`
`
`
`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.
`Petitioners,
`
`v.
`
`MARKETS-ALERT PTY LTD.
`Patent Owner.
`____________
`
`Case CBM2013-00005 (JYC)
`Patent 7,941,357
`____________
`
`
` Before JAMESON LEE, SALLY C. MEDLEY, and JONI Y. CHANG,
`Administrative Patent Judges.
`
`
`
`PATENT OWNER MARKETS-ALERT
`MOTION FOR AND TO COMPEL DISCOVERY
`
`
`
`
`
`Case No. CBM2013-00005 (JYC)
`Patent 7,941,357
`
`
`Pursuant to the May 17, 2013 Order Authorizing Motion for Additional
`
`Discovery 37 C.F.R. §42.224 (D27) (“Order”) by the Patent Trial and Appeal
`
`Board (“Board”) and 37 C.F.R. §§42.51 and 42.52, Patent Owner Markets-Alert
`
`Pty. Ltd. (“Markets-Alert”) hereby moves for and to compel additional discovery.
`
`I.
`
`
`
`INTRODUCTION
`
`Although discovery is limited in a CBM Review, the Board may upon
`
`motion by a party for good cause authorize additional discovery of evidence
`
`directly related to factual assertions advanced in the proceeding. 37 C.F.R.
`
`§42.51(b)(2) and §42.224. At the parties’ May 15, 2013 teleconference with the
`
`Board, the Board referred the parties to the five factor test applied in Garmin
`
`International, Inc. et al. v. Cuozzo Speed Technologies LLC, Case IPR2012-00001:
`
`(i) more than a possibility and mere allegation; (ii) litigation positions and
`
`underlying basis; (iii) ability to generate equivalent information by other means;
`
`(iv) easily understandable instructions; and (v) requests not overly burdensome to
`
`answer. Garmin at 6-7. Markets-Alert notes that Garmin is an inter partes review,
`
`which is subject to the interests of justice standard, while CBM review is subject to
`
`the more liberal standard of good cause. 77 Fed. Reg. 48612, 48622. However,
`
`pursuant to the Board’s guidance, Markets-Alert applies the Garmin factors.
`
`
`
`1
`
`
`
`Case No. CBM2013-00005 (JYC)
`Patent 7,941,357
`
`
`
`
`Unlike the discovery requests in Garmin, the discovery sought by Markets-
`
`Alert is neither exorbitant nor unduly broad. Specifically, Markets-Alert requests
`
`limited discovery on the following topics:
`
`(1)
`
`Prior art to U.S. Patent No. 7,941,357 (“‘357 Patent”) known to a
`Petitioner that was not submitted in the Petition For Post Grant
`Review Of A Covered Business Method Under 25 U.S.C. § 321 and §
`18 filed by Petitioners (“Petition”).
`
`
`(2) Documents and things reviewed or considered by a Petitioner in
`conjunction with preparation of the Petition.
`
`(3) Documents and things reviewed or considered by Steven R. Kursh
`(“Kursh”) in conjunction with preparation of his Declaration of
`Steven R. Kursh, Exhibit 1002 to the Petition (“Declaration”).
`
`
`(4) Documents and things relating to any communication, discussion,
`evaluation, consideration or decision regarding licensing from
`Markets-Alert or commercial implementation or adoption of any
`specific embodiment of the ‘357 Patent in the 2000 to 2011 time
`frame.
`
`
`(5) Documents and things relating to any commercial or technical review,
`analysis or decision regarding licensing or commercial
`implementation or adoption of any technology similar to the invention
`of the ‘357 Patent in the 2000 to 2011 time frame.
`
`
`See Exhibit 2021.1
`
`Each of Markets-Alert’s requests is tailored narrowly to specific evidence,
`
`which is highly relevant to the instituted grounds and issues under review and
`
`genuinely necessary to prepare its Response and Amendment to the ‘357 Patent.
`
`
`1 In an effort to narrow the discovery issues before the Board, Markets-Alert has elected not to
`move for its discovery requests directed to the Mandatory Initial Disclosures at this time.
`
`
`
`2
`
`
`
`Case No. CBM2013-00005 (JYC)
`Patent 7,941,357
`
`
`77 Fed. Reg. 48756, 48761. Each request is easily understandable and the
`
`evidence sought by Markets-alert is “uniquely in the possession” of Petitioners. 77
`
`Fed. Reg. 48756, 48761. None of the requests prematurely force Petitioners to
`
`present their litigation position.
