IN RE GUAN ET AL. INTER PARTES REEXAMINATION..., 2008 WL 10682851...
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`2008 WL 10682851 (Com’r Pat.)
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`Commissioner of Patents
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`Patent and Trademark Office (P.T.O.)
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`IN RE GUAN ET AL.
`INTER PARTES REEXAMINATION PROCEEDING
`For: U.S. Patent No 6,869,799
`Control No. 95/001,045
`May 26, 2008
`Filed: May 26, 2008
`
`(For Patent Owner)
`*1 Senniger Powers LLP
`One Metropolitan Square, 16th floor
`St. Louis, Missouri 63102
`
`(For Third Party Requester
`Jeffrey B. Oster
`8339 SE 57th Street
`Mercer Island, Washington 98040
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`DECISION VACATING FILING DATE
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`This is decision in response to the third party requester‟s and the patent owner‟s replies to the
`show cause Order mailed June 24, 2008. The filing date of this request is VACATED.
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`The purpose of the show cause order was to establish the identity of the real party in interest and
`thereby determine if the request met the requirements necessary to receive a filing date. On May
`26, 2008, Troll Busters LLC (Troll Busters) filed a request for inter partes reexamination of
`patent number 6,869,799 (‟799 patent). Troll Busters named itself as the sole real party in
`interest in the request for the inter partes reexamination. However, the Office became aware of a
`website, http://www.troll-busters.com/ that raised questions as to whether the requester had
`identified the actual real party in interest. On the website, Troll Busters stated that the “Patent
`Troll will never know who or how many are behind the „hit‟.‟DD‟ This information provided the
`impetus to inquire as to what parties may be considered real parties in interest within the
`meaning of 35 USC § 311(b)(1) and 37 CFR 1.915(b)(8).
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`BACKGROUND
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`1. A request for inter partes reexamination of U.S. Patent No. 6,869,799 (“the „799 patent”) was
`filed on May 26, 2008 by third party requester Troll Busters LLC (Troll Busters) and was
`assigned control No. 95/001,045 (“the „ 1045 inter partes reexamination proceeding”). A filing
`date of May 26, 2008 had been assigned in error. The owner of the patent is Symyx
`Technologies.
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`2. The request for inter partes reexamination included PTOL- form 1465 naming Troll Busters
`as the real party in interest. In addition, requester‟s attachment to the PTOL- form 1465 also
`noted that Troll Busters was the real party in interest. The transmittal form was signed by
`registered practitioner Jeffrey Oster.
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`3. Troll Busters has a website http://www.troll-busters.com in which it promotes that its
`business purpose is to “secure freedom to operate for our customers (not clients).” Troll Busters
`further states on its website the following: “Troll Busters invalidates patents, not just any patents
`but patents being asserted by patent trolls, those ugly beasts who try to dominate the innovations
`of others.”
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`*2 4. Troll Busters‟ website further includes the following statement: “Troll Busters takes aim
`and fires in our own name. The Patent Troll will never know who or how many are behind the
`„hit‟.‟DD‟
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`5. Troll Busters also offers a “blue light special” on the same website where a party is invited to:
`“Pick any five Affymetrix or Symyx U.S. patents and Troll Busters will invalidate a sixth for
`free!”
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`6. Troll Busters filed at least two requests for inter partes reexamination. The control numbers
`for the proceedings are 95/001,045 (this proceeding) and 95/001,046. In both proceedings, Troll
`Busters was named the third party requester and the real party in interest.
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`7. On June 23, 2008, the USPTO inadvertently mailed a letter to both the requester and the
`patent owner notifying the parties that the filing date for the IP reexam proceeding 95/001,045
`was May 26, 2008. The mailing of this notification was an error in that a filing date should not
`have been established. The filing date is conditioned upon the outcome of the show cause order.
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`8. On July 9, 2008, Jeffrey Oster filed a response to the show cause order and asserted that he
`was the requester and that Troll Busters was the real party in interest. Oster (requester) named
`himself as the requester. This was a change from the initial filing in which Troll Busters was
`named as both the real party in interest and the third party requester.
