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.
`Petitioners,
`
`v.
`
`MARKETS-ALERT PTY LTD.
`Patent Owner.
`____________
`
`Case CBM2013-00005 (JYC)
`Patent 7,941,357
`____________
`
`
`
`
`
`
` Before JAMESON LEE, SALLY C. MEDLEY, and JONI Y. CHANG,
`Administrative Patent Judges.
`
`
`
`SECOND DECLARATION OF NEAL GOLDSTEIN
`
`
`MARKETS-ALERT - EXHIBIT 2078
`
`
`_______________
`
`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.
`Petitioners,
`
`v.
`
`MARKETS-ALERT PTY LTD.
`Patent Owner.
`____________
`
`Case CBM2013-00005 (JYC)
`Patent 7,941,357
`____________
`
`
`
`
`
`
` Before JAMESON LEE, SALLY C. MEDLEY, and JONI Y. CHANG,
`Administrative Patent Judges.
`
`
`
`SECOND DECLARATION OF NEAL GOLDSTEIN
`
`
`MARKETS-ALERT - EXHIBIT 2078
`
`
`
`I, Neal Goldstein, state and declare as follows:
`
`1.
`
`In addition to what I previously reviewed for my Declaration of Neal
`
`Goldstein (“First Goldstein Dec.”) (Ex. 2023), I have reviewed Patent Owner
`
`Markets-Alert Substitute Motion to Amend (“Motion”), Petitioner’s Opposition to
`
`the Motion (“Opposition”), the Second Declaration of Steven R. Kursh (“Kursh”)
`
`(“Second Kursh Dec.”) (Exhibit 1043), Patent Owner Markets-Alert Response
`
`(“Response”), Petitioner’s Reply To Patent Owner Markets-Alert Response
`
`(“Reply”), and Exhibits 1002-1015, 1024-1033, 1035-1041 and 2001.
`
`2.
`
`I have been advised by counsel and understand that I must limit my
`
`testimony to respond to the arguments and issues raised in Petitioners’ Opposition,
`
`the Second Kursh Dec., and Exhibits 1002-1015, 1024-1033, 1035-1041 and
`
`2001. To leave no doubt that my testimony is within this proper scope, I have
`
`specified the paragraph of the Second Kursh Dec. to which I am responding.
`
`3.
`
`I have also been advised by counsel and understand that Petitioners
`
`and Kursh did not challenge or controvert large portions of my prior testimony, the
`
`testimony of Graham Maxwell Lindsay, and Markets-Alert’s Motion and Response,
`
`and these may be deemed admitted by the Board.
`
`I.
`
`SCOPE OF CLAIMS 5-8
`
`4. Contrary to Kursh’s comment at Paragraph 2, I understand that, in the
`
`Motion, Markets-Alert requested the Board to cancel originally issued Claims 1-4
`
`
`
`1
`
`
`
`and substitute Claims 5-8. I further understand that the Board must grant any
`
`changes to the claims of the ‘357 Patent.1
`
`5.
`
`I have compared the supporting citations presented by Markets-Alert
`
`in their Motion at 5-15 with the original disclosure (as filed) of the ‘357 Patent.
`
`They are, in my opinion, identical or substantially identical. Moreover, the
`
`original disclosure is identical or substantially identical to the disclosure in
`
`(AU)PR 1097. The only difference between the original disclosure and the ‘357
`
`Patent was the addition of Figure 3 and minor textual amendments. In my previous
`
`declaration, I did not refer to any parts of the ‘357 Patent specification that were
`
`not in the original disclosure (I understand that citing to the ‘357 Patent
`
`specification was just a matter of convenience). Consequently, in my opinion,
`
`contrary to Kursh’s assertion at Paragraph 3, Claims 5-8 do not encompass any
`
`new subject matter, i.e., subject matter not already part of the teachings in the
`
`original disclosure of the ‘357 Patent, as viewed by a person of skill in the art. As
`
`I have testified previously, it is my opinion that Claims 5-8 are fully supported by
`
`the original disclosure of the ‘357 patent. See Ex. 2023 at ¶¶69-96; and Motion at
`
`4 to 15. Except for disagreeing with some of my general conclusions, I saw that
`
`
`1 Markets-Alert narrowed by disclaimer the scope of original Claims 1-4 with respect to at least
`the features of network of computers, technical analysis and real-time. The newly added
`limitations in Claims 5-8 essentially reflect that narrowing of these features. Thus, each of the
`arguments that Markets-Alert presented in its response distinguishing Claims 5-8 on these
`limitations apply equally to Claims 1-4, and would have rendered Claims 1-4 equally
`distinguishable over the prior art.
