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