Petition for CBM Post-Grant Review
`
`U.S. Patent No. 7,941,357
`
`IN THE UNITED STATES PATENT TRIAL & APPEAL BOARD
`In re Covered Business Method Post
`Grant Review of:
`
`U.S. Class: 705/36
`
`Group Art Unit: 3694
`
`Confirmation: 1059
`
`FILED ELECTRONICALLY
`PER 37 C.F.R. § 42.6(b)
`
`U.S. Patent No. 7,941,357
`
`Issued: May 10, 2011
`
`Inventor: Jeffrey Bruce McGeorge
`
`Application No. 10/415,022
`
`Filed: September 5, 2003
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`PETITION FOR POST-GRANT REVIEW OF A COVERED BUSINESS
`METHOD UNDER 35 U.S.C. § 321 AND § 18
`
`Pursuant to the provisions of 35 U.S.C. § 321 and § 18 of the Leahy-Smith
`
`America Invents Act (“AIA”), and pursuant to 37 C.F.R. § 42.300 et seq., the
`
`undersigned Petitioner hereby requests review of United States Patent No.
`
`7,941,357 to McGeorge (“the ’357 patent,” attached as Exhibit 1001) that issued
`
`on May 10, 2011. This request is made on behalf of 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
`
`

`

`Petition for CBM Post-Grant Review
`
`U.S. Patent No. 7,941,357
`
`Ameritrade Holding Corp., TD Ameritrade, Inc., TD Ameritrade IP Company,
`
`Inc., and thinkorswim Group Inc. (“Bloomberg et al.” or “Petitioner” and real
`
`parties in interest). The Commissioner is authorized to charge the fee of $35,800
`
`for the post-grant review fee as specified under 37 C.F.R. § 42.15(b)(1) to Deposit
`
`Account No. 23-2415.
`
`

`

`Petition for CBM Post-Grant Review
`
`U.S. Patent No. 7,941,357
`
`Table of Contents
`
`Page
`INTRODUCTION AND OVERVIEW................................................................1
`A.
`Brief Overview of the ’357 Patent .............................................................1
`GROUNDS FOR STANDING.............................................................................3
`A.
`At Least One Challenged ’357 Patent Claim is Unpatentable...................3
`B.
`Claims 1-4 of the ’357 Patent are Directed to a Covered
`Business Method Patent that is not a “Technological Invention”..............4
`Petitioner has Been Sued for Infringement of the ’357 Patent
`and is Not Estopped....................................................................................7
`STATEMENT OF THE PRECISE RELIEF REQUESTED FOR
`EACH CLAIM CHALLENGED..........................................................................8
`A.
`Identification of Challenged Claims ..........................................................8
`B.
`Specific Statutory Grounds of Challenge...................................................8
`C.
`Claim Construction.....................................................................................9
`IV. DETAILED EXPLANATION OF REASONS THAT THE
`CHALLENGED ’357 PATENT CLAIMS ARE UNPATENTABLE...............12
`A.
`Claims 1-4 of the ’357 Patent are Invalid Under 35 U.S.C.
`§112, Second Paragraph as Being Indefinite ...........................................12
`Claims 1-4 of the ’357 Patent are Invalid Under 35 U.S.C.
`§§102 and 103 In View of Identified Prior Art........................................14
`Satow et al. (PCT Publication No. WO 00/11587) .......................18
`i.
`ii.
`TradeStation Product References...................................................25
`1.
`S&C Review ........................................................................25
`2.
`TradeStation Web Archive ..................................................28
`iii. Window on WallStreet...................................................................31
`1. WOWS User’s Guide ..........................................................31
`2. WOWS Web Archive ..........................................................35
`Trading Expert Pro.........................................................................40
`
`I.
`
`II.
`
`C.
`
`III.
`
`B.
`
`iv.
`
`i
`
`

`

`Petition for CBM Post-Grant Review
`U.S. Patent No. 7,941,357
`v.
`Investor/RT Web Archive..............................................................44
`vi.
`eSignal Press Release.....................................................................50
`vii.
`Stutman et al (US Patent 5,954,793)..............................................52
`CONCLUSION...................................................................................................57
`
`V.
`
`ii
`
`

