`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`OFFICE OF THE GENERAL COUNSEL
`
`August 7, 2013
`
`VIA U.S. MAIL
`
`
`
`Re:
`
`Freedom oflnformation A ct (FOIA) Request N0. F—13—00218
`
`Dear—
`
`The United States Patent and Trademark Office (USPTO) FOIA Office received your e-mail
`dated July 09, 2013 in which you requested, under the provisions of the Freedom of Information
`Act, 5 U.S.C. § 552, a copy of:
`
`Re: USPTO FOIA Request re Leader Technologies, Inc. v. Facebook, Inc, U.S. Pat No.
`7,139, 761 and 3” Reexam No. 95/001,261
`
`(1) Patent Office Employee Conflict of Interest Information: I request the following
`information regarding the U.S. Patent Office employees listed following:
`
`(a) Full biographical disclosures, including updates, from Jan. 1, 2004 ~ present;
`(b) Any and all conflicts of interest disclosures made by the person, including rationale
`and description of the matter, from Jan. 1, 2004 — present;
`(0) Any and all recusals by the person, including rationale and description of the matter,
`from Jan. 1, 2004 ~ present; and
`(d) All required disclosures of financial holdings from Jan. 1, 2004 — present.
`
`U.S. Patent Office employees for whom the information is requested:
`
`Former Director David J. Kappos
`(i)
`Deputy FOIA Counsel Kathryn Siehndel
`(ii)
`Administrative Judge Stephen C. Siu
`(iii)
`Administrative Judge James R. Hughes
`(iv)
`Administrative Judge Meredith C. Petravick
`(v)
`Administrative Judge Alan R. MacDonald
`(vi)
`(vii) Administrative Judge Catherine Timm
`(viii) Administrative Judge Jackie W. Bonilla
`(ix)
`Administrative Judge Jason V. Morgan
`
`Voip-Pal Ex. 2059
`Voip-Pal Ex. 2059
`IPR2016-01198 and IPR2016-01201
`IPR2016-01198 and IPR2016-01201
`
`

`

`Administrative Judge Mike Strauss
`(x)
`Administrative Judge George Best
`(xi)
`(xii) Administrative Judge Matt Clements
`(xiii) Administrative Judge Lynne Pettigrew
`(xiv) Administrative Judge Bart A. Gerstenblith
`(xv) Administrative Judge Kit Crumbley
`(xvi) Administrative Judge Stacey White
`(xvii) Administrative Judge Hung J. Jung
`
`(2) A.F.L.C.T.A.C.A.F.C. (Assoc. of Former Law Clerks and Technical Assistants for the
`United States Court of Appeals for the Federal Circuit).
`
`(a) Complete list of patent office employees who are/have been a member and/or
`participated in events sponsored by this organization, from 2008 to the present.
`(b) Program materials created by or on behalf of this organization and made available to
`patent office employees, in any form.
`
`(3) Executive Communication Privilege.
`
`Any and all Freedom of Information Act (FOIA) inquiries, Congressional inquiries, and
`Inspector General inquiries to the U.S. Patent Office where executive communication
`privilege was invoked (see Loving v. Dep ’t ofDefense, 550 F.3d 32, 37 (DC. Cir 2008
`and related statutes) to prevent disclosure of the information requested, from Jan. 1, 2004
`— present.
`
`In our July 9, 2013 telephone call to clarify this request, you indicated that you intended your
`requests to be limited to records related to the subject line of your reguest, regarding “Leader
`Technologies, Inc. v. Facebook, Inc., U.S. Pat. No. 7,139,761 and 3r Reexam No. 95/001,261,”
`where applicable.
`
`Item I
`
`Regarding Item 1 of your request, the USPTO identified 67 pages of documents that are
`responsive to parts (a), (b), and (c). A copy of this material is enclosed. There are no records for
`David Kappos or Kathryn Siehndel. Records concerning required disclosures of financial
`holdings, part (d) of the request, are withheld in full pursuant to Exemption (b)(6) of the FOIA.
`5 U.S.C. § 552(b)(6).
`
`'1‘he financial disclosures are withheld in full pursuant to Exemption (b)(6) of the FOIA, which
`permits the withholding of “personnel and medical files and similar files the disclosure of which
`would constitute a clearly unwarranted invasion of personal privacy.” 5 U.S.C. § 552(b)(6). The
`term “similar files” has been broadly construed to cover “detailed Government records on an
`individual which can be identified as applying to that individual.” _S_§§ Dep’t of State v.
`Washington Post, 456 US. 595, 601 (1982). Exemption (b)(6) requires a balancing of an
`individual’s right to privacy against the public’s right to disclosure. fl Dep’t of the Air Force
`
`v. Rose, 425 U.S. 352, 372 (1976); Multi Ag Media LLC v. USDA, 515 F.3d 1224, 1228 (DC.
`
`

