Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 18
`Entered: March 29, 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 7,941,357
`____________
`
`Before JAMESON LEE, SALLY C. MEDLEY, and JONI Y. CHANG,
`Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`DECISION
`Institution of Covered Business Method Patent Review
`37 C.F.R. § 42.208
`
`GOOG 1017
`CBM of U.S. Patent 7,774,280
`Page 1
`
`Petitioner Apple Inc. - Ex. 1017, p. 1
`
`
`Tel: 571-272-7822
`
`Paper 18
`Entered: March 29, 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 7,941,357
`____________
`
`Before JAMESON LEE, SALLY C. MEDLEY, and JONI Y. CHANG,
`Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`DECISION
`Institution of Covered Business Method Patent Review
`37 C.F.R. § 42.208
`
`GOOG 1017
`CBM of U.S. Patent 7,774,280
`Page 1
`
`Petitioner Apple Inc. - Ex. 1017, p. 1
`
`
`
`Case CBM2013-00005
`Patent 7,941,357
`
`Bloomberg filed a petition %uJ[j*v& to institute a covered business method
`patent review of claims 1-4 of U.S. Patent 7,941,357 %j^[ ux353 fWj[djv& pursuant
`to 35 U.S.C. § 321. Patent Owner Markets-Alert filed a preliminary response
`%uJh[b_c* L[if*v& to the petition. The Board has jurisdiction under 35 U.S.C. §
`324. See section 18(a) of the Leahy-Smith America Invents Act, Pub. L. 112-29,
`-.1 MjWj* .40( /.5 %.,--& %u;C;v&* For the reasons that follow, the Board has
`determined to institute a covered business method patent review.
`
`BACKGROUND
`The standard for instituting a covered business method patent review is set
`forth in 35 U.S.C. § 324(a), which provides as follows:
`THRESHOLD --The Director may not authorize a post-grant review
`to be instituted unless the Director determines that the information
`presented in the petition filed under section 321, if such information is
`not rebutted, would demonstrate that it is more likely than not that at
`least 1 of the claims challenged in the petition is unpatentable.
`
`Bloomberg challenges the patentability of claims 1-0 e\ j^[ x/13 patent
`under (1) 35 U.S.C. § 112, ¶ 2 as being indefinite; (2) 35 U.S.C. § 102 as being
`anticipated by prior art; and (3) 35 U.S.C. § 103 as obvious based on various prior
`art. Pet. 8. For the following reasons, and pursuant to 35 U.S.C. § 324 and
`section 18(a) of t^[ ;C;( <beecX[h]xi h[gk[ij \eh W Yel[hed business method
`patent review is GRANTED as to claims 1-4 of the x/13 fWj[dj ed jhe grounds
`explained herein.
`
`2
`
`GOOG 1017
`CBM of U.S. Patent 7,774,280
`Page 2
`
`Petitioner Apple Inc. - Ex. 1017, p. 2
`
`
`
`Case CBM2013-00005
`Patent 7,941,357
`
`Related Litigation
`u<beecX[h]v is comprised of fourteen individual entities. Pet. 58. In
`compliance with 37 C.F.R. § 42.302(a), Bloomberg certifies that it has been sued
`\eh _d\h_d][c[dj e\ j^[ x/13 fWj[dj. Pet. 7-8. The identified related cases are in
`their infancy, before the U.S. District Court for the District of Delaware, and are
`stayed pending this review. Exs. 1018-1021 and 3001.1 Markets-Alert does not
`Y^Wbb[d][ <beecX[h]xi certification that it has been sued for patent infringement of
`
`j^[ x/13 fWj[dj*
`
`Covered Business Method Patent
`; Yel[h[Z Xki_d[ii c[j^eZ fWj[dj c[Wdi uW fWj[dj j^Wj Ylaims a method or
`corresponding apparatus for performing data processing or other operations used in
`the practice, administration or management of a financial product or service, except
`j^Wj j^[ j[hc Ze[i dej _dYbkZ[ fWj[dji \eh j[Y^debe]_YWb _dl[dj_edi*v AIA
`§ 18(d)(1). For purposes of determining whether a patent is eligible for a covered
`business method patent review, the focus is on the claims. A patent need have only
`one claim directed to a covered business method to be eligible for review.2
`BloomX[h] ^Wi i^emd j^Wj j^[ x/13 fWj[dj _i W fWj[dj j^Wj YbW_ci W c[j^eZ eh
`corresponding apparatus for performing data processing or other operations used in
`
`1 Ex. 3001 is a copy of the decision to stay the related cases.
`2 Transitional Program for Covered Business Method Patents e Definitions of
`Covered Business Method Patent and Technological Invention; Final Rule, 77 Fed.
`Reg. 48734, 48736 (Aug. 14, 2012) (Response to Comment 8).
`
`3
`
`GOOG 1017
`CBM of U.S. Patent 7,774,280
`Page 3
`
`Petitioner Apple Inc. - Ex. 1017, p. 3
`
`
`
`Case CBM2013-00005
`Patent 7,941,357
`
`the practice, administration or management of a financial product or service. Pet.
