Trials@uspto.gov
`571-272-7822
`
`
`
` Paper 56
`
`Entered: November 15, 2013
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`BLOOMBERG INC.; BLOOMBERG L.P.; BLOOMBERG FINANCE L.P.;
`THE CHARLES SCHWAB CORPORATION;
`CHARLES SCHWAB & CO., INC.;
`E*TRADE FINANCIAL CORPORATION; E*TRADE SECURITIES LLC;
`E*TRADE CLEARING LLC; OPTIONSXPRESS HOLDINGS INC.;
`OPTIONSXPRESS, INC.; TD AMERITRADE HOLDING CORP.;
`TD AMERITRADE, INC.; TD AMERITRADE IP COMPANY, INC.; and
`THINKORSWIM GROUP INC.
`Petitioners
`
`v.
`
`MARKETS-ALERT PTY LTD.
`Patent Owner
`____________
`
`Case CBM2013-00005
`Patent 7,941,357
`____________
`
`
`
`Before JAMESON LEE, SALLY C. MEDLEY, and JONI Y. CHANG,
`Administrative Patent Judges.
`
`CHANG, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`571-272-7822
`
`
`
` Paper 56
`
`Entered: November 15, 2013
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`BLOOMBERG INC.; BLOOMBERG L.P.; BLOOMBERG FINANCE L.P.;
`THE CHARLES SCHWAB CORPORATION;
`CHARLES SCHWAB & CO., INC.;
`E*TRADE FINANCIAL CORPORATION; E*TRADE SECURITIES LLC;
`E*TRADE CLEARING LLC; OPTIONSXPRESS HOLDINGS INC.;
`OPTIONSXPRESS, INC.; TD AMERITRADE HOLDING CORP.;
`TD AMERITRADE, INC.; TD AMERITRADE IP COMPANY, INC.; and
`THINKORSWIM GROUP INC.
`Petitioners
`
`v.
`
`MARKETS-ALERT PTY LTD.
`Patent Owner
`____________
`
`Case CBM2013-00005
`Patent 7,941,357
`____________
`
`
`
`Before JAMESON LEE, SALLY C. MEDLEY, and JONI Y. CHANG,
`Administrative Patent Judges.
`
`CHANG, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`Case CBM2013-00005
`Patent 7,941,357
`
`
`On November 12, 2013, a telephone conference call was held between
`
`respective counsel for the parties and Judges Lee, Medley, and Chang. Bloomberg
`
`initiated the call to discussion three items: (1) Markets-Alert’s reply (Paper 54) to
`
`Bloomberg’s opposition to Markets-Alert’s motion to amend claims; (2) Markets-
`
`Alert’s listing of facts (Ex. 2079) filed in support of its reply; and (3) the second
`
`declaration of Neal Goldstein (Ex. 2078) also filed in support of its reply.
`
`During the conference call, Markets-Alert sought guidance on motions to exclude.
`
`The Board addressed each of those items in turn.
`
`Footnotes
`
`Bloomberg, first, pointed out that Markets-Alert’s reply (Paper 54) contains
`
`several footnotes that are single spaced and reduced font size in violation of 37
`
`C.F.R. § 42.6(a)(2)(ii) and (iii). Yet, in response to the Board’s inquiry regarding
`
`its requested relief, Bloomberg indicated that, upon review of the footnotes,
`
`Bloomberg found that the improper format would not be prejudicial, and withdrew
`
`its objection. In light of Bloomberg’s response and in the interest of efficiency, the
`
`Board did not require a corrected reply. The Board, nevertheless, reminded the
`
`parties that any subsequent documents, including affidavits, created for this
`
`proceeding must comply with the requirements set forth in 37 C.F.R. § 42.6—
`
`e.g., double spacing and 14 point font size.
`
`Listing of facts
`
`Bloomberg sought clarification on whether Markets-Alert’s listing of facts
`
`(Ex. 2079) should be counted toward the page limit. Markets-Alert argued that its
`
`listing of facts complies with 37 C.F.R. § 42.24(c)—which provides that the “page
`
`limits do not include a table of contents, a table of authorities, a listing of facts
`
`which are admitted, denied, or cannot be admitted or denied.” (Emphasis added.)
`
`
`
`2
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`
`
`Case CBM2013-00005
`Patent 7,941,357
`
`The Board explained that Markets-Alert cannot read paragraph (c) of § 42.24 in
`
`isolation. Rather, the rule must be read as a whole. More specifically,
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`paragraph (c) must be read together with paragraph (a) which provides that the
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`“following page limits for petitions and motions apply and include any statement
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`of material facts to be admitted or denied in support of the petition or motion.”
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`(Emphasis added.) This means that the page limit does not include a listing of
`
`facts only when it is filed in response to a statement of material facts.
