “Mot. to
`
`Exclude”) certain testimony of the second declaration of Bloomberg’s
`
`declarant, Steven R. Kursh and certain exhibits. Bloomberg filed an
`
`
`1 Pub. L. No. 112-29, 125 Stat. 284, 329 (2011).
`
` 2
`
` Markets-Alert requested, and received authorization from the Board, to file
`a substitute motion to amend, which replaced an earlier motion. Paper 41. It
`is the substitute motion to amend that is before us for consideration.
`
`
`2
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`Patent 7,941,357
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`opposition to the motion to exclude (Paper 62; “Exclude Opp.”), and
`
`Markets-Alert filed a reply (Paper 64; “Exclude Reply”).
`
`An oral hearing was held on December 19, 2013.3
`
`The Board has jurisdiction under 35 U.S.C. § 6(c). This decision is a
`
`final written decision under 35 U.S.C. § 328(a) and 37 C.F.R. § 42.73.
`
`For the reasons that follow, the portion of Markets-Alert’s substitute
`
`motion to amend requesting cancellation of claims 1-4 is granted; however,
`
`that portion of the motion requesting the addition of proposed claims 5-8 is
`
`denied.
`
`A. Related Litigation
`
`“Bloomberg” is comprised of fourteen individual entities. Pet. 58. In
`
`compliance with 37 C.F.R. § 42.302(a), Bloomberg certifies that it has been
`
`sued for infringement of the ’357 patent. Pet. 7-8. The identified related
`
`cases are before the U.S. District Court for the District of Delaware, and are
`
`stayed pending this review. Exs. 1018-1021, 3001.4
`
`
`
`B. The ’357 Patent
`
`The ’357 patent, entitled “Trading System,” issued from the National
`
`Stage (Application No. 10/415,022) of a PCT International Application
`
`(PCT/AU01/01380; PCT Pub. No. WO02/35400) filed October 26, 2001,
`
`and claims priority to Australian application (AU) PR1097, filed October 27,
`
`2000. The ’357 patent issued on May 10, 2011.
`
`The ’357 patent generally relates to a trading system that monitors
`
`
`3 A transcript of the oral hearing is included in the record as Paper 70
`(“Tr.”).
`
` 4
`
` Ex. 3001 is a copy of the decision to stay the related cases.
`
`3
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`stock data and provides notification to a remote device using a network
`
`based system. Ex. 1001.
`
`Figure 1 of the ’357 patent is reproduced below.
`
`Figure 1 shows an arrangement of the trading system.
`
`Figure 1 shows drone computers 3, which receive and process
`
`
`
`
`
`
`
`
`
`
`
`technical indicator instructions from user’s device 1 through switch 2. Id. at
`
`3:47-48. Drone computers analyze the stock market at a specified interval
`
`and apply the user’s technical indicator instructions to the data. A message
`
`4
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`is sent ultimately to the user’s device from the SMS server indicating that a
`
`valid technical response has been reached. Id. at 3:62-64.
`
`Figure 2 is of the ’357 patent is reproduced below.
`
`
`
`
`
`Figure 2 shows an internal server infrastructure of the trading system.
`
`
`
`
`5
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`
`Figure 2 illustrates “an alternative extended computer system to that
`
`of FIG. 1.” Id. at 3:29-30. The Gateway is connected to the Internet and
`
`allows users and network appliances to connect to the correct server. The
`
`guardian keeps track of all major servers on the network and has the ability
`
`to funnel small amounts of data from the load management tools and
`
`administrator tools directly to the switchbox for routing and processing. Id.
`
`at 4:1-9. The alert manager stores and distributes all created alerts to the
`
`least busy drone computer, and the administration tool allows a third party
`
`administrator to connect to the system and edit, remove, or add users without
`
`interrupting the flow of data. Id. at 4:10-15. The switch server(s) route
`
`packets from one server to the other. “Any switch[’]s main job is keeping
`
`the network free from traffic bouncing between many erroneous servers
`
`before getting to its destination. Switchboxes are also used to apply ‘load
`
`balancing’ to components of the network which are connected to it.” Id. at
`
`4:22-27.