`4. Claim 1, reproduced below, is illustrative of the claimed subject matter:
`1.
`A method of informing users of stock market events comprising
`the steps of:
`
`(a) receiving real-time stock market data on a network of
`computers;
`
`(b)receiving on the network of computers instructions from a user
`to specify watch data defining an event, the watch data
`including a stock market technical analysis request specifying
`technical analysis formulae to be applied to the real-time stock
`market data;
`
`(c) using the network of computers to periodically apply the user-
`specified watch data including the stock market technical
`analysis formulae to the real-time stock market data in real-time
`to ascertain whether a valid response to the watch data has
`occurred based on the real-time stock market data, thereby
`determining an occurrence of the event defined by the user-
`specified watch data; and
`
`(d) causing a real-time notification by the network of computers to
`be provided to the user via a remote communications device
`upon the occurrence of the event defined by the user-specified
`watch data, the real-time notification directed to a remote
`communications device of the user so that the user can then
`provide instructions for share market transactions on an
`instantaneous basis.
`
`Claim 1, the sole independent claim, recites a method of informing user(s) of
`stock market events through a series of steps for monitoring stock market data and
`notifying the user of certain stock market events. As such, claim 1 is directed to a
`4
`
`GOOG 1017
`CBM of U.S. Patent 7,774,280
`Page 4
`
`Petitioner Apple Inc. - Ex. 1017, p. 4
`
`
`
`Case CBM2013-00005
`Patent 7,941,357
`
`method for performing data processing or other operations used in the practice,
`administration or management of a financial service (informing the user of certain
`stock market events). Markets-Alert does not dispute that its patent claims a
`method for performing data processing or other operations used in the practice,
`administration, or management of a financial product or service. Rather, Markets-
`Alert argues that its patent falls under the technological invention exception and is
`therefore exempt from a covered business method patent review. Prelim. Resp. 9.
`
`Technological Invention
`To determine whether a patent is for a technological invention, we consider
`
`uTmU^[j^[h j^[ ikX‘[Yj cWjj[h Wi W m^eb[ h[Y_j[i W j[Y^debe]_YWb \[Wjkh[ j^Wj _i
`novel and unobvious over the prior art, and solves a technical problem using a
`j[Y^d_YWb iebkj_ed*v 37 C.F.R. § 42.301(b).
`
`<beecX[h]( _d _ji f[j_j_ed( Wii[hji j^Wj j^[ x/13 fWj[dj YbW_ci \W_b je h[Y_j[
`any technological feature that is novel and unobvious over the prior art. As
`pointed out by Bloomberg, the claims are directed to stock market event
`monitoring, technical analysis and communication to a user: concepts that were
`known in the art at the time of the invention. Bloomberg directs attention to the
`
`\ebbem_d] fWiiW][ \ekdZ _d j^[ u<WYa]hekdZ ;hjv i[Yj_ed e\ j^[ x/13 fWj[dj6
`Stock market technical analysis is becoming increasingly
`sophisticated and measures of events based on technical analysis
`_dZ_YWjehi [*]*( ucel_d] Wl[hW][i(v uLMC(v uijeY^Wij_Y eiY_bbWjehv WdZ
`the like are extensively used to analyze share-market price and time
`data for share portfolio management.
`Col. 1:30-35.
`
`5
`
`GOOG 1017
`CBM of U.S. Patent 7,774,280
`Page 5
`
`Petitioner Apple Inc. - Ex. 1017, p. 5
`
`
`
`Case CBM2013-00005
`Patent 7,941,357
`
`N^[ x/13 fWj[dj Ze[i dej _dZ_YWj[ j^Wj j^[ dWc[Z _dl[djeh _dl[dj[Z cWha[j
`event monitoring, technical analysis and communication to a user. We agree with
`Bloomberg that the claim 1 method steps of event monitoring using technical
`analysis and communicating the results of the event monitoring to a user were well
`known concepts at the time of the invention as evidenced by the Background
`M[Yj_ed e\ j^[ x/13 fWj[dj* Cd WZZ_jion, Bloomberg explains that the features of the
`network of computers and remote communications device of claim 1 were known
`in the art at the time of the invention and that the patent does not claim any
`improvement of those devices. Pet. 7.
`Markets-Alert argues that certain inventions were intended to be excluded
`from covered business method patent (CBM) review, as a technological invention
`exception, citing to remarks made by Senators Durbin and Kirk in the legislative
`history to the America Invents Act. Prelim. Resp. 9--, WdZ -/ %uTNU^[ b[]_ibWj_l[
`history clearly shows that software-type claims were intended to be excluded from
`=<G L[l_[m*v&* N^Wj Wh]kc[dj _i c_ifbWY[Z _\ GWha[ji-Alert means that some
`categories of invention are regarded presumptively as falling within the
`technological invention exception without consideration of whether the subject
`matter as a whole (i) recites a technological feature that is novel and unobvious
`over the prior art, and (ii) solves a technical problem using a technical solution.
