Paper No. ________
`Filed: October 2, 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 MARKETS-ALERT MOTION TO AMEND
`
`

`

`TABLE OF CONTENTS
`
`Page
`
`STATEMENT OF PRECISE RELIEF AND OVERVIEW OF WHY MARKETS-
`I.
`ALERT’S REQUESTED RELIEF SHOULD BE DENIED.................................................... 1
`
`NEW CLAIMS 5-8 IMPROPERLY ENLARGE THE SCOPE OF THE ’357
`II.
`PATENT CLAIMS................................................................................................................... 1
`A.
`New Claims 5-8 Are Improperly Broader Than the ’357 Patent Claims ................... 1
`B.
`Claim 8 is Per Se Broadened ...................................................................................... 3
`C.
`New Claims 6-8 Are Wholly Untraceable To Any Challenged Claim ...................... 4
`
`NEW CLAIMS 5-8 IMPROPERLY INTRODUCE NEW MATTER THAT IS NOT
`III.
`SUPPORTED BY THE ’357 PATENT SPECIFICATION..................................................... 4
`A. Markets-Alert Did Not Identify Support For New Claims 5-8 “In The Original
`Disclosure” Or Any “Earlier-Filed Disclosure” ................................................................... 4
`B.
`New Claim 5 Is Not Supported By The ’357 Patent Specification ............................ 5
`C.
`New Claim 6 Is Not Supported By The ’357 Patent Specification ............................ 7
`D.
`New Claim 7 Is Not Supported By The ’357 Patent Specification ............................ 8
`E.
`New Claim 8 Is Not Supported By The ’357 Patent Specification ............................ 8
`
`IV.
`
`THE MOTION LACKS CLAIM CONSTRUCTION .................................................. 9
`
`MA FAILS TO DEMONSTRATE ANY PATENTABLE DISTINCTION OF NEW
`V.
`CLAIMS 5-8 OVER THE PRIOR ART ................................................................................ 10
`A. Markets-Alert’s Prior Art Review is Deficient as Deliberately Limited to Only Four
`References........................................................................................................................... 10
`B. Markets-Alert Improperly Attacks Prior Art References Individually..................... 12
`C.
`New Claims 5-8 Are Unpatentable Over The Prior Art ........................................... 15
`
`VI.
`
`CONCLUSION ........................................................................................................... 16
`
`i
`
`

`

`LIST OF CITED EXHIBITS
`
`Exhibit 1005
`
`Exhibits
`1010-1013
`
`Exhibit 1001 U.S. Patent Number 7,941,357 (the “’357 Patent”)
`Exhibit 1004
`PCT Patent Application No. PCT/US99/18767, Publication No.
`WO 00/11587 (published Mar. 2, 2000)(Michael Satow et al.,
`applicants) (“Satow”)
`John Sweeney, Product Review: TradeStation 4.0 Build 15, Stocks
`& Commodities, December 1996, at 649 (“S&C Review”)
`Exhibit 1009 Window On WallStreet Internet Trader Deluxe User's Guide,
`1998 (“Windows on WallStreet User Guide”).
`Window On WallStreet Internet Trader Pro 7 – Alert Manager
`(Dec. 3, 1998), available at
`http://web.archive.org/web/19981203133004/http://www.windowo
`nwallstreet.com/Alertmanager.html;
`Window On WallStreet Day Trader 7 Internet Version (Apr. 23,
`1999), available at
`http://web.archive.org/web/19990423090801/http://www.windowo
`nwallstreet.com/dt7internet.html;
`Window On WallStreet Internet Trader Pro 7 – Tour Overview
`(Dec. 7, 1998), available at
`http://web.archive.org/web/19981207032249/http://www.windowo
`nwallstreet.com/touroverview.html; and
`Window On WallStreet Internet Trader Pro 7 – What's New?
`(Dec. 2, 1998), available at
`http://web.archive.org/web/19981202154050/http://www.windowo
`nwallstreet.com/whatsnew.html (collectively “Windows on
`WallStreet Web Archives”)
`Paul Luebbe, AIQ Opening Bell Monthly Vol. 8, Issue 10,
`October 1999 (“Opening Bell”)
`Exhibit 1015 U.S. Patent 5,954,793 to Stutman et al. (“Stutman”)
`Investor/RT Tour (August 18, 2000), available at
`Exhibits
`1026-1032
`http://web.archive.org/web/20000818211350/http://www.linnsoft.
`com/tour/index.htm;
`Investor/RT Tour – Technical Indicators (May 12, 2000), available
`at
`http://web.archive.org/web/20000512005220/http://www.linnsoft.
`com/tour/technicalindicators.htm;
`Investor/RT Tour – Alarm Preferences (May 22, 2000), available
`
`Exhibit 1014
`
`ii
`
`