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`In the instant proceeding, however, Markets-Alert’s listing of facts is not
`
`filed in response to any statement of material facts. Such a listing should be
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`counted toward the page limit. As Markets-Alert’s reply already is 5 pages, the
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`listing of facts, which itself is 11 pages, is an unauthorized paper. Upon
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`consideration of the Board’s explanation, Markets-Alert agreed with the Board that
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`its listing of facts is improper and offered to withdraw the listing. Instead of
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`requiring Markets-Alert to file a motion to expunge the listing of facts (Ex. 2079),
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`the Board notified the parties that it will expunge the listing sua sponte in its order.
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`Markets-Alert expressed concerns as to the statement set forth in 37 C.F.R.
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`§ 4.23(a)—namely, “[a]ny material fact not specifically denied may be considered
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`admitted.” The Board explained that that statement applies only in the situations
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`where an opposing party submitted a prior paper that contains a statement of
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`material facts to be admitted or denied.
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`Declaration filed in support of a reply
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`Bloomberg alleged that the second declaration of Neal Goldstein (Ex. 2078)
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`filed in support of Markets-Alert’s reply is improper because, according to
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`Bloomberg, the second declaration of Mr. Goldstein constitutes new evidence
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`necessary to make out Markets-Alert’s prima facie case as to the motion to amend
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`
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`3
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`
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`Case CBM2013-00005
`Patent 7,941,357
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`claims. Bloomberg sought leave to file a motion to strike the declaration. As
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`explained during the conference call, a motion to strike or a motion to exclude is
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`not the proper mechanism for raising the issue of whether a reply or reply evidence
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`is beyond the proper scope. In the absence of special circumstance, the Board will
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`determine whether the reply and its supporting evidence contain material
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`exceeding the proper scope when the Board reviews all of the pertinent papers and
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`prepares the final written decision. The Board may exclude Markets-Alert’s reply
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`and supporting evidence, in their entirety, or alternatively, decline to consider any
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`improper argument and related evidence, at that time. Additional briefing on this
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`issue is not necessary.
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`In order to understand Bloomberg’s concerns fully, the Board provided
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`Bloomberg the opportunity to be heard, and asked why it believes Mr. Goldstein’s
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`declaration constitutes new evidence necessary to make out Markets-Alert’s prima
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`facie case as to the motion to amend claims. It is Bloomberg’s opinion that
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`Markets-Alert attempts to provide, in the declaration, the claim construction of
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`new terms, written description support for the substitute claims, the reasons as to
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`why the substitute claims are not broader in scope, the identification of the
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`challenged claim which each proposed substitute claim is intended to replace, and
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`the explanation as to why the substitute claims are patentable over certain prior art.
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`Markets-Alert opposed and argued that its reply and support evidence are within
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`the proper scope—merely responding to arguments raised in Bloomberg’s
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`opposition. The Board indicated that parties’ statements are taken under
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`advisement.
`
`
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`4
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`
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`Case CBM2013-00005
`Patent 7,941,357
`
`
`Motions to exclude
`
`Markets-Alert requested guidance on the proper scope of a motion to
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`exclude. As explained by the Board, parties may raise issues related to
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`admissibility of evidence (e.g., authenticity or hearsay) in a motion to exclude.
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`See 37 C.F.R. §§ 42.64 and 42.62. In contrast, issues related to credibility and the
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`weight of the evidence should be raised in responses and replies. Further, a motion
`
`to exclude may not be used to challenge the sufficiency of the evidence to prove a
`
`particular fact, or to present arguments that should have been presented in
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`responses or replies. For instance, arguments related to the issue of whether a U.S.
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`patent or U.S. application publication is prior art under 35 U.S.C. § 102(e) against
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`a substituted claim should be presented in a reply rather than in a motion to
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`exclude.
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`For the foregoing reasons, it is
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`
`
`ORDERED that Markets-Alert’s listing of facts (Ex. 2079) will be
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`expunged; and
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`
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`FURTHER ODERED that Bloomberg’s request for authorization to file a
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`motion to strike Mr. Goldstein’s second declaration is denied.
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`5
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`
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`Case CBM2013-00005
`Patent 7,941,357
`
`PETITIONER:
`
`Michael T. Rosato
`Brian D. Range
`Wilson Sonsini Goodrich & Rosati
`Email: mrosato@wsgr.com
`Email: brange@wsgr.com
`
`
`PATENT OWNER:
`
`Andrew Choung
`Arlyn Alonzo
`Adrian Pruetz
`Glaser Weil Fink Jacobs Howard Avchen & Shapiro, LLP
`Email: achoung@glaserweil.com
`Email: IPLAW@alonzoasso.com
`
`
`
`6
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`
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