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
`RESPONSE
`
`
`

`

`
`
`I.
`II.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`TABLE OF CONTENTS
`
`INTRODUCTION .....................................................................................................2
`THE ‘357 PATENT AND TECHNOLOGY CONTEXT .........................................4
`A.
`The Invention .................................................................................................4
`B.
`State Of The Art .............................................................................................9
`C.
`Claim Construction ........................................................................................13
`1.
`“network of computers” .....................................................................14
`2.
`“technical analysis” and “technical analysis formula” ......................15
`3.
`“real-time notification” ......................................................................16
`4.
`“instructions from a user to specify watch data defining an event” ..18
`5.
`“so that the user can then provide instructions for share market
`transactions on an instantaneous basis” .............................................19
`6.
`“overall stock market trends” and “periodically apply” ....................19
`III. AMENDED CLAIMS OF THE ‘357 PATENT ARE VALID OVER THE CITED
`PRIOR ART ...............................................................................................................20
`Satow Does Not Anticipate The Claimed Invention ......................................20
`A.
`1.
`Satow Does Not Teach Or Suggest Applying Or Using Technical
`Analysis, Technical Analysis Formulae, Or Technical Analysis
`Indicators............................................................................................22
`Satow Does Not Teach Or Suggest Generating A Notification Of A
`Valid Stock Market Event ..................................................................25
`Satow Does Not Teach Or Suggest The Real Time Aspects Of
`Technical Analysis Or Notification ...................................................26
`Satow Does Not Teach Or Suggest Generating Or Updating
`Technical Analysis Indicators In Real-Time .....................................27
`Satow Does Not Teach Or Suggest Including A Live Link In The
`Notification To Enable A User To Provide A Stock Market
`Transaction Instruction ......................................................................27
`Satow Does Not Teach Or Suggest A Real-Time System For
`Technical Analysis Plus Notification. ................................................28
`S &C Review Does Not Anticipate The Claimed Invention. .........................28
`1.
`S &C Review Does Not Teach Or Suggest A Provider’s Network
`of Computers. .....................................................................................30
`S &C Review Does Not Teach Or Suggest Real-Time Notification
`Of A Valid Stock Market Event Determined By Applying
`Technical Analysis As Stock Market Data Is Received ....................31
`
`B.
`
`2.
`
`
`
`i
`
`

`

`3.
`
`2.
`
`3.
`
`4.
`
`5.
`
`S &C Review Does Not Teach Or Suggest Including A Live Link
`In The Notification To Enable A User To Provide A Stock Market
`Transaction Instruction ......................................................................33
`4.
`S &C Review Is Not An Enabling Reference .....................................33
`Opening Bell Does Not Anticipate The Claimed Invention. .........................35
`1.
`Opening Bell Does Not Teach Or Suggest A Provider’s Network of
`Computers. .........................................................................................37
`Opening Bell Does Not Teach Or Suggest Real-Time Notification
`Of A Valid Stock Market Event Determined By Applying
`Technical Analysis As Stock Market Data Is Received ....................37
`Opening Bell Does Not Teach Or Suggest Generating Or Updating
`Technical Analysis Indicators In Real-Time .....................................40
`Opening Bell Does Not Teach Or Suggest Including A Live Link
`In The Notification To Enable A User To Provide A Stock Market
`Transaction Instruction ......................................................................40
`Opening Bell Does Not Teach Or Suggest A Real-Time System
`For Technical Analysis Plus Notification. .........................................41
`6.
`Opening Bell Is Not An Enabling Reference. ....................................41
`The Combination of Stutman with Opening Bell Does Not Render
`Obvious The Claimed Invention. ...................................................................42
`1.
`Combining Stutman With Opening Bell Is Not Obvious ...................44
`2.
`The Combination of Stutman and Opening Bell Does Not Teach
`The Invention. ....................................................................................48
`CONCLUSION ..........................................................................................................50
`
`
`C.
`
`D.
`
`
`
`IV.
`
`
`
`
`ii
`
`