`

`Cir. 2008). The burden is on the requester to establish that disclosure would serve the public
`interest. S_ee Bangoura v. Dep’t of the Army, 607 F. Supp. 2d 134, 148-49 (D.D.C. 2009).
`
`Here, the requested information is directly tied to an individual’s personal financial history, is
`part of USPTO personnel files, and is information in which individuals have a significant privacy
`interest. Release of personal financial information could result in fraud or abuse by unauthorized
`individuals. Further, the withheld information does little to shed light or contribute significantly
`to public understanding of the operations or activities of the USPTO. When balancing the public
`interest of release against individual privacy interest, the Supreme Court has made clear that
`information that does not directly reveal the operations or activities of the federal government
`fall outside the ambit of the public interest. S_e_e Dep’t of Justice v. Reporters Comm. for
`Freedom of the Press, 489 U.S. 749, 775 (1989). Your FOIA request does not assert a public
`interest that outweighs the privacy interest, nor is a public interest otherwise evident. Since the
`privacy interest in this information is greater than any identifiable public interest, the FOIA
`requires that the information be withheld.
`
`Item 2
`
`Regarding Item 2, part (a) of your request, the USPTO has no records. As for part (b), the
`USPTO requires clarification of this portion of the request. As it currently reads, your request
`does not provide sufficient information to permit the agency to formulate a reasonable search for
`responsive documents. We kindly request a clarification of the records you seek, E 37 C.F.R.
`§ 102.4(b).
`
`The FOIA imposes two key requirements on requesters: they must “reasonably describe” the
`records sought and must make requests in accordance with an agency’s published FOIA
`regulations. 5 U.S.C. § 552(a)(3)(A). A description of a requested record is sufficient if it
`enables a professional agency employee familiar with the subject area to locate the record with a
`“reasonable amount of effort.” E Frank v. U.S. Dep’t of Justice, 941 F. Supp. 4, S (D.D.C.
`1996) (stating that an agency is not required to “dig out all the information that might exist, in
`whatever form or place it might be found, and to create a document that answers plaintiff 3
`questions”).
`
`Your request fails to identify possible custodians, a system or records, or a subject matter for the
`records sought in Item 2, part (b). Defining a specific universe of records desired should provide
`serviceable search parameters for USPTO subject-matter experts and help us respond most
`effectively and efficiently to your request. If you wish to pursue this part of your request, please
`resubmit your request and more clearly define the records you seek by identifying potential
`custodians, systems of records, subject matter, or other limiting parameter.
`
`Item 3
`
`Regarding Item 3 of your request, the USPTO has no records.
`
`

