BLOOMBERG INC.; BLOOMBERG L.P.;v.MARKETS-ALERT PTY LTD.

Patent Trial and Appeal Board

Mar 26, 2014

10415022 (P.T.A.B. Mar. 26, 2014)

Trials@uspto.gov Paper 71
571-272-7822 Entered: March 26, 2014

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
Patent 7,941,357
___________________

Before JAMESON LEE, SALLY C. MEDLEY, and JONI Y. CHANG,
Administrative Patent Judges.

MEDLEY, Administrative Patent Judge.

FINAL WRITTEN DECISION
35 U.S.C. § 328(a) and 37 C.F.R. § 42.73

Case CBM2013-00005
Patent 7,941,357

2
I. INTRODUCTION
Petitioner “Bloomberg” filed a petition on October 15, 2012,
requesting a covered business method patent review of U.S. Patent No.
7,941,357 (“the ’357 patent”) pursuant to section 18(a) of the Leahy-Smith
America Invents Act (“AIA”).
1
Paper 1 (“Pet.”). Patent Owner Markets-
Alert filed a patent owner preliminary response. Paper 16 (“Prelim. Resp.”).
Taking into account Markets-Alert’s preliminary response, the Board
determined that it was more likely than not that the challenged claims are
unpatentable. Pursuant to 35 U.S.C. § 324, the Board instituted this trial on
March 29, 2013, as to claims 1-4 of the ’357 patent. Paper 18 (“Dec. on
Inst.”).
Subsequent to institution, Markets-Alert filed a patent owner response
(Paper 38; “PO Resp.”) and a substitute motion to amend (Paper 42; “Mot.
to Amend”)
2
requesting cancellation of claims 1-4 and addition of proposed
claims 5-8. Mot. to Amend 1-2. Bloomberg filed a reply to the patent
owner response (Paper 51; “Pet. Reply”) and an opposition to the substitute
motion to amend (Paper 50; “Opp.”). Markets-Alert filed a reply to the
motion to amend. Paper 54 (“PO Reply”).
Markets-Alert also filed a motion to exclude (Paper 58; “Mot. to
Exclude”) certain testimony of the second declaration of Bloomberg’s
declarant, Steven R. Kursh and certain exhibits. Bloomberg filed an

1
Pub. L. No. 112-29, 125 Stat. 284, 329 (2011).

2
Markets-Alert requested, and received authorization from the Board, to file
a substitute motion to amend, which replaced an earlier motion. Paper 41. It
is the substitute motion to amend that is before us for consideration.

Case CBM2013-00005
Patent 7,941,357

3
opposition to the motion to exclude (Paper 62; “Exclude Opp.”), and
Markets-Alert filed a reply (Paper 64; “Exclude Reply”).
An oral hearing was held on December 19, 2013.
3

The Board has jurisdiction under 35 U.S.C. § 6(c). This decision is a
final written decision under 35 U.S.C. § 328(a) and 37 C.F.R. § 42.73.
For the reasons that follow, the portion of Markets-Alert’s substitute
motion to amend requesting cancellation of claims 1-4 is granted; however,
that portion of the motion requesting the addition of proposed claims 5-8 is
denied.
A. Related Litigation
“Bloomberg” 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 for infringement of the ’357 patent. Pet. 7-8. The identified related
cases are before the U.S. District Court for the District of Delaware, and are
stayed pending this review. Exs. 1018-1021, 3001.
4

B. The ’357 Patent
The ’357 patent, entitled “Trading System,” issued from the National
Stage (Application No. 10/415,022) 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 October 27,
2000. The ’357 patent issued on May 10, 2011.
The ’357 patent generally relates to a trading system that monitors

3
A transcript of the oral hearing is included in the record as Paper 70
(“Tr.”).

4
Ex. 3001 is a copy of the decision to stay the related cases.
Case CBM2013-00005
Patent 7,941,357

4
stock data and provides notification to a remote device using a network
based system. Ex. 1001.
Figure 1 of the ’357 patent is reproduced below.

Figure 1 shows an arrangement of the trading system.