`Nothing cited to us by Markets-Alert in the legislative history of the AIA makes
`that suggestion. While novel software tools and graphical user interfaces used
`within the electronic trading industry to implement trading and asset allocation
`strategies are not the type of patents targeted for covered business method patent
`
`6
`
`GOOG 1017
`CBM of U.S. Patent 7,774,280
`Page 6
`
`Petitioner Apple Inc. - Ex. 1017, p. 6
`
`
`
`Case CBM2013-00005
`Patent 7,941,357
`
`review (Ex. 2004, 157 Cong. Rec. S5428 (daily ed. September 8, 2011)(statement
`of Sen. Schumer and Sen. Durbin)), each claimed invention still has to be
`evaluated individually to determine if it constitutes a technological invention. A
`determination of what constitutes a technological invention under the statute is
`made on a case by case basis based on the facts of each case. In any event, we note
`that Markets-;b[hjxi YbW_cs do not include a novel software tool and graphical user
`interface.
`Additionally, Markets-;b[hjxi Wh]kc[dji j^Wj <beecX[h] \W_b[Z je Yedi_Z[h
`the invention as a whole in showing that the claims are not to a technological
`invention are not persuasive. Bloomberg does address claim 1 as a whole, and
`explains in its petition why that claim does not recite a technological feature that is
`novel and unobvious over the prior art. Pet. 5-7. As explained above, it was well
`known in the art to monitor market events, to perform technical analysis on such
`events and to communicate such information to a user. Moreover, the
`technological features of claim 1 were well known at the relevant time period. The
`features of a network of computers and remote communication devices were
`known in the art at the time of the invention. None of these limitations, all of
`which refer to generic hardware, was novel or unobvious on the effective filing
`
`ZWj[ e\ j^[ x/13 fWj[dj*
`Nor are we persuaded by Markets-;b[hjxi Wh]kc[dj j^Wj j^[ [nWc_d[hxi
`reasons for allowance shows that the claims are to a technological invention. The
`enWc_d[hxi Yecc[dji je m^_Y^ GWha[ji-Alert directs (Prelim. Resp. 11) are not
`
`7
`
`GOOG 1017
`CBM of U.S. Patent 7,774,280
`Page 7
`
`Petitioner Apple Inc. - Ex. 1017, p. 7
`
`
`
`Case CBM2013-00005
`Patent 7,941,357
`
`germane to the words of claim 1. See claim 1 and Ex. 5.3 Moreover, the fact that
`the claims were allowed is not dispositive of the issue before us. This is an inter
`partes dispute based on a different record than what was before the examiner.
`Markets-Alert argues that patentability does not require that a claim must
`recite tec^d_YWb [b[c[dji j^Wj Wh[ del[b _d WdZ e\ j^[ci[bl[i WdZ j^Wj uj^[ fh[Y_i[
`
`ij[fi YWbb[Z \eh _d j^[ x/13 JWj[dj YbW_ci Wh[ j^[ ^[Whj e\ j^[ _dl[dj_ed( dej Wdo
`
`i_d]b[ f_[Y[ e\ ^WhZmWh[*v Jh[b_c* L[if* -.* =bW_c - h[Y_j[i W c[j^eZ e\
`informing a user of a stock market event(s). In essence, the method steps recite
`
`h[Y[_l_d] ijeYa cWha[j ZWjW( Wffbo_d] j^[ ki[hxi mWjY^ Yh_j[h_W je j^[ ZWjW
`(information to look for in the stock market data), which includes performing
`technical analysis on the data, determining if the users criteria is met and then
`informing the user that the criteria is met. This process was well known at the time
`of the invention. See, e.g., Ex. 1001, col. 1:30-35. We disagree with Markets-
`;b[hj j^Wj j^[ h[Y_jWj_ed e\ uh[Wb-j_c[v cWa[i W meaningful distinction for purposes
`of determining whether a claim is to a technological invention. Prelim. Resp. 13.
`Jh[ikcWXbo j^[ uh[Wb-j_c[v \[Wjkh[ _i Zk[ je j^[ ki[ e\ W ud[jmeha e\ Yecfkj[hi(v
`for example, to perform the steps, such as informing a user of certain stock market
`events. However, informing a user of certain stock market events using a computer
`was known in the art at the time of the invention. Col. 1:38-40. Moreover, there is
`no specific computer, program or processing described per th[ x/13 fWj[dj
`specification beyond what was known in the art at the time of the invention.
`
`3 While Markets-Alertxi [n^_X_ji m[h[ dej labeled in compliance with 37 C.F.R.
`§ 42.63(c), for purposes of this decision, the Board accepts the improper labeling.
