From: Brian Buchheit [mailto:brian.buchheit@patentsondemand.com]
`Sent: Monday, December 22, 2014 1:06 PM
`To: Oliver, Justin
`Cc: DeLucia,Frank; #AskeladdenIPR; Sean McGhie
`Subject: RE: Petition Real Party of Interest Question
`
`Justin,
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`Thank you for the information. It is helpful.
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`It did not, however, address issues of the same individuals working for both the Clearing House and for
`Askeladden. It appears that the below is stating that person X (in his role at Askeladden) made a
`decision to file the petitions on specific patents, but that the same person X also was a decision maker of
`the Clearing House, which decided to have Askeladden handle the petitions. If this occurred, your
`statements would still be true, but there would be a clear suggestion (that crossed the companies’
`boundaries through concurrent employment of the same key decision makers). It is my understanding
`that the RPX decision make it clear that the PTAB will look beyond the legal fiction of a company
`boundary to determine the actual decision makers.
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`
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`From my research on Askeladden and the Clearing House, the same people seem to be paid a salary by
`both AskeladdenIPR and the Clearing House. This issue wasn’t addressed in your comments below. You
`also didn’t indicate if there are any procedures in place to ensure that Askeladden and the Clearing
`House operate independently – given the key decision makers (even the entire board of directors) are
`employed by both companies. Can I assume for the purpose of informing the PTAB that no
`protections are in place to prevent this contamination between the two different legal entities, which
`apparently share board members completely, that share key legal advisors, and that share operating
`officers ? Are these facts correct/incorrect to your knowledge. Could you please provide me with any
`evidence that the same people are not making decisions for both companies, just wearing different
`“hats”? Is there anything in place to prevent the SAME PERSON or SAME GROUP OF PEOPLE from first
`making a decision to fund and initiate (through PQI or otherwise) an effort by Askeladden on behalf of
`the Clearing House, and then to make finer grain “official determination” on behalf of Askeladden. In
`other words, is there anything in place that preserves the “autonomy” of Askeladden’s decisions from
`being anything other than a legal fiction, as the decision makers (concurrently employed by/advising)
`the Clearing House are the same key decision makers for Askeladden?
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`
`
`With respect to your first point:
`First, none of the identified entities is a party that seeks to avoid the preclusive force of a
`previous judgment by using a nominal party in a subsequent case.
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`The preclusive force applicable to IPRs applies to the future as well as the past – if my understanding is
`correct. To my knowledge, the Clearing House represents 20 financial institutions. Are you agreeing
`that the future preclusive force of a judgment by Askeladden applies to the Clearing House? This would
`mean that if it is found that the Clearing House in reality represented the interest of a number of financial
`institutions (in this or subsequent decisions), that the preclusive force applied by the present IPRs would
`also apply to the Clearing House and any entities that are determined to be precluded by nature of the
`actions of the Clearing House. The Patent Owners would be satisfied if this is the assertion you are
`representing applies. If not, please clarify.
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`With respect to your second point:
`None of the other entities suggested that any patent be the subject of the pending IPRs
`
`Did people employed (including officers and directors) by the Clearing House suggest any of the patents
`be the subject to the pending IPRs – in the role as Askeladden employees ? Were the decision makers
`NOT employed concurrently by the Clearing House ? Did any person who is a decision maker of the
`Clearing House – also make a decision to suggestion of the patents subject to the pending IPRs, while
`functioning in a differet role as an Askeladden employee ? Please clarify.
`
`
`
`With respect to your third point:
`Third, with respect to The Clearing House Payments Company specifically, in contrast to
`Apple’s position in the RPX case, it has no specific interest in invalidating the patents at
`issue because it does not engage in any loyalty discount activities
`
`The Clearing House appears to be entirely funded by approximately 20 banks, via paid service
`fees. These banks are actively seeking patents in the same area (like Apple did) and are actively
`engaging in loyalty discount activities (parallel to the Apple situation). The Patent Owners believe that
`the Clearing House is effectively in RPX’s position, not in Apple’s position. Further, it is believed that
`Askeladden is effectively the same as the Clearing House, who should have been properly named a
`RPI. – as the SAME PEOPLE are decision makers for both companies and are CONCURRENTLY EMPLOYED
`AND PAID by both companies, to the knowledge of the Patent Owners. Is this true or false ? In
`RPX, the PTAB found that the financial connection (Apple was paying for the IPRs, like the service fees
`paid to the Clearing House by the financial institutions, which were presumably used to fund the IPRs,
`which presumably was funded routed from the Clearing House to Askaladden or was diverted from the
`Banks service fees paid to the Clearing House to Askaladden directly, to fund the IPRs). Ultimately,
`where did the funding to pay for the IPRs come from ? Did Askaladen independently (independent of
`the Clearing House/the banks represented by the Clearing House) receive funding (like EFF did in their
`case, which was found to be the proper real party of interest) … or is funding used to pay for the IPRs
`tied to the Clearing House and/or the Banks.
`
`I believe all of the above pending questions significant to resolving the issue with the RPI issue with the
`petitions. If you do not believe these are legally relevant issues – I’m interested in hearing why or
`seeing any authority on that point. If the decision makers are isolated between the Clearing House and
`Askeladden to ensure decision making autonomy despite the strong overlap of employed personnel, this
`would be highly relevant information. If there is a separate/autonomous source of funding unrelated to
`the financial institutions that support the Clearing House and/or Askeladden, this would be extremely
`useful information to help the PTAB decide any RPI issues.
`
`
`Please provide any evidence in your possession of the above, so that this can be resolved before the
`discovery phase (if possible) and so that issues related to discovery that must be decided by the PTAB
`can be minimized by cooperation.
`
`
`Very Truly Yours,
`- Brian K Buchheit for
`
`
`
`Brian K Buchheit and Sean McGhie, Patent Owners
`14955 SW 33rd Street, Davie Florida 33331
`305-761-1972
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