From: Brian Buchheit [mailto:brian.buchheit@patentsondemand.com]
`Sent: Wednesday, December 31, 2014 10:44 AM
`To: Oliver, Justin; #AskeladdenIPR
`Cc: Sean McGhie
`Subject: RE: Petition Real Party of Interest Question
`
`Justin,
`
`
`Thank you. I appreciate your position and believe I understand it. For clarity, I intend to bring this issue
`up to the Board in the Petition Response to get a resolution on the issues in contention with regard to
`the RPI. In doing so, I intend to present this email as an exhibit that provides evidence of attempts from
`the Patent Owners to cooperate with the Petitioners – and as evidence of the extent that the Petitioners
`did willingly cooperate. This cooperation is again, highly appreciated.
`
`
`As previously noted, the undersigned is responding pro-se and does not have extensive experience in
`IPR matters, or at least not as extensive as you do as counsel for Askeladden. In this light, I do
`appreciate your patience with me and apologize for any off-point questions, which are only intended to
`resolve an issue that the Patent Owners believes is legally relevant to the IPRs.
`
`In this light, is it fair to say (in my response to the petition) that:
`
`
`The following are facts that the Patent Owners and Petitioner an in agreement in regards to:
`• Patents Owners have questions regarding whether concurrent employment of key
`positions between the two companies (TCH and Askeladden) has resulted in a possibility
`from the Patent Owner’s perspective of a suggestion drifting across company barriers.
`• The Petitioner asserts that the companies are legally separate entities and that from
`their perspective that is sufficient separation that results in the Clearing House Petitioner’s
`position is that Payments Company (TCH) not being a real party of interest (or any other
`entities receiving service from TCH) for purposes of the IPRs.
`• The Patent Owners and Petitioners are in agreement that the two companies are legally
`separate entities
`
`
`
`The following steps have been taken and the below is a fair representation of those steps and the
`results:
`
`• Patent Owners have sought seek clarification regarding any internal separations
`between the companies (TCH and Askelladen) that have been implemented to ensure
`autonomy.
`• Petitioners have elected to not provide any such evidence, stating that this goes
`beyond their perceived scope of the question – and that in context the legal separation is
`sufficient for the PTAB purposes.
`
`
`
`The following Facts are Assumed By The Patent Owner, and have not been disputed by counsel for
`Askelladden
`• At the time the petitions were filed, Sean Reiley held a position as General counsel for
`Askelladden and was concurrently the Associate General counsel for The Clearing House
`(TCH).
`
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`

`• At the time the petitions were filed, the Board of directors for Askelladen and TCH
`included identical sets of people – or at least significant overlap (if not identical, please
`provide differences)
`• Sean Reiley and the Board of directors were decision makers regarding the filing of the
`IPRs.
`• Sean Reiley and the Board of TCH were decision makers regarding decisions about the
`PQI and establishment of Askladden initiatives in their role of directors/employees of TCH.
`• Sean Reiley and the Board of Askelladden were decision makers regarding decisions
`regarding the IPR filings, including the patents selected for the IPRs and the financing of the
`IPR filings on behalf of Askelladden.
`• At the time the petitions were filed, Sean Oblack on behalf of the Clearing House
`issued a press release (October 27, 2014) asserting that the Clearing House (TCH) has
`asserted through the PQI that nine IPRs (including the one in question) was filed. The
`Clearing House (specifically through Sean Oblack) in their press release asserted that the PQI
`through Askeladden filed the IPRS.
`
`
`
`The Patent Owners seek clarification/decision from the PTAB:
`• The Petitioners, through their counsel, have elected not to provide additional
`information to the Patent Owners regarding the above assertions of fact – and have elected
`not to provide additional information regarding any internal safeguards enacted between
`AskeladdenIPR and The Clearing House (TCH), to ensure autonomy of decisions and to
`ensure that concurrent employment of key members. Patent owners assert that this
`provided an effective means to circumvent legal company barriers with regard to decisions.
`• It is the position of Askeladden that no further information regarding Patent Owner’s
`questions and the assumptions (based on evidence) above is relevant – and have elected
`not to provide any such information voluntarily.
`• Questions exist regarding the legal standards applicable to RPI in the IPRs for which the
`Patent Owners and Askelladen are in disagreement. Specifically, assuming the facts above,
`which have not been refuted by evidence through such evidence was properly requested by
`Patent Owners of Askelladden, Patent Owners seek clarification from the Board as to
`whether at least TCH (assuming the facts above to be True) is in fact a real party of interest
`– based on legal standards of the PTAB and IPR proceedings.
`o Patent Owners have provided Petitioner with an opportunity to refute the above
`facts, which was not done. Thus, for purposes of PTAB decision it is reasonable to
`assume the facts are true in absence of contravening evidence not known to exist.
`• Counsel for AskeladdenIPR asserts that the standards from RPX were unique since past
`behavior was involved in an estoppel. Patent Owners assert that any estoppels resulting
`from IPR decisions also apply to future behavior so that the PTAB is asked to determine as a
`matter of law whether past behavior is dispositive to the determination of any RPI questions
`for IPRs, or whether the salient factor is the legal estoppel involved and its effect on IPR
`parties.
`• Given the undisputed facts and undisputed assumptions above, Patent Owners seek a
`determination from the PTAB regarding the legal standard for asserting RPI, and seeks a
`determination given the facts and assumptions above that TCH is a real part of interest in
`the petitions that should be bound by any estoppels established by a resolution of the IPRs.
`• Further, the Patent Owners lacks any information regarding involvement of member
`banks and TCH, and informal requests for information in this regard have been made but
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`denied as Askelladen’s position is that this information is not relevant – largely due to
`Askelladen’s belief that this determination is only relevant should TCH be a real party of
`interest – and that any involvement between Financial Institutions involved with the IRPS
`has only been through the Clearing House (and has nto been directly between Financial
`Institutions and Askelladden.
`• The Patent Owners seek clarification of law on this point, and seek the PTAB’s discovery
`permission to receive relevant evidence regarding influences/financing of Financial
`Institutions and any of the following entities Askelladden, PQI Organization, and the TCH.
`• Requested discovery is for a relatively narrow scope consistent with the determination
`of relevant law on the issue of RPI, to be determined by the PTAB, as this area of law is
`presently in need of clarification to properly scope discovery post the RPX decision (in
`patent owner’s opinion). In absence of discovery, the Patent Owners request the PTAB
`assume (as facts of law) that the disputed facts and assumptions be considered to be legally
`true, as all evidence to contest these assumptions (reasonable in light of Actions taken by
`the Patent Owners and circumstantial evidence from the Patent Owner’s perspective) is only
`possessed by Askelladden, the PQI Organization, TCH, and/or Financial Institutions
`cooperating with TCH or Askelladden. Counsel for Askelladden has refused to provide
`requested evidence in this regard that was requested by the Patent Owners – asserting it to
`be irrelevant for the PTABs decision and part of an unjustified “fishing expedition.”
`
`
`
`
`
`Patent Owners would like to present the Petitioner with an opportunity to respond to the above. Any
`such responses and/or facts that refute the above will also be included as exhibits/evidence in the
`Patents Owners response – to ensure the PTAB decision makers have the best facts available to make
`decisions regarding the RPI dispute. Based on the below email – Patent Owners understand that no
`response from counsel for Askeladden may be forthcoming.
`
`Very Truly Yours,
` Brian K Buchheit for
`
`
`Brian K Buchheit and Sean McGhie, Patent Owners
`14955 SW 33rd Street, Davie Florida 33331
`305-761-1972
`
`
`
`