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`9. In the July 9, 2008 reply, the requester stated that Troll Busters is a company that provided
`“freedom to operate services” and “is not a law firm and does not provide legal services” to
`clients. The requester further stated that Troll Busters has undertaken “projects” to file
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`reexaminations to open up market competition and broaden competition.
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`10. In the July 9, 2008 reply, the requester stated that the he controlled the content of the request
`for inter partes reexamination and sought “technical review” only to insure that each entry in
`each table in the SNQ is technically and completely accurate. The requester further asserted that
`at this time, Troll Busters plans to finance future prosecution and no decision has been made
`what future assistance will be needed.”
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`11. In the July 9, 2008 reply, the requester asserted that the web site is an obvious exercise of
`comedy commensurate with the spirit of anti-monopoly, anti-Troll, and open source community.
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`12. On July 23, 2008, the patent owner replied to the requester‟s response to the order to show
`cause. Patent owner asserts that the requester‟s response is deficient on numerous grounds.
`Patent owner asserts that requester‟s reply is deficient because it fails to identify the entity or
`entities that financed the preparation or filing of the requested papers deposited on May 26,
`2008. Moreover, patent owner asserts that the requester failed to identify any entities that
`provided technical support to assure that each entry in each table was completely accurate. In
`addition, patent owner asserts that requester failed to identify any entities that will provide input
`into prosecution of the IP reexamination.
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`*3 13. On August 5, 2008, the requester submitted a reply and in the reply admitted that Troll
`Busters is applying for foundation grants to support its efforts.1
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`RELEVANT STATUTES, REGULATIONS, AND PRACTICE
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`35 U.S.C. §§ 311 (a) and (b) provide:
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`(a) IN GENERAL.- Any third-party requester at any time may file a request for inter partes
`reexamination by the Office of a patent on the basis of any prior art cited under the provisions of
`301.
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`(b) REQUIREMENTS.- The request shall-
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`(1) be in writing, include the identity of the real party in interest, and be accompanied by
`payment of an inter partes reexamination fee established by the Director under section 41; and
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`(2) set forth the pertinency and manner of applying cited prior art to every claim for which
`reexamination is requested.
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`35 U.S.C. § 314 (c) provides:
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`(c) SPECIAL DISPATCH.- Unless otherwise provided by the Director for good cause, all inter
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`partes reexamination proceedings under this section, including any appeal to the Board of Patent
`Appeals and Interferences, shall be conducted with special dispatch within the Office. 35 U.S.C.
`§ 315 (c) provides:
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`(c) CIVIL ACTION.- A third-party requester whose request for an inter partes reexamination
`results in an order under section 313 is estopped from asserting at a later time, in any civil action
`arising in whole or in part under section 1338 of title 28, the invalidity of any claim finally
`determined to be valid and patentable on any ground which the third-party requester raised or
`could have raised during the inter partes reexamination proceedings. This subsection does not
`prevent the assertion of invalidity based on newly discovered prior art unavailable to the
`third-party requester and the Patent and Trademark Office at the time of the inter partes
`reexamination proceedings.
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`35 U.S.C. § 317 provides:
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`(a) ORDER FOR REEXAMINATION.- Notwithstanding any provision of this chapter, once an
`order for inter partes reexamination of a patent has been issued under section 313, neither the
`third-party requester nor its privies may file a subsequent request for inter partes reexamination
`of the patent until an inter partes reexamination certificate is issued and published under section
`316, unless authorized by the Director.
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`(b) FINAL DECISION.- Once a final decision has been entered against a party in a civil action
`arising in whole or in part under section 1338 of title 28, that the party has not sustained its
`burden of proving the invalidity of any patent claim in suit or if a final decision in an inter partes
`reexamination proceeding instituted by a third-party requester is favorable to the patentability of
`any original or proposed amended or new claim of the patent, then neither that party nor its
`privies may thereafter request an inter partes reexamination of any such patent claim on the
`basis of issues which that party or its privies raised or could have raised in such civil action or
`inter partes reexamination proceeding, and an inter partes reexamination requested by that party
`or its privies on the basis of such issues may not thereafter be maintained by the Office,
`notwithstanding any other provision of this chapter. This subsection does not prevent the
`assertion of invalidity based on newly discovered prior art unavailable to the third-party
`requester and the Patent and Trademark Office at the time of the inter partes reexamination
`proceedings.