`

`You have the right to appeal this initial decision to the Deputy General Counsel, United States
`Patent and Trademark Office, PO. Box 1450, Alexandria, VA 22313-1450. An appeal must be
`received within fl calendar days from the date of this letter. E 37 C.F.R. § 102.10(a). The
`appeal must be in writing. You must include a copy of your original request, this letter, and a
`statement of the reasons that form the basis for the appeal. Both the letter and the envelope must
`be clearly marked “Freedom of Information Appeal.”
`
`Sincerely,
`
`Kathryn Siehndel
`USPTO FOIA Officer
`Office of General Law
`
`Enclosure
`
`

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`Page 1
`
`

`

`Judge George C. Best
`
`
`
`Judge George C. Best was a partner with Foley & Lardner before
`coming to the Board. He is a graduate of the University of Chicago
`(S.B., chemistiy, with honors; S.B., biological chemistry, 1989);
`the California Institute of Technology (Ph.D., chemistry, 1995); and
`the Law School of the University of Chicago (J .D., with honors,
`1997), where he was the managing editor of the University of Chicago
`Legal Forum. Before joining Foley & Lardner, he was a law clerk for
`the Hon. Randall R. Rader of the U.S. Court of Appeals for the Federal
`Circuit. Judge Best was appointed to the Board of Patent Appeals
`and Interferenees in February 2012.
`
`

`

`
`
`BE IT KNOWN THAT, effective January 1, 2012, upon selection by the Secretary of Commerce of the
`Government of the United States of America,
`
`
`Jacqueline D. Wright Bonilla, Esquire
`
`
`was appointed as an Administrative Patent Judge to decide appeals arising from adverse decisions of Examiners
`at the United States Patent and Trademark Office, to determine priority in interferences, and to help implement
`
`
`and conduct proceedings under the America Invents Act of 20] 1. The aforesaid Judge Bonilla is a graduate of
`the University of Virginia Law School, holds a Doctor of Philosophy degree in Cellular and Molecular
`Pharmacology from the University of Virginia, and a Bachelor of Arts degree in Biochemistry from the
`
`University of California, Berkeley.
`
`
`Judge Bonilla‘s extensive career in patent law began with practice at Finnegan, Henderson Farabow, Garrett 81:
`
`
`
`of Appeals for the Federal Circuitin Washington, DC before becoming a partner at Foley & Lardner, LLP,
`specializingin biotechnology and phannaceuticals. Judge Bonilla has published numerous articles1n legal and
`medical journals and magazineson molecular pathology and gene patenting, among other topics, and was a
`
`
`featured biotechnology commentator on television.
`
`- .
`r.- .EWWWWWWK’JEMW
`
`
`
`
`

`

`
`
`
`
`Electrical Section Judge Biographies
`
`Judge Gregg Anderson .
`
`.
`
`.
`
`Judge Justin T. Arbes has a BS. in Computer Science from
`Michigan State University and a J.D. from the University of
`Illinois College of Law. His background is primarily in
`software design and development. During and after college,
`he worked for Lycos, two startup software companies, and
`the FBI. He clerked for the Honorable Avern Cohn on the
`
`U.S. District Court for the Eastern District of Michigan, and
`then practiced patent and general commercial litigation at
`Arnold & Porter in Washington, DC. For the last five years,
`Justin practiced patent litigation and prosecution at Hunton &
`Williams in Washington, DC.
`
`Judge James Arpin earned his Bachelor of Applied Science
`and his Bachelor of Science in Economics (Finance) from the
`University of Pennsylvania in 1981 and graduated from the
`Boston University School of Law in 1989. Upon completion
`of his undergraduate education, Judge Arpin was
`commissioned as an Ensign in the US. Navy and served two
`division office tours aboard U.S. combatant ships: first, as
`the Missile Officer and Combat Information Center and
`
`Electronic Warfare Officer on U.S.S. Leftwich (DD 984)
`and, later, as the Damage Control Assistant on U.S.S. Horne
`(CG 30). After leaving the US. Navy and following law
`School, Judge Arpin practiced patent law at Sutherland,
`Asbill & Brennan until 1992 and, thereafter, at Baker Botts
`L.L.P., where he became a partner. While at Baker Botts,
`Judge Arpin earned a Masters in Electrical Engineering from
`the Johns Hopkins University. In private practice, Judge
`Arpin has handled a wide range of patent prosecution,
`licensing, and opinion matters in the mechanical, business
`methods, plant, and electrical technologies and has been
`involved in various 1P litigation matters.
`
`Page I of 30
`
`

