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 REPLY TO
`PATENT OWNER MARKETS-ALERT RESPONSE
`
`
`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 REPLY TO
`PATENT OWNER MARKETS-ALERT RESPONSE
`
`
`
`TABLE OF CONTENTS
`
`Page
`
`STATEMENT OF PRECISE RELIEF AND OVERVIEW OF WHY MARKETS-
`I.
`ALERT’S RESPONSE SHOULD BE DISMISSED ............................................................... 1
`
`MARKETS-ALERT’S RESPONSE SHOULD BE DISMISSED AS NON-
`II.
`RESPONSIVE IN VIEW OF NOW CANCELED ’357 PATENT CLAIMS 1-4 ................... 2
`
`III. MARKETS-ALERT’S ARGUMENT AS TO NEW CLAIMS 5-8 FAILS ON THE
`MERITS.................................................................................................................................... 3
`A.
`The History of Markets-Alert is Irrelevant................................................................. 3
`B.
`Proposed New Claims 5-8 Lack Claim Construction and Support in the ’357 Patent
`.................................................................................................................................... 6
`C. Markets-Alert Fails to Distinguish the Proposed New Claims 5-8 from the Prior Art
`.................................................................................................................................. 11
`
`IV.
`
`CONCLUSION ........................................................................................................... 15
`
`i
`
`
`
`LIST OF CITED EXHIBITS
`
`Exhibit 1014
`
`Exhibit 1044
`
`Exhibit 1045
`
`Exhibit 1005
`
`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”)
`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”)
`Exhibit 1035
`Transcript of the August 28, 2013 deposition of Markets-Alert’s
`technical expert, Mr. Neal Goldstein
`Exhibit 1036 U.S. Patent 7,873,555 to Kraemer
`Exhibit 1037
`PCT WO00/28487 to Chrapaty
`Exhibit 1038
`PCT WO98/58356 to Keilani
`Exhibit 1039
`PCT WO00/33217 to Ambrose
`Exhibit 1040 U.S. Patent 5,938,732 to Lim
`Exhibit 1041 U.S. Patent 4,554,418 to Toy
`Exhibit 1042
`Errata sheets for transcript of Mr. Neil Goldstein’s August 28,
`2013 deposition
`Transcript of the August 20, 2013 deposition of Markets-Alert’s
`expert, Mr. Graham Maxwell Lindsay, filed herewith
`Second Declaration of Graham Maxwell Lindsay, as provided to
`Petitioners by Markets-Alert, filed herewith
`Exhibit 2023 Declaration of Mr. Neal Goldstein (“NG Decl.”)
`Exhibit 2024 Declaration of Mr. Graham Maxwell Lindsay
`Exhibit 2031
`Benefits webpage from Markets-Alert website, previously
`available at http://markets-alert.net/rta-benefits.php
`Products webpage from Markets-Alert website, previously
`available at http://markets-alert.net/
`Patent Index webpage from Markets-Alert website, previously
`available at http://markets-alert.net/patents.php
`Exhibit 2034 Overview of RTA Benefits webpage from Markets-Alert website,
`previously available at http://markets-alert.net/rta-overview.php
`RTA Technology webpage from Markets-Alert website,
`previously available at http://markets-alert.net/rta-technology.htm
`
`Exhibit 2032
`
`Exhibit 2033
`
`Exhibit 2035
`
`ii
`
`
`
`Exhibit 2038
`
`Exhibit 2036
`
`Learn More webpage from Markets-Alert website, previously
`available at http://markets-alert.net/rta-learnmore.php
`Exhibit 2037 About Us webpage from Markets-Alert website, previously
`available at http://markets-alert.net/aboutus.php
`Content Supply Agreement between Vodafone Network Pty
`Limited and Sharetech Software Pty Ltd.
`Exhibit 2039 Mutual Supplier Non-Disclosure Agreement Between Bloomberg
`L.P. and Markets-Alert Pty. Ltd.