`
`Moreover, since Markets-Alert’s requests seek only documents and
`
`information already considered by and in the hands of Petitioners, they are not
`
`overly burdensome to answer. Any minor burden on Petitioners, who are among
`
`the largest companies in the industry, would be far outweighed by the benefit of
`
`developing a fair record before the Board, which will level the playing field,
`
`streamline these proceedings and avoid an unnecessary guessing game. 77 Fed.
`
`Reg. 48756, 48761. Therefore, Markets-Alert’s additional discovery requests are
`
`warranted under the Garmin factors.
`
`II. GOOD CAUSE EXISTS FOR THE REQUESTED DISCOVERY
`
`A.
`
`Prior Art Known To But Not Submitted By Petitioners.
`
`Request 1 is clear and easily understandable. It merely seeks the prior art
`
`evidence already known to and in the hands of Petitioners, which were withheld
`
`from their Petition. This request does not require Petitioners to search for new
`
`prior art or disclose its litigation positions. Further, the undisclosed prior art is
`
`only known to Petitioners. Although Markets-Alert could conduct a
`
`comprehensive search of the entire prior art world, it could not reasonably
`
`
`
`3
`
`
`
`Case No. CBM2013-00005 (JYC)
`Patent 7,941,357
`
`
`determine what prior art Petitioners found and considered. In contrast, simply
`
`handing over what is likely already sitting in a computer file of Petitioners’ counsel
`
`would pose no burden to Petitioners. Thus, this request easily satisfies factors (ii)
`
`to (v).
`
`This request also satisfies factors (i) and (v) since prior art known to, but not
`
`submitted by, Petitioners is highly relevant to this proceeding as they inform the
`
`level of ordinary skill and the state of the relevant art at the time of filing, key
`
`factual inquiries in this proceeding. In their Petition, Petitioners made numerous
`
`assertions as to how features of the invention, such as “technical analysis,” “real-
`
`time,” and “network of computers,” would be understood by contemporaneous
`
`practitioners in the field, in order to support both their claim constructions and
`
`invalidity arguments, much of which was adopted by the Board based on the as yet
`
`unchallenged testimony of Kursh. Since Markets-Alert disagrees that the state of
`
`the art supports Petitioners’ assertions, the undisclosed prior art would be highly
`
`probative and favorable in substantive value to Markets-Alert. Indeed, this
`
`evidence is crucial for adequately cross-examining Kursh to test the substantive
`
`merit and credibility of his testimony.
`
`This undisclosed prior art is also highly relevant because it circumscribes the
`
`realistic range of arguments and amendments available to Markets-Alert. It is
`
`utterly incongruous for Petitioners to insist that Markets-Alert limit its Response
`
`
`
`4
`
`
`
`Case No. CBM2013-00005 (JYC)
`Patent 7,941,357
`
`
`and Amendments to only the self-selected prior art they disclosed, when
`
`Petitioners have made clear that they have other prior art in their possession and
`
`intend to submit supplemental information. Keeping Markets-Alert (and the Board)
`
`in the dark about other prior art, only to spring them later in this proceeding, makes
`
`no sense and is inefficient. If this other prior art is disclosed, then Markets-Alert
`
`will be able to avoid unnecessary arguments and amendments, which will help
`
`streamline this proceeding to meet the one-year statutory deadline for completion.
`
`Petitioners’ main argument has been that the ‘357 Patent invention was
`
`already widely in use at the time of filing, which is why Petitioners focused
`
`primarily of references allegedly evidence prior products and use. See Petition at 1
`
`and 25 – 52. Yet, Petitioners chose only to submit two patent publications, a few
`
`general trade articles, and a handful of archived webpages in their Petition. The
`
`dearth of patent publications and the complete absence of any evidence of
`
`Petitioners’ own prior use of the invention in the Petition is completely at odds
`
`with Petitioners’ claim that the prior art was “blanketed with literature.” Petition at
`
`1. Thus, the circumstances strongly tend to show that either Petitioners
`
`misrepresented the prior art or possess additional prior art and the nature and scope
`
`of that undisclosed prior art is unfavorable to Petitioners’ position.2 Therefore, the
`
`
`2 The reasons behind why Petitioners and Kursh disclosed some prior art, but not others, are
`likely to be as useful as the undisclosed prior art itself.
`
`
`
`5
`
`
`
`Case No. CBM2013-00005 (JYC)
`Patent 7,941,357
`
`
`evidence sought will likely be favorable to Markets-Alert and useful in this
`
`proceeding.
`
`B.
`
`Evidence Actually Relied Upon By Petitioners And Their Expert.