`
`Claim 1, along with proposed claim 5, both reproduced below, are
`
`central to the issues in this case.
`
`1. A method of informing users of stock market events
`comprising the steps of:
`
`
`
`
`
`(a) receiving real-time stock market data on a network of
`computers;
`
`(b) receiving on the network of computers instructions from
`a user to specify watch data defining an event, the watch
`data including a stock market technical analysis request
`specifying technical analysis formulae to be applied to
`the real-time stock market data;
`
`6
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`
`(c) using the network of computers to periodically apply the
`user-specified watch data including the stock market
`technical analysis formulae to the real-time stock market
`data in real-time to ascertain whether a valid response to
`the watch data has occurred based on the real-time stock
`market data, thereby determining an occurrence of the
`event defined by the user-specified watch data; and
`
`(d) causing a real-time notification by the network of
`computers to be provided to the user via a remote
`communications device upon the occurrence of the event
`defined by the user-specified watch data, the real-time
`notification directed to a remote communications device
`of the user so that the user can then provide instructions
`for share market transactions on an instantaneous basis.
`
`
`
`
`
`5. (proposed) A real-time method of providing technical
`analysis and notification of stock market events comprising the
`steps of:
`
`
`receiving real-time stock market data on a provider’s
`network of computers, which is server-based, scalable
`and redundant;
`
`receiving watch data specified by a user on the provider’s
`network of computers, from a user system in remote
`communication with the provider’s network of
`computers, wherein the user-specified watch data
`comprises a request to apply more than one technical
`analysis formula for predicting price trends based on
`market action and defines a valid stock market event;
`
`
`
`
`
`applying the user-specified watch data to the real-time
`stock market data as the real-time stock market data is
`received by the provider’s network of computers to
`determine if the valid stock market event has occurred;
`and
`
`generating a notification in real-time when the valid
`
`7
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`
`stock market event has been determined to have occurred
`by the provider’s network of computers, wherein the
`notification is provided in real-time by the provider’s
`network of computers to a remote communication device
`of the user.
`
`
`
`C. Prior Art Relied Upon
`
`The prior art references applied by Petitioner to claims 1-4 are:
`
`PCT Publication No. WO 00/11587, Mar. 2, 2000
`(“Satow”) (Ex. 1004);
`
`Product Review: TradeStation 4.0 Build 15, Stocks &
`Commodities, Dec. 1996 at 649 (“S&C Review”) (Ex.
`1005);
`
`AIQ Opening Bell Monthly, Vol. 8 Issue 10, October
`1999 (“Opening Bell”) (Ex. 1014);
`
`U.S. Patent 5,954,793, Sep. 21, 1999 (“Stutman”) (Ex.
`1015).
`
`
`
`D. Grounds of Unpatentability
`
`The Board instituted the instant covered business method patent
`
`review based on the following grounds of unpatentability:
`
`Claims challenged
`
`1-4
`
`1-4
`
`1-4
`
`1-4
`
`Basis
`
`§ 102
`
`§ 102
`
`§ 102
`
`§ 103
`
`8
`
`
`
`Reference[s]
`
`Satow
`
`S&C Review
`
`Opening Bell
`
`Stutman and Opening
`Bell
`
`
`
`
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`Case CBM2013-00005
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`
`II. ANALYSIS
`
`A. Markets-Alert’s Patent Owner Response
`
`A patent owner response is a patent owner’s opportunity to respond to
`
`the petition once a trial has been instituted. 35 U.S.C. § 326(a)(8); 37 C.F.R.
`
`§ 42.220. The response is “to the petition addressing any ground for
`
`unpatentability not already denied.” The “patent owner response is filed as
`
`an opposition [to the petition] and is subject to the page limits provided in
`
`§ 42.24.” 37 C.F.R. § 42.220(a). It is clear from these requirements that a
`
`patent owner response is an opposition to the petition and should address
`
`any ground for unpatentability not already denied with respect to the claims
`
`upon which a trial is instituted.