`Exhibit 2040 Value Add Proposition For BLOOMBERG
`Exhibit 2041
`Real-Time Technical Analysis “RTA” (2007)
`Exhibit 2043 Markets-Alert Real-time Technical Analysis Scanner A Quick
`Overview And Why This Platform Is A Must Have For Traders
`Exhibit 2047 Diagram re Proposed requirements for test setup
`Exhibit 2048 Markets-Alert Real-time Technical Analysis Platform A Quick
`Overview And Why This Platform Is A Must Have For Traders re:
`REAL TIME ANALYTICS PLATFORM (RTA)
`Exhibit 2062 Markets-Alert – Bloomberg – Man Financial business proposal
`(19th May 2008)
`Exhibit 2063 Draft Business Proposal Commercial In Confidence to MF Global
`(2008)
`
`iii
`
`
`
`I.
`
`STATEMENT OF PRECISE RELIEF AND OVERVIEW OF WHY
`MARKETS-ALERT’S RESPONSE SHOULD BE DISMISSED
`In a conference call with the Board on July 3, 2013, Petitioners Bloomberg
`
`et al. (“Petitioners”) raised the issue of Markets-Alert’s (“MA”) Patent Owner
`
`Response’s (PN 38, “Response”) lack of compliance with 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.” See, e.g., PN 41. At the time,
`
`the Board had not yet had the opportunity to review the propriety of the Response,
`
`and encouraged Petitioners to explain this Reply how MA failed to comply with
`
`the requirements of § 42.220.
`In short, MA has unambiguously canceled each of the challenged ’357
`Patent claims 1-4, upon which the Board instituted trial. See MA’s Substitute
`
`Motion to Amend (PN 42, “Motion to Amend”). As a result, MA’s Response is
`
`now moot. Instead of addressing the grounds of unpatentability raised in
`
`Petitioners’ Petition (PN 1, “Petition”) for now canceled claims 1-4, MA dedicates
`
`its Response to arguments relevant only to its proposed new claims 5-8, which
`
`were submitted in its Motion to Amend. Neither the Petition nor the Board’s
`
`decision instituting trial addressed these proposed claims. Arguments directed to
`
`proposed claims submitted in a separate motion to amend are inappropriate in a
`
`patent owner response submitted under § 42.220.
`
`Accordingly, Petitioner respectfully requests that the Response be dismissed
`
`with prejudice and expunged from the record. In the alternative, should the Board
`
`
`
`choose to consider the Response, this Reply further addresses the Response’s
`
`substantive deficiencies.
`
`II. MARKETS-ALERT’S RESPONSE SHOULD BE DISMISSED AS
`NON-RESPONSIVE IN VIEW OF NOW CANCELED ’357 PATENT
`CLAIMS 1-4
`Petitioners filed the Petition to institute a covered business method review of
`
`all four claims (claims 1-4) of U.S. Patent 7,941,357 (the “’357 Patent,” Ex. 1001).
`
`On March 29, 2013, the Board issued its decision instituting covered business
`
`method review of claims 1-4 on several grounds. MA has since unambiguously
`canceled each of claims 1-4 in its Motion to Amend. See, e.g., Motion to Amend
`
`at 1 (“Markets-Alert hereby cancels Claims 1-4 and adds new Claims 5-8 (‘New
`
`Claims’)”). Nowhere in the Motion to Amend does MA request the cancelation to
`
`be contingent on further by the Board of those claims.
`
`Rather than addressing the issues raised in the petition regarding now
`
`canceled claims 1-4, MA’s Response is wholly dedicated to argument regarding its
`
`proposed new claims 5-8. The Response leads with a “NEW CLAIM LISTING”
`
`presenting proposed new claims 5-8. At page 1, the Response states “Markets-
`
`Alert . . . hereby incorporates, its Motion To Amend, which is filed concurrently.”
`
`The Response then proceeds with fifty pages of exposition relevant to the proposed
`
`new claims 5-8, which is effectively an end-run around the fifteen-page limit to
`
`which MA’s Motion to Amend is subject. See 37 C.F.R. § 42.24. MA’s Response
`
`is improper and completely non-responsive to the Petition.
`
`2
`
`
`
`Petitioners hereby request that MA’s Response be dismissed as non-
`
`compliant with § 42.220 and expunged. MA should not be permitted to grant itself
`
`a fifty-page extension of page limits for its Motion to Amend.