`

`Petition for CBM Post-Grant Review
`
`U.S. Patent No. 7,941,357
`
`LIST OF EXHIBITS
`
`(Evidence Relied Upon to Support the Challenge)
`
`Exhibit 1001 U.S. Patent No. 7,941,357 (issued May 10, 2011).
`
`Exhibit 1002 Declaration of Steven R. Kursh, Ph.D., CSDP, CLP.
`
`Exhibit 1003 Stephen R. Kursh, curriculum vitae.
`
`Exhibit 1004 PCT Patent Application No. PCT/US99/18767, Publication No.
`WO 00/11587 (published Mar. 2, 2000)(Michael Satow et al.,
`applicants).
`
`Exhibit 1005 John Sweeney, Product Review: TradeStation 4.0 Build 15, Stocks
`& Commodities, December 1996, at 649.
`
`Exhibit 1006 TS Main (Nov. 13, 1996), available at
`http://web.archive.org/web/19961113010600/http://omegaresearch
`.com/tsmain.htm.
`
`Exhibit 1007 TradeStation Features (Nov. 13, 1996), available at
`http://web.archive.org/web/19961113010630/http://omegaresearch
`.com/tsfeatur.htm.
`
`Exhibit 1008 TradeStation Pager Alert (Nov. 13, 1996), available at
`http://web.archive.org/web/19961113010704/http://omegaresearch
`.com/tspgmain.htm
`
`Exhibit 1009 Window On WallStreet Internet Trader Deluxe User's Guide,
`1998.
`
`Exhibit 1010 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.
`
`iii
`
`

`

`Petition for CBM Post-Grant Review
`
`U.S. Patent No. 7,941,357
`
`Exhibit 1011 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.
`
`Exhibit 1012 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.
`
`Exhibit 1013 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.
`
`Exhibit 1014 Paul Luebbe, AIQ Opening Bell Monthly Vol. 8, Issue 10,
`October 1999.
`
`Exhibit 1015 U.S. Patent 5,954,793 (issued Sep. 21, 1999).
`
`Exhibit 1016 Geoff Ficke, Carrier Pigeons Helped Create the Worlds Most
`Famous Banking Fortune, Ezine Articles, available at
`http://ezinearticles.com/?Carrier-Pigeons-Helped-Create-the-
`Worlds-Most-Famous-Banking-Fortune&id=1711198.
`
`Exhibit 1017 Alexander Elder, Trading for a Living (John Wiley & Sons, 1993)
`at 69
`
`Exhibit 1018 Complaint, Markets-Alert Pty. v. Bloomberg Finance L.P., No.
`1:12-cv-00780-GMS (D. Del June 20, 2012).
`
`Exhibit 1019 Complaint, Markets-Alert Pty. v. The Charles Schwab Corp., No.
`1:12-cv-00781-GMS (D. Del June 20, 2012).
`
`Exhibit 1020 Complaint, Markets-Alert Pty. v. TD Ameritrade Holding, No.
`1:12-cv-00783-GMS (D. Del June 20, 2012).
`
`Exhibit 1021 Complaint, Markets-Alert Pty. v. E*Trade Clearing LLC, No.
`1:12-cv-00782-GMS (D. Del June 20, 2012).
`
`iv
`
`