`8
`
`GOOG 1017
`CBM of U.S. Patent 7,774,280
`Page 8
`
`Petitioner Apple Inc. - Ex. 1017, p. 8
`
`
`
`Case CBM2013-00005
`Patent 7,941,357
`
`Col. 2:6-9 and col. 3:44-46. Thus, no novel or unobvious software, computer
`equipment or processing is required.
`We also are not convinced by Markets-;b[hjxi Wh]ument that the claimed
`subject matter as a whole solves a technical problem using a technical solution.
`The problem noted in the specification is not a technical one. For instance, the
`x/13 fWj[dj if[Y_\_YWj_ed highlights the problem and importance of informing a
`user of certain stock market events (col. 1:18-43) and claim 1 is directed to a
`method of informing users of stock market events. However, informing a user of
`certain stock market events is more of a financial problem rather than a technical
`problem.
`For the foregoing reasons, the subject matter of claim 1 is not a
`uj[Y^debe]_YWb _dl[dj_edv kdZ[h /3 =*@*L* q 42.301(b). Accordingly, the
`
`x/13 fWj[dj _i [b_]_Xb[ \eh W Yel[h[Z Xki_d[ii c[j^eZ fWj[dj h[l_[m*
`
`The x357 Patent (Ex. 1001)
`The x/13 pat[dj( [dj_jb[Z uTrading System(v is a National Stage of a PCT
`International Application (PCT/AU01/01380; PCT Pub. No. WO02/35400) filed
`October 26, 2001, and claims priority to Australian application (AU)PR1097, filed
`IYjeX[h .3( .,,,* N^[ x/13 fWj[dj issued on May 10, 2011.
`The x/13 patent generally relates to a trading system that monitors stock data
`and provides notification to a remote device using a network based system.
`Ex. 1001.
`
`37 C.F.R. § 42.5(b).
`
`9
`
`GOOG 1017
`CBM of U.S. Patent 7,774,280
`Page 9
`
`Petitioner Apple Inc. - Ex. 1017, p. 9
`
`
`
`Case CBM2013-00005
`Patent 7,941,357
`
`The Evidence
`Bloomberg relies on the following prior art:
`PCT Publication No. WO 00/11587, Mar. 2, 2000 %uSatowv&
`(Ex. 1004);
`Product Review: TradeStation 4.0 Build 15, Stocks &
`Commodities, Dec. 1996 at 649 (uM$= L[l_[mv& (Ex. 1005);
`TradeStation Web Archive;4
`Y X JKVVF^\ OO^ =X ^O\ X O^ G\ KNO\ 7OV_ b O H] O\ h] ;_ SNO,
`JSX NY a
`pubb_i^[Z -554 %uQIQM Ak_Z[v& (Ex. 1009);
`WOW Web Archive;5
`AIQ Opening Bell Monthly, Vol. 8 Issue 10, October 1999
`%uIf[d_d] <[bbv& (Ex. 1014);
`Investor/RT Web Archive;6
`
`4 According to the Petition, uNhWZ[MjWj_ed Q[X ;hY^_l[v _i W collection of three
`Web pages published on the TradeStation Internet site in 1996. Pet. 28. The Web
`pages are uNM GW_dv (Ex. 1006); uNhWZ[MjWj_ed @[Wjkh[iv (Ex. 1007); and
`uNhWZ[MjWj_ed JW][h ;b[hjv (Ex. 1008).
`
`5 According to the petition, uWOW Web Archivev is a collection of four Web
`pages published on the Window on Wall Street Idj[hd[j i_j[ fh_eh je j^[ x357 patent
`earliest filing date. Pet. 35. The Web pages are identified as uQ_dZow On
`WallStreet Internet Trader Pro 7 t ;b[hj GWdW][hv %?n* -,-,&7 uQ_dZem Id
`QWbbMjh[[j >Wo NhWZ[h 3 Cdj[hd[j P[hi_edv %?n* -,--&7 uQ_dZem Id QWbbMjh[[j
`Internet Trader Pro 7 t Nekh Il[hl_[mv %?n* -,-.&7 WdZ uQ_dZem Id QWbbMjh[[j
`Internet Trader Pro 7 t Q^Wjxi H[m8v (Ex. 1013).
`
`6 The petition indicates that uCdl[ijeh+LN Q[X ;hY^_l[v is a collection of eight
`Web pages published on the Linn Software Internet site in August, 2000. Pet. 44.
`The Web pages are identified as uInvestor/RT Q^Wjxi H[mv (Ex. 1025);
`Cdl[ijeh+LN Nekhv %?n* -,.2&7 uCdl[ijeh+LN N[Y^d_YWb CdZ_YWjehiv %?n* -,.3&7
`10
`
`GOOG 1017
`CBM of U.S. Patent 7,774,280
`Page 10
`
`Petitioner Apple Inc. - Ex. 1017, p. 10
`
`
`
`Case CBM2013-00005
`Patent 7,941,357
`
`Press Release, PR Newswire, Data Broadcasting Launches
`eSignal Version 5.3 with Enhanced Alerts Capabilities And
`Improved Nasdaq Level II Tools %Dkd[ -.( .,,,& %u[M_]dWb
`Jh[ii L[b[Wi[v) (Ex. 1033); and
`U.S. Patent 5,954,793, Sep. 21, 1999 %uStutmanv& %?n* -,15).