`
`III. MARKETS-ALERT’S ARGUMENT AS TO NEW CLAIMS 5-8 FAILS
`ON THE MERITS
`Should the Board choose to consider the Response, this Reply further
`
`addresses the Response’s substantive deficiencies, beginning with its emphasis on
`the history of MA. See PN 38 at 7-8.
`
`A.
`The History of Markets-Alert is Irrelevant
`MA never explains the relevance of MA’s history or Mr. Lindsay’s
`declaration (Ex. 2024).1 It is unclear why MA argues about its history or presents
`Lindsay’s declaration at all. MA does not attempt to use the company’s history or
`
`Mr. Lindsay’s testimony to provide evidence of non-obviousness of its proposed
`
`claims. In fact, MA never cites the Lindsay declaration anywhere in support of its
`
`Motion to Amend.
`
`To the extent MA is attempting to cast light on the entity as a successfully
`
`operating company that deals in real products (an issue irrelevant to the
`
`patentability of the proposed new claims 5-8), Mr. Lindsay’s testimony contradicts
`
`this. According to Mr. Lindsay, MA has never had any revenue or even any
`
`1
`
`Mr. Lindsay is an interested party, both as an investor in MA and as a
`current holder of equity. See Ex. 1044 at 25:17-21; 26:6-13; 56:1-6; see also
`
`Second Declaration of Lindsay provided to petitioner by MA (Ex. 1045).
`
`3
`
`
`
`employees. See Ex. 1044 at 30:22-24; 31:3-5. Thus, there is no evidence that MA
`
`achieved any commercial or market success.
`Even if the Board, sua sponte, reviews Mr. Lindsay’s testimony and
`
`correspondingly cited documents for evidence of secondary considerations of non-
`
`obviousness, the submitted materials should be dismissed for several reasons.
`
`First, there is simply no evidence of commercial success, copying or any other
`
`secondary consideration of non-obviousness. Mr. Lindsay’s declaration is
`
`deficient because it relies on undated and unreliable documents that allegedly
`relate to MA’s products but have no indication of a relevant point in time. See,
`
`e.g., Exs. 2031-2037. Mr. Lindsay also attaches what appear to be undated,
`unexecuted, and incomplete draft contracts and/or proposals. See, e.g., Exs. 2038-
`
`2041, 2043, 2047-2048. These undated materials, which have no real connection
`
`to the patent in issue, should be disregarded.
`Second, MA never compares any product to any claim of the ’357 Patent.
`See Ex. 2023 (Goldstein does not compare); Ex. 2024 (Lindsay does not compare);
`
`Ex. 1044 at 57:12-24 (noting that any references to the ’357 Patent invention in
`
`Lindsay’s declaration refer to the content of the patent itself and not any particular
`
`claim); 65:24-13 (statement that MA’s product is “based on the patent” and
`
`assertion that testimony was based only on “knowledge of the business” and
`
`“having read the patent”). Likewise, MA never compares products accused of
`infringement with any claim of the ’357 Patent or even with any MA product. See
`
`Ex. 2023; Ex. 2024; Ex. 1044 at 60:1-10. Absent such a comparison, MA’s
`
`4
`
`
`
`discussion of its products is meaningless as a matter of law, as it fails to
`
`demonstrate the requisite nexus between the proposed claims and any asserted
`evidence of secondary considerations. See MPEP § 716.03 (“An applicant who is
`
`asserting commercial success to support its contention of non-obviousness bears
`
`the burden of proof of establishing a nexus between the claimed invention and
`evidence of commercial success.”); In re Paulsen, 30 F.3d 1475, 1482, 31 USPQ2d
`
`1671, 1676 (Fed. Cir. 1994) (holding that commercial success of articles not
`
`covered by claims was not probative of non-obviousness).
