Trials@uspto.gov
`571-272-7822
`
`
`
` Paper 15
`
`Entered: December 3, 2012
`
`
`
`
`
`
`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.
`Petitioner,
`
`v.
`
`Patent of MARKETS-ALERT PTY LTD.
`Patent Owner.
`____________
`
`Case CBM2013-00005 (JYC)
`Patent 7,941,357
`____________
`
`
`
`Before JAMESON LEE, SALLY C. MEDLEY, JONI Y. CHANG, Administrative
`Patent Judges.
`
`CHANG, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Motion to Submit New Testimonial Evidence
`
`
`
`571-272-7822
`
`
`
` Paper 15
`
`Entered: December 3, 2012
`
`
`
`
`
`
`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.
`Petitioner,
`
`v.
`
`Patent of MARKETS-ALERT PTY LTD.
`Patent Owner.
`____________
`
`Case CBM2013-00005 (JYC)
`Patent 7,941,357
`____________
`
`
`
`Before JAMESON LEE, SALLY C. MEDLEY, JONI Y. CHANG, Administrative
`Patent Judges.
`
`CHANG, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Motion to Submit New Testimonial Evidence
`
`
`
`
`Case CBM2013-00005 (JYC)
`Patent 7,941,357
`
`
`
`Markets-Alert requests authorization to submit new testimonial evidence
`
`with its preliminary response. (Paper 14.) According to Markets-Alert, the
`
`proposed testimonial evidence would demonstrate that the claimed invention of its
`
`patent is a “technological invention” under 37 CFR § 42.301(b)1. (Id. at 2.)
`
`Markets-Alert also seeks authorization for reliance on new testimonial evidence in
`
`its preliminary response directed to other issues (e.g., claim construction and prior
`
`art) to demonstrate that a trial should not be instituted. (Id.) For the reasons
`
`provided below, we treat Markets-Alert’s request as a motion and the motion is
`
`denied.
`
`
`
`As an initial matter, it is noted that any relief must be requested in the form
`
`of a motion and a motion ordinarily will not be entered without prior Board
`
`authorization. 37 CFR § 42.20; Section II of the Office Patent Trial Practice
`
`Guide, 77 Fed. Reg. 48756, 48762 (Aug. 14, 2012). Further, an unauthorized
`
`paper may be expunged with prejudice. 37 CFR §§ 42.7(a) and 42.12(b).
`
`
`1 Section 18(d)(1) of the America Invents Act (AIA) defines a “covered business
`method patent” as “a patent that claims a method or corresponding apparatus for
`performing data processing or other operations used in the practice, administration,
`or management of a financial product or service, except that the term does not
`include patents for technological inventions.” (Emphasis added.) Section 18(d)(2)
`of the AIA provides that “the Director shall issue regulations for determining
`whether a patent is for a technological invention.” Pursuant to section 18(d)(2) of
`the AIA, the Office promulgated 37 CFR § 42.301(b) to define the term
`“technological invention” for the purposes of the Transitional Program for Covered
`Business Methods.
`
`
`
`2
`
`
`
`Case CBM2013-00005 (JYC)
`Patent 7,941,357
`
`
`
`The Board could treat Markets-Alert’s request (Paper 14) as an improper
`
`paper because Markets-Alert did not seek prior Board authorization and the request
`
`was not filed in the form of a motion. In the interest of efficiency in this case,
`
`however, the Board exercises discretion to treat Markets-Alert’s request as a
`
`motion and to decide it on the merits. 37 CFR §§ 42.1(b) and 42.5(b).
`
`
`
`A patent owner may file a preliminary response that includes evidence other
`
`than new testimonial evidence. In particular, a patent owner preliminary response
`
`“shall not present new testimony evidence beyond that already of record, except as
`
`authorized by the Board.” 37 CFR § 42.207(c). New testimonial evidence may be
`
`permitted where a party demonstrates that such evidence is in the interests of
`
`justice. Here, we find that Markets-Alert fails to demonstrate that its requested
`
`submission of new testimonial evidence to support a preliminary response is in the
`
`interests of justice.
`
`According to Markets-Alert, Bloomberg’s expert testified that the claimed
`
`invention of the subject patent is not a “technological invention” under 37 CFR
`
`§ 42.301(b). (Paper 14 at 2.) Markets-Alert implies that it should also have the
`
`opportunity to submit testimony by its expert on this issue. The argument is not
`
`persuasive. The ultimate legal determination on whether a claimed invention is a
`
`“technological invention” under 37 CFR § 42.301(b) is question of law. Therefore,
`
`testimony on that issue is not helpful. In that regard, note that testimony on United
`
`
`
`3
`
`
`
`Case CBM2013-00005 (JYC)
`Patent 7,941,357
`
`States patent law will not be admitted in this proceeding. 37 CFR § 42.65(a).
`
`Further, to the extent that Bloomberg’s testimonial evidence is directed to the issue
`
`on ultimate legal question of whether the claimed invention is a “technological
`
`invention” within the meaning of 37 CFR § 42.301(b), it is entitled to no weight in
`
`this proceeding.
`
`
`
`Markets-Alert also argues that since Bloomberg submitted expert testimony
`
`to support their petition, permitting Markets-Alert to submit rebuttal expert
`
`testimony on the prior art and claim construction issues raised in the petition would
`
`be in the interest of justice and fairness. (Paper 14 at 2.) We do not find that
`
`argument persuasive.
`
`
`
`Markets-Alert fails to recognize that a petitioner is required to lay out the
`
`grounds for review with supporting evidence to provide adequate notice to the
`
`patent owner. See 35 U.S.C. § 322(a)(3). In contrast, new testimonial evidence
`
`directed to prior art and claim construction issues should be submitted in a patent
`
`owner response filed after a trial has been instituted. See 35 U.S.C. § 326(a)(8).
`
`Under the statutory and regulatory framework, a patent owner would not have the
`
`burden to submit new testimonial evidence to address all of the grounds identified
`
`in a petition, but only those grounds that have not been denied at the time of
`
`institution if a trial is instituted. See 37 CFR § 42.208.
`
`
`
`4
`
`
`
`Case CBM2013-00005 (JYC)
`Patent 7,941,357
`
`
`As the movant, Markets-Alert must sufficiently demonstrate that it is in the
`
`interest of justice to authorize Markets-Alert to submit testimonial evidence in
`
`connection with its preliminary response. To that end, Markets-Alert has not
`
`identified specific underlying facts that would warrant the authorization of
`
`testimonial evidence in support of Markets-Alert’s preliminary response. (Paper
`
`14 at 2.) Moreover, Markets-Alert has not sufficiently explained why it would be
`
`in the interest of justice to permit Markets-Alert to submit testimonial evidence in
`
`support of a preliminary response prior to initiation of trial. If the Board
`
`determines to institute a trial in this proceeding, Markets-Alert will have full
`
`opportunity to submit testimonial evidence in support of any response it files.
`
`For the foregoing reasons, it is
`
`ORDERED that Markets-Alert’s motion to submit new testimonial
`
`evidence with its preliminary response is denied.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`5
`
`
`
`Case CBM2013-00005 (JYC)
`Patent 7,941,357
`
`PETITIONER:
`
`Michael T. Rosato
`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
`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
`
`
`
`
`
`PATENT OWNER:
`
`Andrew Choung
`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
`Email: achoung@glaserweil.com
`
`
`
`
`6
`
`
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