`

`Petition for CBM Post-Grant Review
`
`U.S. Patent No. 7,941,357
`
`Exhibit 1022 Complaint, Markets-Alert Pty. v. OM Securities, LLC, No. 1:12-
`cv-00784-GMS (D. Del June 20, 2012).
`
`Exhibit 1023 Complaint, Markets-Alert Pty. v. eSignal.com, Inc., No. 1:99-mc-
`09999 (D. Del June 20, 2012).
`
`Exhibit 1024 Image File Wrapper, U.S. Patent No. 7,941,357 (issued May 10,
`2011).
`
`Exhibit 1025 LINN SOFTWARE Investment Software – What’s New in 4.6
`(August 16, 2000), available at
`http://web.archive.org/web/20000816063115/http://www.linnsoft.
`com/new/index.html.
`
`Exhibit 1026 Investor/RT Tour (August 18, 2000), available at
`http://web.archive.org/web/20000818211350/http://www.linnsoft.
`com/tour/index.htm.
`
`Exhibit 1027 Investor/RT Tour – Technical Indicators (May 12, 2000), available
`at
`http://web.archive.org/web/20000512005220/http://www.linnsoft.
`com/tour/technicalindicators.htm.
`
`Exhibit 1028 Investor/RT Tour – Alarm Preferences (May 22, 2000), available
`at
`http://web.archive.org/web/200005222325275/http://www.linnsoft
`.com/tour/prefs_alarms.htm.
`
`Exhibit 1029 Investor/RT Tour –Alarms/Alerts (August 19, 2000), available at
`http://web.archive.org/web/200008190803135/http://www.linnsoft
`.com/tour/alerts.htm.
`
`Exhibit 1030 Investor/RT Tour –myTrack Preferences (February 29, 2000),
`available at
`http://web.archive.org/web/20000229053607/http://www.linnsoft.
`com/tour/prefs_mytrack.htm.
`
`Exhibit 1031 Investor/RT Tour –Scans (February 29, 2000), available at
`http://web.archive.org/web/20000229160235/http://www.linnsoft.
`com/tour/scans.htm.
`
`v
`
`

`

`Petition for CBM Post-Grant Review
`
`U.S. Patent No. 7,941,357
`
`Exhibit 1032 Investor/RT Tour – Instrument Setup (April 7, 2000), available at
`http://web.archive.org/web/20000407193607/http://linnsoft.com/to
`ur/instrumentsetup.htm.
`
`Exhibit 1033 Press Release, PR Newswire, Data Broadcasting Launches Esignal
`Version 5.3 with Enhanced Alerts Capabilities And Improved
`Nasdaq Level II Tools (June 12, 2000).
`
`vi
`
`

`

`Petition for CBM Post-Grant Review
`
`U.S. Patent No. 7,941,357
`
`I.
`
`INTRODUCTION AND OVERVIEW
`
`Petitioner respectfully seeks Post-Grant Review of Covered Business
`
`Method Patent U.S. Patent No. 7,941,357 (hereinafter, the “’357 patent”). The
`
`‘357 patent is precisely the type of patent Congress envisioned as falling within the
`
`scope of § 18 of the AIA – a patent claiming financial products or services but
`
`devoid of technological innovation. As set forth in further detail below, not only
`
`are the ‘357 patent claims hopelessly confusing and indefinite, the prior art as of
`
`the filing of the ‘357 patent is blanketed with literature describing stock market
`
`monitoring and alert systems that plainly anticipate and/or render obvious the ‘357
`
`patent claims.
`
`A.
`
`Brief Overview of the ’357 Patent
`
`The ’357 patent is generally directed to “a trading system” that monitors
`
`stock market data and provides user alerts to a remote device using a network
`
`based system. The ’357 patent is based on a PCT Application (PCT/AU01/01380;
`
`PCT Pub. No. WO02/35400) filed September 5, 2003, and claims priority to
`
`Australian application (AU)PR1097, filed October 27, 2000. The ’357 patent
`
`issued on May 10, 2011 with four claims. The claims are directed to methods of
`
`informing users of stock market events. The claims, including claim 1, are
`
`directed to receiving real-time stock market data on a network of computers (e.g.,
`
`Page 1 of 63
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`

`

`Petition for CBM Post-Grant Review
`
`U.S. Patent No. 7,941,357
`
`the internet); receiving instructions from a user to specify “watch data” and
`
`“technical analysis formulae”; applying the user-specified watch data/technical
`
`analysis formulae; and causing a real-time notification to the user via a remote
`
`communications device (e.g., telephone, computer, facsimile, or pager).
`
`The ’357 patent claims fall squarely within the scope of Covered Business
`
`Method Patent Review as defined under § 18 of the AIA and 37 C.F.R. § 42.301.
`
`The ’357 patent does not assert, nor is amendable to assert, any novelty in stock
`
`market event monitoring, technical analysis, or communication to a user, or the
`
`remote communications devices or network (e.g., the internet) of the ’357 patent
`
`claims. For example, the “Background Art” section of the ’357 patent
`
`acknowledges that stock market monitoring and “technical analysis” were well
`
`known many years prior to the ’357 patent. Similarly, during prosecution of the
`
`’357 patent, the applicant argued that “technical analysis” was well known in the
`
`art prior to the ’357 patent, citing, inter alia, a Wikipedia entry identifying the
`
`concept as well known in the art prior to the ’357 patent.
`
`The ’357 patent claims generically recite a “network of computers” and “a
`
`remote communications device” but fail to identify any new or non-obvious
`
`network systems or remote communications devices. In fact, claim 4 of the ’357
`
`patent indicates that a remote communications device can include well-known
`
`Page 2 of 63
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`