`
`Markets-Alert’s patent owner response is not an opposition to the
`
`petition because it does not respond to the petition or address the grounds for
`
`unpatentability with respect to claims 1-4, the claims upon which the trial
`
`was instituted. Instead, the patent owner response only addresses Markets-
`
`Alert’s proposed claims 5-8.5 PO Resp. iv (“Markets-Alert’s Response is
`
`based upon the following [proposed] claims [5-8].”). The response
`
`primarily explains how the proposed claims 5-8 (1) respond to the Board’s
`
`claim construction provided in the Decision to Institute; and (2) are
`
`patentable over the references applied to claims 1-4. Id. at 13-49. Nowhere
`
`in the response is there a discussion of original claims 1-4, other than on
`
`page 1 of the response where Markets-Alert summarizes the Decision to
`
`Institute. Id. at 1.
`
`
`5 In its substitute motion to amend, Markets-Alert seeks to add proposed
`claims 5-8 to the ’357 patent. Mot. to Amend 1-2.
`
`9
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`Specifically, Markets-Alert’s patent owner response addresses the
`
`patentability of proposed claims 5-8 with respect to the same prior art that
`
`was applied to claims 1-4. Id. at 20-49. Markets-Alert’s addressing the
`
`patentability of proposed claims 5-8 with respect to the prior art that was
`
`applied to claims 1-4, however, is not relevant to showing how claims 1-4
`
`are patentable over the same prior art. As discussed below, regarding
`
`Markets-Alert’s substitute motion to amend, proposed claims 5-8 are very
`
`different from original claims 1-4. In the patent owner response, Markets-
`
`Alert focuses on certain features found in proposed claims 5-8, but not found
`
`in claims 1-4, to distinguish proposed claims 5-8 over the prior art involved
`
`in the trial. See, e.g., id. at 20. The petition only addressed original claims
`
`1-4, not proposed claims 5-8. The patent owner response, therefore, is not
`
`responsive, and is not an opposition, to the petition.
`
`Markets-Alert’s patent owner response is not a response that complies
`
`with 35 U.S.C. § 326(a)(8) and 37 C.F.R. § 42.220(a), but is an unauthorized
`
`extension of Markets-Alert’s substitute motion to amend. The patent owner
`
`response includes such statements as “Markets-Alert’s Response is based on,
`
`in part, and hereby incorporates, its [Substitute] Motion to Amend.” Id. at 1.
`
`In addition, there are several instances where the patent owner response
`
`refers to the substitute motion to amend, as if incorporating the substitute
`
`motion to amend into the response. See, e.g., id. at 4, 13, 14, 15, 18, 19.
`
`A motion to amend, or the content of a motion to amend, should not
`
`be included in a patent owner response. Rather, a motion to amend must be
`
`filed as a separate paper, under 37 C.F.R. § 42.20. A motion to amend is
`
`limited to 15 pages. 37 C.F.R. § 42.24. Here, Markets-Alert did not request
`
`an extension for additional pages for its motion to amend beyond the allotted
`
`10
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`15 pages.6 Instead, Markets-Alert included in its patent owner response
`
`content that should have been provided in a motion to amend, resulting in an
`
`unauthorized 58-page extension to Markets-Alert’s substitute motion to
`
`amend. Such actions are not in accordance with the rules.
`
`In sum, Markets-Alert’s patent owner response fails to comply with
`
`35 U.S.C. § 326(a)(8) and 37 C.F.R. § 42.220(a), and is not a response, but
`
`is instead an unauthorized 58-page extension of Markets-Alert’s substitute
`
`motion to amend. For the reasons provided, we need not and do not
`
`consider Markets-Alert’s patent owner response, and because we do not
`
`consider the patent owner response, there also is no occasion to consider
`
`Bloomberg’s reply.