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`37 CFR 1.907 provides:
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`*4 (a) Once an order to reexamine has been issued under § 1.931, neither the third party
`requester, nor its privies, may file a subsequent request for inter partes reexamination of the
`patent until an inter partes reexamination certificate is issued under § 1.997, unless authorized
`by the Director.
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`(b) Once a final decision has been entered against a party in a civil action arising in whole or in
`part under 28 U.S.C. 1338 that the party has not sustained its burden of proving invalidity of any
`patent claim-in-suit, then neither that party nor its privies may thereafter request inter partes
`reexamination of any such patent claim on the basis of issues which that party, or its privies,
`raised or could have raised in such civil action, and an inter partes reexamination requested by
`that party, or its privies, on the basis of such issues may not thereafter be maintained by the
`Office.
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`(c) If a final decision in an inter partes reexamination proceeding instituted by a third party
`requester is favorable to patentability of any original, proposed amended, or new claims of the
`patent, then neither that party nor its privies may thereafter request inter partes reexamination of
`any such patent claims on the basis of issues which that party, or its privies, raised or could have
`raised in such inter partes reexamination proceeding.
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`37 CFR 1.913 provides:
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`Except as provided for in § 1.907, any person other than the patent owner or its privies may, at
`any time during the period of enforceability of a patent which issued from an original
`application filed in the United States on or after November-29,-1999, file arequest for inter
`partes reexamination by the Office of any claim of the patent on the basis of prior art patents or
`printed publications cited under § 1.501.
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`37 CFR 1.915 provides:
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`(a) The request must be accompanied by the fee for requesting inter partes reexamination set
`forth in § 1.20(c)(2).
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`(b) A request for inter partes reexamination must include the following parts:
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`(1) An identification of the patent by patent number and every claim for which reexamination is
`requested.
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`(2) A citation of the patents and printed publications which are presented to provide a substantial
`new question of patentability.
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`(3) A statement pointing out each substantial new question of patentability based on the cited
`patents and printed publications, and a detailed explanation of the pertinency and manner of
`applying the patents and printed publications to every claim for which reexamination is
`requested.
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`(4) A copy of every patent or printed publication relied upon or referred to in paragraphs (b)(1)
`through (3) of this section, accompanied by an English language translation of all the necessary
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`and pertinent parts of any non-English language document.
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`*5 (5) A copy of the entire patent including the front face, drawings, and specification/claims (in
`double column format) for which reexamination is requested, and a copy of any disclaimer,
`certificate of correction, or reexamination certificate issued in the patent. All copies must have
`each page plainly written on only one side of a sheet of paper.
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`(6) A certification by the third party requester that a copy of the request has been served in its
`entirety on the patent owner at the address provided for in §1.33(c). The name and address of the
`party served must be indicated. If service was not possible, a duplicate copy of the request must
`be supplied to the Office.
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`(7) A certification by the third party requester that the estoppel provisions of § 1.907 do not
`prohibit the inter partes reexamination.
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`(8) A statement identifying the real party in interest to the extent necessary for a subsequent
`person filing an inter partes reexamination request to determine whether that person is a privy.
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`(c) If an inter partes request is filed by an attorney or agent identifying another party on whose
`behalf the request is being filed, the attorney or agent must have a power of attorney from that
`party or be acting in a representative capacity pursuant to § 1.34.
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`(d) If the inter partes request does not include the fee for requesting inter partes reexamination
`required by paragraph (a) of this section and meet all the requirements of paragraph (b) of this
`section, then the person identified as requesting inter partes reexamination will be so notified
`and will generally be given an opportunity to complete the request within a specified time.
`Failure to comply with the notice will result in the inter partes reexamination request not being
`granted a filing date, and will result in placement of the request in the patent file as a citation if
`it complies with the requirements of § 1.501.