`

`at
`http://web.archive.org/web/200005222325275/http://www.linnsoft
`.com/tour/prefs_alarms.htm;
`Investor/RT Tour –Alarms/Alerts (August 19, 2000), available at
`http://web.archive.org/web/200008190803135/http://www.linnsoft
`.com/tour/alerts.htm;
`Investor/RT Tour –myTrack Preferences (February 29, 2000),
`available at
`http://web.archive.org/web/20000229053607/http://www.linnsoft.
`com/tour/prefs_mytrack.htm;
`Investor/RT Tour – Instrument Setup (April 7, 2000), available at
`http://web.archive.org/web/20000407193607/http://linnsoft.com/to
`ur/instrumentsetup.htm; and
`Investor/RT Tour –Scans (February 29, 2000), available at
`http://web.archive.org/web/20000229160235/http://www.linnsoft.
`com/tour/scans.htm (collectively “Investor/RT”)
`Press Release, PR Newswire, Data Broadcasting Launches Esignal
`Version 5.3 with Enhanced Alerts Capabilities And Improved
`Nasdaq Level II Tools (June 12, 2000) (“eSignal”)
`Transcript of the August 28, 2013 deposition of Markets-Alert’s
`technical expert, Mr. Neal Goldstein, filed herewith
`Exhibit 1036 U.S. Patent 7,873,555 to Kraemer, filed herewith
`Exhibit 1037
`PCT WO00/28487 to Chrapaty, filed herewith
`Exhibit 1038
`PCT WO98/58356 to Keilani, filed herewith
`Exhibit 1039
`PCT WO00/33217 to Ambrose, filed herewith
`Exhibit 1040 U.S. Patent 5,938,732 to Lim et al., filed herewith
`Exhibit 1041 U.S. Patent 4,554,418 to Toy, filed herewith
`Exhibit 1042
`Errata sheets for transcript of Mr. Neil Goldstein’s August 28,
`2013 deposition, filed herewith
`Second Declaration of Dr. Steven Kursh, Ph.D., CSDP, CLP (“SK
`Decl.”), filed herewith
`Exhibit 2023 Declaration of Mr. Neal Goldstein (“NG Decl.”)
`
`Exhibit 1033
`
`Exhibit 1035
`
`Exhibit 1043
`
`iii
`
`

`

`I.
`
`STATEMENT OF PRECISE RELIEF AND OVERVIEW OF WHY
`MARKETS-ALERT’S REQUESTED RELIEF SHOULD BE DENIED
`Petitioners Bloomberg et al. (“Petitioners”) ask the Board to deny Markets-
`Alert’s (“MA”) substitute motion to amend (“Motion”).1 The moving party bears
`the burden to show entitlement to the relief requested. 37 CFR 42.20(c).
`
`Accordingly, MA bears the burden of providing comparison of the proposed
`
`claims with those being replaced, construction of its proposed claims, and
`
`demonstration that those claims do not add new matter. MA also must show that
`
`the proposed claims recite technical features that make those claims patentable
`
`over both the prior art of record and prior art known to MA. Petitioner does not
`
`have to show unpatentability.
`
`MA’s Motion fails both procedurally and substantively. The Motion and
`
`supporting documentation fail to provide construction of the proposed claims or
`
`proper comparison with the claims being replaced. MA further fails to identify
`
`sufficient support in the ’357 Patent for the proposed claims, and does not identify
`
`any limitation that distinguishes the proposed claims from the prior art. Therefore,
`
`MA’s substitute motion to amend must be denied.
`
`II.
`
`NEW CLAIMS 5-8 IMPROPERLY ENLARGE THE CLAIM SCOPE
`
`A.
`
`New Claims 5-8 Are Improperly Broader Than the ’357 Patent Claims
`
`1 MA’s substitute motion to amend replaces its initial motion to amend, which
`exceeded the page limit requirements. See PN 39; see also PN 41; 42.
`
`

