Final Written Decision (Motion to Amend) CBM2013-00005


Takeaway: Patent Owner should clearly indicate in the brief, if original claims are only to be canceled if the proposed substitute claims are accepted. Even if Patent Owner is canceling original claims, the Patent Owner response cannot be used to present requirements for a Motion to Amend. A Motion to Amend should include a clear indication of what original claim a proposed claim is to be substituted for and how that claim is responsive to a ground of unpatentability, support in the specification for the entire claim, not just the added limitations, and an explanation of why the substitute claims are patentable over any known prior art.

In its Order, the Board granted Patent Owner’s request to cancel claims 1-4, denied Patent Owner’s request to add proposed claims 5-8, and dismissed Patent Owner’s motion to exclude evidence.

The ’357 Patent generally relates to a trading system that monitors stock data and provides notification to a remote device using a network based system. The Board originally instituted review of claims 1-4 based upon anticipation of the claims by four separate references. Subsequent to institution, Patent Owner filed both a patent owner response and a substitute motion to amend requesting cancellation of claims 1-4 and addition of proposed claims 5-8. The Board found that because the patent owner response did not address the grounds for unpatentability with respect to claims 1-4 and instead addressed the proposed claims 5-8, it did not comply with 35 U.S.C. § 326(a)(8) and 37 C.F.R. § 42.220(a), and instead was an unauthorized extension of Patent Owner’s motion to amend. Therefore, the Board did not consider the patent owner response or Petitioner’s reply.

The Board then noted that Patent Owner’s motion to amend requested cancellation of claims 1-4 without any contingency. During oral argument, counsel for Patent Owner stated that the cancellation was contingent upon the Board’s determination with respect to the patentability of claims 1-4, but could not explain where it was explicitly stated. Therefore, the Board granted Patent Owner’s request for cancellation of claims 1-4.

The Board then turned to proposed claims 5-8 and provided multiple reasons for denying the motion to amend. First, the Board found that Patent Owner did not make a sufficient showing of written description support for the proposed claims because Patent Owner only addressed where added terms or phrases were found in the specification instead of showing support for the entire claim. Further, Patent Owner did not sufficiently construe new terms. The Board, citing to Federal Circuit law, also found that where claims were broadened, Patent Owner did not explain how the specification supported the broadening of the claim. Second, the Board held that Patent Owner did not show how the proposed claims are responsive to a ground of unpatentability involved in the trial. Third, the Board found that the proposed claims did not represent a reasonable number of substitute claims, because none of the proposed claims is traceable to an original challenged claim. Finally, the Board stated that Patent Owner does not show that the proposed claims are patentable over any prior art. The Board emphasized that it is the Patent Owner’s obligation to show that the proposed claims are patentable over any prior art, not just the prior art that was applied by the Petitioner in the Petition.

The Board also dismissed Patent Owner’s motion to exclude Petitioner’s evidence on the ground that the evidence was not considered by the Board.

Bloomberg Inc., Bloomberg L.P., Bloomberg Finance L.P., The Charles Schwab Corp., Charles Schwab & Co., Inc., E*Trade Fin. Corp., E*Trade Secs. LLC, E*Trade Clearing LLC, OptionsXpress Holdings Inc., OptionsXpress, Inc., TD Ameritrade Holdings Corp., TD Ameritrade, Inc., TD Ameritrade IP Co., In., and ThinkorSwim Grp. Inc. v. Markets-Alert Pty Ltd., CBM2013-00005
Paper 71: Final Written Decision
Dated: March 26, 2014
Patent 7,941,357
Before: Jameson Lee, Sally C. Medley, and Joni Y. Chang
Written by: Medley
Related Litigation: Various cases before the U.S. District Court for the District of Delaware