`Filed: December 3, 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.
`Petitioner,
`
`v.
`
`MARKETS-ALERT PTY LTD.
`
`Patent Owner.
`_____________________________
`
`Case CBM2013-00005 (JYC)
`
`Patent No. 7,941,357
`_____________________________
`
`PETITIONERS’ OPPOSITION TO PATENT OWNER’S
`MOTION TO EXCLUDE
`
`
`
`I.
`
`INTRODUCTION
`Patent Owner Markets-Alert (MA) seeks to exclude two types of evidence:
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`(1) allegedly “conclusory” opinions of Dr. Kursh and (2) references properly
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`submitted in conjunction with Petitioner’s Opposition to MA’s motion to amend
`claims. MA does not raise any issue on the admissibility of Dr. Kursh’s
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`declaration. In fact, MA plainly admits that the purpose of its motion is to address
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`credibility and the weight of the evidence – subjects which the Board clearly
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`explained are outside the proper scope of a motion to exclude. This transparent
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`attempt to fit a square peg into a round hole is completely improper. MA’s
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`purported arguments to exclude certain prior art references based on FRE 403 are
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`misplaced, and also ignore the Board’s clear instructions that whether a reference
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`is prior art is not the proper subject of a motion to exclude. Accordingly,
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`Petitioners request that MA’s motion be denied in its entirety.
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`II. MATERIAL FACTS IN DISPUTE
`Petitioners response pursuant to 37 C.F.R. § 42.23 to each of the nine
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`“material facts” enumerated in MA’s Motion to Exclude (Paper No. 58, hereinafter
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`“Motion”) is provided in the attached “Petitioners Response to Statement of
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`Material Facts” (attached as Appendix A).
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`III. REASONS WHY REQUESTED RELIEF SHOULD BE DENIED
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`A. Markets-Alert Knowingly Disregards The Board’s Clear Guidance On
`The Proper Scope Of A Motion To Exclude
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`
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`During the November 12, 2013 teleconference between counsel for the
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`parties and Judges Lee, Medley, and Chang, MA requested guidance on the proper
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`scope of a motion to exclude. The Board explained that the parties may only “raise
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`issues related to admissibility of evidence (e.g., authenticity or hearsay).” Paper
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`No. 56 at 5. “In contrast, issues related to credibility and the weight of the
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`evidence should be raised in responses and replies. Further, a motion to exclude
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`may not be used to challenge the sufficiency of the evidence to prove a particular
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`fact, or to present arguments that should have been presented in responses or
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`replies.” Id. (emphasis added).
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`MA acknowledges this clear guidance – not once, but twice. Motion at 3
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`and FN.1. MA then immediately admits that its motion addresses nothing more
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`than the credibility and the weight of the Kursh declaration. See id. at 3 (“Markets-
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`Alert respectfully submits that these evidentiary objections . . . should inform the
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`Board’s weighing of the evidence submitted in this proceeding [].”). In other
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`words, MA announces that it is going to file whatever it wants “to preserve its
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`objection.” Such knowing and flagrant disregard of the Board’s admonition should
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`be rejected.
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`B. Markets-Alert Applies The Wrong Legal Standard
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`At pages 3-6 of its motion, MA provides discussion of case law regarding
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`expert witness testimony. Petitioner’s response is simply that MA analysis
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`2
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`
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`conflates the well-known standard for admissibility of expert testimony with case
`law regarding credibility and the weight of the evidence. Admissibility is the
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`proper subject of a Motion to Exclude, but as MA admits, credibility and the
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`weight of evidence are not.
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`Expert testimony should only be excluded as not admissible if it will not
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`assist the trier of fact. As set forth in Daubert v. Merrell Dow Pharmaceuticals,
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`Inc., 509 U.S. 579, 113 S. Ct. 2786, 125 L. Ed. 2d 469 (1993) the Supreme Court
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`only requires that expert testimony be: (1) relevant; (2) based on reliable
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`principles, methodologies and foundational date; and (3) otherwise admissible.
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`Daubert at 590-95. Federal Rule of Evidence (FRE) 702 provides a similar
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`standard. There is no admissibility requirement beyond this, and there is no higher
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`admissibility burden for expert opinions on obviousness – the same tried and true
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`standards of Daubert and FRE 702 apply. See, e.g., MicroStrategy Inc. v. Business
`Objects, S.A., 429 F.3d 1344, 1355 (Fed. Cir. 2005).