`

`
`
`
`
`Electrical Section Judge Biographies
`
`Judge Bradley W. (Bill) Baumeister received his B.S. in
`Nuclear Engineering from the University of Cincinnati. He
`worked as a Systems Engineer and Test Engineer at
`Commonwealth Edison’s Quad Cities Nuclear Power Station
`in Cordova, Illinois. Judge Baumeister is a graduate of the
`University of Iowa College of Law, where he served as a
`member of the Journal of Transnational Law and
`
`Contemporary Problems. Following law school he worked
`for West Publishing, drafting bar review study guides. He
`next worked as a Patent Attorney at Litman Law Offices,
`prosecuting patent applications and supervising the firm’s
`patent search department. Judge Baumeisterjoined the
`USPTO in 1998, working as a Patent Examiner and
`Supervisory Patent Examiner in the areas of semiconductor
`devices and manufacturing and nanotechnology. He received
`a Department of Commerce Bronze Medal Award in 2006
`for his work in establishing the USPTO’s Classification
`Schedule for Nanotechnology. Judge Baumeisterjoined the
`BPAI in 2008. He is a member of the Giles S. Rich
`
`American Inn of Court and a Senior Member of the IEEE.
`
`Judge Barbara A. Benoitjoins the BPAI after being a
`principal at Fish & Richardson and serving as a law clerk to
`the Honorable Daniel M. Friedman of the United States
`
`Court of Appeals for the Federal Circuit. Judge Benoit also
`completed a clerkship with the United States Court of
`Federal Claims. After leaving Fish & Richardson and before
`joining the Board, Judge Benoit was a principal at Booz
`Allen Hamilton and ran its technology group providing
`information technology consulting to the National Institutes
`of Health.
`
`She earned a J.D. with honors from the George Washington
`University Law School where she was a member of the
`George Washington University Law Review and the Order of
`the Coif. Judge Benoit also earned a PhD. in Information
`Technology and an MS. in Systems Engineering from the
`School of Information Technology and Engineering at the
`
`Page 2 of30
`
`

`

`
`
`Electrical Section Judge Biographies
`
`George Mason University. Judge Benoit is a member of the
`Virginia and District of Columbia Bars, and is registered to
`practice before the USPTO. Prior to attending law school,
`Judge Benoit worked for approximately ten years in the area
`of information technology consulting, which included
`operating her own small consulting firm.
`
`Judge Jennifer S. Bisk joins the BPAI from her most recent
`position as a patent litigation associate at Sterne, Kessler,
`Goldstein 8r. Fox. Prior to that, she was a Law Clerk to the
`Honorable Richard Linn with the United States Court of
`
`Appeals for the Federal Circuit. Judge Bisk also completed a
`clerkship with the United States Court of Federal Claims, and
`has prior experience as an associate at Crowell & Moring in
`Washington, DC, and Cooley Godward Kronish LLP. She
`earned a J .D., summa cum laude, from George Mason
`University School of Law, and holds a MS. in Computer
`Science from Stanford University and a Bachelor of
`Engineering, Computer Science and Electrical Engineering,
`cum laude, from Vanderbilt University. Prior to law school,
`Judge Bisk worked for approximately ten years as a software
`developer for several small startup software companies,
`Microsoft Corporation, and NASA.
`
`
`3 Judge Scott R. Boalick was appointed to the Board in 2007.
`
`He is the Lead Judge for the Electrical H Section and an
`
`.
`_ Acting Lead Judge for the Electrical 1 Section. Prior to
`
`1 'oining the Board, Judge Boalick served as a patent attorney
`
`with the Department of the Navy at Mo different
`
`laboratories. Before that, he was an associate at Fish &
`Richardson and served as a law clerk to the Honorable Alvin
`
`A. Schall of the United States Court of Appeals for the
`Federal Circuit. Judge Boalick received a J.D., magna cum
`laude, from the Georgetown University Law Center where he
`was a Notes and Comments Editor of The Georgetown Law
`Joumal. He received both a M.S.E. in Systems Engineering
`and a ESE. in Electrical Engineering, magna cum laude,
`
`Page 3 of 30
`
`