`

`
`
`TABLE OF AUTHORITIES
`
`Federal Cases
`In re Kahn,
`441 F.3d 977 (Fed. Cir. 2006) .............................................................................. 45
`In re Omeprazole Patent Litig.,
`483 F.3d 1364 (Fed. Cir. 2007) ..................................................................... 34, 42
`KSR v. Teleflex,
`550 U.S. 398, 127 S. Ct. 1727 (2007) .................................................................. 44
`Minn. Mining & Mfg. Co. v. Chemque, Inc. (3M) ,
`303 F.3d 1294, 1301 (Fed. Cir. 2002) ........................................................... 34, 42
`Mintz v. Dietz & Watson, Inc.,
`679 F. 3d 1372 (Fed. Cir. 2012) .................................................................... 45, 47
`Federal Statues
`35 U.S.C §18 .............................................................................................................. 1
`35 U.S.C. §102 ........................................................................................................... 1
`35 U.S.C. §103 ........................................................................................................... 1
`35 U.S.C. §321 ........................................................................................................... 1
`Federal Rules
`37 C.F.R. §42.220 ...................................................................................................... 1
`37 C.F.R. §42.221 ...................................................................................................... 1
`
`
`
`
`
`
`
`
`iii
`
`

`

`
`
`NEW CLAIM LISTING
`
`In order to more precisely and particularly point out the invention, and the
`
`distinctions over the prior art cited in the Decision, Markets-Alert respectfully
`
`submits its Motion To Amend the claims in conjunction with this Response.
`
`Markets-Alert’s Response is based upon the following claims.
`
`(new – proposed substitute claim) A real-time method of providing
`5.
`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 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 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.
`
`(new – proposed substitute claim) The method of Claim 5 further
`6.
`comprising the steps of:
`
`updating a cache of stock market data on a data server on the
`
`provider’s network of computers in real time; applying the technical
`analysis formula to the cache of stock market data on the provider’s network
`
`
`
`iv
`
`

`

`
`
`
`
`
`
`
`
`of computers based on the user specified watch data to generate a technical
`analysis indicator;
`
`updating the technical analysis indicator in real-time as the stock
`market data is received; and
`
`determining in real-time as the stock market data is received if a valid
`stock market event has occurred based on the technical analysis indicator
`and user specified watch data.
`
`(new – proposed substitute claim) The method of Claim 6 wherein
`7.
`the step of generating a real-time notification further comprises the step of:
`
`including in the real-time notification a live link between the user’s
`remote communication device and the provider’s network of computers, to
`enable the user to provide an instruction for a stock market transaction from
`the notification.
`
`(new – proposed substitute claim) A real-time system for providing
`8.
`technical analysis and notification of stock market events comprising:
`
`a network guardian, which comprises one or more switches, for
`
`receiving watch data specified by a user from a user system in remote
`communication with the system and for routing and load balancing across
`the system, 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;
`
`a history database subsystem, which comprises one or more history
`clients, for receiving, storing and distributing stock market data in real-time,
`throughout the system;
`
`an alert managing subsystem, which comprises one or more alert
`clients and is networked to the history database subsystem by the network
`guardian, for requesting stock market data from the history clients in
`accordance with the user-specified watch data, for applying technical
`analysis in real-time to the stock market data to determine if the valid stock
`market event has occurred in accordance with the user-specified watch data,
`and for generating a notification in real-time when the valid stock market
`event has been determined to have occurred; and an output connector, which
`
`v
`
`

`

`
`
`
`
`
`
`is networked to the alert managing subsystem by the network guardian, for
`providing the notification in real-time to a remote communication device of
`the user.
`
`
`vi
`
`

