Chicago Mercantile Exchange, Inc.v.5th Market Inc.

Patent Trial and Appeal Board

Mar 10, 2016

09695828 (P.T.A.B. Mar. 10, 2016)

Trials@uspto.gov Paper No. 42
571-272-7822 Entered: March 10, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________
CHICAGO MERCANTILE EXCHANGE, INC.,
Petitioner,
v.
5th MARKET, INC.,
Patent Owner.
_______________

Case CBM2015-00061
Patent 7,024,387 B1
_______________

Before KALYAN K. DESHPANDE, MICHAEL R. ZECHER, and
GEORGIANNA W. BRADEN, Administrative Patent Judges.

ZECHER, Administrative Patent Judge.

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

CBM2015-00061
Patent 7,024,387 B1

2
I. BACKGROUND
On January 14, 2015, Chicago Mercantile Exchange, Incorporated
(“CME”) filed a Petition requesting a review under the transitional program
for covered business method patents of claims 1 and 2 of U.S. Patent No.
7,024,387 B1 (“the ’387 patent,” Ex. 1001). Paper 1. Patent Owner, 5th
Market, Incorporated (“5th Market”), timely filed a Preliminary Response.
Paper 8. On July 16, 2015, we instituted this covered business method
patent review proceeding as to claims 1 and 2 of the ’387 patent. Paper 9.
On October 5, 2015, 5th Market filed a Patent Owner’s Response to
the Petition (Paper 18), along with a Motion to Amend (Paper 19). On
December 21, 2015, CME filed a Reply to the Patent Owner’s Response
(Paper 28), and an Opposition to the Motion to Amend (Paper 29). On
February 5, 2016, 5th Market filed a Reply to the Opposition to the Motion
to Amend (Paper 37). The parties requested oral argument (Papers 38, 39),
which was scheduled for March 16, 2016 (Paper 10, 6). On February 19,
2016, we granted the parties’ requests for oral argument (Paper 40).
On February 24, 2016, the parties sent a joint email correspondence to
the Board indicating that they had reached a settlement in principle and,
based on the agreed upon terms, 5th Market will submit a request for
adverse judgment under 37 C.F.R. § 42.73(b). On March 8, 2016, 5th
Market filed a Request for Adverse Judgment Under 37 C.F.R. § 42.73(b)(2)
requesting cancellation of claims 1 and 2 of the ’387 patent. Paper 41
(“Req.”).

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Patent 7,024,387 B1

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II. DISCUSSION
5th Market requests that we cancel claims 1 and 2 of the ’387 patent,
and that we enter adverse judgment against it in this proceeding under 37
C.F.R. § 42.73(b)(2). Req. 2. Based on the joint email correspondence
dated February 24, 2016, we presume that CME does not oppose 5th
Market’s request for adverse judgment.
A party may request entry of adverse judgment against itself at any
time during a proceeding. Actions construed to be a request for adverse
judgment include, among other things, cancellation or disclaimer of a claim
such that the party has no remaining claim in the trial. 37 C.F.R.
§ 42.73(b)(2). Under the circumstances presented here, we grant 5th
Market’s request for adverse judgment.

III. ORDER
In consideration of the foregoing, it is:
ORDERED that 5th Market’s Request for Adverse Judgment Under
37 C.F.R. § 42.73(b)(2) (Paper 41) is GRANTED;
FURTHER ORDERED that judgment is entered against 5th Market
with respect to claims 1 and 2 of the ’387 patent;
FURTHER ORDERED that claims 1 and 2 of the ’387 patent are
cancelled;1

1 See 37 C.F.R. § 42.80 (indicating that after the Board issues a final written
decision in a covered business method patent review proceeding, the Office
will issue and publish a certificate canceling any claim of the patent finally
determined to be unpatentable).
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Patent 7,024,387 B1

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FURTHER ORDERED that the oral argument scheduled for March
16, 2016, is no longer necessary and, therefore, is cancelled; and
FURTHER ORDERED that, because this is a Final Written Decision,
parties to this proceeding seeking judicial review of our decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

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Patent 7,024,387 B1

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For PETITIONER:

Erika H. Arner
Timothy P. McAnulty
Justin Loffredo
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
erika.arner@finnegan.com
timothy.mcanulty@finnegan.com
justin.loffredo@finnegan.com

Matthew J. Kelly
Chicago Mercantile Exchange, Inc.
Matthew.Kelly@cmegroup.com

For PATENT OWNER:

D. Richard Anderson
George S. Dolina
Birch, Stewart, Kolasch & Birch, LLP
dra@bskb.com
gsd@bskb.com

J. Gregory Whitehair
The Whitehair Law Firm, LLC
jgw@whitehairlaw.com