`
`Indeed, an examination of MA’s documents suggests a disconnect between
`
`MA’s marketing literature and proposed claims 5-8. According to MA’s expert
`
`Mr. Goldstein, claims 5-8 of the ’357 Patent were amended to require watch data
`
`application as real-time stock market data is received, rather than periodically or in
`
`intervals. See, e.g., Ex. 1035 at 55:4-57:1; 66:10-69:2 (attempting to differentiate
`
`from intentional delay or interval-based processing). Not only are these aspects of
`
`the proposed claims unsupported by the ’357 Patent specification, they do not
`
`match MA’s own marketing materials. According to its marketing literature, MA’s
`
`product applied calculations at periodic intervals—a practice consistent with now
`
`cancelled Claim 1, but not with proposed new Claims 5-8. For example, one MA
`
`document explains that its product could request alerts on a “minute to minute”
`
`basis and that “[t]he scan is set to examine the entire market every minute.” Ex.
`2062 at 10, 11; see also Ex. 2063 (stating that MA’s product permits scanning “in
`
`5
`
`
`
`60 second increments”); Ex. 2062 at 11 (explaining that notifications after 1
`
`second delay so that copy can be written).
`
`B.
`
`Proposed New Claims 5-8 Lack Claim Construction and Support in
`the ’357 Patent2
`In moving to amend its claims, MA bears the burden of providing “technical
`
`facts and reasoning” about the features of its amended claims “including
`construction of new claim terms” to distinguish prior art. Idle Free Sys., Inc. v.
`Bergstrom, Inc., IPR2012-00027, PN 26 (PTAB June 11, 2013) at 7. MA did not
`
`do this. Instead, the Response’s claim constructions largely address cancelled
`
`claims 1-4 rather than construing new claim terms. PN 38 at 13-20. The Motion
`
`to Amend does not address claim construction at all.
`
`In addition, the proposed new claims 5-8 impermissibly expand the scope
`
`claimed subject matter compared to now canceled claims 1-4 of the ’357 Patent.
`See 37 C.F.R. § 42.221(2)(ii); see also Idle Free at 3-5 (“a substitute claim may not
`
`enlarge the scope . . . by eliminating any feature”). MA’s proposed new claims
`also improperly introduce new subject matter. See 37 C.F.R. § 42.121(a)(2)(ii);
`
`AIA § 18(a); 35 U.S.C. § 316(d)(3). The proposed new claims include various
`
`terms that are unsupported by the ’357 Patent specification.
`
`2 Petitioner addresses MA’s substitute motion to amend, and the proposed new
`claims, in its Opposition. Should the Board consider MA’s arguments presented in
`
`their response (which Petitioner believes are inappropriate), Petitioner’s positions
`
`set forth in the Opposition are briefly addressed herein.
`
`6
`
`
`
`Neither the clean copy of the proposed new claims at pp. iv-vi of the
`
`Response, nor the “marked up” claims at pp. 3-4 of the Motion to Amend, illustrate
`
`the full scope of differences between the proposed new claims and canceled claims
`
`1-4 of the ’357 Patent. An accurately marked version follows:
`
`A real-time method of informing users providing technical analysis
`and notification of stock market events comprising the steps of:
`[[(a)]] receiving real-time stock market data on a provider’s
`network of computers, which is server-based, scalable and redundant;
`[[(b)]] receiving watch data specified by a user on the provider’s
`network of computers instructions, from a user to specify watch data
`defining an event user system in remote communication with the
`provider’s network of computers, wherein the user-specified watch
`data including a stock market technical analysis request specifying
`comprises a request to apply more than one technical analysis
`formulae formula to be applied to the real-time stock market data for
`predicting price trends based on market action and defines a valid
`stock market event;
`(c) using the network of computers to periodically apply applying
`the user-specified watch data including the stock market technical
`analysis formulae to the real-time stock market data in real-time as the
`real-time stock market data is received by the provider’s network of
`computers to ascertain whether a valid response to the watch data has
`occurred based on the real-time stock market data, thereby
`determining an occurrence of the event defined by the user-specified
`watch data determine if the valid stock market event has occurred; and
`
`7
`
`
`
`(d) causing generating a real-time notification in real-time by the
`network of computers to be provided to the user via a remote
`communications device upon the occurrence of the event defined by
`the user-specified watch data when the valid stock market even has
`been determined to have occurred by the provider’s network of
`computers, the real-time notification directed to a remote
`communications device of the user so that the user can then provide
`instructions for share market transactions on an instantaneous basis
`wherein the notification is provided in real-time by the provider’s
`network of computers to a remote communication device of the user.
