Paper 16
`
`
` Entered: February 17, 2015
`
`
`
`
`
`
`Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
`
`ASKELADDEN LLC,
`Petitioner,
`
`v.
`
`SEAN I. MCGHIE and BRIAN BUCHHEIT,
`Patent Owner.
`____________
`
`Cases IPR2015-00122 (Patent 8,523,063)
`IPR2015-00123 (Patent 8,523,063)
`IPR2015-00124 (Patent 8,540,152)
`IPR2015-00125 (Patent 8,540,152)
`IPR2015-00133 (Patent 8,297,502)
`IPR2015-00137 (Patent 8,297,502)1
`____________
`
`Before SALLY C. MEDLEY, JONI Y. CHANG, and
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`1 This order addresses issues that are the same in the identified cases. We
`exercise our discretion to issue one order to be filed in each case. The
`parties are not authorized to use this style heading.
`
`
`
`
` Entered: February 17, 2015
`
`
`
`
`
`
`Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
`
`ASKELADDEN LLC,
`Petitioner,
`
`v.
`
`SEAN I. MCGHIE and BRIAN BUCHHEIT,
`Patent Owner.
`____________
`
`Cases IPR2015-00122 (Patent 8,523,063)
`IPR2015-00123 (Patent 8,523,063)
`IPR2015-00124 (Patent 8,540,152)
`IPR2015-00125 (Patent 8,540,152)
`IPR2015-00133 (Patent 8,297,502)
`IPR2015-00137 (Patent 8,297,502)1
`____________
`
`Before SALLY C. MEDLEY, JONI Y. CHANG, and
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`1 This order addresses issues that are the same in the identified cases. We
`exercise our discretion to issue one order to be filed in each case. The
`parties are not authorized to use this style heading.
`
`
`
`IPR2015-00122 (Patent 8,523,063)
`IPR2015-00123 (Patent 8,523,063)
`IPR2015-00124 (Patent 8,540,152)
`IPR2015-00125 (Patent 8,540,152)
`IPR2015-00133 (Patent 8,297,502)
`IPR2015-00137 (Patent 8,297,502)
`
`
`On February 11, 2015, a conference call was held involving counsel2
`for the respective parties and Judges Medley, Chang, and Braden. The
`purpose of the call was to discuss the real party-in-interest issue raised in the
`Patent Owner Preliminary Response, filed in each proceeding.
`
`Real Party-In-Interest
`Section 312(a) of Title 35 of the United States Code provides that a
`petition filed under Section 311 may be considered only if, among other
`things, the petition identifies all real parties-in-interest. The identification of
`all real parties-in-interest helps identify potential conflicts of interest for
`Office officials, and, in inter partes review proceedings before the Office,
`helps identify any potential estoppel issue as set forth in 35 U.S.C.
`§ 315(e)(1). Whether a third party is a real party-in-interest or privy of a
`petitioner is a highly fact-dependent question. The petitioner is more likely
`to be in possession of, or have access to, evidence that is relevant to the issue
`than is a patent owner. Moreover, the ultimate burden of proof on the issue
`lies with the Petitioner. See, e.g., Atlanta Gas Light Company v. Bennett
`Regulator Guards, Inc., Case IPR2013-00453, slip op. at 6–8 (PTAB Jan. 6,
`2015) (Paper 88).
`The Petitions in these proceedings name Askeladden LLC as
`Petitioner’s real party-in-interest. See, e.g., IPR2015-00133, Paper 1.3 In its
`
`
`2 Patent Owner is represented by Mr. Brian Buchheit, one of the named
`inventors of the involved patents, who is registered to practice before the
`Office.
`3 Citations are to IPR2015-00133.
`
`2
`
`
`
`IPR2015-00122 (Patent 8,523,063)
`IPR2015-00123 (Patent 8,523,063)
`IPR2015-00124 (Patent 8,540,152)
`IPR2015-00125 (Patent 8,540,152)
`IPR2015-00133 (Patent 8,297,502)
`IPR2015-00137 (Patent 8,297,502)
`
`preliminary responses, Patent Owner argues that The Clearing House4 is also
`a real party-in-interest. Paper 10 at 54. According to Patent Owner, The
`Clearing House is comprised of various financial institutions that also may
`be real parties-in-interest. Id. Patent Owner relies on a press release
`(Ex. 2034), an article from iam-magazine (Ex. 2027), and several webpages
`from http://www.patentqualityinitiative.com in support of its argument that
`“the boundary between Askeladden and the Clearing House has been a legal
`fiction based on the evidence available.” Id. at 55. We have reviewed these
`exhibits, along with others filed by the Patent Owner, and determine that
`Patent Owner has shown sufficiently that the boundary lines are blurred
`between The Clearing House and Askeladden with respect to whether The
`Clearing House exercised or could have exercised control over these
`proceedings. See, e.g., Atlanta Gas Light Company v. Bennett Regulator
`Guards, Inc., Case IPR2013-00453, slip op. at 8–9 (PTAB Jan. 6, 2015)
`(Paper 88).