`
`The Federal Circuit law that MA discusses in its motion to exclude address
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`the credibility and weight of expert testimony on obviousness – but not its
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`admissibility. In each case, the applicable court held that the expert testimony at
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`issue was conclusory and therefore could not support obviousness on the merits.
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`See, e.g., ActiveVideo Networks, Inc. v. Verizon Communications, Inc., 694 F.3d
`1312 (Fed. Cir. 2012) (insufficient to support verdict of obviousness); Sitrick v.
`Dreamworks, LLC, 516 F.3d 993, 1001 (Fed. Cir. 2008) (insufficient to defeat
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`summary judgment); Dynacore Holdings Corp. v. U.S. Philips Corp., 363 F.3d
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`3
`
`
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`1263 (Fed. Cir. 2004) (insufficient to defeat summary judgment). Whether an
`expert opinion is conclusory, however, is an issue of credibility and weight – not
`admissibility.
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`C.
`
`Dr. Kursh’s Opinion Meets The Standards Of Admissibility
`
`Dr. Kursh’s testimony readily meets the standards of Daubert and FRE 702
`and should not be excluded. The Federal Circuit’s decision in Meyer Intellectual
`Props. Ltd. v. Bodum, Inc., 690 F.3d 1354, 1375 (Fed. Cir. 2012) is illustrative.
`
`There, the Federal Circuit held that the district court abused its discretion by
`excluding expert testimony. Id. at 1376. The expert’s report opined as to
`obviousness of the patent-in-suit and included claim charts. Id. at 1375. The
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`Federal Circuit contrasted these facts with Innogenetics, N.V. v. Abbott Labs., 512
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`F.3d 1363, 1373-74 (Fed. Cir. 2008)—one of the cases relied upon by MA—by
`noting that “[u]nlike the situation in Innogenetics, here, Ander’s report does more
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`than merely list prior art references and provide a conclusion of obviousness.” Id.
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`at 1373.
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`Here, Dr. Kursh also provides claim charts and reasoning for combinations
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`(akin to Meyer) and does much more than merely list references and conclude
`obviousness (as in Innogenetics). Dr. Kursh’s opinions are supported by ample
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`explanation and by the many documents he cites. His conclusions are well-
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`grounded in the evidence. Dr. Kursh supports his opinions with pinpoint citations
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`to prior art references, explains what elements those references disclose, explains
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`why there is a motivation to combine references, and has true expertise in the field
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`4
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`
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`of the invention. Thus, the Board should consider Dr. Kursh’s opinions and,
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`ultimately, weigh the credibility of those opinions and Petitioners’ other evidence
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`against the credibility of MA’s evidence.
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`D.
`Weight
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`Dr. Kursh’s Opinion Is Both Credible And Should Be Given Due
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`While admissibility is the only standard actually at issue, MA’s argument
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`that Dr. Kursh’s testimony is not credible, is unsupported or lacks weight is also
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`baseless. Petitioner’s response to specific points raised by MA are addressed
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`below.
`Notably, much of the testimony MA seeks to exclude is actually buttressed
`by MA’s own admissions. In addition, the obviousness inquiry “may include
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`recourse to logic, judgment, and common sense available to the person of ordinary
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`skill that do not necessarily require explication in any reference or expert opinion.”
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`Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009)
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`(holding that expert’s conclusions supported district court’s conclusion that claim
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`“would have been obvious as a matter of common sense”).
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`“Paragraph 7”: At page 7, lines 8-14, MA attacks “Paragraph 7” of Dr.
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`Kursh’s testimony (Ex. 1043) addressing improper claim broadening by virtue of
`the proposed new claims 5-8 no longer requiring real-time notification to the user.
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`Petitioner’s response: the difference between providing a real-time
`notification to a human user in real time (e.g., as required by now canceled ’357
`Patent claim 1) versus merely providing notification to a device (e.g., as recited in
`
`5
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`
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`proposed new claim 5), was acknowledged by MA’s own expert, Mr. Goldstein,
`during cross-examination. See Ex. 1035 at 127:17-129:8. Consistent with Mr.
`
`Goldstein’s testimony, Dr. Kursh makes a similar factual observation of modified
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`claim scope. MA has identified no reason to exclude this testimony.