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`37 CFR 1.919 provides:
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`(a) The filing date of a request for inter partes reexamination is the date on which the request
`satisfies all the requirements for the request set forth in §1.915.
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`(b) If the request is not granted a filing date, the request will be placed in the patent file as a
`citation of prior art if it complies with the requirements of § 1.501
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`A. Summary of Requester’s position
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`The requester responded to the show cause order by stating the following:
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`1). The website is not relevant to the project undertaken by Troll Busters.
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`2). Troll Busters is not a law firm and does not provide legal services to clients.
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`3). Troll Busters has undertaken projects to open up market segments competition to broader
`competition. Troll Busters is engaged in a specific project to prevent Symyx from dominating
`chemistry screening of catalyst.
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`*6 4). Troll Busters objects to the intrusion into its business affairs and objects to the inquiry
`regarding the RPI.
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`5). The requester controlled the content of the present request. The requester sought and
`obtained technical review only to insure that each entry in each table is technically and
`completely accurate.
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`6). Troll Busters plans to finance future prosecution. Troll Busters has made no decision
`regarding what future assistance will be needed.
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`7). Troll Busters filed the first reexamination against the „799 patent and therefore no public
`policy is served to deny Requester and real party in interest (Troll Busters) its right to file an
`inter partes reexamination.
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`B. Patent Owner’s position
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`1). The Office inquiry into the identity of the real party in interest is proper in that it is the
`Office‟s duty to insure that the statutory requirements are satisfied.
`
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`2). The purpose of 37 CFR 1.915(b)(8) is prospective (i.e., in order for a subsequent person
`filing an inter partes to determine whether that person is a privy in connection with the
`requirement of a certification under 37 CFR 1.915(b)(7) that the estoppel provisions of 37 CFR
`1.907 do not prohibit the inter partes reexamination).
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`3). The public policy goals of 37 CFR 1.915(b)(8) and the estoppel provisions of 35 USC 315(c)
`and 37 CFR 1.907 would be easily circumvented by naming a straw man if every first request
`for inter partes reexamination filed against a patent could avoid identifying the actual real party
`in interest.
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`4). Failure to enforce this policy would allow unnamed privies to assert invalidity in a civil
`action or file additional inter partes reexamination proceedings on the same patent on issues
`which that party or it privies, raised or could have raised in the inter partes reexamination
`proceeding.
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`5). Troll Busters is deficient in responding to the Office inquiries. Specifically/Troll Busters
`failed to address who paid the cost of the present-request for inter partes reexamination request.
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`C. Analysis and Findings
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`The Office has authority to require applicants (i.e., third party requester and real party in
`interest) to address reasonable concerns that may arise during the examination of an application
`or proceeding. One of the statutory requirements that the Office is responsible for enforcing is
`that the request for inter partes reexamination include an identification of all of the real parties
`in interest. Congress has required that the request include the identity of the real party in interest.
`See 35 USC § 311(b)(1). Accordingly, when the Office implemented the statutory scheme, the
`Office required that the request include a “statement identifying the real party in interest to the
`extent necessary for a subsequent person filing an inter partes reexamination request to
`determine whether that person is in privy.” See 37 CFR 1.915(b)(8).
`
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`*7 Moreover, if a final decision in an inter partes reexamination proceeding instituted by a
`requester is favorable to patentability of any original, proposed amended, or new claims of the
`patent, then neither that party nor its privies may thereafter request inter partes reexamination of
`any such patent claims on the basis of issues which that party, or its privies, raised or could have
`raised in such inter partes reexamination proceeding. See 35 USC § 317 and 37 CFR 1.907 (c).
`Because the naming of the real party in interest is essential to establish who is precluded from
`thereafter requesting additional inter partes reexamination of the same patent, the Office has
`established that a filing date will not be granted until the actual real party in interest is named in
`the first request for reexamination of the patent. See 37 CFR 1.915 and 1.919(a).