`For example, and based on the record before us, Askeladden LLC is a
`subsidiary of The Clearing House Payment Co. L.L.C. Ex. 2028, 3. Patent
`Quality Initiative (PQI), described as an “organization” (Ex. 2028, 1) and
`“under the Askeladden L.L.C., is the product of thought-leadership provided
`by The Clearing House Payments Company L.L.C.” (Ex. 2028, 2), filed six
`
`
`4 Patent Owner refers to The Clearing House and The Clearing House
`Payments Company L.L.C. interchangeably. Accordingly, reference to The
`Clearing House in this decision refers likewise to The Clearing House
`Payments Company L.L.C.
`
`3
`
`
`
`IPR2015-00122 (Patent 8,523,063)
`IPR2015-00123 (Patent 8,523,063)
`IPR2015-00124 (Patent 8,540,152)
`IPR2015-00125 (Patent 8,540,152)
`IPR2015-00133 (Patent 8,297,502)
`IPR2015-00137 (Patent 8,297,502)
`
`inter partes reviews against Loyalty Conversion Systems, presumably the
`proceedings we have before us. Ex. 2034. Patent Owner directs attention to
`evidence that describes Sean Reilly, who is General Counsel of Askeladden
`L.L.C., as directing the Patent Quality Initiative. He also is Senior Vice
`President and Associate General Counsel for The Clearing House Payments
`Company L.L.C. which is described as supporting PQI. Ex. 2033, 1. Such
`exemplary evidence tends to support Patent Owner’s argument that the
`boundary between Askeladden and The Clearing House with respect to
`control over these proceedings is not clear.
`Based on the evidence before us, we authorize Petitioner to file a
`reply to Patent Owner’s Preliminary Response for the sole purpose of
`addressing the real party-in-interest issue. Petitioner may present evidence
`to support its apparent position that Askeladden is the sole real party-in-
`interest. Such evidence may include, but is not limited to, a declaration from
`an officer of Askeladden testifying to the events that led up to the filing of
`the petitions, such as funding, who decided to file the petitions, and whether
`any party other than Askeladden controlled, or could have controlled, the
`petitions in any aspect. Petitioner is directed to the following Board
`decisions that address real party-in-interest, and for ascertaining the type of
`evidence it may want to submit: GEA Process Engineering, Inc. v. Steuben
`Foods, Inc., Case IPR2014-00041 (PTAB Dec. 23, 2014) (Paper 140); and
`Atlanta Gas Light Company v. Bennett Regulator Guards, Inc., Case
`IPR2013-00453 (PTAB Jan. 6, 2015) (Paper 88).
`
`4
`
`
`
`IPR2015-00122 (Patent 8,523,063)
`IPR2015-00123 (Patent 8,523,063)
`IPR2015-00124 (Patent 8,540,152)
`IPR2015-00125 (Patent 8,540,152)
`IPR2015-00133 (Patent 8,297,502)
`IPR2015-00137 (Patent 8,297,502)
`
`
`Alternatively, if upon review of Petitioner’s records, Petitioner
`determines that there are other real parties-in-interest to these proceedings,
`Petitioner may forgo a reply and instead file an updated notice under 37
`C.F.R. § 42.8(a)(3). We would consider such updated notification to be a
`correction to incomplete petitions filed and adjust the filing dates accorded
`the petitions. See 37 C.F.R. § 42.106. Correcting a petition after institution
`may not be feasible. See, e.g., Atlanta Gas Light Company v. Bennett
`Regulator Guards, Inc., Case IPR2013-00453, slip op. at 13–14 (PTAB Jan.
`6, 2015) (Paper 88). Lastly, to minimize burden on the Board and
`unnecessary delay, Petitioner is encouraged to correct its Petitions at the
`early stage of the proceedings, and should not submit the request for
`correction as a contingency relief.
`
`
`Order
`
`It is
`ORDERED that Petitioner is authorized to file a reply to Patent
`Owner’s Preliminary Responses by February 23, 2015 in accordance with
`this order;
`FURTHER ORDERED that Petitioner alternatively, may file an
`updated notification in accordance with 37 C.F.R. § 42.8(a)(3) and this
`order, for the purpose of updating Petitioner’s real party-in-interest.
`
`5
`
`
`
`
`
`IPR2015-00122 (Patent 8,523,063)
`IPR2015-00123 (Patent 8,523,063)
`IPR2015-00124 (Patent 8,540,152)
`IPR2015-00125 (Patent 8,540,152)
`IPR2015-00133 (Patent 8,297,502)
`IPR2015-00137 (Patent 8,297,502)
`
`
`
`PETITIONER:
`Robert H. Fischer
`Frank A. DeLucia
`Stephen Yam
`Justin Oliver
`Fitzpatrick, Cella, Harper & Scinto
`askeladdenIPR@fchs.com
`
`Brian Buchheit
`bbucheit@gmail.com
`Sean McGhie
`sean.mcghie@me.com
`
`6
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