`

`Case No. CBM2013-00005 (JYC)
`Patent 7,941,357
`
`
`
`On March 29, 2013, the Board issued its Decision, Institution Of Covered
`
`Business Method Patent Review (“Decision”) on the Petition For Post-Grant
`
`Review Of A Covered Business Method (“CBM Review”) Under 35 U.S.C. §321
`
`and §18 (“Petition”). The Board granted CBM Review of Claims 1-4 of U.S.
`
`Patent No. 7,941,357 (“‘357 Patent”) on four grounds:
`
`(i.) Whether the ‘357 Patent is anticipated by PCT Publication No. WO
`00/11587, Mar. 2, 2000 (“Satow”) (Ex. 1004) under 35 U.S.C. §102;
`
`
`(ii.) Whether the ‘357 Patent is anticipated by Product Review:
`TradeStation 4.0 Build 15, Stocks & Commodities, Dec. 1996 at 649
`(“S&C Review”) (Ex. 1005) under 35 U.S.C. §102;
`
`
`(iii.) Whether the ‘357 Patent is anticipated by AIQ Opening Bell Monthly,
`Vol. 8 Issue 10, October 1999 (“Opening Bell”) (Ex. 1014) under 35
`U.S.C. §102; and
`
`
`(iv.) Whether the ‘357 Patent is obvious under 35 U.S.C. §103 over U.S.
`Patent No. 5,954,793, Sep. 21, 1999 (“Stutman”) (Ex. 1015) and
`Opening Bell.
`
`
`Decision at 40. All other grounds were denied. Decision at 40.
`
`Pursuant to the Board’s Scheduling Order (No. 19), and 37 C.F.R. §§42.220
`
`and 42.221, Patent Owner Markets-Alert Pty. Ltd. (“Markets-Alert”) hereby
`
`submits its Response in opposition to the Petition and Decision. Markets-Alert’s
`
`Response is based on, in part, and hereby incorporates, its Motion To Amend,
`
`which is filed concurrently, and the Declaration of Neal Goldstein (“Goldstein
`
`Decl.”) (Ex. 2023).
`
`
`
`1
`
`

`

`Case No. CBM2013-00005 (JYC)
`Patent 7,941,357
`
`
`I.
`
`INTRODUCTION
`
`The irony in this proceeding is that Petitioners seek to invalidate an
`
`invention that was never claimed by the ‘357 Patent. Contrary to the unbounded
`
`portrayal in the Petition, the ‘357 Patent invention is not just another trading
`
`software run on a personal computer (PC). It is also not just another automated,
`
`electronic trade execution system. While any of the technologies mentioned in the
`
`cited references could be used in conjunction with the ‘357 Patent invention, they
`
`are not at all the same technology as described in and claimed by the ‘357 Patent.
`
`Prior to the subtle technological innovation of the ‘357 Patent invention, stock
`
`market data streaming and caching, setting up and running technical analysis, and
`
`event notification were highly disparate aspects of the stock market industry. For
`
`the first time, these disparate features were integrated by the ‘357 Patent invention
`
`in a novel and specific combination of hardware and functionalities tied together
`
`by real-time processing.
`
`But Petitioners are fully aware of this. This is evident in the limited and
`
`selective nature of the prior art references they submitted – or rather could not
`
`submit – as well as the overly-speculative testimony provided by Petitioners’
`
`expert. Rather than attack the invention actually claimed by the ‘357 Patent,
`
`Petitioners attempt to genericize the invention by divorcing the ‘357 Patent from
`
`
`
`2
`
`