`

`Petition for CBM Post-Grant Review
`
`U.S. Patent No. 7,941,357
`
`devices such as a telephone, PC, facsimile or pager. Nor does the ’357 patent
`
`describe any new or improved network based system. Certainly, the generic
`
`recitation of “a network of computers” in the ’357 patent claims does not identify
`
`any new or improved network system.
`
`Simply put, neither the ’357 patent nor the claims at issue offer any new or
`
`non-obvious solution, technical or otherwise, to monitoring stock market data.
`
`As set forth in further detail below, a number of prior art references are
`
`discussed that either clearly anticipate or render obvious each of the claims of the
`
`’357 patent. Furthermore, many of the ’357 patent claim terms are either
`
`undefined or poorly defined in the ’357 patent so as to render the ’357 patent
`
`claims confusing and indefinite.
`
`II. GROUNDS FOR STANDING
`
`A.
`
`At Least One Challenged ’357 Patent Claim is Unpatentable
`
`As set forth in further detail below, claims 1-4 of the ’357 patent are invalid
`
`under one or more of 35 U.S.C. §§ 112, 2nd paragraph, 102 and 103. Thus, for the
`
`reasons set forth in the present petition and explained in further detail below, it is
`
`“more likely than not” that at least one of the challenged ’357 patent claims is
`
`unpatentable. 35 U.S.C. § 324(a).
`
`Page 3 of 63
`
`

`

`Petition for CBM Post-Grant Review
`
`U.S. Patent No. 7,941,357
`
`B.
`
`Claims 1-4 of the ’357 Patent are Directed to a Covered Business
`Method Patent that is not a “Technological Invention”
`The ’357 patent is a “covered business method patent” as defined under § 18
`of the AIA and 37 C.F.R. § 42.301. Section 18(d)(1) of the AIA provides the
`following:
`
`For purposes of this section, the term “covered business method
`patent” means a patent that claims a method or corresponding
`apparatus for performing data processing or other operations used in
`the practice, administration, or management of a financial product or
`service . . .
`
`The above language is similarly recited in 37 C.F.R. § 42.301(a).
`
`As indicated by the USPTO, “patents subject to covered business method
`
`patent review are anticipated to be typically classifiable in Class 705.” Fed. Reg.
`
`Vol. 77, No. 157, p. 48739. Class 705 is a classification for patents directed to
`
`data processing in the areas of “financial, business practice, management, or
`
`cost/price determination.” Id. at p. 48738.
`
`The ’357 patent is plainly a “covered business method patent.” Each of the
`
`claims of the ’357 patent is directed to “[a] method of informing users of stock
`
`market events.” The ’357 patent’s claimed methods include monitoring stock
`
`market activity by applying user-specified criteria and causing corresponding
`
`notification to the user. Moreover, the ’357 patent’s claimed methods are
`
`classified in class 705. Accordingly, the ’357 patent, which claims methods
`
`Page 4 of 63
`
`

`

`Petition for CBM Post-Grant Review
`
`U.S. Patent No. 7,941,357
`
`directed to administration or management of a financial product or service (i.e.,
`
`informing users of stock market events), is a covered business method patent
`
`subject to AIA § 18 review.
`
`Furthermore, the ’357 patent includes at least one claim not directed to a
`
`“technological invention” as defined under AIA § 18(d)(2) and 37 C.F.R. §
`
`42.301(b). In fact, none of claims 1-4 of the ’357 patent are directed to a
`
`technological invention. Section 301(b) provides the following:
`
`In determining whether a patent is for a technological invention. . .,
`the following will be considered on a case-by-case basis: whether the
`claimed subject matter as a whole recites a technological feature that
`is novel and unobvious over the prior art; and solves a technical
`problem using a technical solution.
`
`The ’357 patent claims fail to recite any technological feature that is novel
`
`and unobvious over the prior art. Nor do the ’357 patent claimed methods solve a
`
`technical problem using a technical solution. Instead, the ’357 patent claims
`
`merely recite methods – including old and well known stock market monitoring
`
`and communication concepts – that are generically stated as being employed with a
`
`“network of computers” and “a remote communications device” that do not
`
`distinguish, either in the claims or the ’357 patent specification, from computer
`
`networks or communication devices well known in the art.
`
`Page 5 of 63
`
`