`
`Requests 2 and 3 are easily understandable as they seek nothing more than
`
`access to the same evidence upon which Petitioners and Kursh relied to prepare
`
`their Petition and Declaration. They do not require Petitioners to prematurely
`
`expound on their litigation position or later assertions. Moreover, the undisclosed
`
`evidence Petitioners relied upon cannot be reasonably obtained by other means by
`
`Markets-Alert and is crucial to fully analyzing the positions advanced by
`
`Petitioners and Kursh. These requests impose no burden because the responsive
`
`evidence is already in hands of Petitioners and the volume likely is to be quite low,
`
`since only evidence that has not yet been disclosed is requested. Thus, these
`
`requests easily satisfy factors (ii) – (v).
`
`These requests also satisfy factors (i) and (v), since the Board adopted a
`
`number of claim constructions proposed by Petitioners, some only implicitly such
`
`as “technical analysis” and “network of computers.” Although Markets-Alerts
`
`must now prepare its Response and Amendment in the context of these
`
`constructions, no record of the bases for these constructions or any other assertions
`
`by Petitioner and Kursh exists. Neither Petitioners nor Kursh cited any supporting
`
`evidence for their proposals. Kursh’s testimony consists of conclusory statements,
`
`
`
`6
`
`
`
`Case No. CBM2013-00005 (JYC)
`Patent 7,941,357
`
`
`in which he identifies no evidence from which he derives his “opinions” and
`
`provides no reasoning.
`
`For example, in Paragraph 41 of his Declaration, Kursh opines that “real-
`
`time notification” includes the time period sufficiently long to accommodate the
`
`remote communication devices mentioned in the ‘357 Patent. But he provides no
`
`basis for this opinion, other than to say it is his opinion. This is a particularly
`
`important issue since his opinion concerns only the timing on the receiving end of
`
`the notification and not, for example, the real-time generation of the notification as
`
`compared to time-delayed or end of day alerts. Markets-Alert is entitled to know if
`
`Kursh relied on evidence that discussed the relative importance of when the
`
`notification is generated (or derived his opinion without any specific evidence).
`
`The evidence sought by these requests are necessary to prepare for and
`
`thoroughly cross-examine Kursh, not only with respect to his conclusory opinions
`
`on claim construction, but also his testimony as to the state of the art at the time of
`
`filing. For example, in Paragraph 55 of his Declaration, Kursh summarily opines
`
`that one of skill in the art would consider the matching of buy and sell orders in
`
`Satow to constitute technical analysis. However, not even Satow characterized this
`
`matching as technical analysis. Thus, if not a bald conclusion, then the
`
`circumstances strongly tend to show that Kursh’s opinion must have been derived
`
`from some evidence other than Satow.
`
`
`
`7
`
`
`
`Case No. CBM2013-00005 (JYC)
`Patent 7,941,357
`
`
`If Kursh considered information other than the submitted prior art, then
`
`Markets-Alert is entitled to know where Kursh’s conclusion came from in order to
`
`cross-examine Kursh on that information for both the substance and credibility of
`
`his testimony, as well as afford its own expert a chance to evaluate the same
`
`evidence.3 Otherwise, Markets-Alert would be limited to only the self-selected
`
`evidence disclosed in the Petition. That would ill serve both Markets-Alert and
`
`this proceeding, and be especially unjust since Petitioners may later submit the
`
`very same evidence.
`
`C. Evidence Of Secondary Indicia Of Non-Obviousness
`
`Requests 4 and 5 are clearly and unambiguously directed to specific
`
`evidence of Petitioners’ efforts to license and copy Markets-Alert’s invention and
`
`implement similar technology, all of which establishes the acknowledged but
`
`unfulfilled demand for the ‘357 Patent invention. They do not require Petitioners
`
`to disclose their litigation positions since the request is limited to only factual
`
`information. Moreover, the evidence sought is uniquely possessed by Petitioners
`
`and cannot reasonably be obtained by other means by Markets-Alert. Petitioners
`
`were also well aware when they included obviousness grounds in their Petition that
`
`
`3 As Markets-Alert noted to the Board at the May 15, 2013 conference call, Markets-Alert did
`not have the opportunity in its Preliminary Response to provide expert testimony in rebuttal to
`Kursh’s testimony. Markets-Alert appreciates that, under the staged proceeding, the Response is
`Markets-Alert’s first opportunity to fully challenge Kursh’s testimony, which makes the
`requested discovery all the more vital.
`
`
`
`8
`
`
`
`Case No. CBM2013-00005 (JYC)
`Patent 7,941,357
`
`
`such secondary considerations of non-obviousness would be at issue. Since they
`
`likely already have such evidence in hand, these requests impose minimal burden
`
`to Petitioners. Thus, these requests easily satisfy factors (ii) – (v).