`
`
`
`2
`
`
`
`neither Petitioners nor Kursh disputed or challenged the evidence or rationale I
`
`presented in my previous declaration.
`
`6.
`
`I also understand that the Petitioners allege that Claims 5-8 are
`
`broader than the original claimed scope. I note that, as a matter of logic, if Claims
`
`5-8 are broader, then Petitioners should not need prior art references other than the
`
`four granted review by the Board – unless Claims 5-8 are narrower in scope or the
`
`four references granted review were insufficient to begin with.
`
`7. Contrary to Kursh’s assertion at Paragraph 4, the elements and
`
`limitations in Claims 5-8 either trace back to Claims 1-4, in which case they are
`
`supported by the original claims, or are taught in the original disclosure of the ‘357
`
`Patent. In my opinion, Claims 5-8 are not broader in scope for the reasons I give
`
`herein.
`
`8.
`
`For example, in Claim 5, the original claim term “network of
`
`computers” is further limited by being a provider’s network of computers, which is
`
`server-based, scalable and redundant. Motion at 3 and 5-7. I understand that
`
`Markets-Alert also narrowed the scope by disclaiming those parts of the Board
`
`construction that were never intended to be covered by the claim. Id. at 5-6 (“The
`
`amended language excludes a third-party personal computer (PC) connected to the
`
`Internet by itself or just the Internet in general, as comprised by multiple third-
`
`party PCs. That is, while a third-party PC connected to the Internet or multiple,
`
`
`
`3
`
`
`
`inter-networked third-party PCs may be part of, connected to, or in communication
`
`with the claimed network of computers, they do not by themselves constitute the
`
`claimed network of computers.”); Response at 14-15.
`
`9.
`
`This is true also for original claim terms relating to “technical
`
`analysis.” Claim 5 replaces technical analysis formula with “more than one
`
`technical analysis formula for predicting price trends based on market action.” I
`
`understand that Markets-Alert also narrowed the scope by disclaiming those parts
`
`of the Board construction that were never intended to be covered by the claim.
`
`Motion at 7-8 (“Technical analysis is a term of art and would be understood… to
`
`require using a technical analysis formula on data (such as price and/or volume) to
`
`predict price trends.... Here, prediction requires an analytical approach….”); and
`
`Response at 15-16 and 22-25.
`
`10. At Paragraph 5, Kursh depicts a mark-up version of Claim 5. The
`
`important aspect to note here is that Claim 5 clearly traces back to Claim 1. I find
`
`Petitioners’ assertion that Claims 5-8 “bear no resemblance” to the original claims
`
`to be a vast overstatement. In fact, Kursh’s mark-up shows that Claim 5 retains the
`
`core structure and parallels the same steps of Claim 1. For example, Claim 5 has
`
`two receiving steps for stock market data and watch data, respectively, parallel to
`
`Claim 1(a) and (b); an applying step parallel to Claim 1(c); and a notification step
`
`parallel to Claim 1(d). The new language in Claim 5 only modifies, clarifies or
`
`
`
`4
`
`
`
`limits existing elements and limitations from Claim 1 (with either new limitations
`
`or rephrasings). In my opinion, this is true for Claims 6-8 as well. Claims 6 and 7,
`
`as dependent from Claim 5 parallel Claim 1(a) to (d).
