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`
`
`
` Paper 9
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`
` Entered: December 16, 2014
`
`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.1
`____________
`
`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)2
`____________
`
`Before SALLY C. MEDLEY, JONI Y. CHANG, and
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`
`
`1 The parties are to style all forthcoming papers in this manner.
`2 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.
`
`
`
`
`
`37 C.F.R. § 42.5
`
`On December 12, 2014, a conference call was held among counsel3
`
`for the respective parties and Judges Medley, Chang, and Braden. The
`
`purpose of the call was for Patent Owner to seek authorization to: (1) file
`
`motions to reset the filing date accorded the Petitions for failure to properly
`
`serve; (2) file motions to dismiss the Petitions for failing to name the correct
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`Patent Owner’s real party-in-interest; (3) file documents allegedly showing
`
`that Petitioner’s real party-in-interest was not properly identified; and (4) file
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`motions for sanctions against Petitioner for out-of-pocket expenses incurred
`
`by Patent Owner regarding items (1)–(3).
`
`Service
`
`Patent Owner explained that Petitioner served the Petitions and
`
`supporting evidence to the wrong address. Service of a petition and
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`supporting evidence is made by serving the patent owner at the
`
`correspondence address of record for the subject patent. 37 C.F.R.
`
`§ 42.105(a). Here, Petitioner, did what it was supposed to do – it served the
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`requisite papers upon Patent Owner at the correspondence address of record.
`
`Moreover, Patent Owner received the papers. As we explained, if the
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`address of record is not accurate, it is the responsibility of Patent Owner to
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`update the Office records. For these reasons, Patent Owner is not authorized
`
`to file motions to reset the filing date accorded the Petitions for failure to
`
`properly serve.
`
`Real Party-In-Interest – Patent Owner
`
`The Petitions name Loyalty Conversion Systems Corporation (LCS)
`
`
`3 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.
`
`2
`
`
`
`as the Patent Owner. See, e.g., IPR2015-00122, Paper 1, fn1. Patent Owner
`
`explained that LCS has no right or interest with respect to any of the
`
`involved patents, and that Petitioner’s naming LCS as the patent owner was
`
`incorrect. As such, Patent Owner seeks authorization to file motions to
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`dismiss the Petitions, because the Petitions fail to name the true patent
`
`owner. Petitioner responded that it went on information and belief that LCS
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`had an ownership right of the involved patents and, therefore, listed LCS as
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`the patent owner in the Petitions.
`
`Within 21 days of service of a petition, a patent owner must file
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`mandatory notices. The notice serves as patent owner’s opportunity to
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`identify, among other things, its real party-in-interest. 37 C.F.R.
`
`§ 42.8(b)(1). Patent Owner filed its mandatory notice papers in each of the
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`proceedings. See, e.g., IPR2015-00122, Paper 4. In its Mandatory Notices,
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`Patent Owner names the inventors of the involved patents as the real parties-
`
`in-interest. Petitioner does not contest that representation. Thus, to the
`
`extent that the Petitions incorrectly identified Patent Owner, Patent Owner’s
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`Mandatory Notices clarify the record. For these reasons, Patent Owner is
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`not authorized to file motions to dismiss the Petitions for failing to name the
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`correct Patent Owner’s real party-in-interest.
`
`Real Party-In-Interest – Petitioner
`
`The Petitions name Askeladden LLC as Petitioner’s real party-in-
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`interest. See, e.g., IPR2015-00122, Paper 1. Patent Owner explained that it
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`had information it wished to file to show that Askeladden allegedly is not the
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`sole real party-in-interest. As explained, Patent Owner may file such
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`information in connection with any preliminary response it files, and, thus,
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`does not need prior Board authorization to file such information. The panel
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`appreciates Petitioner’s willingness to cooperate with Patent Owner should
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`3
`
`
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`Patent Owner have any further questions regarding Petitioner’s real party-in-
`
`interest.
`
`Sanctions
`
`
`
`Based on the information provided to the parties during the call,
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`Patent Owner no longer sought sanctions in the form of out-of-pocket
`
`expenses. Accordingly, Patent Owner’s request for authorization to file
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`motions for sanctions is dismissed as moot.
`
`Order
`
`It is
`
`ORDERED that Patent Owner’s requests to file motions to (1) reset
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`the filing date accorded the Petitions for failure to properly serve; and (2)
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`dismiss the Petitions for failing to name the correct Patent Owner’s real
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`party-in-interest are denied; and
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`FURTHER ORDERED that Patent Owner’s request to file motions
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`for sanctions is dismissed as moot.
`
`
`
`
`
`
`
`4
`
`
`
`
`
`PETITIONER:
`
`Robert H. Fischer
`Frank A. DeLucia
`Fitzpatrick, Cella, Harper & Scinto
`askeladdenIPR@fchs.com
`
`PATENT OWNER:
`
`Brian Buchheit
`bbucheit@gmail.com
`
`Sean McGhie
`sean.mcghie@me.com
`
`5
`
`
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