`
`B. Markets-Alert’s Substitute Motion to Amend
`
`Claims 1-4 are cancelled
`
`Markets-Alert’s substitute motion to amend is before us for
`
`consideration. In the motion, Markets-Alert requests cancellation of claims
`
`1-4 and requests to add proposed claims 5-8. Mot. to Amend 1-2. The
`
`cancellation of claims 1-4 is not based on any contingency. There is no
`
`indication, for example, that the proposed claims 5-8 should be considered
`
`only if the original patent claims 1-4 are determined unpatentable. Rather,
`
`the substitute motion to amend leaves no doubt that Markets-Alert
`
`unequivocally requests cancellation of claims 1-4. None of the papers filed
`
`by Markets-Alert, once trial was instituted, indicates that Markets-Alert is
`
`
`6 Markets-Alert was made aware of the Petitioner’s allegations that the
`patent owner response “is inappropriate as it merely contains arguments as
`to why the proposed substitute claims are patentable over the prior art.”
`Paper 41 at 2. Nonetheless, Markets-Alert did not seek authorization to file
`a substitute patent owner response.
`
`11
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`arguing for the patentability of claims 1-4. Bloomberg understood the
`
`record to mean that Markets-Alert seeks to cancel claims 1-4, not based on
`
`any contingency. Pet. Rep. 1 (“MA has unambiguously canceled each of the
`
`challenged ’357 Patent claims 1-4, upon which the Board instituted trial.”);
`
`Tr. 5:11-18.
`
`During oral argument, counsel for Markets-Alert indicated that
`
`Markets-Alert intended the cancellation of claims 1-4 to be contingent upon
`
`a Board determination as to the patentability with respect to claims 1-4. See,
`
`e.g., Tr. 22-26. When asked where in Markets-Alert’s papers did Markets-
`
`Alert indicate that cancellation of claims 1-4 was contingent on a Board’s
`
`determination with respect to the patentability of claims 1-4, counsel for
`
`Markets-Alert explained that there was no explicit indication of contingency.
`
`Tr. 25-26 (“JUDGE MEDLEY: And where did you – what you just said
`
`where is that, could you point us to where in your papers you make that type
`
`of contingency type argument? MR. CHOUNG: That’s where, Your
`
`Honor, I can’t say to you that we explicitly said that as a contingency.”).
`
`The only reasonable reading of the record is that the cancellation of
`
`original claims 1-4 was not contingent on anything. Because Markets-Alert
`
`requested cancellation of claims 1-4, not based on any contingency,
`
`Markets-Alert has waived any issues with respect to claims 1-4, and,
`
`therefore, we need not address the patentability of those claims. For these
`
`reasons, we grant Markets-Alert’s request to cancel claims 1-4.
`
`Insufficient showing of written description support
`for proposed claims 5-8
`
` A
`
` motion to amend must set forth the support in the original
`
`disclosure of the patent for each claim that is added or amended and the
`
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`support in an earlier-filed disclosure for which the benefit of the filing date
`
`of the earlier filed disclosure is sought. 37 C.F.R. § 42.221(b). The
`
`requirement that the motion to amend must set forth the support in the
`
`original disclosure of the patent is with respect to each claim, not for a
`
`particular feature of a proposed claim. In other words, it is not sufficient for
`
`a motion to amend only to address where a particular added term or phrase is
`
`found in the specification. The motion must account for the entire claim in
`
`showing where there is written description support for the claim.
`
`Markets-Alert’s substitute motion to amend does not set forth the
`
`support in the original disclosure of the patent for each claim that is added.
`
`Instead, the motion only addresses “language not previously contained in the
`
`Original Claims.” Mot. to Amend 5. For this reason alone, Markets-Alert’s
`
`request that proposed claims 5-8 be added to the ’357 patent is insufficient.
`
`In addition, we understand Markets-Alert as arguing that the
`
`description in the specification of the ’357 patent on which it relies for
`
`support is the same description in the original disclosure.7 Even assuming
`
`that to be true, Markets-Alert has failed to show where it has support in the
`
`original disclosure of the ’357 patent for all of the features not previously
`
`contained in the original claims. For example, proposed claim 5 recites “a
`
`provider’s network of computers, which is server-based, scalable and
`
`redundant.”
