`571-272-7822
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` Paper 41
`Entered: July 24, 2013
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`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,
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`v.
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`MARKETS-ALERT PTY LTD.
`Patent Owner.
`____________
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`Case CBM2013-00005 (JYC)
`Patent 7,941,357
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`
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`Before JAMESON LEE, SALLY C. MEDLEY, JONI Y. CHANG, Administrative
`Patent Judges.
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`CHANG, Administrative Patent Judge.
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`
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`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
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`Case CBM2013-00005
`Patent 7,941,357
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`On July 3, 2013, Markets-Alert filed a patent owner response and a motion
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`to amend claims. Papers 39 and 40. The parties jointly initiated a telephone
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`conference call, seeking the Board’s guidance on the procedure for correcting the
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`motion to amend claims. A telephone conference call was held between respective
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`counsel for the parties and Judges Lee, Medley, and Chang on July 23, 2013.
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`During the telephone conference call, Markets-Alert indicated that its
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`motion to amend claims is over the 15-page limit, and that the error was
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`inadvertent. Markets-Alert requested authorization to file a revised motion that
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`would comply with the page limit.
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`Bloomberg countered that a revised motion would place a burden on
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`Bloomberg to determine whether the revised motion contains substantive changes.
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`To alleviate Bloomberg’s concern, Markets-Alert agreed to provide, with its
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`revised motion, a certification that the revised motion does not add any substantive
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`material and a list of the format changes and deletions.
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`Bloomberg also requested additional pages for its opposition and asked the
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`Board to expunge Markets-Alert’s patent owner response, alleging that the patent
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`owner response is inappropriate as it merely contains arguments as to why the
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`proposed substitute claims are patentable over the prior art.
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`The Board directed attention to 37 C.F.R. § 42.220(a) which provides that a
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`“patent owner may file a response to the petition addressing any ground for
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`unpatentability not already denied.” As explained during the call, Bloomberg, in
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`its reply to the patent owner response, may explain why Markets-Alert’s patent
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`owner response fails to comply with the rule requirement. And in its opposition to
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`the motion to amend claims, Bloomberg may argue why the proposed substitute
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`claims are unpatentable. It is not necessary to determine the propriety of the patent
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`2
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`Case CBM2013-00005
`Patent 7,941,357
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`owner response at this time, before Bloomberg files its reply, because that reply
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`need not respond to improper content in the patent owner response.
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`In consideration of the foregoing, it is hereby:
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`ORDERED that Markets-Alert is authorized to file a revised motion to
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`amend claims within three business days from the date of the conference call; the
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`revised motion must be limited to 15 pages and must not add substantive material;
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`FURTHER ORDERED that Markets-Alert must file, as an exhibit with its
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`revised motion to amend claims, a certification that the revised motion does not
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`add any substantive material and a list of the format changes and deletions;
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`FURTHER ORDERED that Bloomberg’s request for additional pages for
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`its opposition is denied; and
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`FURTHER ORDERED that Bloomberg’s request that Markets-Alert’s
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`patent owner response be expunged is denied.
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`3
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`Case CBM2013-00005
`Patent 7,941,357
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`PETITIONER:
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`Michael T. Rosato
`Brian D. Range
`Wilson Sonsini Goodrich & Rosati
`Email: mrosato@wsgr.com
`Email: brange@wsgr.com
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`PATENT OWNER:
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`Andrew Choung
`Glaser Weil Fink Jacobs Howard Avchen & Shapiro, LLP
`Email: achoung@glaserweil.com
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`William Fitzpatrick
`F. Robbe International
`Email: bill@frobbeintl.com
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`4
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