`“Paragraph 12”: At page 7, lines 15-19, MA argues that Dr. Kursh
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`provides no basis for his construction of “network of computers.”
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`Petitioner’s response: the cited provision of Dr. Kursh’s testimony
`expressly states that the claim construction is based on uncontested testimony from
`MA’s own expert, Mr. Goldstein – i.e., a server-based, scalable and redundant
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`network of computers, as recited in proposed new claim 5, includes subject matter
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`known since 1980, possibly as far back as the 1970’s. (Ex. 1043, ¶ 12). MA does
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`not go so far as to contest that testimony of its own expert, and actually provides
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`further confirmation of this point in its present Motion at p. 13, ll. 2-5. As such,
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`MA has identified no reasonable basis to exclude the cited testimony.
`“Paragraphs 13 and 14”: At page 8, lines 1-6, MA argues Dr. Kursh’s
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`testimony regarding the deletion of the term “periodically apply” (recited in now
`
`canceled original claim 1) from the proposed new claims 5-8.
`Petitioner’s response: that the term “periodically apply” was removed
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`from the proposed new claims 5-8 is not in dispute, as plainly acknowledged both
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`by MA in the PO’s Response (PN 38 at 19-20) and by Mr. Goldstein (Ex. 1035 at
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`87:18-22). To the extent Dr. Kursh applies common sense in making a similar
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`observation, it is perfectly appropriate for expert an expert to do so (Perfect Web
`
`6
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`
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`Techs., Inc., 587 F.3d at 1329), and common sense dictates that new claims 5-8 do
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`not require satisfaction of an absent limitation. Furthermore, MA does not dispute
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`the merits of Dr. Kursh’s testimony that the ’357 Patent only mentions periodic or
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`interval-based application of a formula to data. Ex. 1043, ¶14. As such, MA has
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`identified no reasonable basis to exclude the cited testimony.
`“Paragraph 15”: At page 8, lines 7-12, MA attacks the merits of Dr.
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`Kursh’s testimony regarding inability of locate disclosure of a newly recited claim
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`element in the text of the ’357 Patent. Dr. Kursh correctly states that the ’357
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`Patent does not disclose where more than one formula defines a single event.
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`Petitioner’s response: MA’s argument goes wholly to the merits of lack of
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`written description support, and is not appropriate for a motion to exclude
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`evidence. Furthermore, MA urges erroneous analysis by arguing that the language
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`of Claim 1—as issued but not as originally filed—can support new Claim 5. As
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`explained in Petitioner’s Opposition of MA’s Motion to Amend (e.g., at p. 4-5),
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`MA has never identified support for proposed new claims 5-8 “in the original
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`disclosure” or any “earlier-filed disclosure,” as required by 37 C.F.R. § 42.221(b).
`See also Idle Free at 11. As such, MA has identified no reasonable basis to
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`exclude the cited testimony.
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`“Paragraph 17”: At page 8, lines 13-16, MA attacks the merits of Dr.
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`Kursh’s testimony regarding inability of locate specific disclosure regarding
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`“caching” in the text of the ’357 Patent.
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`7
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`
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`Petitioner’s response: MA’s argument goes to the merits of lack of written
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`description issue, and is not appropriate for a motion to exclude evidence. Dr.
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`Kursh’s statement that the terms “cache” or “updating a cache” are not found in the
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`’357 Patent is a statement of fact. Dr. Kursh reasonably notes that different
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`language in the specification does not mean the same thing. This testimony is
`consistent with testimony provided by MA’s expert. See, e.g., Ex. 1035 at 131:20-
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`25; 133:7-14. Moreover, if Dr. Kursh’s statement is too conclusory (as MA
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`argues), the same is certainly true of MA’s motion to amend where MA bears the
`burden to demonstrate support for the claimed subject matter. Nichia Corp. v.
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`Emcore Corp., IPR2012-00005, PN 27 at 4; see also Idle Free at 11.
`“Paragraphs 32”: At page 8, line 17 through page 9, line 5, MA argues that
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`Dr. Kursh’s testimony at ¶¶31-32 of his declaration only cites examples of “more
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`than one technical analysis formula” in two of the cited references (i.e., Exs. 1007
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`and 1009).