`
`In support of the petition, Bloomberg relies on the Declaration of
`Steven R. Kursh, Ph.D. Ex. 1002.
`
`A Person of Ordinary Skill in the Art
`At the time of his declaration, Dr. Kursh was employed by Northeastern
`University as Executive Professor in the College of Business Administration.
`Ex. 1002 ¶ 1. Dr. Kursh holds an AB from Boston College and a Ph.D. from the
`University of Pennsylvania and has more than 25 years of experience in the
`financial services industry. Id. ¶¶ 1-9. Dr. Kursh proffers the skill set of the
`person of ordinary skill in the art at the time of the invention. Id. ¶ 30. Markets-
`Alert disagrees with this proffer. Prelim. Resp. 18-19. It is not necessary to
`resolve the apparent dispute to reach a determination on the merits, because we
`find that the level of ordinary skill in the art is reflected by the prior art of record.
`Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself can
`reflect the appropriate level of skill in the art.)
`In addition, Markets-;b[hjxi arguments that Dr. Kursh is not qualified to
`testify in this proceeding are not persuasive. Prelim. Resp. 18-19. Markets-;b[hjxi
`
`uCdl[ijeh+LN ;bWhc Jh[\iv %?n* -,.4&7 uCdl[ijeh+LN ;b[hjiv %?n* -,.5&7
`uCdl[ijeh+LN coNhWYa Jh[\iv %?n* -,/,&7 uCdl[ijeh+LN MYWdiv %?n* -,/-&7 WdZ
`uCdl[ijeh+LN Cdijhkc[dj M[jkfv %?n* -,/.&*
`11
`
`GOOG 1017
`CBM of U.S. Patent 7,774,280
`Page 11
`
`Petitioner Apple Inc. - Ex. 1017, p. 11
`
`
`
`Case CBM2013-00005
`Patent 7,941,357
`
`Wl[hc[dji j^Wj >h* Ekhi^ Z_Z dej ^Wl[ u[nf[h_[dY[ m_j^ j^[ ikX‘[Yj cWjj[h e\ j^[
`
`x/13 JWj[djv eh ^Wl[ u[nf[h_[dY[ meha_d] _d j^[ \_dWdY_Wb i[hl_Y[i eh m_j^
`computerized financial systems during the relevant October 2000 time-\hWc[v
`(Id. 19:3-6) are focused too narrowly and misplaced.
`The Federal Rule of Evidence 7027 entitled uTestimony by Expertsv
`
`states:
`
`If scientific, technical, or other specialized knowledge will assist the
`trier of fact to understand the evidence or to determine a fact in issue,
`a witness qualified as an expert by knowledge, skill, experience,
`training, or education, may testify thereto in the form of an opinion or
`otherwise, if (1) the testimony is based upon sufficient facts or data,
`(2) the testimony is the product of reliable principles and methods,
`and (3) the witness has applied the principles and methods reliably to
`the facts of the case.
`
`As seen from the above, a witness who is qualified as an expert by
`knowledge, skill, experience, training or education may testify in the form of an
`opinion. Markets-Alert has not shown, and we do not find, that in the context of
`the Federal Rule of Evidence 702, it matters whether the witness has particular
`experience with the specific skX‘[Yj cWjj[h e\ j^[ x/13 fWj[dj( eh m^[j^[h j^[
`m_jd[iix h[b[lWdj [nf[h_[dY[ mWi WYgk_h[Z Zkh_d] j^[ IYjeX[h .,,, j_c[-frame.
`Moreover, Markets-;b[hj \eYki[i ed >h* Ekhi^xi professional experiences in
`the financial industry and in developing computerized software systems even
`though a witness may be qualified to testify based on knowledge, skill, training or
`
`7 With Few exceptions, the Federal Rules of Evidence apply to covered business
`method patent reviews. 37 C.F.R. § 42.62.
`12
`
`GOOG 1017
`CBM of U.S. Patent 7,774,280
`Page 12
`
`Petitioner Apple Inc. - Ex. 1017, p. 12
`
`
`
`Case CBM2013-00005
`Patent 7,941,357
`
`education and not just experience in a particular trade or industry. In that regard,
`we understand Markets-Alert as asserting j^Wj >h* Ekhi^xi fei_j_ed Wi uWd
`WYWZ[c_Y WdZ fhe\[ii_edWb b_j_]Wj_ed YedikbjWdjv since 1994 (Prelim. Resp. 19) is
`not enough to establish that he has experience with the financial industry and
`developing computerized software systems. Markets-Alert argument is misplaced
`and Ze[i dej( m_j^ekj ceh[( [ijWXb_i^ W XWi_i \eh Z_ih[]WhZ_d] >h* Ekhi^xi
`testimony. For example, since 1994 Dr. Kursh has been employed at Northeastern
`University as Executive Professor in the College of Business Administration and in
`the College of Engineering. Ex. 1003 and Ex. 1002 ¶ 1. We understand that in
`that capacity Dr. Kursh has developed and taught courses covering topics directly
`related to financial trading systems, technical analysis and mobile communications.
