Trials@uspto.gov
`571-272-7822
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`
`
`
`
` Paper 44
`Entered: July 30, 2013
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`
`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 and 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 26, 2013, a telephone conference call was held between respective
`counsel for the parties and Judges Lee and Chang. Bloomberg initiated the
`conference call, requesting the Board to expunge Markets-Alert’s revised motion
`to amend claims (Paper 42) from the record.
`Because the original motion to amend claims (Paper 39) was over the
`15-page limit, the Board previously authorized Markets-Alert to file a revised
`motion to amend claims, in order to conform to the 15-page limit requirement set
`forth in 37 C.F.R. § 42.24. (Paper 41.) Pursuant to the Board’s Order (Paper 41),
`Markets-Alert filed a revised motion to amend claims (Paper 42) and a certification
`that its revised motion to amend claims does not add any substantive material, as
`well as a list of the changes made to the motion (Ex. 2077).1
`During the conference call, Markets-Alert confirmed that the list of the
`changes reflects all of the changes made to the motion to amend. Bloomberg did
`not disagree, and agreed that the changes are non-substantive, except the changes
`to the proposed substitute claims (see Ex. 2077 at 3).
`In that regard, Bloomberg alleged that those amendments changed the scope
`of the proposed substitute claims. In particular, Bloomberg identified three
`examples including this—in dependent claim 6, “a valid stock market event” was
`changed to “the valid stock market event.” (Paper 42 at 3; Ex. 2077 at 3.) Upon
`further discussion, however, it was apparent that the amendments to the proposed
`substitute claims are correcting typographical errors and instances of lack of formal
`antecedent basis. Therefore, Bloomberg withdrew its request that Markets-Alert’s
`revised motion to amend claims (Paper 42) be expunged from the record.
`
`1 Markets-Alert also filed an exhibit list as Ex. 2077 (“Markets-Alert Exhibit
`List”). Because exhibits must be uniquely numbered (see 37 C.F.R. § 42.63(c)),
`Ex. 2077 (“Markets-Alert Exhibit List”) is hereby expunged. The exhibit list was
`re-filed by Markets-Alert, as Paper 43, on July 26, 2013.
`
`
`
`2
`
`

`
`Case CBM2013-00005
`Patent 7,941,357
`
`
`As explained during the conference call, Markets-Alert should have sought
`prior authorization for making the changes to the proposed substitute claims.
`Nevertheless, to minimize further delay, the Board authorized, nunc pro tunc, the
`filing of Markets-Alert’s revised motion to amend claims that include the changes
`to the proposed substitute claims (Paper 42).
`In consideration of the foregoing, it is hereby
`ORDERED that the filing of Markets-Alert’s revised motion to amend
`
`claims (Paper 42) is authorized in its entirety, nunc pro tunc; and
`FURTHER ODERED that nothing in this communication constitutes any
`
`indication of appropriateness for entry of Markets-Alert’s proposed substitute
`claims.
`
`
`
`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
`
`
`
`3