`
`11. Each claim may be viewed as tracing back to just one original claim
`
`because each of Claims 2-4 depend from Claim 1. Claim 6 traces back to the core
`
`structure in Claim 1 through dependent Claim 2. Claim 7 traces back to the core
`
`structure in Claim 1 through dependent Claim 4. Claim 8 may easily be viewed as
`
`tracing back to the core structure in Claim 1 through dependent Claim 3. Again,
`
`any new language in Claim 8 is further limiting on existing language.
`
`12.
`
`In my opinion, the Board’s construction of the dependent features
`
`recited in Claims 2 and 3 effectively rendered those dependent features
`
`inconsequential as a practical matter. Paper 18 at 21. An invention that could
`
`apply technical analysis for a specified stock would have to be capable of doing so
`
`for any stock. Similarly, in order to apply technical analysis to a group of different
`
`stocks, the invention would have to be capable of doing so for individual stocks.
`
`Thus, the scope of Claims 1-3 are essentially commensurate. With respect to
`
`Claim 4, in my opinion, a fixed or mobile telephone, a personal computing device,
`
`a facsimile and a pager pretty well cover any conceivable remote communication
`
`device that might be relevant to the invention (e.g., smartphones, tablets,
`
`
`
`5
`
`
`
`notebooks, laptops, etc.). Consequently, I do not believe that the omission of these
`
`dependent features has any practical effect on the claim scope.
`
`13. At Paragraphs 6 to 8, Kursh alleges three limitations from Claim 1 do
`
`not appear in Claims 5-8. I agree that the exact wordings of “periodically apply,”
`
`“to the user,” and “upon the occurrence of the event defined by the user-specified
`
`watch data” do not literally appear in Claims 5-8. However, I disagree with Kursh
`
`that these limitations are not actually in Claims 5-8. They are. Kursh ignores the
`
`new limitations, which trace back to the above terms. These new limitations
`
`further clarify or limit the scope of the above terms, such that, in my opinion, the
`
`original claim scope is not broadened.
`
`14. For example, at Paragraph 6, Kursh concludes that Claims 5-8 do not
`
`recite “periodically apply” and includes non-periodic application of watch data. In
`
`my opinion, that is not true. The ‘357 Patent describes the application of technical
`
`analysis: “[t]echnical analysis indicators can be set to ‘repeat’ over a certain
`
`period and can be told to alert the user when an ‘event’ happens….” Ex. 2001 at
`
`Col. 4:49-51. I understand that the Board held that this encompasses “one or more
`
`time intervals.” Paper 18 at 20. Thus, the meaning ascribed by the Board covered
`
`any time interval, e.g., hour-by-hour, minute-by-minute, second-by-second, etc. I
`
`understand that Petitioners and Kursh did not dispute this construction by the
`
`Board.
`
`
`
`6
`
`
`
`15. What Kursh misses is that Claim 1 originally required not just
`
`periodically apply, but applying periodically in “real-time.” These time intervals
`
`or periods may be on a “tick by tick” basis, which is highly relevant for intraday
`
`trading, as I have testified previously. Ex. 2023 at ¶48. Thus, in my opinion,
`
`Claim 5 clarifies the scope with the limitation, “applying the user-specified watch
`
`data to the real-time stock market data as the real-time stock market data is
`
`received.” This limitation requires that the Board construed time interval to be “as
`
`the real-time stock market data is received,” e.g., on a “tick-by-tick” basis, not just
`
`any time interval.
`
`16.
`
`I note that Kursh testified that this would be his own understanding of
`
`the real-time nature of the invention. Ex. 2025(b), Deposition of Steven R. Kursh
`
`(“Kursh Depo.) at 244:2-9 (“And it says in…Column 1, Line 38, ‘small blocks of
`
`time’”); and 187:14-17 (Q: “While it doesn’t use the word ‘real-time,’ you’re
`
`saying that you understand it to be saying real-time because it says the signals
`
`happen when they occur?” A: “That’s correct.”) (emphasis added). Kursh
`
`specifically testified that “you have to take real-time within the context.” Ex.