`Petitioner’s response: MA argument appears to be that that Petitioner
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`should have recited quotations from each of the cited references, rather than
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`providing on-point quotations from two of the cited references. Nevertheless, MA
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`fails to provide any reason why these two examples, including quoted text, provide
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`evidence warranting exclusion. In fact, the evidence is directly on point to the
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`unpatentability of the proposed claims. MA offers no reason or argument why the
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`cited references or corresponding testimony is anything other than relevant and
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`8
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`
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`detrimental to the patentability of the proposed claims, or any credible reason why
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`the testimony should be excluded.
`“Paragraphs 33-34, 44”: At page 9, line 6 through page 12, line 2, MA
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`attacks the merits of Dr. Kursh’s testimony, arguing that it fails to definitively
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`prove the unpatentability of proposed new claims 5-8.
`Petitioner’s response: MA’s arguments improperly go to the merits of Dr.
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`Kursh’s testimony, rather than addressing issues of admissibility. Furthermore,
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`MA misplaces the burden in demonstrating the patentability of the proposed new
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`claims. Petitioners and Dr. Kursh bear no burden to prove unpatentability. Dr.
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`Kursh’s detailed rebuttal testimony stands in stark contrast to the anemic showing
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`provided by MA – the moving party, and therefore the party that bears the burden
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`of demonstrating patentability over the prior art – in its motion to amend.
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`Indeed, the disputed testimony is addressing the very issue of whether MA’s
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`motion, corresponding submitted evidence, and identified alleged points of novelty
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`provide sufficient showing as to distinguish the proposed new claims from the
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`prior art. Dr. Kursh provides testimony as to why MA’s alleged points of novelty
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`are easily located in the prior art and, furthermore, why one of skill would view
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`those aspects of the proposed new claims as either found in a prior art method or
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`system or easily included in existing prior art methodologies.
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`In support, Dr. Kursh provides detailed discussion (e.g., at ¶¶24-44, as
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`opposed to only the few paragraphs of testimony cited by MA in its motion to
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`exclude) as well as reference to his first declaration where some of the references
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`9
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`
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`are explained in great detail. It is against this backdrop of some 50+ paragraphs of
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`testimony (including detailed claim charts) as well as explanation regarding the
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`general background of the patent and technology (Ex. 1002 at ¶¶ 16-27, 32-43) and
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`explaining the level of ordinary skill (Ex. 1002 at ¶¶ 28-30) that Dr. Kursh reaches
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`his conclusion that MA has failed to identify a patentable distinction between its
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`proposed new claims and the prior art.
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`Dr. Kursh’s rebuttal testimony is nothing like ActiveVideo, where only bare
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`conclusions were presented. Rather, Dr. Kursh’s thorough analysis is more akin to
`Meyer Intellectual Props. Ltd. where the Federal Circuit reversed the district court
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`for improperly excluding proper expert testimony because the testimony at issue
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`included “detailed claim charts comparing the asserted claims to the relevant prior
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`art.” 690 F.3d at 1375.
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`Likewise, MA’s criticism that Dr. Kursh does not explain “how” Satow
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`could be reconfigured is misplaced. Dr. Kursh explains the failure of MA to
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`distinguish the proposed new claims from the prior art. Dr. Kursh further explains
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`in detail that Satow describes a sophisticated “network-based stock trading
`system.” Ex. 1002 at 52. Given the many features employed by Satow (as
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`explained by Dr. Kursh at Ex. 1002 ¶¶ 49-56 and claim chart), it would be simple
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`for Satow to be modified, as described by Dr. Kursh. Thus, it is entirely
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`appropriate for Dr. Kursh to reach the common sense conclusions of Paragraph 34.
`Cf. Meyer Intellectual Props., 690 F.3d at 1375. In contrast, MA never
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`10
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`
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`distinguished their proposed new claims from Satow or a simple modification
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`thereof.
`“Paragraphs 46”: At page 12, lines 3-11, MA argues Dr. Kursh’s
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`testimony with regard to Toy, alleging the testimony is both too long (e.g., 20
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`pages of claim charts) and too short (e.g., alleging conclusory opinions at ¶¶46-50).
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`No argument is presented with respect to ¶¶52-57 of Dr. Kursh’s testimony.
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`Petitioner’s response: MA has identified no coherent or reasonable basis to
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`exclude the cited testimony, but appears to be requesting exclusion of testimony
`based purely on the inconvenience of Toy to their case.