`

`The AIA forbids patentees from enlarging claim scope during CBM Review.
`See Leahy-Smith America Invents Act (Pub. L. 112-29, 125 Stat. 284 (2011))
`(“AIA”) at § 18(a); 35 U.S.C. § 316(d)(3); see also 37 C.F.R. § 42.221(2)(ii); Idle
`
`Free Systems, Inc. v. Bergstrom, Inc., IPR2012-00027, PN 26 (PTAB June 11,
`
`2013) at 3-5 (“a substitute claim may not enlarge the scope . . . by eliminating any
`
`feature”); MPEP § 1412.03(I). Yet, this is exactly what MA has done with new
`
`claims 5-8. Claim 5, for example, eliminates or rewrites a number of limitations
`compared to claim 1, thereby broadening of the claim in a number of aspects. See,
`
`e.g., Ex. 1043 at ¶5 (including “marked up” version). Non-limiting examples of
`
`how new claims 5-8 are impermissibly broadened compared to the issued ’357
`
`Patent are listed below.
`“periodically apply”: Claims 1-4 required that the network of computers
`“periodically apply” watch data. ’357 Patent at 5:11. The Board held that
`
`“periodically apply” includes “one or more time intervals. PN 18 at 20. This
`
`limitation has been wholly eliminated from new claims 5-8, as acknowledged in
`
`the PO’s Response. PN 38 at 19-20. Claim 5 does not include any “periodically”
`
`limitation, nor do any of new claims 6-8. Thus, while the original claims required
`
`applying watch data over at least one time interval, the scope of new claims 5-8 is
`improperly enlarged to include non-periodic application of watch data. See Ex.
`
`1043 at ¶6; 13-14.
`Notification “to the user”: Original claim 1 expressly required a real-time
`notification to the user, whereas new claim 5 has been broadened such that the
`
`2
`
`

`

`real-time notification need be provided to only “a remote communication device.”
`The difference between providing a real-time notification to a human user in real-
`
`time (e.g., as required by ’357 Patent claim 1) versus merely providing notification
`to a device (e.g., as recited in new claim 5) nontrivially affects claim scope, as
`
`acknowledged by Mr. Goldstein during cross-examination. Ex. 1035 at 128:9-
`129:24. In fact, the entire claim 1 clause “the real-time notification . . . for share
`market transactions on an instantaneous basis” has been completely removed
`from new claim 5. See Ex. 1034 at ¶7.
`“upon occurrence of the event”: New claims 5-8 also eliminate the
`requirement of claims 1-4 that the real-time notification to the user occurs “upon
`the occurrence of the event defined by the user-specified watch data.” Ex. 1001
`
`at 5:21-6:1. Claim 5, in contrast to claim 1, more permissively requires generation
`
`of a notification “when the valid stock market event has been determined to have
`occurred by the provider’s network of computers.” See Ex. 1034 at ¶8.
`
`B.
`
`Claim 8 is Per Se Broadened
`
`Claim 8 is per se broadened because it claims a system, whereas claims 1-4
`were directed solely to methods. See Ex. 1043 at ¶9. Claim broadening in the
`context of patent reissue provides guidance. See, e.g., MPEP § 1412.03 (“where
`
`the original patent claims only the process, and the reissue application newly adds
`
`product claims, the scope of the claims has been broadened because a party could
`
`not necessarily be sued for infringement of the product based on the claims of the
`original patent (if it were made by a different process).”); see also Ex parte
`
`3
`
`