`
`2025(a) at 45:11. Therefore, in my opinion, because a “tick-by-tick” basis is
`
`within the scope of the Board’s definition of one or more time intervals, the
`
`additional limitation of “applying the user-specified watch data to the real-time
`
`stock market data as the real-time stock market data is received” does not broaden
`
`
`
`7
`
`
`
`the scope of the Claims 5-8 despite the absence of the exact words “periodically
`
`apply.”
`
`17. At Paragraph 7, Kursh concludes that a difference exists between
`
`providing a notification to a device versus to a user. His only explanation is that a
`
`device may not be monitored. However, I find this distinction to be
`
`inconsequential. An unmonitored device would serve no purpose and all such
`
`devices would eventually be monitored at some point in time. I also object to
`
`Petitioners’ attempt to mischaracterize my deposition testimony – I never testified
`
`that this distinction was “nontrivial.”
`
`18. Claim 1(d) states in its entirety, “causing a real-time notification 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,
`
`the real-time notification directed to a remote communication device of the user so
`
`that the user can then provide instructions for share market transactions on an
`
`instantaneous basis.” Although the notification is ultimately provided for the user,
`
`Claim 1 requires the notification to be sent via a remote communication device. In
`
`my opinion, that is what Claim 5 more explicitly recites: “to a remote
`
`communication device of the user.” Therefore, based on this reasoning, the
`
`omission of phrase, “to a user,” creates no real difference in scope.
`
`
`
`8
`
`
`
`19. At Paragraph 8, Kursh merely observes that Claim 1 recites “upon the
`
`occurrence of the event defined by the user-specified watch data” and Claims 5-8
`
`recite “when the valid stock market event has been determined to have occurred by
`
`the provider’s network of computers.” He does not explain or conclude any
`
`difference in scope. I agree that there is no broadening of scope, despite the
`
`difference in phrasing. As Claims 5-8 describe, “the user-specified watch data…
`
`defines a valid stock market event.” Claim 1 originally described: “the event
`
`defined by the user-specified watch data.” As anyone would recognize, including
`
`persons of ordinary skill in this art, these are essentially equivalent. In fact, Claims
`
`5-8 simply make more clear that the event is a valid stock market event and the
`
`determination is by the provider’s network of computers. Therefore, in my opinion,
`
`the minor difference in phrasing here does not in any way broaden the scope of
`
`Claims 5-8.
`
`20. At Paragraph 9, Kursh again merely observes a difference in language,
`
`that Claim 8 is directed to a system as opposed to a method. He does not explain
`
`or conclude any difference in scope. Again, I agree that there is no broadening of
`
`scope. Although Claim 8 is directed to a system, it recites all of the key functional
`
`limitations of the other claims and adds further hardware requirements. In my
`
`opinion, Claim 8 would require implementing the steps of Claim 5 in a specifically
`
`configured system. That means Claim 8 cannot be broader in scope than Claim 5.
`
`
`
`9
`
`
`
`21. For example, Claim 8 takes from Claim 1 the following limitations:
`
`“receiving watch data specified by a user from a user system in remote
`
`communication,” “wherein the user specified watch data comprises a request to
`
`apply more than one technical analysis formula for predicting price trends based on
`
`market action and defines a valid stock market event,” “receiving… stock market
`
`data in real-time,” “applying technical analysis in real-time to the stock market
`
`data to determine if the valid stock market event has occurred in accordance with
`
`the user-specified watch data,” “generating a notification in real-time when the
`
`valid stock market event has been determined to have occurred,” and “providing
`
`the notification in real-time to a remote communication device of the user.”
`
`22. On top of these limitations, Claim 8 also recites additional hardware
`
`elements. See Motion at 4 and 13-15; and Ex. 2023 at ¶¶90-96. In my opinion,
`
`this makes Claim 8 no broader than the method claims.
`
`II.
`
`SUPPORT AND CONSTRUCTION FOR CLAIMS 5-8
`
`23.