`

`Electrical Section Judge Biographies
`
`from the University of Pennsylvania. He is a member of the
`Virginia and District of Columbia Bars, and is registered to
`practice before the USPTO. Prior to attending law school,
`Judge Boalick worked as a radar systems engineer for
`Technology Service Corporation. He also served as an
`officer in the US. Navy where he was the Ship's Electrician,
`Communications Officer, and Fire Control Officer aboard the
`USS Mobiie Bay (CG-S3) and an instructor at the Surface
`Warfare Officer School.
`
`Judge Patrick Boucher holds a PhD. in Physics from
`Queen’s University (Canada) and a J .D. from Touro College,
`where he graduated as valedictorian. He joins the Board
`from Marsh, Fischmann & Breyfogle LLP, and was
`previously a partner at Townsend and Townsend and Crew
`LLP and an associate with Pennie & Edmonds LLP; his legal
`practice focused primarily on patent prosecution, with
`particular emphasis in the areas of optics, acoustics,
`semiconductor processing, and telecommunications. Prior
`to attending law school, Judge Boucher acted as a senior
`editor of Physical Review B for seven years after completing
`a postdoctoral fellowship at the Continuous Electron Beam
`Accelerator Facility (now the Thomas Jefferson National
`Accelerator Facility) in Newport News, Virginia. He is
`licensed to practice law in Colorado and New York.
`
`_
`Judge Gene Branch received his BS in Electrical
`Engineering from Louisiana State University and his JD from
`the University of Denver Sturm College of Law. Prior to law
`school, Judge Branch worked in the aerospace industry, first
`as an Air Force officer designing and building infrastructure
`for Titan space launch rockets, then as an engineer at
`Lockheed Martin working on a number of space launch
`programs. As a patent agent while attending law school,
`Judge Branch worked at Displaytech, a pre—IPO
`manufacturer of liquid crystal microdisplays. Judge Branch
`became a partner in private practice while at Townsend and
`
`Page 4 of 30
`
`
`
`
`
`

`

`
`
`Electrical Section Judge Biographies
`
`Townsend and Crew LLP then joined Perkins Coie as a
`partner where he initiated Perkins Coie’s patent prosecution
`practice into Denvrrr, Colorado. Judge Branch holds an MS
`in Environmental Management and an MBA. He is licensed
`to practice in Colorado, as well as before the United States
`Patent and Trademark Office.
`
`Judge Hung H. Bui graduated from the Washington College
`of Law, American University in 1994 and earned his BS. in
`Electrical & Computer Engineering with a minor in
`Judge
`International Affairs from Drexel University in 1990.
`Bui started as a patent examiner in Group 230 and a student
`associate at a patent boutique in Washington DC, While
`attending law school at night. Subsequently, Judge Bui
`served as a partner at Antonelli, Teny, Stout & Kraus, LLP
`and a founding partner at Stein, McEwen & Bui LLP and Bui
`Garcia—Zamor. In private practice since 1991, Judge Bui has
`handled a wide range of electrical and computer technologies
`and all aspects of patent practice, including patent
`preparation, prosecution, reissue, reexamination, interference
`and appeals before the U.S. Court of Appeals for the Federal
`Circuit, patent portfolios, opinions and patent litigation
`before the International Trade Commission and District
`
`In addition, Judge Bui has organized comprehensive
`Courts.
`IP training programs, trained and lectured extensively at
`seminars and conferences in U.S. and Asia regarding U.S.
`patent law and practice.
`
`
`, udge Justin Busch has a B.S.E. in Electrical Engineering
`
`I and a B.S.E. in Computer Engineering from the University of
`
`Michigan. He has worked for Ford Motor Company,
`
`' Advanced Micro Devices, Hewlett-Packard, and KETL
`
`Internet Consulting. Justin worked as a software engineer,
`
`primarily designing and developing business-to—business
`
`enterprise systems. He attended the Northwestern University
`
`.3 School of Law where he earned his JD. and was a founding
`board member of the Northwestern Journal of Technology
`
`Page 5 of30
`
`