Figure 1 shows drone computers 3, which receive and process
technical indicator instructions from user’s device 1 through switch 2. Id. at
3:47-48. Drone computers analyze the stock market at a specified interval
and apply the user’s technical indicator instructions to the data. A message
Case CBM2013-00005
Patent 7,941,357

5
is sent ultimately to the user’s device from the SMS server indicating that a
valid technical response has been reached. Id. at 3:62-64.
Figure 2 is of the ’357 patent is reproduced below.

Figure 2 shows an internal server infrastructure of the trading system.

Case CBM2013-00005
Patent 7,941,357

6
Figure 2 illustrates “an alternative extended computer system to that
of FIG. 1.” Id. at 3:29-30. The Gateway is connected to the Internet and
allows users and network appliances to connect to the correct server. The
guardian keeps track of all major servers on the network and has the ability
to funnel small amounts of data from the load management tools and
administrator tools directly to the switchbox for routing and processing. Id.
at 4:1-9. The alert manager stores and distributes all created alerts to the
least busy drone computer, and the administration tool allows a third party
administrator to connect to the system and edit, remove, or add users without
interrupting the flow of data. Id. at 4:10-15. The switch server(s) route
packets from one server to the other. “Any switch[’]s main job is keeping
the network free from traffic bouncing between many erroneous servers
before getting to its destination. Switchboxes are also used to apply ‘load
balancing’ to components of the network which are connected to it.” Id. at
4:22-27.
Claim 1, along with proposed claim 5, both reproduced below, are
central to the issues in this case.
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;

Case CBM2013-00005
Patent 7,941,357

7
(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.

5. (proposed) A real-time method of providing technical
analysis and notification of stock market events comprising the
steps of:

receiving real-time stock market data on a provider’s
network of computers, which is server-based, scalable
and redundant;

receiving watch data specified by a user on the provider’s
network of computers, from a user system in remote
communication with the provider’s network of
computers, wherein the user-specified watch data
comprises a request to apply more than one technical
analysis formula for predicting price trends based on
market action and defines a valid stock market event;

applying the user-specified watch data to the real-time
stock market data as the real-time stock market data is
received by the provider’s network of computers to
determine if the valid stock market event has occurred;
and

generating a notification in real-time when the valid
Case CBM2013-00005
Patent 7,941,357

8
stock market event has been determined to have occurred
by the provider’s network of computers, wherein the
notification is provided in real-time by the provider’s
network of computers to a remote communication device
of the user.

C. Prior Art Relied Upon
The prior art references applied by Petitioner to claims 1-4 are:
PCT Publication No. WO 00/11587, Mar. 2, 2000
(“Satow”) (Ex. 1004);
Product Review: TradeStation 4.0 Build 15, Stocks &
Commodities, Dec. 1996 at 649 (“S&C Review”) (Ex.
1005);
AIQ Opening Bell Monthly, Vol. 8 Issue 10, October
1999 (“Opening Bell”) (Ex. 1014);
U.S. Patent 5,954,793, Sep. 21, 1999 (“Stutman”) (Ex.
1015).

D. Grounds of Unpatentability
The Board instituted the instant covered business method patent
review based on the following grounds of unpatentability:

Reference[s] Basis Claims challenged
Satow § 102 1-4
S&C Review § 102 1-4
Opening Bell § 102 1-4
Stutman and Opening
Bell
§ 103 1-4

Case CBM2013-00005
Patent 7,941,357

9
II. ANALYSIS
A. Markets-Alert’s Patent Owner Response
A patent owner response is a patent owner’s opportunity to respond to
the petition once a trial has been instituted. 35 U.S.C. § 326(a)(8); 37 C.F.R.
§ 42.220. The response is “to the petition addressing any ground for
unpatentability not already denied.” The “patent owner response is filed as
an opposition [to the petition] and is subject to the page limits provided in
§ 42.24.” 37 C.F.R. § 42.220(a). It is clear from these requirements that a
patent owner response is an opposition to the petition and should address
any ground for unpatentability not already denied with respect to the claims
upon which a trial is instituted.
Markets-Alert’s patent owner response is not an opposition to the
petition because it does not respond to the petition or address the grounds for
unpatentability with respect to claims 1-4, the claims upon which the trial
was instituted. Instead, the patent owner response only addresses Markets-
Alert’s proposed claims 5-8.
5
PO Resp. iv (“Markets-Alert’s Response is
based upon the following [proposed] claims [5-8].”). The response
primarily explains how the proposed claims 5-8 (1) respond to the Board’s
claim construction provided in the Decision to Institute; and (2) are
patentable over the references applied to claims 1-4. Id. at 13-49. Nowhere
in the response is there a discussion of original claims 1-4, other than on
page 1 of the response where Markets-Alert summarizes the Decision to
Institute. Id. at 1.