`
`I disagree with Kursh’s statements at Paragraph 10. I saw that the
`
`meaning of terms in Claims 5-8 are described in detail in Markets-Alert’s
`
`Response and Motion, and were already construed by the Board. Response at 13-
`
`20; Motion at 5-15; and Ex. 2023 at ¶¶69-103. However, neither Petitioners nor
`
`Kursh appear to have cited to or disputed these constructions. In my opinion, any
`
`other terms would take on a plain, ordinary meaning.
`
`
`
`10
`
`
`
`A. Claim 5
`
`24.
`
`In Paragraph 11, I found that Kursh plays a word game. He first says
`
`that the ‘357 Patent does not “define” a provider’s network. However, he does not
`
`deny that the ‘357 Patent recites and describes a provider’s network at Col. 1:58-
`
`2:2. Then, he says that the ‘357 Patent does not “recite” scalable or redundant.
`
`However, he does not deny that the ‘357 Patent describes a scalable and redundant
`
`network of computers at Figures 1 and 2 and Col. 2:6-4:67.
`
`25.
`
`Indeed, I am very surprised that, given his apparent qualifications, the
`
`absence of exactly identical claim language prevented Kursh from understanding
`
`the patent specification. I understand that the standard is not whether or not the
`
`exact claim language appears in the specification, but whether or not the
`
`specification supports the claim language, as viewed by a person of ordinary skill
`
`in the art.
`
`26.
`
`In my opinion, Markets-Alert already explained the meaning of this
`
`claim term: “New Claim 5 explicitly recites that the network of computers is a
`
`server-based, scalable and redundant infrastructure provided by a provider of the
`
`claimed system. The amended language excludes a third-party personal computer
`
`(PC) connected to the Internet by itself or just the Internet in general, as comprised
`
`by multiple third-party PCs. That is, while a third-party PC connected to the
`
`Internet or multiple, inter-networked third-party PCs may be part of, connected to,
`
`
`
`11
`
`
`
`or in communication with the claimed network of computers, they do not by
`
`themselves constitute the claimed network of computers.” Motion at 5-6; see
`
`Response at 14-15. I saw that neither Petitioners nor Kursh addressed or disputed
`
`these statements.
`
`27.
`
`In my opinion, the ‘357 Patent does teach a provider’s network, which
`
`is scalable and redundant, as set forth in detail in the Motion at 5-7. I also cited
`
`several passages from the ‘357 Patent that describe “server-based, scalable and
`
`redundant systems” in my first declaration. See Ex. 2023 at ¶¶72-74. For
`
`example, Figure 1 shows that to implement “load balancing,” a server switch box
`
`manages communication to and from drones. See Ex. 2001 at Fig. 1. This load
`
`balancing functionality enables redundancy and scalability as well. For a system to
`
`be redundant there needs to be more than one component performing the same
`
`functions, so that if one component fails, the other component can absorb its work
`
`load. This is shown in Figure 1 for drone computers, as well as in Figure 2 for
`
`switches. Ex. 2001 at Figs. 1 and 2.
`
`28. Since the claimed system can operate transparently with a failure in
`
`one component, it can likewise operate transparently with the addition of more
`
`drones or switches. Scalability is the ability to increase the processing power of a
`
`system by the addition of hardware without interrupting the functioning of the
`
`
`
`12
`
`
`
`system. Ex. 2023 at ¶73-74. This is illustrated in Figures 1 and 2. Ex. 2001 at
`
`Figs. 1 and 2.
`
`29.
`
`I saw that Kursh never explains his understanding of scalability and
`
`redundancy. Given at least Figures 1 and 2, one of ordinary skill in the art would
`
`understand that a scalable and redundant server-based system was being described,
`
`even if the words server-based, scalable, and redundant are not literally mentioned
`
`in the specification.
`
`30.
`
`In Paragraph 12, Kursh mischaracterizes my deposition testimony.