`

`Wikdahl, 10 U.S.P.Q.2d 1546, 1549 (BPAI 1989). Because claim 8 would allow
`
`an infringement suit based, for example, on making an apparatus whereas claims 1-
`
`4 only allow suit based on practice of a method, claim 8 is improperly broadened.
`
`C.
`
`New Claims 6-8 Are Wholly Untraceable To Any Challenged Claim
`
`Not only have proposed new claims 6-8 been improperly broadened, but
`they are not substitute claims traceable to any of original claims 1-4. See Idle Free
`
`at 5 (“[a]ll proposed claims should be traceable to an original challenged claim.”).
`
`Claims 6-8 are new and bear no resemblance to any of ’357 Patent claims 1-4.
`
`None of claims 6-8 recite the language found in now canceled claims 2-4 of the
`
`’357 Patent. Thus, the claims are not responsive to any ground of patentability.
`
`III. NEW CLAIMS 5-8 IMPROPERLY INTRODUCE NEW MATTER
`THAT IS NOT SUPPORTED BY THE ’357 PATENT
`SPECIFICATION
`
`An amendment during CBM Review cannot introduce new subject matter.
`See 37 C.F.R. § 42.121(a)(2)(ii); AIA § 18(a); 35 U.S.C. § 316(d)(3). MA must
`“demonstrate support for the claimed subject matter as a whole.” Nichia Corp. v.
`
`Emcore Corp., IPR2012-00005, PN 27 at 4 (emphasis in original).
`A. Markets-Alert Did Not Identify Support For New Claims 5-8 “In The
`Original Disclosure” Or Any “Earlier-Filed Disclosure”
`As an initial matter, MA’s motion fails to comply with 37 CFR § 42.221, as
`it does not identify requisite support for new claims 5-8 in the original disclosure.
`
`MA cites to provisions in the issued ’357 Patent, rather than the application as
`originally filed. Numerous specification amendments were filed during ex parte
`
`4
`
`

`

`prosecution. Furthermore, MA identifies no support for the proposed new claims
`in the Australian patent application (AU)PR 1097, filed October 27, 2000. See
`
`Rule 42.221(b)(2). The proposed new claims should be denied priority to this
`
`application on this basis – neither Petitioners nor the Board bear the burden of
`
`searching for claim support in non-identical priority documents.
`
`B.
`
`New Claim 5 Is Not Supported By The ’357 Patent Specification
`
`At least four aspects of claim 5 introduce new matter to Claims 5-7:
`“server-based, scalable and redundant”: Claim 5 requires a “provider’s
`
`network of computers which is server-based, scalable, and redundant.” The ’357
`
`Patent simply does not disclose these limitations, and the terminology “scalable”
`and “redundant” is found nowhere in the ’357 Patent specification. Most notably,
`
`the ’357 Patent does not discuss a “redundant” network, or a network where if one
`
`computer becomes inoperable the system continues to operate without data being
`
`lost. MA cites to its expert testimony, which is based on misplaced citations and
`
`unsupported and conclusory statements that should not be entitled any weight.
`
`See, e.g., Ex. 2023 at ¶72-74; see also Ex. 1043 at ¶11-12.
`
`Even if the ’357 Patent’s short disclosure illustrates a network that could be
`
`considered, upon retrospective review, “server-based, scalable and redundant,” that
`
`does not constitute written description support for vastly broad claims such as
`
`proposed claims 5-8, which recite only distilled-out functional aspects of a system.
`See Lizardtech, Inc. v. Earth Resources Mapping, Inc., 424 F.3d 1336, 1345 (Fed.
`
`Cir. 2005). The proposed claims are far broader than the specification’s teachings.
`
`5
`
`

`

`“as real-time stock market data is received”: Claim 5 recites that watch
`
`data is applied to “real-time stock market data as the real-time stock market data is
`
`received.” MA’s expert characterizes this as intended to exclude that the watch
`
`data calculations occur with prior storage causing intentional delay. See Ex. 1035
`
`at 55:4-57:1; 71:20-25; 62: 2-13; 66:10-69:2; 54:22-55:2 (admitting that periodic
`
`or interval-based application of watch data to real-time data was taught in the prior
`
`art); see Ex. 1043 at ¶13-14.
`
`Claim 5 presents new subject matter because the ’357 Patent specification
`
`only mentions that watch data/formulas are applied to data at a specified interval,
`or periodically. See Ex. 1001 at 3:49-50; 4:49-51 (teaching periodic application as
`
`“[t]echnical analysis indicators can be set to ‘repeat’ over a certain period”). The
`
`testimony of MA’s expert appears to actually confirm, rather than contradict, this
`
`interpretation of the limited ’357 Patent disclosure. Ex. 2023 at ¶80. The ’357
`Patent includes no description of applying watch data as real-time data is received.
`While not dispositive of the ’357 Patent disclosure, periodic watch data
`
`application is also exactly how MA’s submitted marketing literature describes its
`
`“RTA product.” Ex. 2062 at 10, 11; Ex. 2063 (stating that MA’s product permits
`
`scanning “in 60 second increments”).
`
`“more than one technical analysis formula”: Claim 5 states that “more
`
`than one technical analysis formula . . . defines a valid stock market event.” The
`’357 Patent does not disclose watch data where more than one technical analysis
`formula defines a single event. Instead, MA cites to 2:47-58 of the ’357 Patent
`
`6
`
`