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`Although Petitioner bears no burden to prove unpatentability of the proposed
`new claims, Dr. Kursh’s declaration (and, independently, the Toy reference itself)
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`provides more than enough evidence to demonstrate anticipation of Claims 5-6 and
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`8 by Toy. Dr. Kursh provided a detailed claim chart demonstrating where each
`element of Claims 5-6 and 8 is taught by the Toy reference. The Federal Circuit’s
`decision in Meyer Intellectual Props., 690 F.3d at 1375, approves of claim charts
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`as a proper way for an expert to compare prior art to patent claims. Moreover, the
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`rules of governing the Covered Business Review procedure anticipate the use of
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`claim charts. 37 C.F.R. § 42.5 (stating that claim charts may be single-spaced).
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`MA’s primary objection appears to be that the Toy claim chart is too long.
`However, the chart establishes that Toy teaches every element of Claims 5-6 and 8
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`not just in passing but in great detail. Dr. Kursh is entirely reasonable to base his
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`opinion that Toy anticipates Claims 5-6 and 8 based upon more than just a select
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`11
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`
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`subset of Toy’s pertinent teachings and to explain the basis of his opinion with a
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`detailed claim chart. Moreover, MA fails to explain how exclusion of this aspect
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`of Dr. Kursh’s testimony would do anything other than frustrate proper resolution
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`of issues under review. For example, even if the Board were to exclude the cited
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`testimony of Dr. Kursh, the underlying prior art references and points of law would
`nonetheless remain at issue. See In re Brimonidine Patent Litig., 643 F.3d 1366,
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`1376 (Fed. Cir. 2011); see also Perfect Web Techs., Inc., 587 F.3d at 1329.
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`E.
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`The References at Exhibit Nos. 1036-1041 Should Not Be Excluded
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`Allegedly Cumulative: At page 1, lines 1-6, MA requests exclusion of
`Exhibit Nos. 1036-1041.1 At page 12, line 12 through page 13, line 14, MA argues
`exclusion of those references as allegedly cumulative, though states that inclusion
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`of the references “would not work a substantive harm.”
`Petitioner’s response: MA has established no reason for exclusion of the
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`cited references, no lack of compliance with Board rules in their submission, and
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`no harm resulting from their inclusion. The references were timely submitted in
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`conjunction with Petitioner’s opposition to MA’s motion to amend claims as
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`relevant both for substantive reasons (demonstrating lack of novelty of proposed
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`new claims 5-8) and for procedural reasons (demonstrating MA’s failure to meet
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`its burden as moving party seeking entry of new claims in a motion to amend).
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`1 Besides cited provisions of Dr. Kursh’s testimony in Ex. 1043, MA does not
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`request exclusion of any other references.
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`12
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`
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`With regard to the argument of cumulativeness, MA only cites to the
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`possibility their inclusion will require the Board to review additional references.
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`While MA no doubt wishes to remove prior art from the Board’s consideration of
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`proposed new claims 5-8, the Board is fully capable of reviewing materials and
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`deciding the probative value of the references. In contrast, neither the Board nor
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`the public will benefit in MA’s proposed claims escaping the appropriate prior art
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`scrutiny.
`Priority Date of Reference: At page 13, lines 15 through page 14, line 1,
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`MA argues exclusion of the reference to Kraemer (Ex. 1036) on the basis that
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`Kraemer has an effective filing date only a few weeks prior to the ’357 Patent
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`earliest priority date. MA apparently could not resist the urge to brief this issue,
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`despite being admonished by the Board on a conference call and instructed that this
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`very issue was wholly inappropriate for a motion to exclude. See PN 56 at 5.
`Petitioner’s response: MA’s claim that Kraemer beats the October 26,
`2000 priority date of the ’357 Patent by “only about two weeks” has not been
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`factually established by MA. As explained in Petitioner’s Opposition of MA’s
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`Motion to Amend (p.4-5), MA has never identified in its Motion to Amend support
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`for proposed new claims 5-8 “in the original disclosure” or any “earlier-filed
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`disclosure,” as required by 37 C.F.R. § 42.221(b); see also Idle Free at 11.
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`Kraemer is proper prior art for review by the Board.
`Unfair: At page 14, line 2 through page 15, line 14, MA argues that the
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`“new references” Exhibit Nos. 1036-1041 should be excluded because they were
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`13
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`
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`not previously of record, arguing it is unfair for Petitioners not to have disclosed
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`the reference earlier.