`

`Petition for CBM Post-Grant Review
`
`U.S. Patent No. 7,941,357
`
`The ’357 patent applicant does not assert to have invented stock market
`
`event monitoring, technical analysis, or communication to a user. In fact, the
`
`“Background Art” section of the ’357 acknowledges that stock market monitoring
`
`and technical analysis were well known prior to the ’357 patent:
`
`Stock market technical analysis is becoming increasingly
`sophisticated and measures of events based on technical analysis
`indicators e.g., “moving averages,” “RSI,” “stochastic oscillator” and
`the like are extensively used to analyze share-market price and time
`data and for share portfolio management.
`Ex. 1001, col. 1, ll. 30-35; see also Ex. 1024 at 0330-0332, Applicant Response
`
`filed 1/26/09 (citing to a Wikipedia entry describing technical analysis as well
`
`known in the field); see also the Declaration of Dr. Kursh, Ex. 1002 at ¶26. Not
`
`only are monitoring the stock market and performing “technical analysis” both
`
`acknowledged in the ’357 patent and prosecution history as well known prior to
`
`October 2000, but such activities appear to include methods that could be
`
`performed by one of skill with or without use of a computer system, e.g., using
`
`pencil and paper. See Ex. 1002 at ¶23.
`
`Moreover, while the ’357 patent claims recite monitoring aspects such as
`
`using “a network of computers” and “a remote communications device,” the
`
`recitation of said terms do not qualify the ’357 patent claimed subject matter as a
`
`technological invention. See Ex. 1001, claim 1; see also Ex. 1002 at ¶34. Even if
`
`Page 6 of 63
`
`

`

`Petition for CBM Post-Grant Review
`
`U.S. Patent No. 7,941,357
`
`these aspects of the claims could be characterized as “technical,” the claims do not
`
`recite a technical feature that is novel and unobvious or provide a technical
`
`solution. The ’357 patent does not claim any improvement in “a network of
`
`computers” or in “a remote communications device.” In fact, the ’357 patent
`
`suggests that a computer coupled to the internet would provide “a network of
`
`computers” as set forth in the ’357 patent claims. Id. Regarding a remote
`
`communication device, the patent identifies a remote communications device as
`
`inclusive of known devices such as “a users fixed or mobile telephone, a personal
`
`computing device, a facsimile or pager of the user.” Ex. 1001, claim 4. See also,
`
`Ex. 1002, ¶¶32-36.
`
`Accordingly, Covered Business Method Patent Review is appropriate for the
`
`’357 patent.
`
`C.
`
`Petitioner has Been Sued for Infringement of the ’357 Patent and is
`Not Estopped
`
`The Petitioner has been sued for infringement of one or more claims of the
`
`’357 patent in Markets-Alert Pty. Ltd. v. Bloomberg Finance L.P. et al., Civil
`
`Action No. 1:12-CV-00780-GMS, D. Del. (filed June 20, 2012) (Ex. 1018),
`
`Markets-Alert Pty. Ltd. v. The Charles Schwab Corporation et al., Civil Action No.
`
`1:12-CV-00781-GMS, D. Del. (filed June 20, 2012) (Ex. 1019), Markets-Alert Pty.
`
`Ltd. v. E*TRADE CLEARING LLC et al., Civil Action No. 1:12-CV-00782-
`
`Page 7 of 63
`
`

