throbber
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.
`Petitioners,
`
`v.
`
`MARKETS-ALERT PTY LTD.
`Patent Owner.
`____________
`
`Case CBM2013-00005 (JYC)
`Patent 7,941,357
`____________
`
`
`
`
`
`
`
`
`Before JAMESON LEE, SALLY C. MEDLEY, and JONI Y. CHANG,
`Administrative Patent Judges.
`
`
`
`PATENT OWNER MARKETS-ALERT
`REPLY TO PETITIONERS’ OPPOSITION TO MOTION TO EXCLUDE
`PURSUANT TO 37 C.F.R. §42.64
`
`
`834609
`834609
`
`841289.1
`
`
`
`

`

`
`
`
`
`TABLE OF CONTENTS
`
`Page
`
`
`INTRODUCTION ........................................................................................... 1
`I.
`F.R.E. APPLY TO THESE PROCEEDINGS ................................................. 1
`II.
`III. EXPERT TESTIMONY IS SUBJECT TO F.R.E. .......................................... 2
`IV. PETITIONERS FAIL TO REBUT DEFICIENCIES ..................................... 4
`V.
`CONCLUSION ................................................................................................ 5
`LISTING OF FACTS ........................................................................................... A-1
`
`834609
`
`841289.1
`
`i
`
`

`

`
`
`
`
`
`
`TABLE OF AUTHORITIES
`
`Page
`
`FEDERAL CASES
`ActiveVideo Networks, Inc. v. Verizon Communications, Inc.,
`694 F.3d 1312 (Fed. Cir. 2012) .............................................................................. 3
`Innogenetics, N.V. v. Abbott Labs.,
`512 F.3d 1363 (Fed. Cir. 2008) ..........................................................................3, 4
`Meyer Intellectual Props. Ltd. v. Bodum, Inc.,
`690 F.3d 1354 (Fed. Cir. 2012) ..........................................................................3, 4
`Microstrategy Inc. v. Business Objects, S.A.,
`429 F.3d 1344 (Fed. Cir. 2005) .............................................................................. 3
`
`
`FEDERAL STATUTES
`
`37 C.F.R. §42.62 ....................................................................................................1, 2
`Fed. R. Evid. 401 ....................................................................................................... 2
`Fed. R. Evid. 403 ....................................................................................................... 2
`Fed. R. Evid. 702 .............................................................................................. 2, 3, 4
`
`834609
`
`841289.1
`
`ii
`
`

`

`Case No. CBM2013-00005 (JYC)
`Patent 7,941,357
`
`I.
`
`INTRODUCTION
`
`Petitioners miss the point of this Motion. This Motion is about the threshold
`
`evidentiary deficiencies in Petitioners’ expert testimony and New References.
`
`Their nearly 10 pages of attorney argument on the potential probative value of this
`
`evidence is irrelevant. Indeed, Petitioners’ improper focus on credibility and
`
`weight only highlights their failure to rebut Markets-Alert’s demonstration of, for
`
`example, the inherent unreliability of their expert’s conclusory opinions or the
`
`cumulative nature of the New References.
`
`This wrong direction taken by Petitioners is not surprising. Throughout
`
`these proceedings, Petitioners’ strategy has been to avoid confronting Markets-
`
`Alert’s detailed arguments and analysis head-on. Instead, Petitioners have
`
`repeatedly attempted to block or expunge from the record Markets-Alert’s papers.
`
`The last thing that Petitioners want to offer or have the Board consider is detailed
`
`analysis. Petitioners would rather turn this proceeding into a battle of competing
`
`conclusions.
`
`II.
`
`F.R.E. APPLY TO THESE PROCEEDINGS
`
`Petitioners cannot and do not deny that, under 37 C.F.R. §42.62, the Federal
`
`Rules of Evidence (FRE) apply to the current proceedings to ensure that evidence
`
`is reliable enough to merit full consideration by the Board. Instead, Petitioners
`
`834609
`
`841289.1
`
`1
`
`