`

`Electrical Section Judge Biographies
`
`and Intellectual Property. Justin has worked at Katten,
`Muchin Rosenman and Banner & Witcoff, where he
`practiced various aspects of intellectual property law,
`focusing primarily on patent prosecution and litigation. Most
`recently, Justin started his own firm, where he continued to
`work on intellectual property matters and also expanded his
`practice to include commercial litigation.
`
`
`
`-
`
`Judge St. John Courtenay III received his Bachelor of
`Science with honors in Computer Science from the
`, University of Alabama in Huntsville (magna cum laude),
`E;
`including completion of both a minor in Mathematics, and a
`I second optional minor in Electrical and Computer
`Engineering. At UAH, he was also member of Upsilon Pi
`Epsilon, the Honor Society in the Computing Sciences. He
`also holds a Master of Business Administration degree from
`George Mason University (Fairfax, VA), and a J.D. degree
`from the Washington College of Law, American University
`(Washington, DC). He is a member of the District of
`Columbia Bar and is also a graduate of the Berklee College
`of Music (Boston, MA, 1977). Judge Courtenay joined the
`Board as a Patent Attorney in 2006 and was appointed to the
`position of Administrative Patent Judge in March 2007.
`Prior to joining the Board, he was a (38—1 5 Examiner in the
`USPTO Central Reexamination Unit. Before joining the
`Central Reexamination Unit, he was a Primary Patent
`Examiner in Technology Center 2100. In August 2001, he
`received the Department of Commerce Bronze Medal Award
`as a Primary Examiner. Prior to joining the USPTO in 1994,
`he worked as a computer programmer (primarily assembly
`language, C, and C++) for a number of small startup
`companies in the Huntsville, AL area.
`
`Page 6 of3ll
`
`

`

`
`
`
`
`Electrical Section Judge Biographies
`
`Judge Eric B. Chen received a Sc.B. (with honors) and a
`PhD. from BrOWn University in materials engineering. He
`also received a J .D. from the Arizona State University
`College of Law (now Sandra Day O’Connor College of
`Law), where he was a senior editor of Jurimetrics. During
`law school, Judge Chen was a legislative legal intern for the
`Democratic Staff Counsel in the Arizona State Legislature
`and was a judicial extern for the Honorable Stephen M.
`McNamee of the US. District Court. Judge Chen then
`served as a patent examiner in Technology Center 1700,
`where he examined applications related to semiconductor
`manufacturing. He was an associate in the materials science
`practice group of Buchanan, Ingersoll & Rooney PC. Judge
`Chen also served as a patent attorney at the Board in the
`contested cases section prior to his appointment as a Judge.
`Before attending law school, he worked a ceramics engineer
`for Saint—Gobain Corporation and a chemistry researcher at
`the University of Massachusetts. Judge Chen is a member of
`the State Bar of Arizona.
`
`Judge Matthew R. Clements was appointed to the Board in
`2013. He is assigned to the Electrical 11 Section. Prior to
`joining the Board, Judge Clements was an associate at Ropes
`& Gray LLP, where he litigated patents in district court and
`in the ITC, as well as prosec