`_______________
`
`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.
`
`
`
`PATENT OWNER MARKETS-ALERT
`REPLY TO PETITIONERS’ OPPOSITION TO MOTION TO AMEND
`
`
`
`TABLE OF CONTENTS
`
`
`
`Page
`
`I.
`
`NEW CLAIMS 5-8 ARE NOT BROADER IN SCOPE ................................ 1
`
`II. NEW CLAIMS 5-8 ARE SUPPORTED BY THE SPECIFICATION........... 3
`
`III. CLAIM CONSTRUCTION WAS PROVIDED ............................................. 4
`
`IV. NEW CLAIMS 5-8 WERE SHOWN TO BE PATENTABLE ...................... 5
`
`
`
`i
`
`
`
`TABLE OF AUTHORITIES
`
`
`
`Page
`
`Federal Statutes
`
`37 Code of Federal Regulations 1.121(e) .................................................................. 3
`37 Code of Federal Regulations 42.221 ..................................................................... 1
`37 Code of Federal Regulations 42.221(a)(3) ........................................................... 2
`37 Code of Federal Regulations 42.23 ....................................................................... 1
`Manual of Patent Examining Procedure § 2111.01 ................................................... 5
`Manual of Patent Examining Procedure § 2163.07 ................................................... 3
`Manual of Patent Examining Procedure § 608.01(o) ................................................ 3
`Manual of Patent Examining Procedure §1302.01 .................................................... 3
`Manual of Patent Examining Procedure §1412.03 ................................................1, 2
`
`
`
`
`
`ii
`
`
`
`LIST OF CITED EXHIBITS
`
`
`
`Exhibit 1043
`
`Second Declaration of Steven R. Kursh (“Second Kursh Dec.”)
`
`Exhibit 2025(a) Deposition Transcript of Steven R. Kursh (“Kursh Depo.”)
`
`Second Declaration of Neal Goldstein (“Goldstein Dec.”)
`
`Exhibit 2078
`
`
`
`
`
`iii
`
`
`
`Case No. CBM2013-00005 (JYC)
`Patent 7,941,357
`
`
`Patent Owner Markets-Alert (“Markets-Alert”) respectfully requests the
`
`Board to grant its Substitute Motion to Amend (“Motion”) because proposed Claims
`
`5-8 comply with 37 C.F.R. 42.221 in all respects. Claims 5-8 are and have been
`
`shown to be patentably distinguishable over the prior art of record and known to
`
`Markets-Alert.1 Petitioners have failed to justify any alleged basis for denying the
`
`Motion.2
`
`I.
`
`NEW CLAIMS 5-8 ARE NOT BROADER IN SCOPE
`
`Petitioners’ argument that omitting a previous limitation by itself means that
`
`the new claim is broader is false logic. See Ex. 2078 at ¶6. It ignores the
`
`clarifying limitations that replace the omitted limitations, as well as completely
`
`new limitations, which make Claims 5-8 considerably narrower in scope. A claim
`
`should only be considered broadened “if the patent owner would be able to sue any
`
`party for infringement who previously could not have been sued for
`
`infringement.” Manual of Patent Examining Procedure (“MPEP”) §1412.03. That
`
`is simply not the case here and Petitioners make no showing otherwise.
`
`Applying watch data “as the real-time stock market data is received” is not
`
`broader than “periodically apply,” in view of the Board’s claim construction of
`
`“include[ing] one or more time intervals.” Ex. 2078 at ¶¶13-16. “When the valid
`
`1 In their Opposition to Markets-Alert’s Motion (“Opposition”), Petitioners argue that Claims 1-4
`are cancelled and no claims are pending review. This is incorrect since no claims are cancelled,
`amended or substituted until the Motion is granted.
`2 Petitioners did not include a separate statement of material facts pursuant to 37 C.F.R. 42.23.
`
`
`
`1
`
`
`
`Case No. CBM2013-00005 (JYC)
`Patent 7,941,357
`
`stock market event has been determined to occur” is merely a more specific
`
`statement of the previous limitation “upon occurrence of the event,” and actually
`
`further defines “event.” Id. at ¶19. Notification to “a remote communication
`
`device” is necessarily “to the user.” Id. at ¶¶17 and 18.