`

`specification, which merely identifies a few different but singular watch data
`examples. See Ex. 2023 at ¶75; see also Ex. 1043 at ¶15.
`“valid stock market event”: The term “valid stock market event,” which
`
`MA and its expert admit is new, does not appear anywhere in the’357 Patent. See
`
`Motion at p. 9; Ex. 2023 at ¶78; Ex. 1035 at 41:1-42:19; Ex. 1043 at ¶16.
`
`C.
`
`New Claim 6 Is Not Supported By The ’357 Patent Specification
`
`In addition to the terms identified above, Claim 6 introduces new matter in
`
`at least two ways:
`“updating a cache”: Claim 6 requires “updating a cache of stock market
`
`data on a data server,” but the ’357 Patent does not recite a “cache” or “updating a
`cache.” See Ex. 1035 at 130:7-134:12. MA cites only to ’357 Patent disclosure of
`
`“data scoop” by a “history server”, and offers conclusory comments regarding
`
`claim support. Ex. 2023 at 81-82. Instead of reciting any “data scoop” by a
`
`“history server,” the proposed claim 6 instead introduces vastly broader and more
`
`generic language involving “updating a cache”—language unsupported in the ’357
`
`Patent specification. See Ex. 1043 at ¶17.
`“applying the technical analysis formula . . . to generate a technical
`analysis indicator”: The ’357 Patent never discloses that a technical analysis
`
`indicator may be the output of a technical analysis formula; rather, the
`specification teaches that a technical analysis indicator is a formula. See, e.g., Ex.
`
`1001 at 3:49-50 (“The drone … applies the users [sic] chosen technical and
`
`analysis indicators formulas to the data”); Ex. 1035 at 137:1-139:16 (identifying
`
`7
`
`

`

`technical analysis formula and indicator as interchangeable terms). A technical
`
`analysis indicator serving as output of a formula (rather than being a formula itself)
`is not described in the ’357 Patent. See Ex. 1043 at ¶18.
`
`D.
`
`New Claim 7 Is Not Supported By The ’357 Patent Specification
`
`In addition to the terms identified above, claim 7 introduces at least the
`
`following new subject matter lacking requisite support:
`
`“live link”: The ’357 Patent never uses the term “link” and certainly fails to
`
`disclose a “live link” included in the “real-time notification” to enable the user to
`provide an instruction for a stock market transaction. See Ex. 1035 at 140:4-23;
`
`Ex. 1043 at ¶19.
`
`E.
`
`New Claim 8 Is Not Supported By The ’357 Patent Specification
`
`Claim 8 introduces introduces new matter in various ways:
`“a network guardian, which comprises one or more switches”: The ’357
`
`Patent discloses a “network guardian”, but does not disclose one comprising one or
`
`more switches. Instead, Fig. 2 of the ’357 Patent depicts switches outside of and
`
`separate from the “GUARDIAN,” and “does not describe any structure of the
`
`guardian.” See Ex. 1035 at 145:5-147:4; Ex. 1043 at ¶20.
`“a history database subsystem” and “alert managing subsystem”: Such
`“subsystems” are not disclosed anywhere in the ’357 Patent. See Ex. 1035 at
`
`149:21-152:18 and 154:10-21. While the terms “history client” and “alert client”
`
`are disclosed, MA is not free to introduce new, unsupported terms (without
`
`8
`
`

