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.
`
`
`
`PATENT OWNER MARKETS-ALERT
`REPLY TO PETITIONERS’ OPPOSITION TO MOTION TO AMEND
`
`
`_______________
`
`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
`
`
`
`
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