`Petitioner’s response: Conducting a prior art search, at Petitioner’s expense
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`and on MA’s behalf, in advance of MA’s motion to amend is neither Petitioner’s
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`burden nor a reasonable possibility. Indeed, Petitioner would have no idea of
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`MA’s claim drafting strategy or intended modified scope of the amended claims.
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`The fact that MA actually broadened the scope of its claims even further
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`compounds the impossibility of Petitioner conducting a prior art search on MA’s
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`behalf – something Petitioner has no obligation to do in the first place.
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`The cited references were submitted in opposition to MA’s motion to amend
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`claims, where MA as the moving party bears the burden of demonstrating
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`patentability over the prior art. MA plainly admitted that in submitting its
`proposed new claims it addressed only the four references upon which trial was
`ordered. See Ex. 1035 at 178:13-22. In a conference call with the Board, MA
`admitted it had conducted no prior art search in conjunction with preparing its
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`motion to amend claims. See PN 53 at 3. MA has offered no reasonable excuse
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`for its negligence or any reason why it would have been unable to identify the
`references by its own efforts.2
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`2 At p. 15, lines 12-14, MA argues that a search based on a live link would not have
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`uncovered Kraemer, which discloses a button as a live link. This is unpersuasive
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`14
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`
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`Moreover, none of the references represent some exotic publication source.
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`Instead, all are either U.S. Patents or PCT publications easily located from
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`USPTO’s public databases. MA should be neither surprised nor prejudiced by
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`their citation in this proceeding. MA elected to advance its new broadened claims
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`5-8 without conducting a prior art search at its own peril.
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`None of MA’s arguments explain any reason why the submitted prior art is
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`inadmissible pursuant to the Federal Rules of Evidence.
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`IV. CONCLUSION
`Petitioners ask that MA motion to exclude be denied in its entirety.
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`Date: December 3, 2013
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`Respectfully submitted,
`
`/ Michael T. Rosato /
`Michael T. Rosato
`WILSON SONSINI GOODRICH & ROSATI
`Counsel for Petitioners Bloomberg Inc. et al.
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`in view of MA’s expert to readily identify a button as in Kraemer as providing
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`such a link. Ex. 1035 at 140:10-13.
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`15
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`
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`Appendix A
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`PETITIONERS’ RESPONSE TO STATEMENT OF MATERIAL FACTS
`1.
`On October 2, 2013, Petitioners submitted the Second Kursh Decl.
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`and New References in support of Petitioner’s Opposition to Patent Owner
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`Markets-Alert Motion to Amend (Paper 50) (“Opposition”) and Petitioner’s Reply
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`to Patent Owner Markets-Alert Response (Paper 51) (“Reply”). Markets-Alert
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`timely served its Objections to this evidence on October 8, 2013.3
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`Bloomberg Inc. et al Response: Denied. Petitioner’s Reply to the PO’s
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`Response points out, inter alia, that Patent Owner Response is non-compliant due
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`to cancelation of original claims 1-4, but does not cite the Second Declaration of
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`Dr. Kursh.
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`2.
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`The Second Kursh Decl. contains testimony in the form of alleged
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`expert opinions at Paragraph Nos. 7, 12-15, 17, 32-34, 44, and 46-57.
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`Bloomberg Inc. et al Response: Admitted that the Second Kursh
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`Declaration includes statements of fact as well as expert opinions; otherwise
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`denied.
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`3 MA’s “material facts” are presented in improper format, including, e.g., multiple
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`instances where submission of multiple sentences and/or compound statements are
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`presented as a single material fact.
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`16
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`
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`3.
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`Petitioners cite previously submitted Exhibit Nos. 1006-1014 and
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`1025-1033 as teaching “methods of technical analysis-based stock market data
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`monitoring and alerting.” Ex. 1043 at 31.
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`Bloomberg Inc. et al Response: Denied. Ex. 1043 is the Second
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`Declaration of Dr. Kursh, the testimony of which is cited in Petitioner’s opposition
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`brief.
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`4.
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`On March 29, 2013, the Board held that these references (among
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`others to which Petitioners no longer cite) presented grounds for unpatentability
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`redundant to the four grounds instituted. Decision, PN 18 at 40.