`

`Case No. CBM2013-00005 (JYC)
`Patent 7,941,357
`
`
`any of the context provided by the specification, prosecution history, and state of
`
`the art at the time of the invention. Petitioners strip away the innovative
`
`combination of the invention and try to focus piecemeal on isolated functionalities.
`
`In this way, Petitioners hope the Board will reject the invention, not for what it is,
`
`but what Petitioners make of it.
`
`However, Markets-Alert’s Motion To Amend, filed concurrently herewith,
`
`frames the invention in its proper, original and intended scope – an integrated, real-
`
`time technical analysis and notification method and system. As amended, the ‘357
`
`Patent claims are easily distinguished over the cited references. Satow is a market
`
`execution system, which is trading and not a technical analysis and notification
`
`system. Stutman is a general information filtering system, not a technical analysis
`
`and notification system. Neither Satow nor Stutman teach or suggest applying
`
`technical analysis as stock market data is received or generating notifications when
`
`valid stock market events are identified by the technical analysis, for the purpose
`
`of enabling a trader to make a stock market transaction.
`
`As for S&C Review and Opening Bell, both references are casual, non-
`
`technical disclosures of PC-based trading software, which were common at the
`
`time. But neither the references nor the software they mention teach or suggest the
`
`integrated method or server-based system for real-time technical analysis and
`
`
`
`3
`
`

`

`Case No. CBM2013-00005 (JYC)
`Patent 7,941,357
`
`
`notification in the ‘357 Patent. Moreover, as non-technical documents, neither
`
`references are even remotely enabling. Therefore, Markets-Alert respectfully
`
`requests that the Board grant its Motion To Amend, deny the four grounds for
`
`CBM Review and issue a determination that the claims of the ‘357 Patent are
`
`patentable.
`
`II. THE ‘357 PATENT AND TECHNOLOGY CONTEXT
`A. The Invention
`Not all technological innovations are flashy or earth-shattering. Some are
`
`incremental and subtle. Some, like the ‘357 Patent invention, represent a
`
`convergence of multiple technologies. Where previously the industry oriented on
`
`the trader as the nexus, the ‘357 Patent invention shifted the focus onto the
`
`provider. It brought together disparate pieces of an industry by integrating live
`
`stock market datafeeds, application of complex and sophisticated technical
`
`analysis, and actionable alerting in a server-based infrastructure provided by the
`
`provider, in an actual real-time environment. This convergence of technologies in
`
`the stock market industry had never been achieved before. Ex. 2023 at ¶29.
`
`As exemplified in New Claim 5, the invention provides real-time technical
`
`analysis and notification of stock market events. Motion to Amend at 6.
`
`(new – proposed substitute claim) A real-time method of providing
`5.
`technical analysis and notification of stock market events comprising the
`steps of:
`
`
`
`4
`
`

`

`Case No. CBM2013-00005 (JYC)
`Patent 7,941,357
`
`
`
`
`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 stock market event;
`
`
`applying the 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 a valid stock market event has occurred; and
`
`generating a notification in real-time when the valid stock market
`event has been determined to have occurred by the provider’s network of
`computers, where the notification is provided in real-time by the provider’s
`network of computers to a remote communication device of the user.
`
`A provider provides a network of computers, which is server-based, scalable
`
`and redundant. This network of computers receives real-time stock market data.
`
`Here, real-time simply means live, streaming data. Ex. 2023 at ¶102. The
`
`provider’s network of computers also receives watch data specified by a user,
`
`through a user system. The user system, such as a PC or mobile device, is in
`
`remote communication with the provider’s network of computers. The watch data
`
`comprises more than one technical analysis formula for predicting price trends
`
`based on market action, as well as other data and instructions necessary to define
`
`the stock market event in which the user is interested. Ex. 2023 at ¶28.
`
`
`
`5
`
`

`

`Case No. CBM2013-00005 (JYC)
`Patent 7,941,357
`
`
`
`The provider’s network of computers applies the watch data to the stock
`
`market data, as it is received, on the provider’s network of computers using the
`
`included technical analysis formulae and criteria to determine if a valid stock
`
`market event has occurred. When a valid stock market event has been determined
`
`to have occurred, the provider’s network of computers generates a notification in
`
`real-time. That notification is provided in real-time to the remote communication
`
`device of the user. Here, real-time means that the notification is generated when
`
`the event is determined to have occurred, and the notification is concurrently
`
`provided to the user without delay.
`
`New Claim 6 adds the additional steps of caching the real-time stock market
`
`data on a data server, and then generating and updating a technical analysis
`
`indicator in real-time. Based on the technical analysis indicator and user-specific
`
`watch data, the invention determines in real-time if a valid stock market event has
`
`occurred. Thus, New Claim 6 covers a more specific approach wherein the stock
`
`market data and technical analysis are incremented in real-time, as the stock
`
`market data is received, with a cache of pre-analyzed data.
`
`New Claim 7 adds a further limitation to the real-time notification by
`
`requiring a live link to be included in the notification, which enables a user to
`
`provide instructions for stock market transactions. With the live link, a user may
`
`
`
`6
`
`