5
In its substitute motion to amend, Markets-Alert seeks to add proposed
claims 5-8 to the ’357 patent. Mot. to Amend 1-2.
Case CBM2013-00005
Patent 7,941,357

10
Specifically, Markets-Alert’s patent owner response addresses the
patentability of proposed claims 5-8 with respect to the same prior art that
was applied to claims 1-4. Id. at 20-49. Markets-Alert’s addressing the
patentability of proposed claims 5-8 with respect to the prior art that was
applied to claims 1-4, however, is not relevant to showing how claims 1-4
are patentable over the same prior art. As discussed below, regarding
Markets-Alert’s substitute motion to amend, proposed claims 5-8 are very
different from original claims 1-4. In the patent owner response, Markets-
Alert focuses on certain features found in proposed claims 5-8, but not found
in claims 1-4, to distinguish proposed claims 5-8 over the prior art involved
in the trial. See, e.g., id. at 20. The petition only addressed original claims
1-4, not proposed claims 5-8. The patent owner response, therefore, is not
responsive, and is not an opposition, to the petition.
Markets-Alert’s patent owner response is not a response that complies
with 35 U.S.C. § 326(a)(8) and 37 C.F.R. § 42.220(a), but is an unauthorized
extension of Markets-Alert’s substitute motion to amend. The patent owner
response includes such statements as “Markets-Alert’s Response is based on,
in part, and hereby incorporates, its [Substitute] Motion to Amend.” Id. at 1.
In addition, there are several instances where the patent owner response
refers to the substitute motion to amend, as if incorporating the substitute
motion to amend into the response. See, e.g., id. at 4, 13, 14, 15, 18, 19.
A motion to amend, or the content of a motion to amend, should not
be included in a patent owner response. Rather, a motion to amend must be
filed as a separate paper, under 37 C.F.R. § 42.20. A motion to amend is
limited to 15 pages. 37 C.F.R. § 42.24. Here, Markets-Alert did not request
an extension for additional pages for its motion to amend beyond the allotted
Case CBM2013-00005
Patent 7,941,357

11
15 pages.
6
Instead, Markets-Alert included in its patent owner response
content that should have been provided in a motion to amend, resulting in an
unauthorized 58-page extension to Markets-Alert’s substitute motion to
amend. Such actions are not in accordance with the rules.
In sum, Markets-Alert’s patent owner response fails to comply with
35 U.S.C. § 326(a)(8) and 37 C.F.R. § 42.220(a), and is not a response, but
is instead an unauthorized 58-page extension of Markets-Alert’s substitute
motion to amend. For the reasons provided, we need not and do not
consider Markets-Alert’s patent owner response, and because we do not
consider the patent owner response, there also is no occasion to consider
Bloomberg’s reply.
B. Markets-Alert’s Substitute Motion to Amend
Claims 1-4 are cancelled
Markets-Alert’s substitute motion to amend is before us for
consideration. In the motion, Markets-Alert requests cancellation of claims
1-4 and requests to add proposed claims 5-8. Mot. to Amend 1-2. The
cancellation of claims 1-4 is not based on any contingency. There is no
indication, for example, that the proposed claims 5-8 should be considered
only if the original patent claims 1-4 are determined unpatentable. Rather,
the substitute motion to amend leaves no doubt that Markets-Alert
unequivocally requests cancellation of claims 1-4. None of the papers filed
by Markets-Alert, once trial was instituted, indicates that Markets-Alert is