`
`Moreover, Claim 5 is narrower because it considerably limits the scope of
`
`the broad constructions adopted by the Board for at least “network of computers”
`
`and “technical analysis” with explicit limitations, see e.g., Motion at 3 (underlining
`
`new limitations), and claim scope disclaimers, see e.g., id. at 5-10 (disclaiming
`
`claim scope). See Ex. 2078 at ¶¶4-9. Since Claim 5 is not broadened, dependent
`
`Claims 6 and 7 cannot be deemed broadened. MPEP §1412.03. Similarly, Claim
`
`8 is narrower because it adds structural limitations on top of the functional
`
`limitations of Claims 5-7. Motion at 4 (underlining hardware specifically
`
`configured to functional limitations); Ex. 2078 at ¶¶20-22. Petitioners simply
`
`ignore this narrowing of claim scope. Most tellingly, Petitioners never show the
`
`extra scope that they allege is captured by Claims 5-8.
`
`Finally, Petitioners’ argument that Claims 5-8 are untraceable is untrue.
`
`Markets-Alert proposed one substitute claim per original claim as permitted by 37
`
`C.F.R. 42.221(a)(3). As a simple comparison shows, Claim 5 traces to Claim 1,
`
`Claim 6 traces to Claim 2, Claim 7 traces to Claim 4 and Claim 8 traces to Claim
`
`
`
`2
`
`
`
`Case No. CBM2013-00005 (JYC)
`Patent 7,941,357
`
`3. See Ex. 2078 at ¶11. Petitioners forget that dependent Claims 2-4 contain all of
`
`the language from Claim 1.3
`
`II. NEW CLAIMS 5-8 ARE SUPPORTED BY THE SPECIFICATION
`Petitioners’ argument that Markets-Alert failed to identify requisite support
`
`in the original disclosure is a misrepresentation. The ‘357 Patent specification is
`
`virtually identical to the original disclosure, except for Figure 3 and minor fixes.
`
`Ex. 2078 at ¶5. But Claims 5-8 do not rely on Figure 3 or any of amended minor
`
`fixes to the specification. The support cited for Claims 5-8 come from the
`
`identical original disclosures. Id. Notably, Petitioners never give a specific
`
`example of a citation by Markets-Alert that was not in the original disclosure.
`
`Petitioners’ only challenge is that the exact same claim words do not appear
`
`in the specification. That is a mistake of law. A patent owner is not limited to the
`
`nomenclature used in the specification when amending claims or adding new
`
`claims. See MPEP §608.01(o). “[E]xact terms need not be used in haec verba to
`
`satisfy the written description requirement.” MPEP §1302.01, ¶13.08; see 37 CFR
`
`1.121(e); and MPEP §2163.07. The short but dense specification fully supports
`
`Claims 5-8 by teaching the claimed features. Motion at 5-15.
`
`
`3 On their face, Claims 5-8 mirror the original claim structure. Ex. 2078 at ¶10-11. They
`introduce only a few new terms and obvious rephrasings of the original claim language.
`Substituting claims, instead of red-lining, was merely a convenience. Requiring Claims 5-8 to
`retain the exact original claim language would defeat the purpose of substitute claims.
`
`
`
`3
`
`
`
`Case No. CBM2013-00005 (JYC)
`Patent 7,941,357
`
`
`Indeed, Petitioners fail to rebut the supporting citations themselves.
`
`Petitioners only generally deny that the cited support is sufficient without ever
`
`explaining how or why.4 Ex. 2078 at ¶5. For example, Petitioners do not deny
`
`that Figures 1 and 2, and the associated passages, show and describe a server-based,
`
`scalable and redundant network of computers, updating a cache, and the Claim 8
`
`structure. Id. at ¶¶23-31, 37-38, and 42-46. That is an embodiment taught by the
`
`‘357 Patent. Moreover, “as real-time stock market data is received” cannot be new
`
`matter as it falls within the Board’s construction of periodically apply; the Board
`
`already agreed that a “valid response” occurs where data has matched the criteria
`
`set forth, which is how “valid stock market event” is defined in the claims; the
`
`original disclosure says “technical analysis formulae” and “analysis indicators”
`
`(plural); and both experts agree that generating a technical analysis indicator is
`
`well understood in the art. Id. at ¶¶32-36, 39-40; see Ex. 2025(a) at 32:3-20,
`
`33:17-24 and 34:7-16; and Ex.1002 at ¶¶22-27.