`
`As an initial matter, Markets-Alert does not explain what is meant by
`
`“server-based, scalable and redundant.” Although original claim 1 recites a
`
`network of computers, the network of computers is not claimed as “server-
`
`
`7 We note that references should have been made to the original disclosure
`and not to the specification of the ’357 patent.
`
`13
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`based, scalable and redundant.” The terms “server-based,” “scalable,” and
`
`“redundant” are not found in the specification of the ’357 patent, and,
`
`therefore, the specification of the ’357 patent does not shed light on the
`
`meaning of these terms. In the substitute motion to amend, Markets-Alert
`
`argues that “a provider’s network of computers, which is server-based,
`
`scalable and redundant” excludes “a third-party personal computer (PC)
`
`connected to the Internet by itself or just the Internet in general.” Mot. to
`
`Amend 5. Although the motion explains what the phrase excludes, the
`
`motion does not explain what the phrase includes. For example, we do not
`
`know what features and structure are required of a provider’s network of
`
`computers to make it “server-based, scalable, and redundant.” In support of
`
`its motion to amend, Markets-Alert directs attention to the declaration of Mr.
`
`Neal Goldstein. Ex. 2023. Mr. Goldstein does not explain what meaning a
`
`person of ordinary skill in the art would have given to the terms “server-
`
`based,” “scalable,” and “redundant” in the context of “a provider’s network
`
`of computers.” Without such an explanation, we do not have an
`
`understanding of the claim language so as to make a determination as to
`
`whether there is written description support for such language.
`
`Markets-Alert fails, for additional reasons, to show sufficiently where
`
`there is support in the original disclosure of the ’357 patent for a network of
`
`computers that is “server-based, scalable and redundant.” Markets-Alert
`
`refers to the server switch box, exchange data server, and drone computers
`
`of Figures 1 and 2, and argues that the configuration and interconnection of
`
`the elements teaches a person of ordinary skill in the art that the network
`
`may be scaled up or down as needed and provides redundancy, which leads
`
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`to high availability. Mot. to Amend 7. Mr. Goldstein’s testimony
`
`essentially repeats that argument. Ex. 2023 ¶¶ 73-74.
`
`Mr. Goldstein does not explain how the elements shown and
`
`described in Figures 1 and 2 provide written description support for what is
`
`claimed in proposed claim 5. For example, we do not know what it is about
`
`Figures 1 and 2 that show redundancy or show that the network of
`
`computers is server-based or scalable. Concluding that a phrase has written
`
`description support in the original specification as filed, without supporting
`
`the conclusion with sufficient facts, does not assist the trier of fact. For
`
`these reasons, Mr. Goldstein’s testimony as to the phrase “a provider’s
`
`network of computers, which is server-based, scalable and redundant” is
`
`entitled to little weight. See 37 C.F.R. § 42.65(a).
`
`Claim 5 also recites “applying the user-specified watch data to the
`
`real-time stock market data as the real-time stock market data is received.”
`
`Independent claim 8 recites a similar limitation with respect to applying the
`
`technical analysis in real-time. Markets-Alert argues that the phrase is
`
`supported by the specification of the ’357 patent based on the description in
`
`the specification that the drone computers apply the technical analysis at a
`
`specified interval, including as the data are received, and that technical
`
`analysis indicators can be set to repeat over certain time periods. Mot. to
`
`Amend 10 (citing Ex. 2001, 3:47-51, 4:49-51). We are not persuaded by the
`
`argument. The claim 5 limitations of applying the watch data “to the real-
`
`time stock market data as the real-time stock market data is received” and
`
`the similar limitations in proposed claim 8 do not appear in the original
`
`claims. The limitations are broader than what is in original claims 1-4,
`
`because claims 1-4 require that the watch data or formulas be applied to data
`
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`at specified intervals or periodically. For example, original claim 1 recites
`
`“using the network of computers to periodically apply8 the user-specified
`
`watch data including the stock market technical analysis formulae to the
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`real-time stock market data.” By eliminating the “periodically apply”
`
`limitation from proposed claim 5 and proposed claim 8, Markets-Alert has
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`broadened the claims. Markets-Alert has failed to show that the
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`specification provides written description support for the claims. The
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`specification of the ’357 patent only describes periodically applying the
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`watch data (technical analysis) to the stock market data. Markets-Alert has
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`failed to show where the specification of the ’357 patent describes applying
`
`the watch data or technical analysis, unconditionally or continuously, for
`
`example, as the real-time data are received. In other words, the proposed
`
`claims appear to be broader in scope than what is described in the
`
`specification of the ’357 patent.