`

`Petition for CBM Post-Grant Review
`
`U.S. Patent No. 7,941,357
`
`GMS, D. Del. (filed June 20, 2012) (Ex. 1021), and Markets-Alert Pty. Ltd. v. TD
`
`Ameritrade Holding Corp. et al., Civil Action No. 1:12-CV-00783-GMS, D. Del.
`
`(filed June 20, 2012) (Ex. 1020). Petitioner is not estopped from challenging the
`
`claims on the grounds identified in the petition, per 37 C.F.R. § 42.302(b).
`
`III.
`
`STATEMENT OF THE PRECISE RELIEF REQUESTED FOR EACH
`CLAIM CHALLENGED
`
`A.
`
`Identification of Challenged Claims
`
`The Petitioner requests review of claims 1-4 of the ’357 patent under 35
`
`U.S.C. § 321 and AIA §18. Cancelation of each of claims 1-4 of the ’357 patent is
`
`requested.
`
`B.
`
`Specific Statutory Grounds of Challenge
`
`Petitioner requests that each of claims 1-4 of the ’357 patent be canceled as
`
`invalid and unpatentable on the statutory grounds set forth below.
`
`Claim 1: Invalid Under 35 U.S.C. §§ 112, second paragraph, 102, and 103
`
`Claim 2: Invalid Under 35 U.S.C. §§ 112, second paragraph, 102, and 103
`
`Claim 3: Invalid Under 35 U.S.C. §§ 112, second paragraph, 102, and 103
`
`Claim 4: Invalid Under 35 U.S.C. §§ 112, second paragraph, 102, and 103
`
`Construction of the ’357 patent claims, detailed reasons for unpatentability,
`
`and corresponding evidence supporting the request set forth in the petition are
`
`addressed in further detail below.
`
`Page 8 of 63
`
`

`

`Petition for CBM Post-Grant Review
`
`U.S. Patent No. 7,941,357
`
`C.
`
`Claim Construction
`
`Pursuant to 37 C.F.R. § 42.300(b), in the present proceeding, a claim in an
`
`unexpired patent is to be given its broadest reasonable construction in light of the
`
`specification in which it appears. The standard for claim construction at the
`
`USPTO is different than that used in U.S. District Court litigation. Consistent with
`
`the USPTO Patent Trial Practice Guide, Petitioner hereby provides a statement
`
`that, in addressing the ’357 patent claims, claim terms are to be given their
`
`broadest reasonable interpretation, as understood by one of ordinary skill in the art
`
`and consistent with the disclosure. Rules of Practice for Trials Before the Patent
`
`Trial and Appeal Board and Judicial Review of Patent Trial and Appeal Board
`
`Decisions, 77 Fed. Reg. 48612 (Aug. 14, 2012) (to be codified at 37 C.F.R. pts. 1,
`
`42 and 90) at 48764. In supplement to the above statement regarding application
`
`of the broadest reasonable interpretation standard, the below discussion provides
`
`additional construction of the ’357 patent claims as supported by the Declaration of
`
`Dr. Steven Kursh (Ex. 1002).
`
`Claim Terminology
`“instructions from a user to specify
`watch data defining an event” (claim 1)
`“periodically apply” (claim 1)
`
`“real-time notification” (claim 1)
`
`Comments
`It is unclear whether input from a user
`directly specifies “watch data,” or can
`indirectly specify “watch data.”
`This term is undefined in the ’357
`patent. The broadest reasonable
`interpretation includes one or more
`time intervals, and may include a
`single application event.
`This term is undefined in the ’357
`
`Page 9 of 63
`
`