6
Markets-Alert was made aware of the Petitioner’s allegations that the
patent owner response “is inappropriate as it merely contains arguments as
to why the proposed substitute claims are patentable over the prior art.”
Paper 41 at 2. Nonetheless, Markets-Alert did not seek authorization to file
a substitute patent owner response.
Case CBM2013-00005
Patent 7,941,357

12
arguing for the patentability of claims 1-4. Bloomberg understood the
record to mean that Markets-Alert seeks to cancel claims 1-4, not based on
any contingency. Pet. Rep. 1 (“MA has unambiguously canceled each of the
challenged ’357 Patent claims 1-4, upon which the Board instituted trial.”);
Tr. 5:11-18.
During oral argument, counsel for Markets-Alert indicated that
Markets-Alert intended the cancellation of claims 1-4 to be contingent upon
a Board determination as to the patentability with respect to claims 1-4. See,
e.g., Tr. 22-26. When asked where in Markets-Alert’s papers did Markets-
Alert indicate that cancellation of claims 1-4 was contingent on a Board’s
determination with respect to the patentability of claims 1-4, counsel for
Markets-Alert explained that there was no explicit indication of contingency.
Tr. 25-26 (“JUDGE MEDLEY: And where did you – what you just said
where is that, could you point us to where in your papers you make that type
of contingency type argument? MR. CHOUNG: That’s where, Your
Honor, I can’t say to you that we explicitly said that as a contingency.”).
The only reasonable reading of the record is that the cancellation of
original claims 1-4 was not contingent on anything. Because Markets-Alert
requested cancellation of claims 1-4, not based on any contingency,
Markets-Alert has waived any issues with respect to claims 1-4, and,
therefore, we need not address the patentability of those claims. For these
reasons, we grant Markets-Alert’s request to cancel claims 1-4.
Insufficient showing of written description support
for proposed claims 5-8

A motion to amend must set forth the support in the original
disclosure of the patent for each claim that is added or amended and the
Case CBM2013-00005
Patent 7,941,357

13
support in an earlier-filed disclosure for which the benefit of the filing date
of the earlier filed disclosure is sought. 37 C.F.R. § 42.221(b). The
requirement that the motion to amend must set forth the support in the
original disclosure of the patent is with respect to each claim, not for a
particular feature of a proposed claim. In other words, it is not sufficient for
a motion to amend only to address where a particular added term or phrase is
found in the specification. The motion must account for the entire claim in
showing where there is written description support for the claim.
Markets-Alert’s substitute motion to amend does not set forth the
support in the original disclosure of the patent for each claim that is added.
Instead, the motion only addresses “language not previously contained in the
Original Claims.” Mot. to Amend 5. For this reason alone, Markets-Alert’s
request that proposed claims 5-8 be added to the ’357 patent is insufficient.
In addition, we understand Markets-Alert as arguing that the
description in the specification of the ’357 patent on which it relies for
support is the same description in the original disclosure.
7
Even assuming
that to be true, Markets-Alert has failed to show where it has support in the
original disclosure of the ’357 patent for all of the features not previously
contained in the original claims. For example, proposed claim 5 recites “a
provider’s network of computers, which is server-based, scalable and
redundant.”
As an initial matter, Markets-Alert does not explain what is meant by
“server-based, scalable and redundant.” Although original claim 1 recites a
network of computers, the network of computers is not claimed as “server-

7
We note that references should have been made to the original disclosure
and not to the specification of the ’357 patent.
Case CBM2013-00005
Patent 7,941,357