`
`III. CLAIM CONSTRUCTION WAS PROVIDED
`Markets-Alert clearly did construe Claims 5-8. See Markets-Alert Response
`
`(“Response”) at 13-20 (“Section II.C. Claim Construction”); Motion at 5-7
`
`(construing “provider’s” and “server-based, scalable and redundant”); 10
`
`(construing “updating a cache”); 9-10 (construing new timing limitations); 7-11
`
`4 Petitioners state conclusorily that Claims 5-8 are unsupported. Instead of setting forth all of
`their arguments in the Opposition, they point to the Second Kursh Dec.
`
`
`
`4
`
`
`
`Case No. CBM2013-00005 (JYC)
`Patent 7,941,357
`
`(construing new technical analysis limitations); and 9-15 (construing new
`
`notification limitations). Petitioners’ argument to the contrary is simply wrong.
`
`They simply ignore this record, which construe terms or trace back to the Board’s
`
`construction or to plain, ordinary meaning. See MPEP §2111.01.
`
`IV. NEW CLAIMS 5-8 WERE SHOWN TO BE PATENTABLE
`Markets-Alert’s Response to the four references under review apply equally
`
`to the prior art of record and to Petitioners’ new references (not previously of
`
`record) because they are all redundant or cumulative.5 See Response at 1-4; and
`
`Ex. 2078 at ¶¶47-50. Petitioners do not rebut Markets-Alert’s demonstration that
`
`the prior art references are individually missing features or the state of the prior art
`
`taught a very different context from Claims 5-8. See e.g., id. at ¶62. Indeed,
`
`Petitioners only argument is that individual features may be found scattered in the
`
`prior art. But neither Petitioners nor Kursh offer a justification for haphazardly
`
`combining those features. See e.g., id. at ¶¶58, 60-67, 74, 76-84, 86, 106 and 110.
`
`The remainder of Petitioners’ arguments is nothing more than mischaracterizing
`
`Mr. Goldstein’s testimony or the briefing on record, which speak for themselves in
`
`contradicting Petitioners. Therefore, Markets-Alert respectfully requests that the
`
`Board and grant Claims 5-8 based on their substantive merit.
`
`
`5 Petitioners mention the new prior art references in a single paragraph, but provide no details.
`Instead, they incorporate the Second Kursh Dec., and the Toy chart therein, by reference into
`their Opposition. Markets-Alert provides a full rebuttal in the Goldstein Dec.
`
`
`
`5
`
`
`
`Case No. CBM2013-00005 (JYC)
`Patent 7,941,357
`
`
`
`
`Dated: November 1, 2013
`
`
`
`
`
`Respectfully submitted,
`
`
`
`
`Andrew Choung (USPTO Reg. No. 46,622)
`Email: achoung@glaserweil.com
`Arlyn Alonzo (USPTO Reg. No. 44,502)
`Email: aalonzo@glaserweil.com
`Adrian M. Pruetz (Pro Hac Vice)
`Email: apruetz@glaserweil.com
`GLASER WEIL FINK JACOBS
`HOWARD AVCHEN & SHAPIRO LLP
`10250 Constellation Boulevard, 19th Floor
`Los Angeles, CA 90067
`Tel: 310-553-3000
`Fax: 310-785-3506
`
`Attorneys for
`Patent Owner Markets-Alert Pty Ltd.
`
`6
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`I certify that a copy of the foregoing PATENT OWNER MARKETS-
`
`ALERT REPLY TO PETITIONERS’ OPPOSITION TO MOTION TO
`
`AMEND was served on November 1, 2013 to counsel of record for Petitioners via
`
`electronic mail:
`
`
`Michael T. Rosato
`USPTO Reg. No. 52,182
`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
`
`Brian D. Range
`USPTO Reg. No. 48,437
`WILSON SONSINI GOODRICH & ROSATI
`900 South Capital of Texas Hwy Las Cimas IV, Fifth Floor
`Austin, TX 78746-5546
`Tel.: 512-338-5478
`Fax: 512-338-5499
`Email: brange@wsgr.com
`
`
`
`
`
`
`
` /s/ Arlyn Alonzo
`Arlyn Alonzo
`
`
`
`
`
`