`

`Petition for CBM Post-Grant Review
`Claim Terminology
`
`U.S. Patent No. 7,941,357
`
`Comments
`patent. For purposes of prior art
`analysis, the term includes notification
`by a users fixed or mobile telephone, a
`personal computing device, a facsimile
`or pager of the user, as recited in ’357
`patent claim 4.
`For purposes of prior art analysis, the
`method of claim 1 does not necessarily
`define the network system as requiring
`post-notification user transaction
`instructions. Furthermore, “share
`market transactions” is undefined in
`the ’357 patent and ambiguous.
`This term is undefined in the ’357
`patent and ambiguous.
`“Instructions from a user to specify watch data defining an event”: It is
`
`“so that the user can then provide
`instructions for share market
`transactions on an instantaneous basis.”
`(claim 1)
`
`“overall stock market trends” (claim 3)
`
`unclear whether input from a user directly specifies “watch data” or can indirectly
`
`specify “watch data.” Watch data is further specified in claim 1 as “including a
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`stock market technical analysis request specifying technical analysis formulae.” In
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`other words, it is unclear whether the “instructions” are one or more steps removed
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`from the “watch data” and the “technical analysis formulae” or refer to the same
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`user entry. Moreover, the term “technical analysis formulae” is not defined in the
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`’357 patent. See Ex. 1002 at ¶39.
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`“periodically apply”: This term is undefined in the ’357 patent. For prior
`
`art analysis purposes, “periodically” would broadly include one or more time
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`intervals that might include seconds, minutes or hours (or perhaps longer), and
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`may include a single application event, which is consistent with the plain meaning
`
`of the term. See Ex. 1002 at ¶40.
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`U.S. Patent No. 7,941,357
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`“real-time notification”: This term is not defined in the ’357 patent. Claim
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`4 specifies a user’s fixed or mobile telephone, a personal computing device, a
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`facsimile or pager. As such, the real-time notification to the user recited in claim 1
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`would include the timing required to place a telephone call or to send an email,
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`facsimile or page to the user. See Ex. 1002 at ¶41.
`
`“so that the user can then provide instructions for share market
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`transactions on an instantaneous basis”: The term “instantaneous” is not defined
`
`in the ’357 patent. It is not possible to have truly instantaneous transactions under
`
`the plain meaning of the term, as there is always some amount of delay involved in
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`trading. Furthermore, it is not clear exactly what requirement the entire phrase
`
`would place on the claimed method or an associated trading system. Moreover, the
`
`term “share market transactions” is ambiguous and undefined in the ’357 patent.
`
`See Ex. 1002 at ¶42.
`
`“Overall stock market trends”: The term “overall stock market trends” is
`
`not defined in the specification. It is unclear whether the term only refers to equity
`
`markets, any specific market, market sector, or any particular period of time. For
`
`purposes of prior art analysis, the interpretation will include information regarding
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`a group of different securities other than a single stock, such as funds, indexes,
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`averages, and the like. See Ex. 1002 at ¶43.
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`U.S. Patent No. 7,941,357
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`IV. DETAILED EXPLANATION OF REASONS THAT THE
`CHALLENGED ’357 PATENT CLAIMS ARE UNPATENTABLE
`
`A.
`
`Claims 1-4 of the ’357 Patent are Invalid Under 35 U.S.C. §112,
`Second Paragraph as Being Indefinite
`
`35 U.S.C. §112, second paragraph requires that patent claims particularly
`
`point out and distinctly claim the subject matter which the applicant regards as the
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`invention. See also MPEP § 2173.02. A claim is indefinite if it fails to reasonably
`
`apprise those skilled in the art of the scope of the claims using language that is
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`sufficiently clear so as to notify the public of the scope of the patentee’s right. Id.
`
`Claims are indefinite when they contain words or phrases that are undefined in the
`
`patent specification and whose meanings are unclear when read in light of the
`
`specification. Id. As set forth in further detail below, claims 1-4 of the ’357 patent
`
`claims are invalid as being indefinite for several reasons.
`
`As indicated above, the phrase “instructions from a user to specify watch
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`data defining an event” renders the ’357 patent claims indefinite because it is
`
`unclear to what degree of specificity the user’s instructions must identify and
`
`directly provide “watch data,” “technical analysis request,” and/or “technical
`