14
based, scalable and redundant.” The terms “server-based,” “scalable,” and
“redundant” are not found in the specification of the ’357 patent, and,
therefore, the specification of the ’357 patent does not shed light on the
meaning of these terms. In the substitute motion to amend, Markets-Alert
argues that “a provider’s network of computers, which is server-based,
scalable and redundant” excludes “a third-party personal computer (PC)
connected to the Internet by itself or just the Internet in general.” Mot. to
Amend 5. Although the motion explains what the phrase excludes, the
motion does not explain what the phrase includes. For example, we do not
know what features and structure are required of a provider’s network of
computers to make it “server-based, scalable, and redundant.” In support of
its motion to amend, Markets-Alert directs attention to the declaration of Mr.
Neal Goldstein. Ex. 2023. Mr. Goldstein does not explain what meaning a
person of ordinary skill in the art would have given to the terms “server-
based,” “scalable,” and “redundant” in the context of “a provider’s network
of computers.” Without such an explanation, we do not have an
understanding of the claim language so as to make a determination as to
whether there is written description support for such language.
Markets-Alert fails, for additional reasons, to show sufficiently where
there is support in the original disclosure of the ’357 patent for a network of
computers that is “server-based, scalable and redundant.” Markets-Alert
refers to the server switch box, exchange data server, and drone computers
of Figures 1 and 2, and argues that the configuration and interconnection of
the elements teaches a person of ordinary skill in the art that the network
may be scaled up or down as needed and provides redundancy, which leads
Case CBM2013-00005
Patent 7,941,357

15
to high availability. Mot. to Amend 7. Mr. Goldstein’s testimony
essentially repeats that argument. Ex. 2023 ¶¶ 73-74.
Mr. Goldstein does not explain how the elements shown and
described in Figures 1 and 2 provide written description support for what is
claimed in proposed claim 5. For example, we do not know what it is about
Figures 1 and 2 that show redundancy or show that the network of
computers is server-based or scalable. Concluding that a phrase has written
description support in the original specification as filed, without supporting
the conclusion with sufficient facts, does not assist the trier of fact. For
these reasons, Mr. Goldstein’s testimony as to the phrase “a provider’s
network of computers, which is server-based, scalable and redundant” is
entitled to little weight. See 37 C.F.R. § 42.65(a).
Claim 5 also recites “applying the user-specified watch data to the
real-time stock market data as the real-time stock market data is received.”
Independent claim 8 recites a similar limitation with respect to applying the
technical analysis in real-time. Markets-Alert argues that the phrase is
supported by the specification of the ’357 patent based on the description in
the specification that the drone computers apply the technical analysis at a
specified interval, including as the data are received, and that technical
analysis indicators can be set to repeat over certain time periods. Mot. to
Amend 10 (citing Ex. 2001, 3:47-51, 4:49-51). We are not persuaded by the
argument. The claim 5 limitations of applying the watch data “to the real-
time stock market data as the real-time stock market data is received” and
the similar limitations in proposed claim 8 do not appear in the original
claims. The limitations are broader than what is in original claims 1-4,
because claims 1-4 require that the watch data or formulas be applied to data
Case CBM2013-00005
Patent 7,941,357

16
at specified intervals or periodically. For example, original claim 1 recites
“using the network of computers to periodically apply
8
the user-specified
watch data including the stock market technical analysis formulae to the
real-time stock market data.” By eliminating the “periodically apply”
limitation from proposed claim 5 and proposed claim 8, Markets-Alert has
broadened the claims. Markets-Alert has failed to show that the
specification provides written description support for the claims. The
specification of the ’357 patent only describes periodically applying the
watch data (technical analysis) to the stock market data. Markets-Alert has
failed to show where the specification of the ’357 patent describes applying
the watch data or technical analysis, unconditionally or continuously, for
example, as the real-time data are received. In other words, the proposed
claims appear to be broader in scope than what is described in the
specification of the ’357 patent.
Disclosure of a species does not always provide sufficient written
description for a broader claim. In re Curtis, 354 F.3d 1347, 1356-1357
(Fed. Cir. 2004) (“[W]e have never held that in all such cases [disclosure of
a species] . . . the claim to the genus is adequately described under § 112,
¶ 1.”); Bilstad v. Wakalopulos, 386 F.3d 1116, 1124 (Fed. Cir. 2004) (“Thus,
this court has continued to apply the rule that disclosure of a species may be
sufficient written description support for a later claimed genus including that
species.”); see also University of California v. Eli Lilly & Co., 119 F.3d
1559, 1568 (Fed. Cir. 1997).
The key to resolving the issue lies in what does the disclosed species

8
In the Decision on Institution, we construed “periodically apply” to include
one or more time intervals. Dec. on Inst. 19-20.
Case CBM2013-00005
Patent 7,941,357