`

`offering any claim construction) such as “history data subsystem” and “alert
`managing subsystem,” long after the ’357 Patent filing. See Ex. 1043 at ¶21.
`“output connector”: The ’357 Patent does identify an “output service” but
`not an “output connector.” See Ex. 1035 at 165:7-12; Ex. 1043 at ¶22.
`“one or more”: Claim 8 recites “one or more” with respect to various
`
`components (e.g., switches, history clients, alert clients), but the ’357 Patent
`
`provides limited disclosure as in Fig. 2 (i.e., showing only 2 switches, only 3
`history clients, only 3 alert clients). See Ex. 1035 at 153:2-8 (admitting conflicting
`
`notions of a single component and an allegedly redundant system).
`
`“applying technical analysis in real-time” and “apply more than one
`technical analysis formula”: This terminology recited in claim 8 lacks requisite
`
`support in the ’357 Patent specification for at least a similar rationale as set forth
`
`above in connection with similar terminology of claim 5. See Ex. 1043 at ¶23.
`IV. THE MOTION LACKS CLAIM CONSTRUCTION
`
`Construction of new claim terms is a fundamental component of MA’s
`
`burden as the moving party seeking entry of new claims. Idle Free at 7. As set
`
`forth above, the proposed new claims 5-8 are littered with newly introduced
`
`language and terminology, much of which is found nowhere in the ’357 Patent
`
`specification. MA’s motion, however, fails to provide construction of new
`
`terminology found in proposed claims 5-8. MA’s expert addresses “claim
`
`construction” at paragraphs 97-103, but only addressed the terminology of ’357
`
`9
`
`

`

`Patent claims 1-4 (now canceled). See Ex. 1035 at 75:12-14 (admitting claim
`
`construction was limited to claims 1-4 of the ’357 Patent).
`
`V. MA FAILS TO DEMONSTRATE ANY PATENTABLE DISTINCTION
`OF NEW CLAIMS 5-8 OVER THE PRIOR ART
`As moving party, MA bears the burden of establishing patentability of each
`
`of proposed claims 5-8 over the prior art. Idle Free at 7. Not only does MA fail to
`meet this burden, its motion does not address prior art at all. To the extent the
`
`Board does consider the testimony of MA’s expert discussing prior art (even
`
`though that testimony is not clearly incorporated in the motion), that testimony is
`
`deficient for at least the reasons set forth below.
`
`A. Markets-Alert’s Prior Art Review is Deficient as Deliberately Limited
`to Only Four References
`MA fails to show patentable distinctions of proposed claims not only over
`the prior art of record, but also prior art known to the patent owner. Idle Free at
`7. MA admittedly addressed only the four references upon which trial was
`ordered: Satow (Ex. 1004), S & C Review (Ex. 1005), Opening Bell (Ex. 1014),
`
`and Stutman (Ex. 1015). This fact was confirmed by MA’s counsel during redirect
`
`of its own expert:
`
`Okay. So those are the four references that you reviewed and
`Q.
`testified to in our declaration?
`A.
`That is correct.
`Q. Were – were you asked to review and analyze any other prior
`art references?
`
`10
`
`

`

`No, I was not.
`A.
`So the scope of your testimony is limited to those four
`Q.
`references?
`A.
`Yes, it is.
`See Ex. 1035 at 178:13-22; see generally id. at 175:19-180:8.
`
`Neither MA nor its expert addressed proposed new claims 5-8 vis-à-vis other
`
`prior art known to be in its possession, including other prior art Petitioners
`
`submitted in their petition for CBM review, such as the Windows on WallStreet
`
`Web Archives (Exs. 1010-1013) or User’s Guide (Ex. 1009), Investor/RT (Exs.
`
`1026-1032), and eSignal (Ex. 1033). For example, eSignal expressly teaches the
`
`very server-based, scalable and redundant network MA argues as the primary
`
`distinctive feature of its proposed claims: “[u]nlike most competitive systems,
`
`eSignal offers speed and reliability by providing direct connections to the
`exchanges and multiple geographically dispersed server farms for data
`redundancy.” Ex. 1033 at 1.
`
`Moreover, MA’s expert conceded that a number of features of the proposed
`
`claims offered as points of distinction regarding the prior art were, in fact, actually
`taught in prior art available to MA (e.g., via its expert) and known long before
`the ’357 Patent. See, e.g., Ex. 1035 at 14:2-15:5; 16:9-17:14 (admitting that
`
`server-based, scalable and redundant networks were well known by 1980, possibly
`as far back as the 1970s); 62:17-19 (admitting the server-based network, as
`specifically recited in claim 5, was known in the prior art); 50:3-51:12 (admitting
`that receiving data on a server-based, scalable and redundant network, as
`
`11
`
`