`

`Case No. CBM2013-00005 (JYC)
`Patent 7,941,357
`
`
`immediately return a further instruction from the notification itself, rather than
`
`having to separately or later access means to provide an instruction.
`
`Finally, New Claim 8 presents the invention as a real-time system.
`
`Specifically, New Claim 8 recites the structural elements and limitation that
`
`embody the functional features of the invention, comprising a network guardian,
`
`which comprises one or more switches; a history database subsystem, which
`
`comprises one or more history clients; an alert managing subsystem, which
`
`comprises one or more alert clients and is networked to the history database
`
`subsystem by the network guardian; and an output connector, which is networked
`
`to the alert managing subsystem by the network guardian.
`
`
`
`In and around 2003, Markets-Alert began to commercialize the ‘357 Patent
`
`invention, which it called Real Time Analytics (RTA). Ex. 2024, Declaration of
`
`Graham Maxwell Lindsay (“Lindsay Decl. ”) at ¶15-16. Markets-Alert set up a
`
`server-based infrastructure at its office in the Powertel Building in Queensland,
`
`Australia. Ex. 2024 at ¶14. The room consisted of several server stacks networked
`
`together and had an asynchronous high speed internet connection . Id.
`
`Markets-Alert was a real company with real products. It invested over AUD 8
`
`Millions to commercialize the ‘357 Patent invention. Ex. 2024 at ¶29. Markets-
`
`
`
`7
`
`

`

`Case No. CBM2013-00005 (JYC)
`Patent 7,941,357
`
`
`Alert also developed and adapted the ‘357 Patent technology for security
`
`applications in the banking industry. Ex. 2024 at ¶12.
`
`In 2003, through its predecessor company, Markets-Alert entered into a
`
`“Content Supply Agreement” with Vodafone Network Pty. Ltd. (“Vodafone”) in
`
`Australia. Ex. 2024 at ¶16. In 2004, Markets-Alert commenced discussions with
`
`Bloomberg L.P. (“Bloomberg”), which was interested in incorporating the RTA
`
`technology. Id. at ¶ 17. Markets-Alert was also involved in partnership and
`
`licensing discussions with a number of other entities. Ex. 2024 at ¶28.
`
`By May 2008, Markets-Alert and Bloomberg agreed to prepare a pilot
`
`project in conjunction with Hewlett-Packard Development Company, L.P. (“HP”),
`
`which was to assist in marketing and consult on the logistics of implementing the
`
`hardware for Markets-Alert’s RTA system. Id. at ¶ 22. After receiving detailed
`
`business and technical disclosures from Markets-Alert, Bloomberg suddenly ended
`
`the discussions and two years later launched their own implementation of the ‘357
`
`Patent, “LaunchPad 2010.” Id. at 24. By 2010-2011, several of the largest players
`
`in the industry, like Bloomberg had rolled out copy-cat technology. Id. at ¶ 29-32.
`
`Despite significant investment and efforts, Markets-Alert was unable to compete
`
`with these companies. Id. at ¶ 29-32. It was forced to close its doors in 2011. Id.
`
`at ¶ 29-32.
`
`
`
`8
`
`