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`Generally, the Office will not look beyond the required statement identifying the real party in
`interest. However, where the statement related to the real party in interest is not facially
`accurate, or is ambiguous, the Office will inquire as to the identity of the actual real party (or
`parties) in interest by ordering the third party requester and/or the real party in interest identified
`in the request to show cause as to why the proceeding should be granted a filing date. A
`persuasive response to the show cause order that asserts that the request named the proper real
`party or parties in interest would establish that as filed, there was no facial inaccuracy or
`ambiguity in such identification.
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`It is noted that an ambiguity may arise from the records submitted with the request, from
`varying similar yet different identifications of the real party in interest, or may be established by
`extrinsic evidence. An example of an ambiguity from the request may include the REQUEST
`FOR INTER PARTES TRANSMITTAL FORM (SB58) naming one entity as the real party in
`interest while the detailed request names a different entity as the real party in interest.
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`Extrinsic evidence may be submitted by the patent owner to support a petition to vacate the
`filing date or the Office may use extrinsic evidence to, sua sponte, order the requester/real party
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`in interest to show cause as to why the Office should either grant a filing date if one has not be
`granted or not vacate a filing date if a filing date has been granted.
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`The present request is an example where the ambiguity concerning the real party in interest can
`be gleaned from extrinsic evidence. It is clear from extrinsic evidence that Troll Busters
`established a website where it held out a-primary function of Troll Busters is filing requests in
`their own name to maintain the anonymous nature of a party or parties. Moreover, it is further
`evident that Troll Busters website took specific aim at Symyx (Owner of „799 patent) because
`the website included the following statement: “Pick any five Affymetrix or Symyx U.S. patents
`and Troll Busters will invalidate a sixth for free!”
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`*8 Requester asserts that the Troll Buster‟s prior website is an obvious exercise of comedy
`commensurate with the spirit of the anti-monopoly, anti-troll, and open source community.
`Moreover, requester asserts that Troll Busters‟ website is not relevant to the “Project”
`undertaken by Troll Busters and was written a year ago or more prior to undertaking the present
`project. Finally, the requester argues that Troll Busters is not a law firm or a legal service
`provider. Assuming arguendo that Troll Busters arguments are correct, the Office still finds that
`there is a reasonable basis to inquire of Troll Busters as to the relation of the named real party in
`interest and other parties who may also qualify as real parties in interest regardless of whether or
`not Troll Busters is a law firm or a legal service provider because the statute requires that the
`request identify every entity that qualifies as a real party in interest.
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`Regardless of whether the requester and Troll Busters “object to the intrusion on the business
`affairs of Troll Busters, Troll Busters cannot act as a “shill” in an inter partes reexamination
`request to shield the identity of the real party or parties in interest.
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`Entities are not allowed to file a request for inter partes reexamination and name as the real
`party in interest any entity other than the actual real party in interest. An entity named as the sole
`real party in interest may not receive a suggestion from another party that a particular patent
`should be the subject of a request for inter partes reexamination and be compensated by that
`party for the filing of the request for inter partes reexamination of that patent without naming
`the party who suggest and compensated the entity for the filing of a request for inter partes
`reexamination of the patent. Similarly, an entity may not be paid, or be directed or controlled as
`to the manner in which the request for inter partes reexamination is filed for a given patent,
`without naming the party or parties who paid for, or directed/controlled, the filing of the request
`for inter partes reexamination. The naming of the real party in interest has significant legal
`consequences for the named party. See 35 USC §§ 315, 317 and 37 CFR 1.907(c). 35 USC §§
`315 and 317 were drafted as limits to the use of inter partes reexamination to avoid a perceived
`danger of patent owner harassment. One of the methods of preventing such perceived
`harassment is to prevent a requester, and its privies, from filing additional inter partes
`reexamination requests on any such patent on the basis of issues which that party, or its privies,
`raised or could have raised in the inter partes reexamination proceeding. Otherwise, as pointed
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`out by patent owner, the provisions of 35 USC § 315(c) and 37 CFR 1.907 would easily be
`circumvented by naming a straw man in every first request.