`

`specifically recited in claim 5, was known in the prior art); 27:17-28:4 (admitting
`
`the fact that technical analysis was known in the art prior to the ’357 Patent is not a
`
`point in dispute); 51:13-21 (admitting that receiving user-specified watch data
`including more than one technical analysis request, as specifically recited in claim
`5, was known in the prior art); 54:22-55:2 (admitting that using a network to
`
`periodically apply user-specified watch data to real-time financial data was known
`
`in the prior art); 62:3-24-63:5 (admitting that generating a notification in real-time,
`as specifically recited in claim 5, was known in the prior art).
`
`B. Markets-Alert Improperly Attacks Prior Art References Individually
`To the extent that MA does address the four prior art references upon which
`
`trial was ordered, MA’s showing fails because it provides little, if any, rationale
`
`beyond merely attacking references individually. Nonobviousness cannot be
`shown by attacking references individually and ignoring the combination taught. In
`
`re Keller, 642 F.2d 413, 208 U.S.P.Q. 871 (CCPA 1981); In re Merck & Co., Inc.,
`
`800 F.2d 1091, 231 U.S.P.Q. 375 (Fed. Cir. 1986). MA’s showing is deficient at
`
`least for failing to address the combined teachings of the identified four references.
`
`Satow: MA never disputes that Satow teaches receiving real-time stock
`
`market data on a provider’s network, which is server-based, scalable and redundant
`
`or that Satow teaches applying market data as it is received. Ex. 1035 at 104-115.
`
`The sole point of distinction that MA’s expert offers between proposed new claim
`
`5 and Satow, is that Satow allegedly fails to teach performing technical analysis in
`connection with the order book of Satow Fig. 6 and trading platform. Id. Or,
`
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`hedging its bet, MA argues Satow fails to teach applying “more than one technical
`
`analysis formula.” As explained above, however, MA’s expert admits that the
`
`prior art encompasses this subject matter, and even that the prior art teaches real-
`
`time technical analysis alerting software. See Ex. 1035 at 57-60; 27:17-28:4;
`
`51:13-21. MA never addresses the obviousness of including art-known technical
`
`analysis features in a trading and alerting platform as disclosed in Satow.
`
`S&C Review and Opening Bell: MA’s primary point of distinction
`
`between the proposed new claims and S&C Review is that “TradeStation was end-
`
`user software, which resided on and operated from the user’s local computer, not
`
`on a provider’s network of computers.” Ex. 2023 at ¶119. MA attempts to
`
`distinguish Opening Bell (Ex. 1014) and the Trading Expert Pro product using a
`
`similar rationale. Ex. 2023 at ¶130. This rationale is deficient for several reasons.
`
`First, the ’357 Patent does not recite or otherwise identify the term
`
`“provider’s network of computers”, and, as noted above, MA has provided no
`
`claim construction, either in the motion or via its expert, for this terminology. MA
`
`actually expressly identifies a networked third party PC as part of such a network,
`
`which only adds confusion to the claim construction exercise left to Petitioners and
`the Board. See Ex. 2023 at ¶130; see also Ex. 1035 at 120:13-24. MA fails to
`
`distinguish a third party PC (or multiple third party PCs) loaded with the
`
`TradeStation software (or, e.g., Trading Expert Pro, Window on Wall Street, etc.)
`
`and coupled to a server-based financial data feed, via the internet, from a
`“provider’s network of computers” as recited in the proposed claims.
`
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`Moreover, the language in proposed claim 5 “receiving watch data . . . from
`a user system in remote communication with the provider’s network of
`
`computers.” The ’357 Patent, at 2:1-5, expressly identifies such a “user system” as
`inclusive of a fixed telephone. See Ex. 1035 at 126:1-17. As such, MA has not
`
`distinguished its proposed new claims (e.g., claim 5) from multiple users in fixed-