17
tell one with ordinary skill in the art about possession by the inventor of the
entire genus. Predictability among species is a factor to be considered.
Bilstad, 386 F.3d at 1125; In re Curtis, 354 F.3d at 1352-53. The question,
too, is whether the differences between species even matter. Bilstad, 386
F.3d at 1124. Here, Markets-Alert does not explain how the narrower
disclosure conveys to one with ordinary skill in the art that the inventor of
the ’357 patent had possession of the broader concept claimed in proposed
claim 5 and proposed claim 8.
Claims 6 and 7 depend from claim 5 and include the limitations of
claim 5, and, thus, suffer from the same deficiencies as claim 5. In addition,
proposed claim 6 recites several additional features not accounted for
sufficiently with respect to where the added features find written description
support. For example, claim 6 recites the additional step of “updating a
cache of stock market data on a data server.” The term cache is not found in
the specification of the ’357 patent, let alone updating a cache. Markets-
Alert argues, directing us to the declaration of Mr. Goldstein, that the
specification of the ’357 patent supports the claimed phrase. Mr. Goldstein
testifies that the network of computers may include “history servers” that
“scoop” data from a data feed so that the data are stored and accessible on
the network, and that the specification further describes a central data
storage that houses the databases created by the history server. Mr.
Goldstein then concludes that, therefore, “the foregoing disclosures support
the additional step of updating a cache of stored stock market data on a data
server.” Ex. 2023 ¶ 82. We do not know what it is about the history servers
that scoop data from a data feed, or the central data storage that houses the
databases created by the history server, that shows written description
Case CBM2013-00005
Patent 7,941,357

18
support for “updating a cache of stock market data on a data server” as
claimed. That data are scooped from a data feed and eventually stored has
not been shown sufficiently to mean that a cache is updated. Mr. Goldstein
does not explain sufficiently the factual basis for the conclusions he makes,
and, therefore, his testimony is entitled to little weight. See 37 C.F.R. §
42.65(a).
Claim 7 depends from claim 6 and recites the additional step of
including, in the real-time notification, “a live link between the user’s remote
communication device and the provider’s network of computers.” Markets-
Alert does not explain how the “live link” should be construed. The
limitation “live link” does not appear in the specification of the ’357 patent
and, therefore, the specification of the ’357 patent does not shed light on the
meaning of this claim limitation. Mr. Goldstein does not explain how a
person of ordinary skill in the art would construe a “live link.”
Mr. Goldstein merely opines that a person of skill in the art would
understand that the link, e.g., the pathway between the network of computers
and a remote communication device seen in Figures 1 and 2, on the alerting
end may be “live” and included with the notification that already is sent to
the user, in order to enable the user to send back an instruction. Ex. 2023
¶ 89. That testimony does not assist the trier of fact, because Mr. Goldstein
does not explain what it is about the pathway between the network of
computers and remote communication device that make it a “live link.”
Independent claim 8 recites “a network guardian, which comprises
one or more switches.” Markets-Alert has failed to show where it has
support in the original disclosure of the ’357 patent for a network guardian,
which comprises one or more switches. For example, Figure 2 does show a
Case CBM2013-00005
Patent 7,941,357

19
box labeled “guardian,” but there are no switches inside the guardian box.
The only switches shown, switch #1 and switch #2, are separate from and
outside of the guardian box. The specification of the ’357 patent does not
describe the guardian as comprising one or more switches. Ex. 1001, 4:4-9.
Lastly, Mr. Goldstein does not explain that a person of ordinary skill in the
art would have recognized that Markets-Alert had possession of a guardian
comprising one or more switches. Ex. 2023 ¶¶ 90-96.
For all of the reasons provided, Markets-Alert has failed to meet its
burden to establish that it is entitled to the requested relief under 37 C.F.R.
§ 42.20, because Markets-Alert has failed to demonstrate sufficiently that
there is support in the original disclosure of the ’357 patent for any of
proposed claims 5-8.