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`*9 The requester‟s response to the show cause order was not sufficient to find that Troll Busters
`is the only or actual real party in interest. The requester‟s response does not establish that 37
`CFR 1.915(b)(8) has been met. The requester has failed to assert who paid for the request in this
`proceeding. Requester only states that future financing will be paid by Troll Busters. Moreover,
`requester states that Troll Buster is undergoing a “project” to open up market segments to
`broader competition. However, Troll Busters does not identify if other individuals involved in
`this project have engaged Troll Busters to file the present request for inter partes reexamination
`and if so, how many. Moreover, Troll Busters also admits that it is “seeking” foundation grants
`to continue its work. However, the relationship betweenthe foundation grants and the filing of a
`specific request is unclear; as stated-above; a party paying for a particular patent to be the
`subject of a request for inter partes reexamination would appear to be a real party in interest.
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`Troll Busters cannot do any of the following and not identify the other entity as real party in
`interest:
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`1). Accept payment from another group, pay the requester to file the request for inter partes
`reexamination, and have itself named solely as the real party in interest.
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`2). Obtain money for foundation grants, file a “quid pro quo” request for an inter partes
`reexamination where the foundation wants reexamination on a specific patent that the
`foundation deems anti-competitive, and name itself solely as real party in interest.
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`3). Allow another entity to direct or control the content, (e.g., provide the prior patents/ printed
`publications on which the reexam is to be based) of the request whether such is termed
`“technical review” or some other phrase.
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`It should be noted that Troll Busters can file a request for ex parte reexamination and not name
`the real party in interest. The ex parte reexamination statutes reflect a different balance between
`patentee, the public and interested third parties. Anonymity is statutorily authorized in ex partes
`reexamination.
`
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`As stated in the show cause order, third party requester‟s response to the present Order to Show
`Cause must include an explanation of why the „1045 inter partes reexamination request is
`entitled to a filing date. Such explanation must unambiguously name the real party (or parties) in
`interest, for this proceeding, which includes any party or parties required to be identified as real
`parties in interest. Having failed to adequately respond to the show cause Order, the Office finds
`that the requirements of 37 CFR 1.915(b)(8) are not met. Accordingly, the request will not
`receive a filing date as specified in 37 CFR 1.919(a). Since the Office errantly established a
`filing date, the filing date is hereby vacated.
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`CONCLUSION
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`*10 1. The Office will not grant a filing date for this request for inter partes reexamination. Due
`to the errant mailing of a notification of the filing date, the Office is herby vacating the filing
`date of the reexamination proceeding.
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`2. Because the requester has not met all of the requirements of 37 CFR 1.915 and the filing date
`is being vacated, the Office will refund the filing fee in accordance with 37 CFR 1.26(c).
`
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`3. The proceeding will be terminated and the paperwork will not be further processed.
`
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`4. The Office will place the request in the patent file as a citation of prior art under 37 CFR
`1.501.
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`5. Telephone inquiries related to this decision should be directed to Kery A. Fries, Senior Legal
`Advisor, Office of Patent Legal Administration, and Office of Deputy Commissioner for Patent
`Examination Policy at (57-1) 272-7757.
`
`
`
`Brian E. Hanlon
`
`
`Deputy Director of the Office of Patent Legal Administration
`
`
`Office of Deputy Commissioner
`
`
`For Patent Examination Policy
`
`
`
`Footnotes
`
`It is noted that the submission of the rebuttal paper filed on August 5, 2008 is an inappropriate paper under 37 CFR 1.939. The
`third party requester does not have authority to submit a rebuttal response to the patent owner‟s comments filed in response to the
`requester‟s reply to the show cause order. However, the Office will waive consideration of the paper as an inappropriate paper and
`will consider the reply because the Office finds requester‟s statement interesting in that the real party in interest is applying for
`foundation grants to support its efforts.
`
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`End of Document
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`© 2016 Thomson Reuters. No claim to original U.S. Government Works.
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`2008 WL 10682851 (Com’r Pat.)
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` © 2016 Thomson Reuters. No claim to original U.S. Government Works.
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`11