`

`Case No. CBM2013-00005 (JYC)
`Patent 7,941,357
`
`
`
`State Of The Art
`
`B.
`During the 1999-2000 time frame, the stock market industry and stock
`
`market trading went through significant transformations. The dotcom boom had
`
`created an unprecedented bull market and everyone seemed to be trading.
`
`Sophisticated trading, which use to be the province of specialists and institutions,
`
`was now available to anyone with a PC and an internet connection. Ex. 2023 at
`
`¶38. A plethora of technical analysis software programs made even the most
`
`novice trader seem like a genius. Ex. 2023 at ¶ 49.
`
`But in reality, the stock market industry had become more complex than it
`
`had ever been. Ex. 2023 at ¶50. The industry had three major types of players.
`
`Ex. 2023 at ¶50. There were the data providers, which provided access to raw
`
`stock market data (e.g., prices and volumes), such as Interactive Data Corporation
`
`and eSignal.com, Inc.1 Ex. 2023 at ¶51. There were online trading web-sites, such
`
`as Petitioners E*Trade and TD Ameritrade, which let traders place market orders
`
`via the internet. Ex. 2023 at ¶52. And there were developers of technical analysis
`
`software, such as those mentioned in S&C Review and Opening Bell.2 Ex. 2023 at
`
`¶59.
`
`
`1 Both companies are defendants in the related court cases
`2 Recognia, Inc., a defendant in the related court cases, is another developer of technical analysis
`software, whose software was recently integrated into the trading platform of Petitioner Charles
`Schwab.
`
`
`
`9
`
`

`

`Case No. CBM2013-00005 (JYC)
`Patent 7,941,357
`
`
`
`Today, the union of these disparate moving parts is both seamless and taken
`
`for granted. However, in the 1999-2000 time frame, the major players ruled their
`
`respective spheres and the nexus lay in the trader. Ex. 2023 at ¶63. For example,
`
`it was becoming more and more common for a trader to use an online trading web-
`
`site to place his trades, rather than say, call a broker. Ex. 2023 at ¶53. To decide
`
`what trades to make, some traders downloaded technical analysis software to their
`
`PCs. Ex. 2023 at ¶59. Some traders even subscribed to a stock market datafeed,
`
`which streamed delayed or real-time market data onto the PC’s hard-drive, though
`
`this was less common. Ex. 2023 at ¶60. But all of this was the burden of the
`
`trader to set up and ran exclusively through a local PC – this was the paradigm of
`
`the day. Ex. 2023 at ¶70.
`
`However, the advances in technology meant more data, more processing,
`
`and, most importantly, more expectations. Ex. 2023 at ¶61-63. Opportunities lost
`
`due to technological impediments became less and less acceptable for certain
`
`segments of the trading community. Ex. 2023 at ¶63. At the time, these burdens
`
`and trying to overcome them fell on the trader. Ex. 2023 at ¶61. The industry and
`
`established players had no motivation to change or improve a good thing. Data
`
`purveyors did not care what a trader did with the information he or she streamed –
`
`they made money by just selling the data. Online trading web-sites did not concern
`
`
`
`10
`
`

