`
`Inventor: Jeffery Bruce McGeorge
`United States Patent No.: 7,941,357
`Formerly Application No.: 10/451022
`Issue Date: January 25, 201]
`PCT Filing Date: October 26, 2001
`Former Examiner: Ella Colbert
`
`§ Attomey Docket No.: FOR—20124 1]
`§
`§
`§
`§ Case No: CBM2013-00005
`§ Patent Owner: MarketrAlerts Pty Ltd
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`For: Trading System
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`MAIL STOP PATENT BOARD
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`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`Post Office Box 1450
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`Alexandria, Virginia 22313-1450
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`PATENT OWNER’S REQUEST FOR AUTHORIZATION
`TO SUBMIT EXPERT DECLARATION WITH ITS PRELIMINARY RESPONSE
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`Pursuant to 37 CFR §§42.107(e) and 42.207(c), Patent Owner Markets-Alert Pty Ltd.
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`hereby requests authorization from the Patent Trial and Appeal Board to submit an expert
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`declaration with its Preliminary Response.
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`As set forth in the Federa] Register, 77 FR 48764: “New testimonial evidence may be
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`permitted where a party demonstrates that such evidence is in the interests ofjustice. For
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`example, the Board may permit new testimonial evidence where it addresses issues relating to
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`the petitioner’s standing, or where the Board determines that consideration of the identified
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`evidence is necessary in the interests ofjustice as the evidence demonstrates that the trial may
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`not be instituted”.
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`Petitioners’ bear the burden on standing to “demonstrate that the patent for which review
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`is sought is a covered business method patent.” 37 CFR §42.304(a). “Covered business method
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`patents by definition do not include patents for technological inventions.” 77 FR 48763-48764.
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`1
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`In their Petition, in an effort to demonstrate that the subject patent is a covered business method
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`patent, Petitioners’ submitted an alleged expert declaration. Specifically, Petitioner’s alleged
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`expert testified to his opinion that the subject patent does not come under the “technological
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`invention” exception.
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`Patent Owner intends to submit the declaration of an expert in the relevant field of the
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`subject patent to rebut Petitioners’ standing. Specifically, Patent Owner anticipates submitting
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`testimony by its expert that demonstrates the invention of the subject patent falls within the
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`“technological invention” exception of the standing requirement. Since the anticipated new
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`testimonial evidence will address issues relating to Petitioners’ standing, the Board may permit
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`Patent Owner’s request.
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`Additionally, Patent Owner anticipates submitting testimony by its experts to address one
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`or more of the following permitted threshold issues that would demonstrate that a trial should not
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`be instituted: (l) The petitioner is statutorily barred from pursuing a review: (2) The references
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`asserted to establish that the claims are unpatentable are not in fact prior art; (3) The alleged
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`prior art lacks a material limitation in all of the independent claims; (4) The prior art teaches or
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`suggests away from a combination that the petitioner is advocating; and (5) The petitioner’s
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`claim interpretation for the challenged claims is unreasonable. 77 FR 48764.
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`As Petitioners submitted alleged expert testimony to support their standing and other
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`threshold burdens, permitting Patent Owner to submit rebuttal expert testimony on these
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`threshold issues would be in the interest ofjustice and fairness. Without the benefit of rebuttal
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`testimony, the Board would be relying on Petitioners’ unchallenged testimony to determine
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`whether or not to grant the Petition. This may result in the Board instituting a trial where trial is
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`not actually warranted. By permitting Patent Owner to submit its own expert declaration, the
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`Board will avoid the potentially prejudicial effect of one—sided testimony and be fully informed
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`as to the threshold requirements.
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`Therefore, Patent Owner respectfully requests the Board for authorization to submit an
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`expert declaration with its Preliminary Response.
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`Respectfully Submitted,
`/s/Andrew Choung/
`Andrew Choung, Lead Counsel
`USPTO Reg. No. 46622
`GLASER WEIL FINK JACOBS HOWARD
`AVCHEN & SHAPIRO LLP
`
`10250 Constellation Boulevard, 19th Floor
`Los Angeles, CA 90067
`Email: achoung@glaserweil.com
`Tel: 310—553-3000
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`Fax: 310-785-3506
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`November 27, 2012
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`
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`CERTIFICATE OF SERVICE
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`I certify that a copy of the foregoing PATENT OWNER MARKETS-ALERTS
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`REQUEST FOR AUTHORIZATION TO PRESENT NEW TESTIMONIAL EVIDENCE IN
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`ITS PRELIMINARY RESPONSE was served on November 27, 2012 by causing it to be
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`deposited in the United States Postal Service as Express Mail (Label No.
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`El 5 t? S 2. (so 152 US
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`) postage pre—paid in an envelope addressed to
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`counsel for petitioner at the following address:
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`Michael T. Rosato, Lead Counsel
`
`USPTO Reg. No. 52,182
`WILSON SONSINI GOODRICH & ROSATI
`701 Fifth Avenue
`Suite 5 1 00
`
`Seattle, WA 98104—7036
`Tel.: 206-883-2529
`
`Fax: 206—883—2699
`
`Email: mrosato@wsgr.com
`
`Brian D. Range, Back-up Counsel
`USPTO Reg. No. 48,437
`WILSON SONSINI GOODRICH & ROSATI
`
`900 South Capital of Texas Hwy Las Cim‘as IV, Fifth Floor
`Austin, TX 78746-5546
`Tel.: 512—338-5478
`Fax: 512—338—5499
`
`
`
`CERTIFICATE OF SERVICE
`
`I certify that a copy of the foregoing PATENT OWNER MARKETS-ALERTS
`
`REQUEST FOR AUTHORIZATION TO PRESENT NEW TESTIMONIAL EVIDENCE IN
`
`ITS PRELIMINARY RESPONSE was served on November 27, 2012 by causing it to be
`
`deposited in the United States Postal Service as Express Mail (Label No.
`
`El S'I'S Z (6 711 5‘1 U S
`
`I postage pre-paid in an envelope addressed to
`
`counsel for petitioner at the following address:
`
`Michael T. Rosato, Lead Counsel
`USPTO Reg. No. 52,182
`WILSON SONSINI GOODRICH & ROSATI
`701 Fifth Avenue
`Suite 5 l 00
`
`Seattle, WA 98104-7036
`Tel: 206~883-2529
`Fax: 206—883-2699
`
`Email: mrcsato@wsgr.com
`
`Brian D. Range, Back-up Counsel
`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: 512338-5499
`
`