IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`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
`
`For: Trading System
`
`MAIL STOP PATENT BOARD
`
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`Post Office Box 1450
`
`Alexandria, Virginia 22313-1450
`
`PATENT OWNER’S REQUEST FOR AUTHORIZATION
`TO SUBMIT EXPERT DECLARATION WITH ITS PRELIMINARY RESPONSE
`
`Pursuant to 37 CFR §§42.107(e) and 42.207(c), Patent Owner Markets-Alert Pty Ltd.
`
`hereby requests authorization from the Patent Trial and Appeal Board to submit an expert
`
`declaration with its Preliminary Response.
`
`As set forth in the Federa] Register, 77 FR 48764: “New testimonial evidence may be
`
`permitted where a party demonstrates that such evidence is in the interests ofjustice. For
`
`example, the Board may permit new testimonial evidence where it addresses issues relating to
`
`the petitioner’s standing, or where the Board determines that consideration of the identified
`
`evidence is necessary in the interests ofjustice as the evidence demonstrates that the trial may
`
`not be instituted”.
`
`Petitioners’ bear the burden on standing to “demonstrate that the patent for which review
`
`is sought is a covered business method patent.” 37 CFR §42.304(a). “Covered business method
`
`patents by definition do not include patents for technological inventions.” 77 FR 48763-48764.
`
`1
`
`
`
`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
`
`For: Trading System
`
`MAIL STOP PATENT BOARD
`
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`Post Office Box 1450
`
`Alexandria, Virginia 22313-1450
`
`PATENT OWNER’S REQUEST FOR AUTHORIZATION
`TO SUBMIT EXPERT DECLARATION WITH ITS PRELIMINARY RESPONSE
`
`Pursuant to 37 CFR §§42.107(e) and 42.207(c), Patent Owner Markets-Alert Pty Ltd.
`
`hereby requests authorization from the Patent Trial and Appeal Board to submit an expert
`
`declaration with its Preliminary Response.
`
`As set forth in the Federa] Register, 77 FR 48764: “New testimonial evidence may be
`
`permitted where a party demonstrates that such evidence is in the interests ofjustice. For
`
`example, the Board may permit new testimonial evidence where it addresses issues relating to
`
`the petitioner’s standing, or where the Board determines that consideration of the identified
`
`evidence is necessary in the interests ofjustice as the evidence demonstrates that the trial may
`
`not be instituted”.
`
`Petitioners’ bear the burden on standing to “demonstrate that the patent for which review
`
`is sought is a covered business method patent.” 37 CFR §42.304(a). “Covered business method
`
`patents by definition do not include patents for technological inventions.” 77 FR 48763-48764.
`
`1
`
`
`
`In their Petition, in an effort to demonstrate that the subject patent is a covered business method
`
`patent, Petitioners’ submitted an alleged expert declaration. Specifically, Petitioner’s alleged
`
`expert testified to his opinion that the subject patent does not come under the “technological
`
`invention” exception.
`
`Patent Owner intends to submit the declaration of an expert in the relevant field of the
`
`subject patent to rebut Petitioners’ standing. Specifically, Patent Owner anticipates submitting
`
`testimony by its expert that demonstrates the invention of the subject patent falls within the
`
`“technological invention” exception of the standing requirement. Since the anticipated new
`
`testimonial evidence will address issues relating to Petitioners’ standing, the Board may permit
`
`Patent Owner’s request.
`
`Additionally, Patent Owner anticipates submitting testimony by its experts to address one
`
`or more of the following permitted threshold issues that would demonstrate that a trial should not
`
`be instituted: (l) The petitioner is statutorily barred from pursuing a review: (2) The references
`
`asserted to establish that the claims are unpatentable are not in fact prior art; (3) The alleged
`
`prior art lacks a material limitation in all of the independent claims; (4) The prior art teaches or
`
`suggests away from a combination that the petitioner is advocating; and (5) The petitioner’s
`
`claim interpretation for the challenged claims is unreasonable. 77 FR 48764.
`
`As Petitioners submitted alleged expert testimony to support their standing and other
`
`threshold burdens, permitting Patent Owner to submit rebuttal expert testimony on these
`
`threshold issues would be in the interest ofjustice and fairness. Without the benefit of rebuttal
`
`testimony, the Board would be relying on Petitioners’ unchallenged testimony to determine
`
`whether or not to grant the Petition. This may result in the Board instituting a trial where trial is
`
`not actually warranted. By permitting Patent Owner to submit its own expert declaration, the
`
`
`
`Board will avoid the potentially prejudicial effect of one—sided testimony and be fully informed
`
`as to the threshold requirements.
`
`Therefore, Patent Owner respectfully requests the Board for authorization to submit an
`
`expert declaration with its Preliminary Response.
`
`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
`
`Fax: 310-785-3506
`
`November 27, 2012
`
`
`
`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 5 t? S 2. (so 152 US
`
`) 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 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
`
`
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