Filed on behalf of: Patent Owners
`
`PROTECTIVE ORDER MATERIAL
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Askeladden LLC (Petitioner) v. Sean McGhie and Brian K Buchheit (Patent
`
`Owner)
`
`Case IPR20 15-00124
`
`U.S. Patent No. 8,540,152
`
`PATENT OWNERS MOTION FOR DISCOVERY AUTHORIZATION
`
`1PR2015-00124
`ASKELADDEN LLC v. SEAN MCGHIE AND BRIAN BUCHHEIT
`
`
`
`PROTECTIVE ORDER MATERIAL
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Askeladden LLC (Petitioner) v. Sean McGhie and Brian K Buchheit (Patent
`
`Owner)
`
`Case IPR20 15-00124
`
`U.S. Patent No. 8,540,152
`
`PATENT OWNERS MOTION FOR DISCOVERY AUTHORIZATION
`
`1PR2015-00124
`ASKELADDEN LLC v. SEAN MCGHIE AND BRIAN BUCHHEIT
`
`
`
`PROTECTIVE ORDER MATERIAL
`
`Patent Owners submit this request for additional discovery in the referenced
`
`IPR (i.e., the Proceeding). The requested additional discovery is to receive
`
`additional evidence believed to show that the boundary lines are blurred
`
`sufficiency between owning banks of the Clearing House Payments Company,
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`referred to hereafter as Member Banks, and the Clearing House Association, LLC
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`(referred to collectively hereafter as Alleged RPI) with respect to the Proceedings
`
`and Askeladden LLC and the Clearing House Payments Company LLC (referred to
`
`collectively hereafter as Acknowledged RPI) such that the Alleged RPI (currently
`
`non-parties) is a real party-in-interest having privity with the Petitioner.
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`1. Patent Owners Request Additional Discovery Regarding Concurrent
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`Employment between Acknowledged RPI and Alleged RN
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`Patent Owners request additional discovery for names and roles of each
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`individual employee/officer/director of the Acknowledged RPI who is an
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`employee/officer/director of the Alleged RPI. This request is confined to time
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`periods between September 2014 and May 2015.
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`The above additional discovery is in the interest of justice. Regarding the first
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`Garmin factor, the requested additional discovery in more than a mere allegation
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`and is useful. The Clearing House (TCH not PAYCO) formed the PQI (ex 2033)
`
`that is directed by General Counsel for Askeladden LLC (ex 2033). TCH
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`1PR2015-00124
`ASKELADDEN LLC v. SEAN MCGHIE AND BRIAN BUCHHEIT
`
`
`
`PROTECTIVE ORDER MATERIAL
`
`explicitly includes the Clearing House Association LLC (Ex 2033), which provides
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`thought leadership for the PQI. Leadership for the PQI (Ex 2029) overlaps with
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`leadership of the TCH (ex 2031, 2032), which includes the Clearing House
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`Association LLC (ex 2032 - specifically Jill Hershey, Rob Hunter) and the
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`PAYCO (ex 2031— specifically Dave Fortney and Al Wood). TCH intermixes
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`executives of the Clearing House Payments Company LLC and the Clearing House
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`Association LLC on its website (ex 2033). TCH explicitly lists its owner banks on
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`its Web site (ex 2051). The PQI lists amicus Briefs filed by both the Clearing
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`House Association LLC and Askelladen LLC (ex 2052). Nearly identical amicus
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`briefs on the PQI list have been filed by the Clearing House Association LLC and
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`Askellanden LLC (ex 2053: showing a redline between two briefs filed 12 days
`
`apart - same firm; nearly identical; one by the Clearing House Association LLC
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`and the other by Askelladden LLC).
`
`Askeladden LLC, when submitting amicus briefs under the PQI emphasizes its
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`affiliation with the Clearing House Association LLC and with Member Banks (ex
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`2050, pg 1) and emphasizes that the interests of its owner banks are being
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`represented. Askeladden LLC when submitting Amicus briefs emphasizes the
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`Member Banks employs over 1 million people in the United States and 2 million
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`people worldwide (ex 2048, pg 1). The Clearing House Association LLC has
`
`standing to represent member banks before SCOTUS (ex 2049 at ii). Based on the
`
`IPR20 15-00124
`ASKELADDEN LLC v. SEAN MCGHIE AND BRIAN BUCHHEIT
`
`
`
`PROTECTIVE ORDER MATERIAL
`
`above, Patent Owners have evidence that their discovery request is more than a
`
`mere allegation, and the overlap between companies employees has already been
`
`determined to be useful (ex 1PR2015-00122, Paper 16 at 3).
