Paper No. ________
`Filed: May 24, 2013
`
`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 (JYC)
`Patent No. 7,941,357
`_____________________________
`
`PETITIONER’S OPPOSITION TO PATENT OWNER’S MOTION FOR
`AND TO COMPEL DISCOVERY
`
`
`Filed: May 24, 2013
`
`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 (JYC)
`Patent No. 7,941,357
`_____________________________
`
`PETITIONER’S OPPOSITION TO PATENT OWNER’S MOTION FOR
`AND TO COMPEL DISCOVERY
`
`
`
`I.
`
`STATEMENT OF PRECISE RELIEF REQUESTED
`
`Petitioners Bloomberg et al. (“Petitioners”) hereby request Markets-Alert’s
`
`motion for additional discovery be denied.
`
`II. MARKETS-ALERT’S REQUESTED RELIEF SHOULD BE DENIED
`37 C.F.R. §42.224 requires “a showing of good cause” and directs discovery
`
`be “limited to evidence directly related to factual assertions advanced by either
`
`party in the proceeding.” Markets-Alert bears the burden of proof to establish that
`
`it is entitled to the relief requested. 37 C.F.R. §42.20(c). Markets-Alert’s motion
`
`fails to meet this burden for at least two reasons.
`
`First, the Board has not authorized Markets-Alert to file a motion
`
`compelling testimony and production under 37 C.F.R. §§42.52. The Board Order
`
`authorizing a motion for additional discovery (Paper 27) provided, inter alia,
`
`“Markets-Alert is authorized to file a motion for additional discovery under 37
`
`C.F.R. § 42.51(b)(2).” (Emphasis added.) But contrary to the Board’s
`
`authorization, Markets-Alert has filed a motion “for and to compel discovery” (see,
`
`e.g., title of motion) and seeks seeks relief under both 37 C.F.R. §§42.51 and 42.52
`
`(see page 1). Petitioner respectfully requests that the entire motion be dismissed as
`
`unauthorized, as neither the Board nor the Petitioner should bear the burden of
`
`sorting authorized from unauthorized request for relief. If Markets-Alert wanted
`
`
`
`leave to file a motion compelling testimony and production of documents under 37
`
`C.F.R. §§42.52, then Markets-Alert should have sought authorization for this.
`
`Second, despite the Board providing direction as to the permissible scope of
`
`“additional discovery” per Rule 42.51(b)(2), Markets-Alert’s motion improperly
`
`seeks the equivalent of district court litigation discovery. In the above cited Order
`
`(Paper 27), the Board directed that requests in the motion be specific, tailored
`
`narrowly and not unduly broad.
`
`Id. at p. 5. The Board emphasized that
`
`“Markets-Alert should not expect the Board to sort through a broad request to find
`
`items that meet the statutory and regulatory standard.” Id.
`
`For further guidance, the Board cited its decisions on additional discovery.
`
`Particularly, in Cuozzo, IPR2012-00001 (Paper 26), the Board identified five
`
`factors as indicating that requested additional discovery is not warranted: (i) a
`
`request is no more than a possibility or mere allegation of finding something
`
`useful; (ii) asking for the other party’s litigation positions and underlying basis for
`
`those positions under the pretext of discovery; (iii) the requestor’s ability to
`
`generate equivalent information without the need of discovery; (iv) lack of
`
`understandable instructions; (v) the request is overly burdensome to answer.
`
`2
`
`
`
`A.
`
`The Motion to Compel Fails to Establish Good Cause For Discovery
`Request No. 1
`
`At page 2, of its Motion, Markets-Alert requests “[p]rior 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 Covered Business Method Under 25 U.S.C. §
`
`321 and §18 filed by Petitioners (“Petition”).” (“Request No. 1”).
`
`Petitioners oppose Request No. 1 for several reasons. First, the request is
`
`unduly broad rather than “tailored narrowly” as required by the Board’s Order
`
`authorizing the motion. Paper 27, p. 5. Rather than particularly identifying any
`
`specific prior art document, the request is broadly directed to any “prior art”
`
`known to Petitioner s. Request No. 1 is improperly directed to a category of
`
`documents, with no limitation of technology or privilege. See e.g., CBM2012-
`
`00001 (Paper 24); see also, Cuozzo Factor (1), IPR2012-00001 (Paper 26).
`
`Second, Request No. 1 seeks “any prior art” that is not at issue in these
`
`proceedings. Markets-Alert’s seeking of documents irrelevant to the instituted
`
`grounds of review runs contrary to the Board’s instructions. See Paper 27, p. 5.
`
`Third, Request No. 1 fails to provide any evidence or bona fide reasoning
`
`beyond mere speculation that something useful may be uncovered. Markets-Alert
`
`presents diffuse arguments regarding additional prior art as potentially probative in
`
`claim construction, or possibly relevant in rebutting a comment that the literature is
`
`3
`
`
`
`“blanketed with” anticipatory prior art. A mere allegation that something useful
`
`will be found is insufficient to demonstrate that the requested discovery is
`
`necessary. See, e.g., Cuozzo Factor (1), IPR2012-00001 (Paper 26).