`
`Disclosure of a species does not always provide sufficient written
`
`description for a broader claim. In re Curtis, 354 F.3d 1347, 1356-1357
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`(Fed. Cir. 2004) (“[W]e have never held that in all such cases [disclosure of
`
`a species] . . . the claim to the genus is adequately described under § 112,
`
`¶ 1.”); Bilstad v. Wakalopulos, 386 F.3d 1116, 1124 (Fed. Cir. 2004) (“Thus,
`
`this court has continued to apply the rule that disclosure of a species may be
`
`sufficient written description support for a later claimed genus including that
`
`species.”); see also University of California v. Eli Lilly & Co., 119 F.3d
`
`1559, 1568 (Fed. Cir. 1997).
`
`
`
`The key to resolving the issue lies in what does the disclosed species
`
`
`8 In the Decision on Institution, we construed “periodically apply” to include
`one or more time intervals. Dec. on Inst. 19-20.
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`tell one with ordinary skill in the art about possession by the inventor of the
`
`entire genus. Predictability among species is a factor to be considered.
`
`Bilstad, 386 F.3d at 1125; In re Curtis, 354 F.3d at 1352-53. The question,
`
`too, is whether the differences between species even matter. Bilstad, 386
`
`F.3d at 1124. Here, Markets-Alert does not explain how the narrower
`
`disclosure conveys to one with ordinary skill in the art that the inventor of
`
`the ’357 patent had possession of the broader concept claimed in proposed
`
`claim 5 and proposed claim 8.
`
`Claims 6 and 7 depend from claim 5 and include the limitations of
`
`claim 5, and, thus, suffer from the same deficiencies as claim 5. In addition,
`
`proposed claim 6 recites several additional features not accounted for
`
`sufficiently with respect to where the added features find written description
`
`support. For example, claim 6 recites the additional step of “updating a
`
`cache of stock market data on a data server.” The term cache is not found in
`
`the specification of the ’357 patent, let alone updating a cache. Markets-
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`Alert argues, directing us to the declaration of Mr. Goldstein, that the
`
`specification of the ’357 patent supports the claimed phrase. Mr. Goldstein
`
`testifies that the network of computers may include “history servers” that
`
`“scoop” data from a data feed so that the data are stored and accessible on
`
`the network, and that the specification further describes a central data
`
`storage that houses the databases created by the history server. Mr.
`
`Goldstein then concludes that, therefore, “the foregoing disclosures support
`
`the additional step of updating a cache of stored stock market data on a data
`
`server.” Ex. 2023 ¶ 82. We do not know what it is about the history servers
`
`that scoop data from a data feed, or the central data storage that houses the
`
`databases created by the history server, that shows written description
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`17
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`Case CBM2013-00005
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`support for “updating a cache of stock market data on a data server” as
`
`claimed. That data are scooped from a data feed and eventually stored has
`
`not been shown sufficiently to mean that a cache is updated. Mr. Goldstein
`
`does not explain sufficiently the factual basis for the conclusions he makes,
`
`and, therefore, his testimony is entitled to little weight. See 37 C.F.R. §
`
`42.65(a).
`
`
`
`Claim 7 depends from claim 6 and recites the additional step of
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`including, in the real-time notification, “a live link between the user’s remote
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`communication device and the provider’s network of computers.” Markets-
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`Alert does not explain how the “live link” should be construed. The
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`limitation “live link” does not appear in the specification of the ’357 patent
`
`and, therefore, the specification of the ’357 patent does not shed light on the
`
`meaning of this claim limitation. Mr. Goldstein does not explain how a
`
`person of ordinary skill in the art would construe a “live link.”