`
`The precise question that I was asked is whether or not servers in general were
`
`known in the prior art. Ex. 1035, Deposition of Neal Goldstein (“Goldstein Depo.”)
`
`at 50:20-24. I have never denied this. However, as I further explained at my
`
`deposition, the invention is not just about a provider’s network of computers,
`
`which is server-based, scalable and redundant. Ex. 1035 at 44:2-11 (“THE
`
`WITNESS: It's different from the '357 claims by virtue of the fact that the '357
`
`claims it's an invention with a number of pieces in it and the server is one part of
`
`that only. BY MR. ROSATO: Q. So you're saying that the server-based part of the
`
`claim is a point of distinction; is that right? A. I'm saying, yes, it is only one point
`
`of distinction.”) (emphasis added). I saw that neither Petitioners nor Kursh cite to
`
`or dispute any of my testimony in this regard.
`
`
`
`13
`
`
`
`31. Further, I disagree with Kursh’s construction of the term network of
`
`computers. His definition makes vague what is already very clear and precise, and
`
`his attempt to include dates into his construction is just very odd. In my opinion,
`
`as I explained above, Markets-Alert already clearly and explicitly defined the
`
`scope of this term in its Motion. See Motion at 5-7; and Response at 14-15.
`
`32. At Paragraph 13, Kursh contrasts periodic against non-periodic
`
`application of watch data. However, he does not explain what he means by non-
`
`periodic. Since I understand that the Board construed “periodically apply” to
`
`include one or more time intervals, Paper 18 at 20, Kursh must be saying that
`
`“non-periodic” means not including one or more time intervals. Consequently, I
`
`understand that the issue would be whether or not Claims 5-8 completely exclude
`
`time intervals. In my opinion, as I explained above at Paragraph 15-16, Claims 5-8
`
`do not exclude all time intervals – that would make no sense.
`
`33. Claims 5-8 contain the limitation of “applying the user-specified
`
`watch data to the real-time stock market data as the real-time stock market data is
`
`received,” which traces back to “periodically apply” in Claim 1. By applying the
`
`watch data “as the real-time stock market data is received,” the claims actually
`
`specify more precisely the “one or more time intervals.” It now makes clear that
`
`the application may be on a tick-by-tick basis. Not only is this just plain, ordinary
`
`meaning to a person of skill in the art, I understand that Markets-Alert described
`
`
`
`14
`
`
`
`this meaning in detail. Response at 17 and 19; and Motion at 9-10 (“These
`
`clarifications of real-time are supported by the Original Claims and the
`
`descriptions that the drone computers apply the technical analysis at a specified
`
`interval, Ex. 2001 at Col. 3:47-51, including as the data is received, and that
`
`‘[t]echnical analysis indicators can be set to ‘repeat’ over a certain period and can
`
`be told to alert the user when an ‘event’ happens,’ Ex. 2001 at Col. 4:49-51.”).
`
`34.
`
`In my opinion, Kursh’s statements at Paragraph 14 are irrelevant
`
`because he is looking for the wrong thing. In fact, he actually confirms that the
`
`‘357 Patent describes applying data at “a specified interval” and set to “repeat”
`
`over a certain period. This is exactly what Claims 5-8 recite. During his
`
`deposition, Kursh admitted to his understanding of real-time. I addressed this at
`
`Paragraph 16 above. I understand that neither Petitioners nor Kursh retracted or
`
`disputed this testimony.
`
`35.
`
`In my opinion, Kursh is incorrect at Paragraph 15. The ‘357 Patent
`
`does describe the new limitation of “more than one technical analysis formula,”
`
`which traces back to the phrase in original Claim 1, “technical analysis formulae.”
`
`For example, the ‘357 Patent describes: “applies the users [sic] chosen technical
`
`and analysis indicators formulas to the data.” Ex. 2001 at 3:50-51; see also Ex.
`
`2001 at 4:57-58. These are all plural descriptions of formula and indicator, and I
`
`saw that neither Petitioners nor Kursh explain away these plural descriptions. In
`
`
`
`15
`
`
`
`fact, they seem to ignore that even Claim 1 originally recited the plural, “formulae.”
