Trials@uspto.gov
`571-272-7822
`
`
`
`
`
` Paper 22
`Entered: May 1, 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.
`
`CHANG, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`571-272-7822
`
`
`
`
`
` Paper 22
`Entered: May 1, 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.
`
`CHANG, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`Case CBM2013-00005
`Patent 7,941,357
`
`The Board instituted the instant trial and entered a Scheduling Order that
`
`sets forth the due dates for the parties to take action in this trial, ensuring that the
`trial will be completed within one year of institution. (Papers 18 and 19.)
`On April 30, 2013, the initial telephone conference call for the instant trial was
`held involving:
`1. Michael T. Rosato, Counsel for Petitioners (“Bloomberg”);
`2. Andrew Y. Choung, Counsel for Patent Owner (“Markets-Alert”); and
`3. Jameson Lee, Sally C. Medley, and Joni Y. Chang, Administrative Patent Judges.
`The purpose of this conference call is to discuss any proposed changes to the
`Scheduling Order and the motions that the parties intend to file. The parties
`submitted their lists of proposed motions prior to the conference call that provided
`the Board and the opposing party adequate notice to prepare for the conference
`call. (Papers 20 and 21.)
`
`Scheduling Order
`During the conference call, the parties presented no proposed change to the
`Scheduling Order and indicated that they do not have any issue regarding the due
`dates. In fact, Markets-Alert notified the Board that it may propose to expedite the
`schedule at a later time. Bloomberg also sought clarification whether the parties
`may stipulate certain changes to the schedule.
`The Board explained that the parties may stipulate to different dates for Due
`dates 1 through 3 (earlier or later, but no later than Due date 4) and file a notice of
`stipulation, specifically identifying the changed due dates. In addition, the Board
`encouraged the parties to work toward a mutually agreeable expedited schedule,
`and authorized the parties to file a joint motion to propose an expedited schedule.
`
`
`
`2
`
`
`
`Case CBM2013-00005
`Patent 7,941,357
`
`
`Motion to Submit Supplemental Information
`For the first item on Bloomberg’s motion list, Bloomberg renewed its
`
`request to submit an affidavit from the organization “Internet Archive” regarding
`certain archived Web pages cited in the petition, as supplemental information
`under 37 C.F.R. § 42.223. The affidavit was said to be related to authentication of
`the archived Web pages.
`
`The Board noted that the asserted grounds of unpatentability based on those
`archived Web pages were not authorized (see Decision on Institution, Paper 18,
`pages 40-41), and a patent owner response should not address grounds that were
`denied (see 37 C.F.R. § 42.220(a)). Therefore, an affidavit related to
`authentication of the archived Web pages is not necessary.
`The Board explained that Bloomberg may be authorized to file such an
`affidavit under certain situations at a later time. For instance, if Markets-Alert files
`a motion to amend claims, and if Bloomberg submits an opposition that asserts a
`ground of unpatentability based on the archived Web pages in response to new
`issues arising from the motion, Bloomberg may submit the affidavit in an exhibit
`with such an opposition.
`To further clarify, the Board directed the parties’ attention to the Office
`Patent Trial Practice Guide which provides that a petitioner will be afforded an
`opportunity to fully respond to a motion to amend, and the petitioner may respond
`to new issues arising from proposed substitute claims, including the submission of
`evidence responsive to the amendment and new expert declarations directed to the
`proposed substitute claims. See Office Patent Trial Practice Guide, 77 Fed. Reg.
`48756, 48767 (Aug. 14, 2012).
`
`
`
`
`3
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`
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`Case CBM2013-00005
`Patent 7,941,357
`
`
`For the forgoing reasons, Bloomberg is not authorized to file supplemental
`information at this time.
`
`Cross Examination of Declarants
`Bloomberg sought clarification on whether a motion for discovery is
`required for cross examining Jeffery Bruce McGeorge, who is listed as the sole
`inventor of the involved U.S. Patent 7,941,357 (“the ’357 patent”). Markets-Alert
`submitted, with its patent owner preliminary response, a copy of a Declaration of
`Jeffery Bruce McGeorge that was filed in a co-pending district court litigation.
`The Board first clarified that if Markets-Alert does not rely upon any
`declaration of Jeffery Bruce McGeorge in its patent owner response, it would not
`be necessary to cross examine Mr. McGeorge. This is because a petitioner’s reply
`may only respond to arguments raised in a patent owner response, and not those
`that are only submitted in a patent owner preliminary response (see 37 C.F.R.
`§ 42.23(b)). The Board also noted that any arguments for patentability not raised
`and fully briefed in the patent owner response will be deemed waived.
`Markets-Alert confirmed that all of its declarants for this trial including Mr.
`McGeorge will be available for cross examination. Moreover, cross-examination
`of declarants is considered routine discovery under 37 C.F.R. § 42.51(b)(1)(ii).
`Bloomberg may conduct cross-examination of Markets-Alert’s declarants during
`the Petitioner Discovery Period. See Office Patent Trial Practice Guide, 77 Fed.
`Reg. at 48757.
`
`Motion for Discovery
`For the first item on Markets-Alert’s list of proposed motions, Markets-Alert
`informed the Board that it will initiate discussions with Bloomberg regarding
`
`
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`4
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`Case CBM2013-00005
`Patent 7,941,357
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`additional discovery; and in the event that the parties cannot agree, Markets-Alert
`intends to request the Board’s authorization to seek additional discovery.
`The Board appreciated the information and encouraged the parties to work
`toward an agreement. The parties may initiate another conference call with the
`Board if necessary.
`
`Motion to Amend Claims
`Lastly, Markets-Alert indicated that it may file a motion to amend claims
`under 37 C.F.R. § 42.221, which will include proposing substitute claims for one
`or more involved claims of the ’357 patent. Markets-Alert also stated that any
`proposed claim substitutions will be made to respond to one or more of the
`grounds of unpatentability involved in this trial, but will not enlarge the scope of
`the claims or introduce new matter.
`The Board appreciated the information, and noted that any motion to amend
`must be filed with a detailed explanation as to how the proposed substitute claims
`obviate the grounds of unpatentability authorized in this trial, and a clear
`identification of where in the written description support for the claim amendment
`can be found. If the motion to amend includes a proposed substitution of claims
`beyond a one-for-one substitution, the motion must explain why more than a one-
`for-one substitution of claims is necessary. 37 C.F.R. § 42.221. Finally, a motion
`to amend should be filed as a separate paper, and not within the same paper as a
`patent owner response.
`
`
`
`
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`5
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`Case CBM2013-00005
`Patent 7,941,357
`
`
`Order
`
`It is
`ORDERED that the parties are authorized to file a joint motion to propose
`an expedited schedule;
`FURTHERED ORDERED that Bloomberg’s request for authorization to
`file supplemental information is denied without prejudice; and
`FURTHERED ORDERED that no motion for discovery is authorized.
`
`
`
`
`
`
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`
`
`
`PETITIONER:
`
`Michael T. Rosato
`Brian D. Range
`WILSON SONSINI GOODRICH & ROSATI
`Email: mrosato@wsgr.com
`Email: brange@wsgr.com
`
`
`PATENT OWNER:
`
`Andrew Choung
`GLASER WEIL FINK JACOBS HOWARD
`AVCHEN & SHAPIRO LLP
`Email: achoung@glaserweil.com
`
`
`
`
`6
`
`
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