Trials@uspto.gov
`571-272-7822
`
`
`
` Paper 53
`
`Entered: October 10, 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
`Patent 7,941,357
`____________
`
`
`
`Before JAMESON LEE, SALLY C. MEDLEY, and JONI Y. CHANG,
`Administrative Patent Judges.
`
`CHANG, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`571-272-7822
`
`
`
` Paper 53
`
`Entered: October 10, 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
`Patent 7,941,357
`____________
`
`
`
`Before JAMESON LEE, SALLY C. MEDLEY, 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 October 8, 2013, a telephone conference call was held between
`respective counsel for the parties and Judges Lee, Medley, and Chang. During the
`conference call, Markets-Alert requested the authorization for: (1) a 30-day
`extension of time for filing its reply to Bloomberg’s opposition (Paper 50) to the
`motion to amend (Paper 42); (2) ten more pages for its reply; and (3) a 15-page
`surreply to Bloomberg’s reply (Paper 51) to the patent owner response (Paper 38).
`Citing to the Board’s order (Paper 22) entered on May 1, 2013, Markets-
`Alert alleged that Bloomberg improperly filed an opposition (Paper 50) containing
`unauthorized new grounds of unpatentability, six new references, and a 30-page
`expert declaration. Markets-Alert argued that a single, five-page reply is not
`sufficient to address all of Bloomberg’s newly asserted grounds of unpatentability
`and new evidence. Markets-Alert maintained that the requested relief is warranted,
`because Bloomberg should have requested authorization from the Board to submit
`the new evidence. Bloomberg opposed.
`The Board agreed with Bloomberg that nothing in the Board’s previous
`order (Paper 22) prohibits Bloomberg from asserting new grounds of
`unpatentability against the proposed substitute claims, or submitting new evidence
`in support of its opposition to Markets-Alert’s motion to amend. In fact, the
`previous order specifically stated that “a petitioner will be afforded an opportunity
`to fully respond to a motion to amend, and the petitioner may respond to new
`issues arising from proposed substitute claims, including the submission of
`evidence responsive to the amendment and new expert declarations directed to the
`proposed substitute claims.” Paper 22 at 3 (citing to Office Patent Trial Practice
`Guide, 77 Fed. Reg. 48756, 48767 (Aug. 14, 2012)).
`As the Board explained during the conference call, a covered business
`method patent review is a streamlined and focused proceeding, unlike ex parte
`
`
`
`2
`
`
`
`Case CBM2013-00005
`Patent 7,941,357
`
`prosecution or patent reexamination. The review must be concluded generally no
`later than one year after institution. 35 U.S.C. § 326(a)(11); 37 C.F.R. § 42.200(c).
`As the moving party, Markets-Alert has the burden to show, in its motion, a
`patentable distinction of each proposed substitute claim over the prior art of record
`and over prior art not of record, but known to the patent owner. 37 C.F.R. § 42.20;
`“Decision—Motion to Amend Claims,” IPR2012-00027, Idle Free Systems, Inc. v.
`Bergstrom, Inc., Paper 26. A reply may only respond to arguments raised in the
`opposition. 37 C.F.R. § 42.23. In that regard, the Board will not consider a reply
`that raises a new issue or belatedly presents evidence.
`Additionally, the Board was not persuaded by Markets-Alert’s reasons for
`requesting more pages, an extension of time, and an opportunity to file a surreply,
`because Markets-Alert merely proposed four substitute claims and Bloomberg’s
`arguments, in the opposition, on the asserted grounds of unpatentability are no
`more than a half page. Those asserted grounds of unpatentability are based on
`three U.S. patents and three PCT publications. When responding to inquiry from
`the Board, Markets-Alert failed to present sufficient explanation as to why it
`justifiably would be surprised by the technology represented in those publications.
`The Board further noted that Markets-Alert may file an expert declaration in
`support of its reply.
`As to Markets-Alert’s request for the authorization to file a surreply, the
`Board also agreed with Bloomberg that a surreply is not necessary and would
`cause unduly delays in the proceeding. The patent trial rules and the Scheduling
`Order (Paper 19) do not provide for a surreply. Markets-Alert failed to articulate
`an adequate reason as to why a surreply is necessary, especially in light of the fact
`that Markets-Alert has canceled all the original patent claims. Although
`Bloomberg filed a reply to Markets-Alert’s patent owner response, Bloomberg’s
`
`
`
`3
`
`
`
`Case CBM2013-00005
`Patent 7,941,357
`
`reply is of no consequence. Any arguments with respect to the proposed
`substituted claims should be presented in Markets-Alert’s reply to Bloomberg’s
`opposition to the motion to amend claims—rather than a surreply to Bloomberg’s
`reply to the patent owner response.
`For the foregoing reasons, Markets-Alert’s requests are denied.
`It is
`ORDERED that no additional page for Markets-Alert’s reply is authorized;
`
`FURTHER ORDERED that no extension of time for filing the reply is
`
`authorized; and
`FURTHER ORDERED that Markets-Alert is not authorized to file a
`surreply.
`
`
`
`
`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
`
`
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