None of the proposed claims 5-8 are shown to be responsive to a
ground of unpatentability involved in the trial

As set forth in 37 C.F.R. § 42.221(a)(2), a motion to amend may be
denied where the amendment does not respond to a ground of
unpatentability involved in the trial. Markets-Alert incorrectly states that
proposed claim 5 and dependent claims 6 and 7 include all of the substantive
limitations of claim 1 and that proposed independent claim 8 includes all of
the structural and functional limitations of original claim 1. Mot. to
Amend 2.
In actuality, Markets-Alert removes certain features from original
claims 1-4. For example, claim 1 recites “using the network of computers to
periodically apply the user-specified watch data.” Claim 5 and independent
claim 8 eliminate the requirement that the network of computers periodically
Case CBM2013-00005
Patent 7,941,357

20
apply the watch data. Claim 1 recites “causing a real-time notification by
the network of computers to be provided to the user via a remote
communications device.” Claim 5 and independent claim 8 eliminate the
requirement that the notification be provided to the user. Markets-Alert does
not explain how the removal of certain features is responsive to a ground of
unpatentability. In order to be responsive to a ground of unpatentability, a
proposed substitute claim only should add features to an original claim,
absent an adequate explanation otherwise. For these reasons, Markets-Alert
motion to amend fails to comply with 37 C.F.R. § 42.221(a)(2).

Proposed claims 5-8 do not represent a reasonable number of
substitute claims

The presumption is that only one substitute claim is needed to replace
each challenged claim. The presumption may be rebutted by a
demonstration of need. 37 C.F.R. § 42.221(a)(3). A desire to obtain a new
set of claims having a hierarchy of different scope typically does not
constitute a sufficient special circumstance. Absent special circumstances, a
challenged claim can be replaced by only one claim. Each proposed claim
should be traceable to an original challenged claim as a proposed substitute
claim for that challenged claim.
Here, none of the proposed claims appears to be traceable to an
original challenged claim as a proposed substitute claim for that challenged
claim. For example, original claim 1 and the dependent claims 2-4 are
method claims. Proposed independent claim 8 is a system claim that recites
numerous elements, such as a network guardian, a history database
subsystem, an alert managing subsystem, and an output connector—
Case CBM2013-00005
Patent 7,941,357

21
elements that never were recited in any of original claims 1-4. In addition,
and explained above, claim 8 removes features from original claim 1.
Markets-Alert does not explain adequately how proposed claim 8 constitutes
a substitute for any original claim. Proposed claim 8 is not traceable to any
original claim, and, therefore, is not a “substitute” for any original claim.
Each of the other claims 5, 6, and 7, likewise, is not traceable to the
challenged claim it allegedly replaces. As explained above, independent
claim 5 removes features from original claim 1. Claims 6 and 7 depend
from claim 5, and by their dependency, also are broader than claim 1 in
some respects. Markets-Alert does not explain adequately how proposed
claims 5-7 constitute substitutes for any original claims. Therefore,
substitute claims 5-8 are not proper substitute claims for challenged claims
1-4.
Moreover, Markets-Alert proposes each of claims 5, 6, 7, and 8 as a
substitute for original claim 1. Mot. to Amend 2. Markets-Alert, however,
does not demonstrate that there is need for three additional substitute claims,
beyond, for example, the one-for-one substitute claim 5 for original claim 1,
and, therefore, at least claims 6, 7, and 8 will not be considered for this
additional reason.

The motion does not show that the proposed claims 5-8 are patentable
over any prior art

A motion to amend is a motion under 37 C.F.R. § 42.20, and, thus, is
subject to the requirements of that rule. The rule includes that “[t]he moving
party has the burden of proof to establish that it is entitled to the requested
relief.” 37 C.F.R. § 42.20(c). A covered business method patent review is
Case CBM2013-00005
Patent 7,941,357