`
`Regarding the second Garmin factor, RPI questions are threshold questions by
`
`statute that are to be handled as early in the proceedings as possible (1PR2015-
`
`00122, Paper 16, page 5).
`
`Regarding the third Garmin factor, the Petitioner intentionally shields the
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`corporate structure of Askeladden and details of the interconnections between the
`
`Alleged RPI and the Acknowledged RPI from the public, as noted by the
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`Protection Order filed when submitting Askeladden' s Operating Guidelines
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`(1PR2015-00122, Papers 14 and 15). Patent Owners are unable to generate
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`equivalent information by other means in absence of the additional discovery being
`
`granted.
`
`Regarding the fourth Garinin factor, the Acknowledged RPI are able to clearly
`
`ascertain who are their executive officers/directors and members in their employ
`
`that are also employed by the Alleged RPI. The requested additional discovery is
`
`easily understandable. A number of these people are known to exist (1PR2015-
`
`00122, Papers 14 and 15; also ex 2029, 2032, 3033, 205 1) but the extent of overlap
`
`is unknown and intentionally maintained as privileged information.
`
`1PR2015-00124
`ASKELADDEN LLC v. SEAN MCGHLE AND BRIAN BUCHHEIT
`
`
`
`PROTECTIVE ORDER MATERIAL
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`Regarding the fifth Garmin factor, the Acknowledged RPI maintain employee
`
`records, which contain the requested information with a trivial effort. Indeed,
`
`Askeladden LLC has asserted to the Board that it maintains separate financial
`
`information and company for Askeladden, which will clearly indicate when
`
`resources from other companies are utilized for Askeladden's purposes. Similarly,
`
`TCH indicates overlapping employees and projects on its own Web site as well as
`
`its owner banks, so PAYCO is in possession of the requested information by a
`
`relatively trivial search of its records. Further, Askelladen LLC leads the PQI,
`
`which by definition includes directors/officers of the Clearing House Association,
`
`LLC. Further, Askeladden (1PR2015-00122, paper 14 and 15) maintains records
`
`of Member Bank employees that have overlapping responsibilities significant to
`
`Askeladden and the Proceeding.
`
`2. Patent Owners Request Additional Discovery Regarding Funding of the
`
`Proceedings
`
`Patent Owners request additional discovery on funding of the Proceedings.
`
`Specifically, Patent Owners request disclosure on a relative percentage or level of
`
`funding of the Proceedings provided by Member Banks. This is to include initial
`
`funding for the PQI from the Member Banks for allocations directed to initial IPRs
`
`to be filed under the PQI. A break-down of funding used in the Proceedings
`
`acquired from Member Banks directly or indirectly is specifically requested.
`
`IPR20 15-00124
`ASKELADDEN LLC v. SEAN MCGHIE AND BRIAN BUCHHEIT
`
`
`
`PROTECTIVE ORDER MATERIAL
`
`Regarding the first Garmin factor, Askelladen is in charge of the PQI and
`
`thought leadership of the PQI is provided by The Clearing House. (ex 2028).
`
`Evidence on the record indicates that the Clearing House Payments company
`
`provided initial funding for the PQI. (ex 2028) Other evidence indicates funding
`
`for the Proceeding was provided from (cid:9)
`
`. (1PR2015-00122 Paper 14,
`
`15). Funding of IPRs is a significant factor in determining status as a RPI. Patent
`
`Owners lack the requested funding information and cannot obtain this information
`
`by other means. The instructions of this additional discovery are easy to
`
`understand. Askeladden has acknowledged that it maintains financial records
`
`showing its funding sources separate from other companies. Thus, it is not overly
`
`burdensome to access these financial records to provide the requested information.
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`Thus, the request should place a relatively insignificant burden on the
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`Acknowledged RPI.
