`571-272-7822
`
`
`
`
`
` Paper 17
`Entered: March 5, 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.
`
`Patent of 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.
`
`CHANG, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`Case CBM2013-00005
`Patent 7,941,357
`
`
`
`
`On March 4, 2013, a telephone conference call was held between respective
`
`counsel for the parties and Patent Judges Lee, Medley, and Chang. Counsel for the
`petitioner (“Bloomberg”) initiated the call to: (1) seek authorization to file
`supplemental information before a trial is instituted; (2) note that the patent owner
`preliminary response improperly contains new testimonial evidence; (3) seek
`authorization to file a motion for pro hac vice admission of an attorney; and (4)
`notify the Board that the concurrent district court actions identified in the petition
`have been stayed in view of the instant proceeding.
`
`At the conference call, Bloomberg explained that it would like to submit an
`affidavit from the organization “Internet Archive” regarding certain archived Web
`pages cited in the petition as supplemental information so that the Board and patent
`owner would have the information as earliest as possible. According to
`Bloomberg, the affidavit relates to authentication of the cited prior art. Bloomberg
`indicated that, alternatively, it could seek authorization later after a trial has been
`instituted, to file a motion to submit supplemental information under 37 C.F.R.
`§ 42.223.
`
`In response, counsel for the patent owner (“Markets-Alert”) expressed that it
`is not clear whether there is anything else accompanying the affidavit and Markets-
`Alert would like an opportunity to respond to the submission.
`
`Upon consideration of the parties’ discussion, the Board noted that such
`information is currently not needed to decide whether to institute a trial. If a trial is
`instituted, Bloomberg may renew its request. Markets-Alert may reply to the
`submission in its patent owner response.
`
`As to the second item, Bloomberg directed attention to 37 C.F.R. § 42.207
`which provides that a patent owner preliminary response “shall not present new
`
`
`
`2
`
`
`
`Case CBM2013-00005
`Patent 7,941,357
`
`testimony evidence beyond that already of record, except as authorized by the
`Board,” and noted that the Board has not provided such authorization in this
`proceeding. In Bloomberg’s view, Markets-Alert’s exhibit 3 filed with the
`preliminary response containing a declaration of the sole inventor of the subject
`patent is unauthorized testimonial evidence.
`
`Markets-Alert, however, counters that the declaration is a publically
`available document that was filed in a co-pending district court action, and thereby
`not “new testimony evidence” within the meaning of 37 C.F.R. § 42.207. The
`Board agrees with Markets-Alert that testimonial evidence previously filed in a
`different proceeding may be submitted in a preliminary response.
`
`As to the third item, the Board previously authorized both parties to file
`motions for pro hac vice admission under 37 C.F.R. § 42.10(c) (Paper 12). No
`new authorization is needed for Bloomberg to file a motion for pro hac vice
`admission.
`With respect to the fourth item, the Board appreciates the information
`provided by Bloomberg that is related to the stay of the concurrent district court
`actions. The Board notes that it is not necessary for the parties to file any paper
`related to this matter.
`For the foregoing reasons, it is
`ORDERED that Bloomberg’s request for authorization to file supplemental
`information before a trial is instituted is denied without prejudice.
`
`
`
`
`
`
`
`
`
`
`3
`
`
`
`Case CBM2013-00005
`Patent 7,941,357
`
`PETITIONER:
`
`Michael T. Rosato
`WILSON SONSINI GOODRICH & ROSATI
`701 Fifth Avenue
`Suite 5100
`Seattle, WA 98104-7036
`Tel.: 206.883.2529
`Fax: 206.883.2699
`Email: mrosato@wsgr.com
`
`Brian D. Range
`WILSON SONSINI GOODRICH & ROSATI
`900 South Capital of Texas Hwy
`Las Cimas IV, Fifth Floor
`Austin, TX 78746-5546
`Tel.: 512.338.5478
`Fax: 512.338.5499
`Email: brange@wsgr.com
`
`PATENT OWNER:
`
`Andrew Choung
`GLASER WEIL FINK JACOBS HOWARD
`AVCHEN & SHAPIRO LLP
`10250 Constellation Boulevard, 19th Floor
`Los Angeles, CA 90067
`Tel.: 310-553-3000
`Fax: 310-785-3506
`achoung@glaserweil.com
`
`
`
`
`
`
`4
`
`
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