`Ex. 1002 ¶ 2. As such, Dr. Kursh appears to be educated in, and has knowledge
`of, the subject matter before us even if he is not, for example, employed as a
`developer of such systems. The academic background alone qualifies him to give
`an opinion under the Federal Rule of Evidence 702. Markets-Alert has not shown
`otherwise. Accordingly, based on the record before us, Dr. Kursh is qualified to
`testify as to the matters before us. Id. ¶¶ 1-9 and Ex. 1003.
`
`The Asserted Grounds
`Bloomberg asserts these grounds of unpatentability:
`1)
`Claims 1-4 under 35 U.S.C. § 112, ¶ 2 as indefinite;
`2)
`Claims 1-4 under 35 U.S.C. § 102 as anticipated by Satow;
`3)
`Claims 1-4 under 35 U.S.C. § 102 as anticipated by S&C Review;
`
`13
`
`GOOG 1017
`CBM of U.S. Patent 7,774,280
`Page 13
`
`Petitioner Apple Inc. - Ex. 1017, p. 13
`
`
`
`Case CBM2013-00005
`Patent 7,941,357
`
`4)
`
`5)
`6)
`
`Claims 1-4 under 35 U.S.C. § 102 as anticipated by TradeStation Web
`Archive or alternatively claims 1-4 under 35 U.S.C. § 103 as obvious
`over the Web pages that constitute the TradeStation Web Archive;
`Claims 1-4 under 35 U.S.C. § 102 as anticipated by WOWS Guide;
`Claims 1-4 under 35 U.S.C. § 102 as anticipated by WOW Web
`Archive or alternatively claims 1-4 under 35 U.S.C. § 103 as obvious
`over the Web pages that constitute WOW Web Archive;
`Claims 1-4 under 35 U.S.C. § 102 as anticipated by Opening Bell;
`Claims 1-4 under 35 U.S.C. § 102 as anticipated by Investor/RT Web
`Archive or alternatively claims 1-4 under 35 U.S.C. § 103 as obvious
`over the Web pages that constitute Investor/RT Web Archive; and
`Claims 1-4 under 35 U.S.C. § 102 as anticipated by eSignal Press
`Release; and
`10) Claims 1-4 under 35 U.S.C. § 103 as obvious over Stutman in view of
`any of the other cited references.
`
`7)
`8)
`
`9)
`
`ANALYSIS
`Claim Interpretation
`Consistent with the statute and the legislative history of the America Invents
`Act (AIA), the Board interprets claims using the ubroadest reasonable construction
`in light of the specification of the patent in which it appears.v 37 C.F.R. § 200(b);
`see also Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48766 (Aug. 14,
`
`.,-.&* N^[h[ _i W u^[Wlo fh[ikcfj_edv j^Wj W YbW_c j[hc YWhh_[i _ji ehZ_dWho WdZ
`
`14
`
`GOOG 1017
`CBM of U.S. Patent 7,774,280
`Page 14
`
`Petitioner Apple Inc. - Ex. 1017, p. 14
`
`
`
`Case CBM2013-00005
`Patent 7,941,357
`
`customary meaning. CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366
`(Fed. Cir. 2002). However, YbW_ci uckij X[ h[WZ _d l_[m e\ j^[ if[Y_\_YWj_ed* * * *
`[T]he specification is always highly relevant to the claim construction analysis.
`Usually, it is dispositive; it is the single best guide to the meaning of a disputed
`j[hc*v See Phillips v. AWH Corp., 415 F.3d, 1303, 1317 (Fed. Circ. 2005) (en
`banc).
`
`The following claim construction applies.
`
`unetwork of computersv
`Bloomberg does not propose a construction for this term. However, it is
`clear from the arguments Markets-Alert makes in connection with the asserted
`prior art, that there is a disagreement about the term. See, e.g., Pet. 26 and Prelim.
`Resp. 48. Specifically, Bloomberg interprets unetwork of computersv to include,
`for example, a personal computer (PC) connected to the Internet. Pet. 42.
`Markets-Alert disagrees and argues that the claimed network of computers is a
`
`uh[ZkdZWdj WdZ iYWbWXb[ _d\hWijhkYjkh[( ed m^_Y^ j^[ Yecfb[n ef[hWj_edi e\ j^[
`claimed _dl[dj_ed Wh[ hkd*v Jh[b_c* L[if* 05* Bem[l[h( dej^_d] _d YbW_c - or the
`x/13 fWj[dj if[Y_\_YWj_ed limits the network of computers to anything more than
`what the term plainly indicates: a plurality of interconnected computers. Thus, the
`network of computers includes any number of computers connected together to
`communicate which includes a PC connected to the Internet, which itself is a
`network of computers.