`
`Thus, in my opinion, this limitation was already construed when the Board
`
`construed “technical analysis formulae.”
`
`36. At Paragraph 16, Kursh tries to create a false impression from my
`
`deposition testimony. I agree that the exact phrase, “valid stock market event,” is a
`
`new phrase. But that does not mean that it is not recited or supported by the ‘357
`
`Patent and the original claims. In fact, I saw that Kursh did not provide any
`
`explanation or foundation for his opinion other than to just conclusorily state that
`
`this is a newly-introduced term. However, I believe that Kursh has missed the
`
`point. The term “valid stock market event” traces back to the original language of
`
`“event” and “valid response” in Claim 1. Motion at 9. So, it is not a completely
`
`new feature. I agree with the Board’s determination that a person of ordinary skill
`
`in the art would understand what is meant by these original claim terms, Paper 18
`
`at 22, and therefore, a “valid stock market event.” In my opinion, Claims 5-8 more
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`precisely describe the application of watch data and thereby make quite clear the
`
`plain, ordinary meaning of a valid stock market event. See Response at 18; Motion
`
`at 5-15.
`
`B. Claim 6
`
`37. At Paragraph 17, although Kursh admits that the ‘357 Patent describes
`
`scooping stock market data and storing that data in servers, he says that he cannot
`
`
`
`16
`
`
`
`understand “updating a cache of stock market data on a data server.” I am puzzled
`
`by Kursh’s statement because any person of ordinary skill in this art would know
`
`that this describes a cache of stock market data and that cache being updating.
`
`Since Kursh does not elucidate any further, I cannot account for this apparent lack
`
`of understanding.
`
`38. The ‘357 Patent describes “updating a cache of stock market data,” as
`
`set forth in detail by Markets-Alert. Motion at 10As a person of ordinary skill in
`
`the art would know (and as Kursh should know), a cache is a store or collection of
`
`data; caching data is another way to say storing data, but typically (though not
`
`always) implying either a temporary storage or some anticipated processing after
`
`the storage. This is what the ‘357 Patent describes in “scooping” stock market data
`
`for the “history server” so that servers connected to the network can request data
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`and “data never needs to be requested from an outside source more than once.” Ex.
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`2001 at 3:1-9. In my opinion, this limitation has a plain, ordinary meaning, which
`
`would be clear to a person of skill in the art.
`
`39. At Paragraph 18, Kursh states that generating technical analysis
`
`indicators from technical analysis formulae is not specifically taught in the patent.
`
`In my opinion, that is not true. The ‘357 Patent specifically refers to technical
`
`analysis indicators, as set forth in detail by Markets-Alert. Motion at 11; see e.g.,
`
`Response at 15-16. There is nothing mysterious about these terms. A person of
`
`
`
`17
`
`
`
`ordinary skill in these arts will have a full understanding of what is meant by
`
`generating technical analysis indicators from the formulas, especially in view of
`
`the ‘357 Patent specification. In fact, I saw that Kursh does not actually deny that
`
`he understands what this means (since that would be very odd for someone who
`
`teaches technical analysis).
`
`40.
`
`In my opinion, Claim 6 simply sets out a more precise scope by
`
`requiring technical analysis indicators to be generated by applying formulas and
`
`then updating the indicators. As I explained at my deposition, a “technical analysis
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`indicator” is not infrequently thought of as the name of a “technical analysis
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`formula” by traders. That is, it is “the description of the application of the formula
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`to the data” because it reflects the result of that application. Ex. 1035 at 138:2-5.
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`At Paragraph 18, Kursh mischaracterizes my deposition testimony. I did not say
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`that “technical analysis formula” and “technical analysis indicator” are
`
`interchangeable claim terms. I merely stated that the terms are often used
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`interchangeably by traders as short hand because of the reasons I described above.