`analysis formulae,” or whether the “instructions” can be one or more steps
`
`removed from the “watch data” and the “technical analysis formulae.” In fact, the
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`term “technical analysis formulae” is not defined in the ’357 patent. See Ex. 1002
`
`at ¶46.
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`U.S. Patent No. 7,941,357
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`While the term “technical analysis” might be a known term in the art, it also
`
`can broadly encompass many different types of analysis, and may be as simply
`
`defined as to include only price and volume. See, e.g., Ex. 1024 at 0330-0332,
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`Applicant Response filed 1/26/09 (citing to a Wikipedia entry describing technical
`
`analysis). However, it is unclear from the ’357 patent exactly what “formulae” are
`
`encompassed by the ’357 patent claims.
`
`The term “valid response” is also undefined by the ’357 patent. The ’357
`
`patent, at col. 3, ll. 47-53, suggests that a “valid technical response” following
`
`application of “technical analysis indicators formulas to the data” would include
`
`that a “price has reached,” which would appear to be more broadly inclusive of the
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`definition of “technical analysis” argued by the patentee during ex parte
`
`prosecution. The ’357 claims are ultimately ambiguous and indefinite in this
`
`regard, such that a third party would be unclear as to what content of activity and
`
`instruction entry by the user falls within the scope of the ’357 patent claims.
`
`Furthermore, the significance of the term “so that the user can then provide
`
`instructions for share market transactions on an instantaneous basis,” as recited in
`
`’357 patent claim 1, is unclear. In particular, it is not clear what requirement the
`
`entire phrase would place on the claimed method or an associated trading system.
`
`Moreover, the term “share market transactions” is not defined anywhere in the
`
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`U.S. Patent No. 7,941,357
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`’357 patent and has no meaning attributable to it by those skilled in the art. See
`
`Ex. 1002 at ¶42; id. at ¶47.
`
`Regarding claim 3, the term “overall stock market trends” is not defined in
`
`the specification and adds ambiguity to that claim. For example, it is unclear
`
`whether the term refers to equity markets only, any specific market, market sector,
`
`or any particular period of time. See Ex. 1002 at ¶43; id. at ¶48.
`
`B.
`
`Claims 1-4 of the ’357 Patent are Invalid Under 35 U.S.C. §§102 and
`103 In View of Identified Prior Art
`
`For purposes of this proceeding, prior art under AIA §18(a)(1)(C) includes
`
`the following:
`
`(i) prior art that is described by section 102(a) (as in effect on the day
`before such effective date [of March 16, 2013]); or
`(ii) prior art that—
`(I) discloses the invention more than 1 year before the date of
`the application for patent in the United States; and
`(II) would be described by section 102(a) of such title (as in
`effect on the day before the effective date set forth in section 3(n)(1)).
`Section 102(a) provides the following:
`A person shall be entitled to a patent unless—
`(a) the invention was known or used by others in this country, or
`patented or described in a printed publication in this or a foreign
`country, before the invention thereof by the applicant for patent.
`
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`U.S. Patent No. 7,941,357
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`Prior art references cited herein include printed publications, including
`
`patent literature, published articles, user manuals, and electronic publications.
`
`According to the MPEP, “prior art disclosure on the Internet or on an on-line
`
`database is considered in the same manner as other forms of written disclosure,”
`
`and is considered to be publicly available as of the date the disclosure was publicly
`
`posted. MPEP § 1843.01. Prior art in the form of an electronic publication,
`
`including an on-line database or Internet publication, is considered to be a ‘printed
`
`publication’ within the meaning of 35 U.S.C. 102(a) and (b) provided the
`
`publication was accessible to persons concerned with the art to which the
`
`document relates. MPEP § 2128 citing In re Wyer, 655 F.2d 221, 227, 210 USPQ
`
`790, 795 (CCPA 1981). The Patent Office itself has a policy requiring recordation
`
`of the field of search and search results (see MPEP § 719.05; § 2128).
`
`Archived websites can qualify as prior art where the website reasonably
`
`establishes the document was publicly available before the effective filing date of
`
`the application. See Ex Parte Joseph J. Krivulka and Leonard L. Mazur, Appeal
`
`2010-003098, 2010 WL 3820666 at *4 (Bd. Pat. App. & Interf. September 28,
`
`2010)(webpage qualified as prior art where Examiner provided evidence from the
`
`WayBackMachine internet archive that reasonably established when the document
`
`was publicly available before the application’s effective filing date and applicants
`
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`provided no contrary evidence); see also Ex Parte William Philip Shaouy and
`
`Matthew Bunkley Trevathan, 2007 WL 1591662, at *2 -3 (Bd. Pat. App. & Interf.
`
`May 24, 2007)(Board agreed with the examiner that the archived webpage
`
`qualified as a 35 U.S.C. § 102(a) reference because “the printed dates on the
`
`Forecast Pro web pages retrieved from the “archive.org” web site, as well as the
`
`copyright date of 2000 on the last of the retrieved web pages, establish that the
`
`cited Forecast Pro reference is an applicable prior art referenc