`
`Non-limiting examples of broadening of proposed claims 5-8 relative to
`
`canceled claims 1-4 and addition of unsupported claim terminology, are provided:
`
`“provider’s network of computers” is not specifically construed by MA
`
`and the ’357 Patent fails to define or specifically identify what exactly constitutes a
`
`“provider’s” network of computers.
`
`“server-based, scalable and redundant” as recited in proposed new claim
`
`5 is not construed by MA or supported in the ’357 Patent. The terminology
`“scalable” and “redundant” is found nowhere in the ’357 Patent specification. Mr.
`
`Goldstein characterizes the network as recited in claim 5 as inclusive of the type
`well-known in the art in 1980, possibly as far back as the 1970s. See, e.g., Ex.
`
`1035 at 14:2-15:5; 16:9-17:14; 62:17-19; 50:3-51:12.
`
`“periodically apply”: Claims 1-4 required that the network of computers
`“periodically apply” watch data. Ex. 1001 at 5:11. This limitation has been
`
`wholly eliminated from new claims 5-8, as acknowledged in the PO’s Response.
`
`8
`
`
`
`See PN 38 at 19-20. As such, the scope of new claims 5-8 has been enlarged to
`further include non-periodic application of watch data. Furthermore, claim 5
`presents new subject matter because the ’357 Patent includes no description of
`
`applying watch data as real-time data is received. The ’357 Patent specification
`only mentions applying watch data/formulas at a specified interval, or periodically.
`See Ex. 1001 at 3:49-50; 4:49-51; see also Ex. 2023 at ¶80.
`
`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
`
`real-time notification only need be provided to “a remote communication device.”
`See 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.
`
`“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.
`“more than one technical analysis formula” is recited in claim 5 as
`
`defining “a valid stock market event.” The ’357 Patent does not disclose watch
`data where more than one technical analysis formula defines a single event. NG
`
`Decl. 75. The term “valid stock market event,” is a newly introduced term that
`does not appear anywhere in the’357 Patent. See Motion to Amend at 9; Ex. 2023
`
`at ¶78; Ex. 1035 at 41:1-42:19.
`
`9
`
`
`
`Claims 6-8 are wholly untraceable to any of ’357 Patent claims 1-4. See Idle
`Free at 5 (“[a]ll proposed claims should be traceable to an original challenged
`claim.”). Claim 8 is per se broadened because it claims a system, whereas claims
`1-4 were directed solely to methods. Claims 6-8 further recite a number of
`
`limitations unsupported in the ’357 Patent.
`Claim 6 requires “updating a cache of stock market data on a data server,”
`
`but the ’357 Patent does not recite the terms “cache” or “updating a cache.” See
`
`Ex. 1035 at 130:7-134:12.
`“applying the technical analysis formula . . . to generate a technical
`
`analysis indicator”: A technical analysis indicator serving as output of a formula
`(rather than being a formula itself) is not described in the ’357 Patent. See, e.g.,
`
`Ex. 1001 at 3:49-50; Ex. 1035 at 137:1-139:16.
`
`“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.
`
`Claim 8 introduces a number of limitations unconstrued by MA and/or
`
`unsupported by the ’357 Patent specification:
`“a network guardian, which comprises one or more switches”: The ’357
`
`Patent at Fig. 2 depicts switches outside of and separate from the “GUARDIAN.”
`See Ex. 1035 at 145:5-147:4.
`
`10
`
`
`
`“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.
`“output connector”: The ’357 Patent does identify an “output service” but
`does not disclose any “output connector.” See Ex. 1035 at 165:7-12.
`“one or more”: 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 in
`
`detail above in connection with similar terminology of Claim 5.
`
`C. Markets-Alert Fails to Distinguish the Proposed New Claims 5-8 from
`the Prior Art3
`1.