`
`C. Claim 7
`
`41. At Paragraph 19, Kursh again just states that the exact words “live
`
`link” are not in the specification. But he does not address the citations and
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`explanations in my previous declaration or the Motion. Claim 7 clearly traces to
`
`Claim 4, which recites that “the remote communications device comprises a users
`
`
`
`18
`
`
`
`[sic] fixed or mobile telephone, a personal computing device, a facsimile or pager
`
`of the user.” Ex. 2001 at Claim 4. The ‘357 Patent explains that “[t]he user sends
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`a message or command from a second system device, which is then intercepted by
`
`the switching box.” Ex. 2001 at 2:31-33; see Ex. 2023 at ¶87. Claim 1, from
`
`which Claim 4 depends, originally described that a purpose of the notification was
`
`“so that the user can then provide instructions for share market transactions on an
`
`instantaneous basis.” Thus, this feature of Claim 7 is effectively a further
`
`limitation to Claim 4, and specifies the means by which the instructions are to be
`
`provided, i.e., a live link (such as for a command to execute a trade). See e.g.,
`
`Motion at 12 (“A person of ordinary skill in the art would understand that being
`
`able to input commands to a software environment would include a link between
`
`the network of computers and the remote communication device.” ); and Response
`
`at 19. Thus, in my opinion, this feature is supported by the specification and the
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`meaning clearly set forth.
`
`D. Claim 8
`
`42. At Paragraphs 20-23, I see that Kursh only states that he did not find
`
`in the specification the exact words of certain terms from Claim 8. However, I did
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`not see any explanation by Kursh as to why the features themselves were not
`
`actually taught or supported. In my opinion, for all of the reasons I have presented
`
`
`
`19
`
`
`
`in this proceeding (and the arguments by Markets-Alert), the various structural
`
`elements and functional limitations recited in Claim 8 are supported.
`
`43. Figure 2 of the ‘357 Patent clearly shows a GUARDIAN with
`
`switches. Ex. 2001 at Fig. 2. The ‘357 Patent specification clearly describes the
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`GUARDIAN and switches. Motion at 13-15. All of these disclosures, in their
`
`entirety, describe and explain a “network guardian, which comprises one or more
`
`switches.” Ex. 2023 at ¶91-92. That Figure 2 depicts the GUARDIAN and
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`switches as separate logical units is not preclusive. A person of skill in the art
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`would look at the functionality and understand where to draw the box for the
`
`claimed network guardian. Similarly, a person of skill in the art would understand
`
`that Figure 2 depicts one embodiment, but that other configurations consistent with
`
`the descriptions in the specification are possible. I saw that neither Petitioners nor
`
`Kursh actually dispute the descriptions of the GUARDIAN and switches in the
`
`specification.
`
`44. At Paragraph 21, Kursh seems to indicate that he does not understand
`
`“history database subsystem” and “alert managing subsystem.” However, Figure 2
`
`depicts a subsystem of history clients, which the specification describes as storing
`
`data, and a subsystem of alert clients, which the specification describes as
`
`managing the alerting. Ex. 2001 at Fig. 2; see Motion at 13-15. A description
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`does not get much more clearer than this. Despite Kursh’s apparent lack of
`
`
`
`20
`
`
`
`understanding, in my opinion, these descriptions, especially as set forth in detail by
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`Markets-Alert, clearly support the claim terms – that is what they describe. Motion
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`at 13-15; and Ex. 2023 at ¶¶94-95.
`
`45. At Paragraph 22, Kursh states that the ‘357 Patent only discloses an
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`output service, not an output connector. But he again ignores all the other
`
`descriptions in the specification. For example, as I testified previously, the Output
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`Service is described as the “network connection software and hardware which
`
`connects the network of computers to an output device.” Ex. 2001 at Col. 4:40-42
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`(emphasis added); see Ex. 2023 at ¶96. Based on this description (which Kursh
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`does not address or challenge), I believe that the claimed output connector is
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`supported.
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`46. With respect to Kursh’s statement at Paragraph 23, as I explained
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`above, the limitations of “applying technical analysis in rea
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