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`Bloomberg Inc. et al Response: Admitted that the Board’s Decision (Paper
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`No. 18) addressed original claims 1-4 of the ’357 Patent (now canceled), otherwise
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`denied. The Board did not issue any ruling with respect to MA’s new Claims 5-8.
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`5.
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`Petitioners cite previously submitted Exhibit No. 1004 (Satow) as
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`teaching “server-based, scalable and redundant,” Ex. 1043 at 27, and a “network of
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`computers,” Ex. 1002 at 52.
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`Bloomberg Inc. et al Response: Admitted that Petitioners have submitted
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`Ex. No. 1004 (Satow) in this proceeding, and that Satow discloses elements of the
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`proposed new claims. Otherwise, denied. Ex. 1043 is the Second Declaration of
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`Dr. Kursh, the testimony of which is cited in Petitioner’s opposition brief. Ex.
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`1002 is Dr. Kursh’s first declaration.
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`17
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`
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`6.
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`Petitioners cite Satow as an anticipating reference for a “network
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`based stock trading system” and “technical analysis,” Ex. 1002 at 51-56, and
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`“monitors stock market data in real-time and executes a trade upon satisfaction of
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`the selected criteria, with the user concurrently being notified in real time of trade
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`execution.” Ex. 1043 at 34.
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`Bloomberg Inc. et al Response: Admitted that Petitioners have submitted
`
`Ex. No. 1004 (Satow) in this proceeding, and that Satow discloses elements of the
`
`proposed new claims. Otherwise, denied. Ex. 1043 is the Second Declaration of
`
`Dr. Kursh, the testimony of which is cited in Petitioner’s opposition brief. Ex.
`
`1002 is Dr. Kursh’s first declaration.
`
`7.
`
`Petitioners cite previously submitted Exhibit No. 1033 (eSignal) as
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`teaching “a server-based, scalable and redundant network.” Ex. 1043 at 40.
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`Bloomberg Inc. et al Response: Admitted that Petitioners have submitted
`
`Ex. No. 1033 (eSignal) in this proceeding, and that eSignal discloses elements of
`
`the proposed new claims. Otherwise, denied. Ex. 1043 is the Second Declaration
`
`of Dr. Kursh, the testimony of which is cited in Petitioner’s opposition brief.
`
`8.
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`Petitioners submit New References in Exhibit Nos. 1037 (Chapraty),
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`1038 (Keilani), 1039 (Ambrose), and 1040 (Lim) solely for their alleged teaching
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`of “server-based, scalable and redundant networks.” Ex. 1043 at 41-43.
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`18
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`
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`Bloomberg Inc. et al Response: Admitted that Petitioners have submitted
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`Ex. Nos. 1037 (Chapraty), 1038 (Keilani), 1039 (Ambrose), and 1040 (Lim) in this
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`proceeding, and that those reference disclose elements of the proposed new claims.
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`Otherwise, denied. Ex. 1043 is the Second Declaration of Dr. Kursh, the testimony
`
`of which is cited in Petitioner’s opposition brief.
`
`9.
`
`Petitioners submit New Reference in Exhibit No. 1041 (Toy) for its
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`alleged teachings of a “method and system for monitoring stock market
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`information and notifying users in real time when an event of interest occurs . . .
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`over a network of computers.” Ex. 1043 at 47.
`
`Bloomberg Inc. et al Response: Admitted that Petitioners have submitted
`
`Ex. No. 1041 (Toy) in this proceeding, and that Toy discloses elements of the
`
`proposed new claims. Otherwise, denied. Ex. 1043 is the Second Declaration of
`
`Dr. Kursh, the testimony of which is cited in Petitioner’s opposition brief.
`
`19
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that the foregoing Petitioners’ Opposition to Patent
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`Owner’s Motion to Exclude was served on December 3, 2013 at the following
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`address of record for the subject patent:
`
`Andrew Y. Choung
`Adrian Pruetz (Pro Hac Vice)
`Aryln Alonzo
`GLASER WEIL FINK JACOBS HOWARD AVCHEN & SHAPIRO
`LLP
`10250 Constellation Boulevard, 19th Floor
`Los Angeles, CA 90067
`achoung@glaserweil.com
`apruetz@glaserweil.com
`aalonzo@glaserweil.com
`Tel.: 310-553-3000
`Fax: 310-785-3506
`
`/ Michael T. Rosato /
`Michael T. Rosato
`
`20
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`