`

`Case No. CBM2013-00005 (JYC)
`Patent 7,941,357
`
`argue that the Board somehow limited motions to exclude to only issues of
`
`authenticity and hearsay. This is flatly contradicted by 37 C.F.R. §42.62 and is a
`
`mischaracterization of the guidance provided by the Board.
`
`It is true that authentication and hearsay are examples of FRE requirements
`
`that must be met pursuant to 37 C.F.R. §42.62. This does not mean, as Petitioners
`
`would claim, that the rest of FRE is inapplicable to these proceedings. For
`
`example, Petitioners certainly do not argue that the fundamental relevancy
`
`requirement in FRE 401 is inapplicable. Moreover, Petitioners never argue that the
`
`Board’s discretion to exclude evidence for prejudice, confusion, waste or
`
`cumulativeness under FRE 403 is inapplicable.
`
`III. EXPERT TESTIMONY IS SUBJECT TO F.R.E.
`
`Petitioners admit that expert opinions must meet the requirement under FRE
`
`702 to be admissible: “(a) the expert’s scientific, technical, or other specialized
`
`knowledge will help the trier of fact to understand the evidence or to determine a
`
`fact in issue; (b) the testimony is based on sufficient facts or data; (c) the testimony
`
`is the product of reliable principles and methods; and (d) the expert has reliably
`
`applied the principles and methods to the facts of the case.” These requirements
`
`reflect a threshold level of reliability that expert opinions must meet. An expert
`
`opinion that fails to meet FRE 702 is deemed so inherently unreliable as to be
`
`834609
`
`841289.1
`
`2
`
`

`

`Case No. CBM2013-00005 (JYC)
`Patent 7,941,357
`
`inadmissible – i.e., conclusory. Yet, Petitioners incorrectly argue that the
`
`conclusory nature of Kursh’s testimony is an issue of credibility and weight, not
`
`reliability.
`
`Charitably speaking, Petitioners’ incorrect argument may stem from their
`
`misunderstanding of Federal Circuit precedent. For example, although Petitioners
`
`themselves cite Microstrategy Inc. v. Business Objects, S.A., 429 F.3d 1344 (Fed.
`
`Cir. 2005) in relation to FRE 702, they completely ignore that Court’s holding that,
`
`“[w]hile an expert need not consider every possible factor to render a reliable
`
`opinion, the expert still must consider enough factors to make his or her opinion
`
`sufficiently reliable in the eyes of the court.” Microstrategy Inc. v. Business
`
`Objects, S.A., 429 F.3d 1344, 1355 (Fed. Cir. 2005) (emphasis added).
`
`This in turn leads to Petitioners’ misunderstanding of the significance of
`
`ActiveVideo Networks, Inc. v. Verizon Communications, Inc., 694 F.3d 1312 (Fed.
`
`Cir. 2012). ActiveVideo Networks and the other cases cited by Markets-Alert
`
`frame the obviousness issues and analysis that an expert must consider per
`
`Microstrategy in order for his conclusion to be “sufficiently reliable,”
`
`notwithstanding the actual merit or weight of his conclusion. Failure to do so
`
`renders the expert’s opinion unreliable. Petitioners’ own comparison of
`
`Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363 (Fed. Cir. 2008) with Meyer
`
`834609
`
`841289.1
`
`3
`
`

`

`Case No. CBM2013-00005 (JYC)
`Patent 7,941,357
`
`Intellectual Props. Ltd. v. Bodum, Inc., 690 F.3d 1354 (Fed. Cir. 2012)
`
`demonstrates this principle. As compared to the expert testimony in Meyer which
`
`did more than provide a conclusion, the expert opinion in Innogenetics was so
`
`conclusory as to be held inherently unreliable.
`
`IV. PETITIONERS FAIL TO REBUT DEFICIENCIES
`
`Markets-Alert has no need to re-hash, in this Motion, Kursh’s lack of
`
`credibility (e.g., his substantive inconsistencies, evasiveness and general inability
`
`to support his testimony during questioning), which was previously addressed in
`
`Markets-Alert’s Response. This Motion addresses the different matter of the
`
`inherent unreliability of Kursh’s testimony under FRE 702. Ironically, Petitioners’
`
`attempts to rehabilitate Kursh’s testimony suffer from the same problems plaguing
`
`Kursh’s deficient opinions – they are just conclusory.
`
`In each instance, instead of addressing the FRE 702 requirements raised by
`
`Markets-Alert, Petitioners argue irrelevant points or only conclusorily assert that
`
`Kursh’s opinions are well-grounded. For example, regarding Paragraph 46 of the
`
`Second Kursh Decl., Petitioners argue that “charts” are an acceptable way to
`
`present evidence. However, Kursh’s testimony is not deficient because he used a
`
`chart form, it is deficient because there is no analysis, just a host of block quotes
`
`and then a conclusion. Petitioners never show where Kursh does “more” than
`
`834609
`
`841289.1
`
`4
`
`