`

`Case No. CBM2013-00005 (JYC)
`Patent 7,941,357
`
`
`themselves with how a trader decided to make a trade – they made money by
`
`charging commission on the trade. Developers of technical analysis software just
`
`sold their software.
`
`This was the reality in the 1999-2000 time frame and the backdrop for the
`
`‘357 Patent invention, which is important for contextualizing the invention. The
`
`need for innovation was there. Traders faced a number of significant problems.
`
`Ex. 2023 at ¶64. They were at the mercy of the limits of their PCs, both in terms
`
`of memory and processing capabilities, and the propensity for catastrophic failures
`
`(PC stalling or crashing). Ex. 2023 at ¶64-66. Conventional back-up solutions
`
`available to the trader as an individual were of marginal help. Ex. 2023 at ¶64. A
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`trader could have run multiple and duplicative PCs, but that alone could not solve
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`connectivity problems, such as slow or bad internet access.
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`What traders really needed was scalability, redundancy and high availability
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`for technical analysis of stock market data, integrated in a truly real time
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`environment. Ex. 2023 at ¶68. None of the prior art at the time presented truly
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`viable solutions to these real-world problems facing traders. Ex. 2023 at ¶68.
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`Trading software, being downloaded to the trader’s PC, was always inherently
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`susceptible to these problems. Ex. 2023 at ¶68. Moreover, online trading web-
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`sites did not provide alternatives, which may be the most telling indication. Ex.
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`Patent 7,941,357
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`2023 at ¶68. For example, despite vast resources and talent, none of the
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`Petitioners, who were among the biggest players in the stock trading industry in the
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`1999-2000 time frame, were able to develop and implement the technology of the
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`‘357 Patent invention.3 Indeed, Petitioner Bloomberg did not implement its own
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`embodiment of the ‘357 Patent invention until years after the filing and only after
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`it engaged in several years of discussions with Markets-Alert to license the
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`technology. Ex. 2024 at ¶27.
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`But Markets-Alert did have a real and real-time solution in the ‘357 Patent
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`invention, which provided numerous benefits and advantages. Ex. 2001 at Col.
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`4:53-63. As a server-based system, the invention provides the high availability and
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`accessibility needed by an active trader. Ex. 2023 at ¶32. Shifting the nexus to a
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`provider’s network of computers overcame the unreliability of purely PC-based
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`software, one of the persistent problems faced by traders. Under the claimed
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`architecture and network guardian, the invention isolates hardware failure and
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`prevents an entire system crash. Components could also be easily added or
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`replaced to increase capacity, add supplemental functionality and fix problems, all
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`without interrupting the always-on service provided by the system. Ex. 2023 at
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`¶32.
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`3 Petitioners did not submit any evidence of having implemented the’ 357 Patent technology
`before the priority date.
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`The ‘357 Patent invention enabled a vast expansion in both the scope and
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`sophistication of technical analysis. Ex. 2023 at ¶28. With the invention,
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`thousands of formulas and indicators could be applied. The results would be more
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`accurate and precise. Moreover, with the invention, pre-computed data could be
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`cached to enable dynamic updating, which improves the performance of technical
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`analysis indicators. Consequently, the technical analysis could be applied to a
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`much greater range and amount of data, unlike prior art PC-based software, which
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`limited the scope of scanning. See Petitioners’ Ex. 1014, Opening Bell at 5 (“In
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`order for Real-Time Alerts to work properly, those with an internet connection
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`using a standard modem should limit the ticker symbols to less than one
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`hundred.”); Ex. 2023 at ¶33.
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`C. Claim Construction
`The Board took the broadest reasonable construction on a number of terms
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`in the originally issues claims. However, those claims were never intended to
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`cover the breadth created by the Board’s construction. In response to the Board’s
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`construction, Markets-Alert submitted new claims that more clearly point out the
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`intended breadth of the invention. Motion to Amend at 3-5. Markets-Alert
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`addresses the Board’s constructions to the extent they may be implicated by the
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`amendments. For all other claim terms, not specifically addressed herein, Markets-
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`Alert submits they should be construed in accordance with their plain and ordinary
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`meaning.
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`“network of computers”
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`1.
`The Board construed this term to include “any number of computers
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`connected together to communicate which includes a PC connected to the Internet,
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`which itself is a network of computers.” Decision at 15. This was never the
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`intended scope. While not necessarily limiting, the ‘357 Patent specification
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`clearly describes the network configuration of embodiments of the invention as a
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`server-based infrastructure. Motion to Amend at 7-10. Even during prosecution,
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`the applicant and examiner both considered the network of computers to be a
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`server-based infrastructure. For example, the examiner only based his rejections
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`on integrated, system level prior art. Ex. 2023 at ¶98.
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`Under the New Claims, the network of computers has been explicitly limited
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`to a provider’s server-based, scalable and redundant network of computers, which
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`is what the original scope should have bee