`
`Regarding the argument that discovery might relate to construction of the
`
`identified claim terms or the state of the relevant art, if Markets-Alert disagrees
`
`with positions taken by Petitioners and/or the Board, Markets-Alert may present its
`
`own argument and evidence in rebuttal. Given that a patentee defines the scope of
`
`its claims, evidence relevant to claim construction would seem equally, if not
`
`more, accessible to Markets-Alert as the owner (and drafter) of the ’357 patent.
`
`Regarding the rationale that discovery may address the volume of prior art
`
`identified in the petition, multiple grounds of anticipation of every ‘357 patent
`
`claim are currently outstanding, with a number of references even indicated by the
`
`Board as duplicative to the invalidity grounds on which trial was ordered.
`
`Markets-Alert has hardly explained how adding more invalidating prior art would
`
`be useful at this stage of the proceeding. Also, Markets-Alert can identify prior art
`
`to its own patent absent the requested discovery. For example, Markets-Alert can
`
`conduct its own prior art search, or rely on the services of a professional search
`
`firm. See, e.g., Cuozzo Factor (3), IPR2012-00001 (Paper 26).
`
`Fourth, Markets-Alert improperly seeks privileged attorney work product,
`
`thinly veiled under the pretext of “additional discovery.” Cf. Sawgrass Sys. Inc. v.
`
`4
`
`
`
`BASF Aktiengesellschaft, 99-CV-70242-DT, 1999 WL 358681 at *4 (E.D. Mich.
`
`Feb. 26, 1999) (denying motion to compel prior art search and holding that “the
`
`search was made to aid in current and anticipated litigation, and hence its fruits
`
`come squarely within the ambit of the work-product doctrine”). Markets-Alert
`
`admits, at FN 2, that it seeks to learn Petitioners’ potential litigation positions:
`
`“[t]he 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.” Markets-
`
`Alert’s demand for prior art identified by Petitioners’ attorneys based on attorney
`
`assessment of the ’357 Patent improperly seeks privileged attorney work product
`
`and would improperly allow Markets-Alert to “free-ride” off of Petitioners’
`
`investment of attorney time. See, e.g., Hickman v. Taylor, 329 U.S. 495, 509-510
`
`(1947) (holding that discovery cannot “justify unwarranted inquiries into the files
`
`and the mental impressions of an attorney”). Additional discovery is not warranted
`
`if it is asking for the other party’s litigation positions and underlying basis for
`
`those positions under the pretext of discovery. Cuozzo Factor (2), IPR2012-00001
`
`(Paper 26).
`
`Finally, at p. 5 of its Motion, Markets-Alert argues that being kept “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….” However, the
`
`5
`
`
`
`Board’s rules for the presentation of arguments and evidence must govern
`
`regardless of whether Markets-Alert believes those rules are inefficient. See, e.g.,
`
`Cuozzo, IPR2012-0001 (Paper 26, p. 13). If Petitioners present additional prior art
`
`in accordance with the Board’s rules and procedure, Markets-Alert will have an
`
`opportunity under the same rules and procedure to address the presented
`
`information. However, Petitioners have no obligation to keep Markets-Alert
`
`apprised of its positions on substantive issues before Petitioners are ready to
`
`present them for review. As such, the Board should deny this request.
`
`B.
`
`The Motion to Compel Fails to Establish Good Cause For PO’s Discovery
`Request No. 2 and 3
`
`At page 2 of its Motion, Markets-Alert requests “[d]ocuments and things
`
`reviewed or considered by a Petitioner in conjunction with preparation of the
`
`Petition.” (“Discovery Request No. 2”) and also “[d]ocuments and things reviewed
`
`or considered by Steven R. Kursh (“Kursh”) in conjunction with preparation of his
`
`[Declaration]” (“Request No. 3”). At page 6, the Motion further clarifies that
`
`“[r]equests 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.” (Emphasis added.)
`
`First, Petitioners believe they have already provided the necessary
`
`information. The Petition includes at pages iii-vi a “List of Exhibits” and
`
`6
`
`
`
`“Evidence Relied Upon to Support the Challenge.” Also, Dr. Kursh’s declaration
`
`includes “INFORMATION CONSIDERED BY DECLARANT” at pages 45-46 of
`
`Exhibit 1002.
`
`To the extent Requests Nos. 2 and 3 go beyond the already provided
`
`information, the requests should be denied as being unduly broad, rather than
`
`“tailored narrowly” as explicitly instructed by the Board’s Order authorizing the
`
`motion. Paper 27, p. 5. Request Nos. 2 and 3 are improperly directed to broad
`
`categories of unspecified documents as opposed to identifying specific documents,
`
`with no limitation of privilege. See also, CBM2012-00001 (Paper 24); Cuozzo
`
`Factor (1), IPR2012-00001, Paper 26.
`
`Third, Markets-Alert has not presented a threshold amount of evidence or
`
`reasoning beyond mere speculation that Petitioners or Dr. Kursh relied on
`
`unidentified documents or that the unidentified documents would relate to claim
`
`construction, state of the art, or anything else. A mere allegation that something
`
`useful will be found is insufficient to demonstrate that the requested discovery is
`
`necessary. See, e.g., Cuozzo Factor (1), IPR2012-00001 (Paper 26). To the extent
`
`that Markets-Alert believes some argument in the Petition or testimony in Dr.