`
`15
`
`GOOG 1017
`CBM of U.S. Patent 7,774,280
`Page 15
`
`Petitioner Apple Inc. - Ex. 1017, p. 15
`
`
`
`Case CBM2013-00005
`Patent 7,941,357
`
`uInstructions from a user to specify watch data defining an eventg
`Bloomberg does not suggest how this term should be construed. Rather,
`Bloomberg argues that it is not clear whether input from a user directly specifies
`watch data or can specify indirectly watch data and therefore the term renders
`claim 1 indefinite. Pet. 9. For reasons explained more fully below addressing the
`grounds of unpatentability under 35 U.S.C. § 112, ¶ 2, we disagree that the term
`
`u_dijhkYj_edi \hec W ki[h je if[Y_\o mWjY^ ZWjW Z[\_d_d] Wd [l[djv h[dZ[hi YbW_c -
`indefinite. For purposes of this decision, Markets-Alert is correct that claim 1 does
`not make a distinction between direct or indirect insofar as the user is concerned.
`Prelim. Resp. 27. Accordingly, we construe this term to cover both direct and
`indirect input from a user. For example, the receiving step may include receiving
`instructions (i) directly from a user, e.g., directly inputting instructions to the
`network of computers, (ii) indirectly from the user when the user provides
`instructions to another device that communicates to the network of computers
`(e.g., through a cell phone or pager), or (iii) indirectly from the user when a third
`party who originally received instructions from a user communicates to the
`network of computers on behalf of the user (either through an intermediary
`electronic device or directly to the network of computers). The parties do not
`direct us to, nor do we find in the x/13 if[Y_\_YWj_ed, an indication that the term
`should be construed another way.
`Accordingly, the broadest reasonable construction e\ u_nstructions from a
`user to specify watch data defining an eventv in light of the specification of the
`x/13 patent includes either direct or indirect input (instructions) from a user.
`
`16
`
`GOOG 1017
`CBM of U.S. Patent 7,774,280
`Page 16
`
`Petitioner Apple Inc. - Ex. 1017, p. 16
`
`
`
`Case CBM2013-00005
`Patent 7,941,357
`
`f ^he watch data including a stock market technical analysis request
`specifying technical analysis formulae to be applied to the real-time stock
`market datag
`
`Although Bloomberg does not provide an explicit construction for this
`phrase f[h j^[ uYbW_c YedijhkYj_edv i[Yj_ed e\ j^[ fetition (Pet. 9-11), we
`understand the parties to disagree on the meaning of some of the words within the
`above phrase. Specifically, Bloomberg appears to suggest that the above phrase is
`broader than that suggested by Markets-Alert. The dispute hinges on the terms
`technical analysis and technical analysis formulae, terms that are found later in
`claim 1 as well. Pet. 18-19 and Prelim. Resp. 40.
`We begin by considering the plain meaning of the phrase uthe watch data
`including a stock market technical analysis request specifying technical analysis
`formulae to be applied to the real-time stock market data.v In the broadest most
`reasonable sense, the watch data includes a request to be applied to the data. The
`request is a stock market uj[Y^d_YWb WdWboi_iv h[gk[ij* N^[ if[Y_\_YWj_ed Ze[i dej
`define specifically uj[Y^d_YWb WdWboi_i*v According to Bloomberg, the term
`
`uj[Y^d_YWb WdWboi_iv _i W ademd j[hc _d j^[ Whj j^Wj XheWZbo [dYecfWii[i cWdo
`different types of analysis including any analysis of price and volume. Pet. 13,
`citing to Ex. 1024 at 0330-0332.
`Markets-Alert argues that technical analysis is something more than just
`analyzing data to determine if a particular price or volume has been reached. See,
`e.g., Prelim. Resp. 40. However, at this juncture, Markets-Alert does not direct us
`to persuasive evidence to demonstrate that analyzing data to determine if a
`17
`
`GOOG 1017
`CBM of U.S. Patent 7,774,280
`Page 17
`
`Petitioner Apple Inc. - Ex. 1017, p. 17
`
`
`
`Case CBM2013-00005
`Patent 7,941,357
`
`particular price and volume have been reached is not covered by the term. We
`agree with Bloomberg that technical analysis includes any analysis of price and
`volume, whether the technical analysis is applied to a particular stock or an
`uel[hWbb ijeYa cWha[jv %YbW_c /&* Pet. 13.