`
`Mr. Goldstein merely opines that a person of skill in the art would
`
`understand that the link, e.g., the pathway between the network of computers
`
`and a remote communication device seen in Figures 1 and 2, on the alerting
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`end may be “live” and included with the notification that already is sent to
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`the user, in order to enable the user to send back an instruction. Ex. 2023
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`¶ 89. That testimony does not assist the trier of fact, because Mr. Goldstein
`
`does not explain what it is about the pathway between the network of
`
`computers and remote communication device that make it a “live link.”
`
`Independent claim 8 recites “a network guardian, which comprises
`
`one or more switches.” Markets-Alert has failed to show where it has
`
`support in the original disclosure of the ’357 patent for a network guardian,
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`which comprises one or more switches. For example, Figure 2 does show a
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`18
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`box labeled “guardian,” but there are no switches inside the guardian box.
`
`The only switches shown, switch #1 and switch #2, are separate from and
`
`outside of the guardian box. The specification of the ’357 patent does not
`
`describe the guardian as comprising one or more switches. Ex. 1001, 4:4-9.
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`Lastly, Mr. Goldstein does not explain that a person of ordinary skill in the
`
`art would have recognized that Markets-Alert had possession of a guardian
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`comprising one or more switches. Ex. 2023 ¶¶ 90-96.
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`For all of the reasons provided, Markets-Alert has failed to meet its
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`burden to establish that it is entitled to the requested relief under 37 C.F.R.
`
`§ 42.20, because Markets-Alert has failed to demonstrate sufficiently that
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`there is support in the original disclosure of the ’357 patent for any of
`
`proposed claims 5-8.
`
`
`
`None of the proposed claims 5-8 are shown to be responsive to a
`ground of unpatentability involved in the trial
`
`As set forth in 37 C.F.R. § 42.221(a)(2), a motion to amend may be
`
`denied where the amendment does not respond to a ground of
`
`unpatentability involved in the trial. Markets-Alert incorrectly states that
`
`proposed claim 5 and dependent claims 6 and 7 include all of the substantive
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`limitations of claim 1 and that proposed independent claim 8 includes all of
`
`the structural and functional limitations of original claim 1. Mot. to
`
`Amend 2.
`
`In actuality, Markets-Alert removes certain features from original
`
`claims 1-4. For example, claim 1 recites “using the network of computers to
`
`periodically apply the user-specified watch data.” Claim 5 and independent
`
`claim 8 eliminate the requirement that the network of computers periodically
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`19
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`apply the watch data. Claim 1 recites “causing a real-time notification by
`
`the network of computers to be provided to the user via a remote
`
`communications device.” Claim 5 and independent claim 8 eliminate the
`
`requirement that the notification be provided to the user. Markets-Alert does
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`not explain how the removal of certain features is responsive to a ground of
`
`unpatentability. In order to be responsive to a ground of unpatentability, a
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`proposed substitute claim only should add features to an original claim,
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`absent an adequate explanation otherwise. For these reasons, Markets-Alert
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`motion to amend fails to comply with 37 C.F.R. § 42.221(a)(2).
`
`
`
` Proposed claims 5-8 do not represent a reasonable number of
`substitute claims
`
`
`
`The presumption is that only one substitute claim is needed to replace
`
`each challenged claim. The presumption may be rebutted by a
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`demonstration of need. 37 C.F.R. § 42.221(a)(3). A desire to obtain a new
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`set of claims having a hierarchy of different scope typically does not
`
`constitute a sufficient special circumstance. Absent special circumstances, a
`
`challenged claim can be replaced by only one claim. Each proposed claim
`
`should be traceable to an original challenged claim as a proposed substitute
`
`claim for that challenged claim.
`
`Here, none of the proposed claims appears to be traceable to an
`
`original challenged claim as a proposed substitute claim for that challenged
`
`claim. For example, original claim 1 and the dep
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