`
`telephone communication and making use of a PC based system (e.g.,
`
`TradeStation, etc.) coupled to a server-based data feed via the internet.
`
`Second, neither MA nor its expert ever address the obviousness of
`embodying known real-time technical analysis monitoring and notification
`processes (e.g., TradeStation, Trading Expert Pro, etc.) using known server-based,
`
`financial network systems (e.g., Satow, eSignal). As indicated above, eSignal
`expressly teaches “multiple geographically dispersed server farms for data
`redundancy.” Ex. 1033 at 1. MA’s expert identifies server-based, scalable and
`
`redundant networks, as recited in claim 5, as being known as far back as the 1970s.
`
`MA’s expert further testified that TradeStation, in fact, did actually release a
`
`server-based system in December 2000. See Ex. 2023 at ¶122.
`Stutman/Opening Bell: MA fails to identify any feature of the proposed
`
`new claims that distinguish them from the combination of Stutman and Opening
`Bell. In fact, MA does not address the proposed new claims specifically, but
`instead only refers generally to “the ’357 Patent.” See Ex. 2023 at ¶140.
`
`Furthermore, MA’s arguments offer little beyond attacking the Opening Bell
`
`reference individually. See Ex. 2023 at ¶145. Furthermore, MA’s attack on
`
`14
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`Petitioner’s stated motivation and/or rationale to combine those references in the
`
`petition is misplaced – the petition, of course, addressed different (now canceled)
`
`claims 1-4 of the ’357 Patent. Also, it is MA’s burden, not Petitioners’, to address
`the proposed new claims in view of the prior art (including motivation/rationale to
`
`combine).
`“real-time”: To the extent MA’s comments argue that recitation of “real-
`
`time” in the proposed claims provides any distinction between the proposed claims
`and the prior art, such comments are without merit. See, e.g., Ex. 2023 at ¶121.
`
`The term “real-time” is defined nowhere in the ’357 Patent, and MA provides no
`
`evidence that the proposed claims are distinguishable from prior art representations
`
`regarding “real-time.”
`
`C.
`
`New Claims 5-8 Are Unpatentable Over The Prior Art
`
`The Board has made clear that “[t]he burden is not on the petitioner to show
`
`unpatentability, but on the patent owner to show patentable distinction over the
`prior art.” Idle Free at 7 (emphasis added). Nevertheless, Petitioners assert that the
`
`proposed new claims 5-8 are unpatentable over the prior art, as further supported
`
`by the Second Declaration of Dr. Steven Kursh (Ex. 1043). As one exemplary
`
`basis of unpatentability (in addition to prior art cited in the petition as well as those
`
`aspects of the claims MA admits were well known in the art), a person of ordinary
`
`skill would have considered the proposed claims unpatentable over prior art easily
`
`locatable through the Patent Office’s databases, such as U.S. Patent No. 4,554,418
`
`to Toy (Ex. 1041). See Ex. 1043 at ¶24-57 (discussing prior art Exs. 1036-1041).
`
`15
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`

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`VI. CONCLUSION
`
`For the foregoing reasons, Bloomberg Inc. et al. respectfully request that the
`
`Board deny Markets-Alert’s Motion to Amend in its entirety.
`
`Date: October 2, 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
`
`Counsel for Petitioners Bloomberg Inc. et al.
`
`16
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`

`CERTIFICATE OF SERVICE
`
`The undersigned certifies that the foregoing Petitioner’s Opposition to Patent
`
`Owner Markets-Alert Motion to Amend was served on October 2, 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
`
`Arlyn Alonzo
`531 Main Street #818
`El Segundo, CA 90245
`arlyn@alonzoasso.com
`Tel.: 310-648-8473
`
`William Fitzpatrick
`3700 Newport Blvd., Suite 101
`Newport Beach, CA 92663
`bill@frobbeintl.com
`Tel.: 518-573-2879
`
`/ Michael T. Rosato /
`Michael T. Rosato
`
`17
`
`