`

`Case No. CBM2013-00005 (JYC)
`Patent 7,941,357
`
`provide a conclusion, i.e., address the missing FRE 702 bases or analysis.
`
`With respect to the New References, Petitioners do not deny that the New
`
`References are cumulative of the previously submitted references and do not deny
`
`the risk of prejudice and confusion. Instead of directly challenging any of these
`
`deficiencies, Petitioners again raise irrelevant points. For example, Petitioners
`
`argue that their submission of the New References was authorized. But that is
`
`beside the point. Authorization does not equal admissibility. That is why motions
`
`to exclude are part of the schedule.
`
`Finally, Petitioners’ comments about fairness are misdirected. Petitioners do
`
`not deny that none of the New References would have shown up in a reasonable
`
`search or were previously disclosed, or that Markets-Alert’s Preliminary Response
`
`gives ample notice of Markets-Alert’s position with respect to the server-based
`
`nature of the network of computers (the main feature for which Petitioners
`
`submitted the New References), as well as the scope of technical analysis and real-
`
`time. For Petitioners to now complain of fairness when they had every chance to
`
`disclose references they had known about is disingenuous.
`
`V. CONCLUSION
`
`For the reasons set forth in its Motion and this Reply, Markets-Alert
`
`respectfully requests that the Board grant its Motion to Exclude.
`
`834609
`
`841289.1
`
`5
`
`

`

`Case No. CBM2013-00005 (JYC)
`Patent 7,941,357
`
`
`
`
`Dated: December 10, 2013
`
`
`
`
`
`Respectfully submitted,
`
`
`
`
`
`Andrew Choung (USPTO Reg. No. 46,622)
`Email: achoung@glaserweil.com
`Arlyn Alonzo (USPTO Reg. No. 44,502)
`Email: aalonzo@glaserweil.com
`Adrian M. Pruetz (Pro Hac Vice)
`Email: apruetz@glaserweil.com
`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
`
`834609
`
`841289.1
`
`6
`
`

`

`Case No. CBM2013-00005 (JYC)
`Patent 7,941,357
`
`
`LISTING OF FACTS
`
`MARKETS-ALERT’S RESPONSE
`TO PETITIONERS’ LISTING OF 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.
`
`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.
`
`Markets-Alert’s Response: Petitioners’ response is argument, which is
`
`inappropriate for a listing of facts. Petitioners’ response after “Denied” should be
`
`struck. Markets-Alert agrees that it is admitted that the Second Kursh Decl. and
`
`New References have not been proffered in support of Petitioners’ Reply.
`
`Markets-Alert otherwise denies Petitioners’ response.
`
`(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
`
`834609
`
`841289.1
`
`A-1
`
`

`

`Case No. CBM2013-00005 (JYC)
`Patent 7,941,357
`
`Declaration includes statements of fact as well as expert opinions; otherwise
`
`denied.
`
`Markets-Alert’s Response: Markets-Alert agrees that it is admitted that
`
`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. Markets-Alert otherwise
`
`denies Petitioners’ response with respect to the Second Kursh Decl.
`
`(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.
`
`Markets-Alert’s Response: Petitioners’ response after “Denied” is non-
`
`responsive.
`
`(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, Paper 18, at 40.
`
`834609
`
`841289.1
`
`A-2
`
`

`

`Case No. CBM2013-00005 (JYC)
`Patent 7,941,357
`
`
`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.
`
`Markets-Alert’s Response: Markets-Alert agrees that it is admitted that
`
`the Board held that these references (among others to which Petitioners no longer
`
`cite) presented grounds for unpatentability redundant to the four grounds instituted.
`
`Markets-Alert otherwise denies Petitioners’ response with respect to the ‘357
`
`Patent claims.
`
`(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.
`
`Markets-Alert’s Response: Markets-Alert agrees that it is admitted that
`
`Petitioners cite previously submitted Exhibit No. 1004 (Satow) as teaching “server-
`
`based, scalable and redundant” and a “network of computers.” Markets-Alert
`
`834609
`
`841289.1
`
`A-3
`
`

`

`Case No. CBM2013-00005 (JYC)
`Patent 7,941,357
`
`admits that Ex. 1043 is the Second Declaration of Dr. Kursh and Ex. 1002 is the
`
`Dr. Kursh’s first declaration. Markets-Alert otherwise denies Petitioners’ response
`
`with respect to Satow as non-responsive or argument.
`
`(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.
`
`Markets-Alert’s Response: Markets-Alert agrees that it is admitted that
`
`Petitioners cite Satow for a “network-based stock trading system,” “technical
`
`analysis,” 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.” Markets-Alert admits that Ex. 1043 is the Second
`
`Declaration of Dr. Kursh and Ex. 1002 is the Dr. Kursh’s first declaration.
`
`834609
`
`841289.1
`
`A-4
`
`