`
`Kursh’s declaration is not supported by evidence, Markets-Alert may address those
`
`contentions in its Patent Owner Response. Accordingly, Markets-Alert has failed
`
`to provide good cause showing the requested discovery is necessary or warranted.
`
`7
`
`
`
`C.
`
`The Motion to Compel Fails to Establish Good Cause For PO’s Discovery
`Request Nos. 4 and 5
`
`At page 2 of its Motion, Markets-Alert requests “[d]ocuments 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.”
`
`(“Request No. 4”) and “[d]ocuments 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” (“Request No. 5”). At p. 8, Markets-Alert
`
`titles these requests “Evidence of Secondary Indicia Of Non-Obviousness.”
`
`Markets-Alert clarifies “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.”
`
`Petitioners oppose Request Nos. 4 and 5 for a number of reasons. First, the
`
`requests are unduly broad, rather than “tailored narrowly” as explicitly instructed
`
`by the Board’s Order authorizing the motion. Paper 27, p. 5. Rather than naming
`
`any specific licensing proposals, communications, or commercial implementations,
`
`the requests are directed to anything “relating to” a long, compound list of
`
`8
`
`
`
`hypothetical and unspecified activities over an 11 year time period. See also,
`
`CBM2012-00001 (Paper 24); Cuozzo Factor (1), IPR2012-00001, Paper 26.
`
`Second, Markets-Alert offers no evidence that a Petitioner sought to license
`
`from or copied Markets-Alert. Markets-Alert cites, at FN4, only to their district
`
`court complaint’s (Exhibit 2022) unsupported allegations. Mere allegation that
`
`something useful will be found is insufficient to demonstrate that the requested
`
`discovery is necessary. See, e.g., Cuozzo Factor (1), IPR2012-00001 (Paper 26).
`
`Additionally, at pages 9-10, Markets-Alert vaguely alludes to secondary
`
`considerations of non-obviousness, such as commercial success, failure by others,
`
`and consumer demand. Markets-Alert, however, fails to set forth any evidence
`
`showing that: (i) the Petitioners themselves had tried but failed to develop a
`
`method having the features of the ’357 patent claims; (ii) any Petitioner achieved
`
`commercial success because of any inventive feature recited in the ’357 patent
`
`claims; or (iii) any Petitioners recognized that there was a long-felt but unmet need
`
`in the art for a method of the ’357 patent claim. Markets-Alert’s allegations, to the
`
`extent any are clearly articulated, are nothing more than speculation, and fail to
`
`demonstrate good cause for discovery requested.
`
`Third, Request Nos. 4 and 5 improperly attempt to discover Petitioners’
`
`potential litigation positions. For example, the documents Markets-Alert requests
`
`are potentially relevant to alleged infringement and/or willful infringement in
`
`9
`
`
`
`litigation. Additional discovery is not warranted if it is asking for the other party’s
`
`litigation positions and underlying basis for those positions under the pretext of
`
`discovery. Cuozzo Factor (2), IPR2012-00001 (Paper 26).
`
`Fourth, each Petitioner would face a significant burden if required to comply
`
`with this request. Markets-Alert has not identified commercial implementations of
`
`the ’357 Patent, and Petitioners do not know what “technology similar to the
`
`invention of the ’357 Patent” includes. Thus, searching the files of each
`
`petitioner’s hundreds of employees for information related to alleged “similar”
`
`technology—undefined in scope—is far too burdensome. Moreover, Markets-
`
`Alert has better access to information about attempted licensing of its alleged
`
`invention than Petitioners. Thus, the Board should deny these requests.
`
`III. CONCLUSION
`
`For the foregoing reasons, Bloomberg Inc. et al. respectfully request that the
`
`Board deny Markets-Alert’s Motion for Additional Discovery in its entirety.
`
`Date: May 24, 2013
`
`Respectfully submitted,
`
`/ Michael T. Rosato /
`Michael T. Rosato
`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
`
`Attorneys for Petitioner Bloomberg Inc. et al.
`
`10
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies that the foregoing Petitioner’s Opposition to Patent Owner
`
`Markets-Alert Motion For and to Compel Discovery was served on May 24, 2013 at the
`
`following address of record for the subject patent:
`
`Andrew Y. Choung
`Adrian Pruetz (Pro Hac Vice)
`GLASER WEIL FINK JACOBS HOWARD AVCHEN & SHAPIRO LLP
`10250 Constellation Boulevard, 19th Floor
`Los Angeles, CA 90067
`achoung@glaserweil.com
`apruetz@glaserweil.com
`Tel.: 310-553-3000
`Fax: 310-785-3506
`
`William Fitzpatrick
`3700 Newport Blvd., Suite 101
`Newport Beach, CA 92663
`bill@frobbeintl.com
`Tel.: 518-573-2879
`
`/ Michael T. Rosato /
`Michael T. Rosato
`
`11
`
`
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