`Our YedijhkYj_ed e\ j^[ j[hc uj[Y^d_YWb WdWboi_iv is not contrary to but is
`consistent with j^[ x/13 fWj[dj if[Y_\_YWj_ed* Although the specification provides
`examples of uief^_ij_YWj[Zv technical analysis indicators (col. 1:30-35), the
`specification also characterizes technical analysis as involving uthe measurement
`
`e\ i^Wh[ fh_Y[i W]W_dij icWbb XbeYai e\ j_c[v WdZ j^Wj j^[ WdWboi_i uYWd X[
`communicated to stock holders numerically and/oh ]hWf^_YWbbo l_W Yecfkj[hi*v
`Col. 1:36-/5* Geh[el[h( j^[ x/13 fWj[dj _cfb_Y_jbo _dZ_YWj[i j^Wj j^[ j[Y^d_YWb
`analysis request may include, for example, watching for a particular price of a
`stock. Col. 3:49-52 (uN^[ Zhed[ j^[d WdWboze the stock market at a specified
`interval and applies the users chosen technical and analysis indicators formulas to
`the data. If the data is a valid technical response (e.g., price has reached) the
`drone sends a message to the switch which then sends it to the MSM i[hl[h*v
`Emphasis added.) Lastly( j^[ Xh[WZj^ e\ uj[Y^d_YWb WdWboi_iv _i Yed\_hc[Z Xo j^[
`explanation in j^[ if[Y_\_YWj_ed j^Wj j^[ ioij[c uYWd ceh[ gk_Yabo Wffbo j^ekiWdZi
`e\ \ehckbWi WdZ _dZ_YWjehi je ijeYa cWha[j ZWjW*v Col. 4:57-58. Accordingly, for
`fkhfei[i e\ j^_i Z[Y_i_ed( uj[Y^d_YWb WdWboi_iv _dYbkZ[s any analysis of price and
`volume.
`
`N^[h[ _i Wbie Z_iW]h[[c[dj Wi je j^[ c[Wd_d] e\ j^[ j[hc uj[Y^d_YWb WdWboi_i
`\ehckbW[v \hec j^[ WXel[ h[Y_j[Z phrase. Bloomberg does not suggest how this
`
`18
`
`GOOG 1017
`CBM of U.S. Patent 7,774,280
`Page 18
`
`Petitioner Apple Inc. - Ex. 1017, p. 18
`
`
`
`Case CBM2013-00005
`Patent 7,941,357
`
`term should be construed, rather Bloomberg argues that it is not clear from the
`
`x/13 fWj[dj if[Y_\_YWj_ed m^Wj u\ehckbW[v Wh[ [dYecfWii[Z Xo j^[ YbW_ci* J[j* -/*
`Markets-Alert disagrees that the term is undefinable. Prelim. Resp. 21. For
`reasons explained mor[ \kbbo X[bem( m[ Z_iW]h[[ j^Wj j^[ j[hc uj[Y^d_YWb WdWboi_i
`\ehckbW[v h[dZ[hi YbW_c - _dZ[\_d_j[* For purposes of this decision, the term
`
`uj[Y^d_YWb WdWboi_i \ehckbW[v _i j^[ Yehh[ifedZ_d] \ehckbW je f[h\ehc j^[ j[Y^d_YWb
`analysis.
`
`f pO\ SY NSMKVVc KZ Z Vc g
`Bloomberg argues that the term should be construed broadly to include one
`or more time intervals that might include seconds, minutes or hours (or perhaps
`longer), and may include a single application event all consistent with the plain
`meaning of the term. Pet. 10. Markets-;b[hj Wh]k[i j^Wj <beecX[h]xi YedijhkYj_ed
`is unsupported and arbitrary. Prelim. Resp. 22. We disagree that the proposed
`construction is unsupported and arbitrary. Rather, the construction is supported by
`a factual basis, from Bloomb[h]xi [nf[hj Dr. Kursh, whose statements are made by
`jWa_d] _dje WYYekdj j^[ x/13 fWj[dj if[Y_\_YWj_ed WdZ \_b[ ^_ijeho* Ex. 1002 ¶¶ 37,
`38 and 40. Accordingly, we are not persuaded by Markets-;b[hjxi Wh]kc[dj j^Wj
`Bloomberg did not follow the rules governing CBM review when asserting a
`specific construction.
`Markets-Alert does not explain why the claim construction is incorrect or
`how the claim term should be interpreted. Rather, Markets-Alert merely argues
`that the term requires no construction at all because it is unambiguous. Prelim.
`
`19
`
`GOOG 1017
`CBM of U.S. Patent 7,774,280
`Page 19
`
`Petitioner Apple Inc. - Ex. 1017, p. 19
`
`
`
`Case CBM2013-00005
`Patent 7,941,357
`
`Resp. 22. Such an argument does not overcome the construction proposed by
`Bloomberg, which we determine is reasonable* ;YYehZ_d]bo( uf[h_eZ_YWbbo Wffbov
`includes one or more time intervals.
`
`f \ OKV-^SWO X Y ^SPSMK^SY X g
`<beecX[h] Wh]k[i j^Wj uh[Wb-j_c[ dej_\_YWj_edv _dYbkZ[i j^[ j_ce required to
`place a telephone call or to send an email, facsimile or page to the user. Pet. 11.
`Markets-
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
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.
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.
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