`Markets-Alert’s Prior Art Review is Deficient as Limited to
`Only Four References
`MA fails to demonstrate patentable distinction of the proposed claims not
`only over the prior art of record, but also prior art known to the patent owner. See
`Idle Free at 7. MA addressed only the four references upon which trial was
`
`3 MA’s prior art showing is deficient for the reasons set forth in Petitioner’s
`Opposition to the substitute motion to amend, which are briefly addressed here.
`
`11
`
`
`
`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. See, e.g., Ex. 1035 at 178:13-22; see also 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 Petitioner
`
`submitted in its petition for CBM review, such as the above-identified references.
`
`Moreover, during cross-examination, MA’s expert conceded that a number of
`
`features of the proposed claims offered as points of distinction from the prior art
`were, in fact, actually taught in prior art available to MA (e.g., via its expert) and
`known long before the filing of the ’357 Patent. See, e.g., Ex. 1035 at 14:2-15:5;
`
`16:9-17:14; 62:17-19; 50:3-51:12; 27:17-28:4; 51:13-21; 54:22-55:2; 62:3-24-63:5.
`
`As such, the entire declaration of MA’s expert, Mr. Goldstein, can by
`
`dismissed as lacking sufficient foundation for any conclusions stated therein. Thus,
`
`the Response (to the extent it is considered responsive) should be dismissed for
`
`lacking sufficient evidentiary support for the arguments it advances.
`
`2.
`
`Markets-Alert Improperly Attacks Prior Art References
`Individually
`MA mistakenly believes that merely arguing that a limited subset of prior art
`
`references are non-anticipatory is sufficient to meet its burden in demonstrating
`
`patentability of the proposed new claims. MA seeks what would amount to an
`
`advisory opinion by the Board regarding the patentability of its proposed,
`significantly broadened claims, which have never been subject to ex parte
`
`12
`
`
`
`prosecution. However, nonobviousness cannot be shown by attacking references
`individually and ignoring the combination of teachings. See In re Keller, 642 F.2d
`413, 208 U.S.P.Q. 871 (CCPA 1981); see also In re Merck & Co., Inc., 800 F.2d
`
`1091, 231 U.S.P.Q. 375 (Fed. Cir. 1986). MA never addresses the combined
`
`teachings of the identified four references, which at minimum would render the
`
`proposed claims obvious.
`
`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. 2023 at ¶104-115.
`
`However, MA never addresses the obviousness of including technical analysis
`
`features, as known in the art, 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 (Ex. 1005) 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.
`
`However, such a network of computers was well-known in the art, and even
`
`possibly as far back as the 1970s, according to MA’s expert. 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
`
`13
`
`
`
`Pro, etc.) using known server-based, financial network systems (e.g., Satow,
`
`eSignal).
`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.
`
`“real-time”: 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.”
`
`New Claims 5-8 Are Unpatentable Over The Prior Art
`3.
`A number of additional prior art references, readily located through public
`
`databases, further illustrate the unpatentability of proposed claims 5-8. For
`
`example, U.S. Patent No. 4,554,418 to Toy (Ex. 1041) describes server-based
`
`systems and methods for real-time stock technical analysis of stock market data,
`and corresponding user alerts, that are comprehensively on point. See also US
`
`Patent No. 7,873,555 to Kraemer (Ex. 1036) (describing notifications including a
`
`“live link”). Further, a number of prior art references disclose server-based,
`
`scalable and redundant financial data networks, e.g., WO2000028487 to Chrapaty
`
`et al. (Ex. 1037), WO1998058356 to Keilani (Ex. 1038), WO2000033217 to
`
`Ambrose et al. (Ex. 1039), and US Patent 5,938,732 to Lim et al. (Ex. 1040).
`
`14
`
`
`
`IV. CONCLUSION
`
`For the foregoing reasons, Petitioners respectfully request that the Board
`
`deny the patentability of Claims 5-8 and issue a determination in favor of
`
`Petitioners.
`
`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
`
`Attorneys for Petitioner Bloomberg Inc. et al.
`
`15
`
`
`
`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
`
`5789624v1
`
`/ Michael T. Rosato /
`Michael T. Rosato
`
`16
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