22
not a patent examination proceeding or a patent reexamination proceeding.
Like an inter partes review, a covered business method patent review is
more adjudicatory than examinational in nature. See, e.g., Abbott Labs. v.
Cordis Corp., 710 F.3d 1318, 1326 (Fed. Cir. 2013). A proposed substitute
claim, in a motion to amend, is not entered automatically and then examined.
If a patent owner’s motion to amend is granted, the claim will be added
directly to the patent, without examination. In that regard, the motion to
amend is not a rebuttal to an Office Action, as though the proceeding is a
patent examination or a reexamination. In the context of a motion to amend,
it is the patent owner that seeks entry for its proposed new claims. A patent
owner must set forth sufficient reasoning and evidence to show that it is
entitled to those claims by showing that its proposed new claims are
patentable over prior art. Markets-Alert fails to show that proposed claims
5-8 are patentable over prior art, because Markets-Alert does not account for
any prior art in its substitute motion to amend.
9
As such, the substitute
motion to amend is denied with respect to claims 5-8 for this additional
reason.
For the reasons stated above, Markets-Alert has not, in its substitute
motion to amend, set forth a prima facie case for the relief requested.
Accordingly, consideration of Bloomberg’s opposition, which solely

9
Even if the substitute motion to amend addressed the patentability of
claims 5-8 with respect to the specific references applied by Petitioner in the
Petition, e.g., Satow, S&C Review, Opening Bell, and Stutman, that would
not be sufficient to demonstrate patentability over the prior art in general,
sufficient to have the proposed claims 5-8 added to the patent, without
examination. See, e.g., Idle Free Sys., Inc. v. Bergstrom, Inc., IPR2012-
00027, Paper 66 at 33-37 (Jan. 7, 2014).
Case CBM2013-00005
Patent 7,941,357

23
addresses the proposed claims 5-8, and Markets-Alert’s reply, which solely
addresses the proposed claims 5-8, is unnecessary.
Markets-Alert’s Substitute Motion to Amend is granted with respect
to the request to cancel claims 1-4, but is otherwise denied.

C. Markets-Alert’s Motion to Exclude Evidence
Markets-Alert moves to exclude paragraphs 7, 12-15, 17, 32-34, 44,
and 46-57 of Exhibit 1043 (the “Second Kursh Decl.”) and Exhibits 1036-
1041. Exhibit 1043 was relied on by Bloomberg in support of Bloomberg’s
opposition to Markets-Alert’s substitute motion to amend. Markets-Alert’s
substitute motion to amend failed to establish a prima facie case that
proposed claims 5-8 are patentable. Therefore, there was no occasion to
reach Bloomberg’s opposition to Markets-Alert’s substitute motion to
amend or consider Exhibit 1043 in relation to Bloomberg’s opposition.
Exhibits 1036-1041 were relied on by Bloomberg in support of
Bloomberg’s opposition to Markets-Alert’s substitute motion to amend and
Bloomberg’s reply. Markets-Alert’s substitute motion to amend failed to
establish a prima facie case that proposed claims 5-8 are patentable, and,
therefore, there was no occasion to reach Bloomberg’s opposition to the
motion to amend, or consider Exhibits 1036-1041 in relation to Bloomberg’s
opposition. Markets-Alert’s patent owner response is not considered, and,
therefore, there was no occasion to reach Bloomberg’s reply, or to consider
Exhibits 1036-1041 in relation to Bloomberg’s reply.
For all of these reasons, Markets-Alert’s motion to exclude is
dismissed.
Case CBM2013-00005
Patent 7,941,357

24
III. CONCLUSION
Markets-Alert’s request for the cancellation of original claims 1-4 is
granted. Markets-Alert has not shown that it is entitled to proposed claims
5-8.
This is a final decision. Parties to the proceeding seeking judicial
review of the decision must comply with the notice and service requirements
of 37 C.F.R. § 90.2
IV. ORDER
It is
ORDERED that Markets-Alert’s request to cancel claims 1-4 is
granted;
FURTHER ORDERED that Markets-Alert’s request to add proposed
claims 5-8 is denied; and
FURTHER ORDERED that Markets-Alert’s motion to exclude
evidence is dismissed.

Case CBM2013-00005
Patent 7,941,357

25
PETITIONER:

Michael T. Rosato
Brian D. Range
Wilson Sonsini Goodrich & Rosati
mrosato@wsgr.com
brange@wsgr.com

PATENT OWNER:

Andrew Choung
Arlyn Alonzo
Glaser Weil Fink Jacobs Howard Avchen & Shapiro, LLP
achoung@glaserweil.com
aalonzo@glaserweil.com