`
`These requests also satisfy factors (i) and (v) because they seek evidence
`
`that directly contradicts Petitioners’ underlying presumption that the technology
`
`for the ‘357 Patent invention was already in commercial use at the time of the
`
`filing, which demonstrates the necessary nexus to secondary considerations.
`
`Despite being among the largest and most well-established players in the industry,
`
`Petitioners submitted no evidence of their own implementation of what they now
`
`claim was existing technology. Only one reason accounts for this failure –
`
`Petitioners had not in fact been able to implement the invention during the priority
`
`time frame, despite the consumer demand.4
`
`Evidence of why and to what extent Petitioners desired, tried, but failed to
`
`implement Markets-Alert’s or similar technology is highly probative of the merits
`
`of the claimed invention and lack of merit of the instituted obviousness ground.
`
`For example, Petitioners have asserted that Markets-Alert’s invention could be
`
`implemented by a PC connected to the internet (the construction of the claim term,
`
`
`4 Indeed, as alleged in Markets-Alert Pty. Ltd. v. Bloomberg Finance L.P., et al., Case No. 12-
`780-GMS, the Bloomberg Petitioners had in fact entered into detailed discussions with Markets-
`Alert to license the technology of the ‘357 Patent and did not announce their infringing
`Launchpad 2010 product until nearly a decade past the priority date. See Complaint, Exhibit
`2022 at ¶9 - 12.
`
`
`
`9
`
`
`
`Case No. CBM2013-00005 (JYC)
`Patent 7,941,357
`
`
`“network of computers,” adopted by the Board). If this was the case, then
`
`Petitioners should have been able to implement the invention around the priority
`
`date. But they did not, which casts doubt on the merits of their assertions and
`
`lends greater credence to Markets-Alert’s position that the invention involves a
`
`complex technical operation requiring a unique combination of hardware and
`
`specific steps interacting and tied together in real-time.
`
`Thus, the existing evidence and circumstances tend to show beyond
`
`speculation that in fact something useful will be uncovered by discovery into
`
`Petitioners’ knowledge of consumer demand, failure to meet that demand with
`
`existing technology, and attempts to copy Markets-Alert’s invention. Specifically,
`
`such evidence of secondary considerations is favorable in substantive value to
`
`Markets-Alert’s position that the invention was not implementable with a simple
`
`PC connected to the internet. This supports its defense against the instituted
`
`obviousness grounds and planned amendments in response to the broad adopted
`
`claim constructions.
`
`III. CONCLUSION
`
`Therefore, for the foregoing reasons and good cause therein satisfying the
`
`Garmin factors, Markets-Alert respectfully requests the Board to grant its motion
`
`and order Petitioners to produce the requested evidence as soon as possible on a
`
`rolling basis, but no later than seven (7) days from the Board’s order.
`
`
`
`10
`
`
`
`Case No. CBM2013-00005 (JYC)
`Patent 7,941,357
`
`
`Dated: May 20, 2013
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`
`
`
`
`
`/s/
`Andrew Choung (USPTO Reg. No. 46622)
`Email: achoung@glaserweil.com
`Adrian M. Pruetz (Pro Hac Vice)
`Email: apruetz@glaserweil.com
`GLASER WEIL FINK JACOBS
`HOWARD AVCHEN & SHAPIRO LLP
`10250 Constellation Boulevard, 19th Floor
`Los Angeles, CA 90067
`Tel: 310-553-3000
`Fax: 310-785-3506
`
`William Fitzpatrick (USPTO Reg. No. 58332)
`Email: bill@frobbeintl.com
`3700 Newport Blvd, Ste. 101
`Newport Beach, CA 92663
`Tel: 518-573-2879
`
`Attorneys for
`Patent Owner Markets-Alert Pty Ltd.
`
`11
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`I certify that a copy of the foregoing PATENT OWNER MARKETS-
`
`ALERT MOTION FOR AND TO COMPEL DISCOVERY was served on
`
`May 20, 2013 to counsel of record for Petitioners via electronic mail:
`
`
`Michael T. Rosato
`USPTO Reg. No. 52,182
`WILSON SONSINI GOODRICH & ROSATI
`701 Fifth Avenue
`Suite 5100
`Seattle, WA 98104-7036
`Tel.: 206-883-2529
`Fax: 206-883-2699
`Email: mrosato@wsgr.com
`
`Brian D. Range
`USPTO Reg. No. 48,437
`WILSON SONSINI GOODRICH & ROSATI
`900 South Capital of Texas Hwy Las Cimas IV, Fifth Floor
`Austin, TX 78746-5546
`Tel.: 512-338-5478
`Fax: 512-338-5499
`Email: brange@wsgr.com
`
`
`
`
`
`
`/s/
`William Fitzpatrick
`
`
`
`
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