`

`Case No. CBM2013-00005 (JYC)
`Patent 7,941,357
`
`Markets-Alert otherwise denies Petitioners’ response with respect to Satow as non-
`
`responsive or argument.
`
`(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.
`
`Markets-Alert’s Response: Markets-Alert agrees that it is admitted that
`
`Petitioners cite previously submitted Exhibit No. 1033 (eSignal) as teaching “a
`
`server-based, scalable and redundant network.” Markets-Alert admits that Ex.
`
`1043 is the Second Declaration of Dr. Kursh. Markets-Alert otherwise denies
`
`Petitioners’ response with respect to eSignal as non-responsive or argument.
`
`(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.
`
`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.
`
`834609
`
`841289.1
`
`A-5
`
`

`

`Case No. CBM2013-00005 (JYC)
`Patent 7,941,357
`
`Otherwise, denied. Ex. 1043 is the Second Declaration of Dr. Kursh, the testimony
`
`of which is cited in Petitioner’s opposition brief.
`
`Markets-Alert’s Response: Markets-Alert agrees that it is admitted that
`
`Petitioners submit New References in Exhibit Nos. 1037 (Chapraty), 1038
`
`(Keilani), 1039 (Ambrose), and 1040 (Lim) for their alleged teaching of “server-
`
`based, scalable and redundant networks.” Markets-Alert admits that Ex. 1043 is
`
`the Second Declaration of Dr. Kursh. Markets-Alert otherwise denies Petitioners’
`
`response with respect to Chapraty, Keilani, Ambrose and Lim as non-responsive or
`
`argument.
`
`(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.
`
`Markets-Alert’s Response: Markets-Alert agrees that it is admitted that
`
`Petitioners submit New Reference in Exhibit No. 1041 (Toy) for its alleged
`
`834609
`
`841289.1
`
`A-6
`
`

`

`Case No. CBM2013-00005 (JYC)
`Patent 7,941,357
`
`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.” Markets-Alert admits that Ex. 1043 is the Second Declaration of Dr.
`
`Kursh. Markets-Alert otherwise denies Petitioners’ response with respect to Toy as
`
`non-responsive or argument.
`
`
`
`834609
`
`841289.1
`
`A-7
`
`

`

`
`
`CERTIFICATE OF SERVICE
`I certify that a copy of the foregoing PATENT OWNER MARKETS-ALERT
`
`REPLY TO PETITIONERS’ OPPOSITION TO MOTION TO EXCLUDE
`
`was served on December 10, 2013 to counsel of record for Petitioners via
`
`electronic mail:
`
`
`
`Michael T. Rosato
`USPTO Reg. No. 52,182
`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
`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: 512-338-5499
`Email: brange@wsgr.com
`
`
`
`
`
`
`
`/s/Arlyn Alonzo
`Arlyn Alonzo
`
`834609
`
`834609
`841289.1
`
`

This document is available on Docket Alarm but you must sign up to view it.


Or .

Accessing this document will incur an additional charge of $.

After purchase, you can access this document again without charge.

Accept $ Charge
throbber

Still Working On It

This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.

Give it another minute or two to complete, and then try the refresh button.

throbber

A few More Minutes ... Still Working

It can take up to 5 minutes for us to download a document if the court servers are running slowly.

Thank you for your continued patience.

This document could not be displayed.

We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.

Your account does not support viewing this document.

You need a Paid Account to view this document. Click here to change your account type.

Your account does not support viewing this document.

Set your membership status to view this document.

With a Docket Alarm membership, you'll get a whole lot more, including:

  • Up-to-date information for this case.
  • Email alerts whenever there is an update.
  • Full text search for other cases.
  • Get email alerts whenever a new case matches your search.

Become a Member

One Moment Please

The filing “” is large (MB) and is being downloaded.

Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.

Your document is on its way!

If you do not receive the document in five minutes, contact support at support@docketalarm.com.

Sealed Document

We are unable to display this document, it may be under a court ordered seal.

If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.


Access Government Site

We are redirecting you
to a mobile optimized page.





Document Unreadable or Corrupt

Refresh this Document
Go to the Docket

We are unable to display this document.

Refresh this Document
Go to the Docket