`
`3. Patent Owners Request Additional Discovery Regarding Time Lines of
`
`the Proceedings
`
`Patents Owners request additional discovery regarding time lines associated
`
`with the Proceedings.
`
`start date the Petitioner's law firm was hired to prepare a petition for the
`
`Proceeding; a date prior art to be used in the Proceeding was determined; a date an
`
`IPR2015-00I 24
`ASKELADDEN LLC v. SEAN MCGHIE AND BRIAN BUCHHEIT
`
`;a
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`
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`PROTECTIVE ORDER MATERIAL
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`initial draft of the claims in the proceeding was mapped to prior art by the law
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`firm; a date a draft including a claim mapping to challenged art was submitted to
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`the expert witness for analysis; a date the expert witness finalized his analysis for
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`the declaration; and a date the final Petition for the Proceedings was submitted to
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`Askeladden for approval. Additionally, Patent Owners request disclosure of any
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`payment instances over $1000 for work utilized in the Proceeding that was
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`performed by the Petitioner's firm or by the Expert (Matt Calman) that was paid
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`for by any entity other than Askelladen LLC. The amount is not requested, just the
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`instance and the entity making the payment.
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`Regarding the first of the Garmin factors, the patent subject to the
`
`Proceeding was identified in
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`(paper 14, 15). It is known that IPR Petition
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`proceedings are complex and take significant time. Patent Owners reasonably
`question that the prepared Petitioners were (cid:9)
`
`and
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`completed by their filing date in October 2014. (1PR2015-00122 paper 14, 15)
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`After the (cid:9)
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`decision, a comprehensive prior art search to determine which
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`prior art references are to be asserted against the patent would have to occur
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`(typically 2 weeks plus). Counsel hired for the Proceedings would have to
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`familiarize themselves with the patent and the prior art in question (typically 1
`
`week). Counsel must then prepare a draft showing a claim mapping of the claims
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`IPR20 15-00124
`ASKELADDEN LLC v. SEAN MCGHIE AND BRIAN BUCHHEIT
`
`
`
`PROTECTIVE ORDER MATERIAL
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`to the selected prior art (typically I to 2 months). The selected expert witness is
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`not registered to practice before the office, and presumably needed to be provided
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`an initial claim mapping for analysis. The expert provided detailed analysis for
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`over 100 pages in each declaration of six different IPRs (presumed to take over one
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`month). Financial payments by unknown entities are self-evidently useful for the
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`RPI analysis. Patent owners cannot generate this requested information by other
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`means, which is entirely in possession of the Petitioner. The request is not
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`believed to be overly burdensome to answer. Lawyers bill by their time and are
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`required to indicate when various portions of a work task are completed. This
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`time, money, and various milestones is tracked by clients (such as the
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`Acknowledged RPI), especially when press releases are made and timing is
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`coordinated for concurrent filing of nine IPRs on a same day.
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`The above additional discovery is requested for reasons provided herein.
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`Dated: June 2, 2015
`
`/
`
`Brian K. Buchheit
`Patent Owner
`
`1PR2015-00124
`ASKELADDEN LLC v. SEAN MCGHIE AND BRIAN BUCHHEIT
`
`
`
`42.6(e) CERTIFICATE OF SERVICE
`
`I certify that this document was served or simultaneously is being served on
`each opposing party with the filing of this document. I certify that the following
`exhibits being filed along with this document, if any, have been or simultaneously
`are being served on each opposing party:
`
`Exhibit Number (cid:9)
`
`Description
`
`42.6(e)(4) (iii)(A) The date and manner of service are (Electronic or Express Mail):
`June 2, 2015 (ELECTRONIC), via email to askeladdenlPR@fchs.com .
`
`42.6(e)(4)(iii)(B) The name and address of every person served are:
`
`Robert H. Fischer, Reg. No. 30,051
`Attorney for Petitioner
`Fitzpatrick, Cella, Harper &Scinto
`1290 Avenue of the Americas
`New York, NY 10104
`Telephone: (212) 218-2100
`Fax: (212) 218-2200
`
`/BRIAN K. BUCHHEIT/
`Brian K. Buchheit
`Patent Owner
`14955 SW 33rd Street
`Davie, FL 33331
`Tel: (305) 761-1972
`Email: bbuchheit@gmail.com
`
`
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