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