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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`FEDERAL RESERVE BANK OF ATLANTA, FEDERAL RESERVE BANK OF
`BOSTON, FEDERAL RESERVE BANK OF CHICAGO, FEDERAL RESERVE
`BANK OF CLEVELAND, FEDERAL RESERVE BANK OF DALLAS,
`FEDERAL RESERVE BANK OF KANSAS CITY, FEDERAL RESERVE BANK
`OF MINNEAPOLIS, FEDERAL RESERVE BANK OF NEW YORK, FEDERAL
`RESERVE BANK OF PHILADELPHIA, FEDERAL RESERVE BANK OF
`RICHMOND, FEDERAL RESERVE BANK OF SAN FRANCISCO,
`and FEDERAL RESERVE BANK OF ST. LOUIS,
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`Petitioners,
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`v.
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`BOZEMAN FINANCIAL LLC,
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`Patent Owner.
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`Case No.: CBM2017-00036
`U.S. Patent No. 8,768,840
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`PETITIONERS’ REPLY TO
`PATENT OWNER’S PRELIMINARY RESPONSE
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`PROTECTIVE ORDER MATERIAL
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`EXHIBITS
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`EXHIBIT
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`DESCRIPTION
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`1023
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`1024
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`Declaration of Richard M. Fraher in Support of Petitioners’
`Reply
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`September 29, 2016 E-mail from Bozeman’s counsel to the
`Federal Reserve Bank of Atlanta
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`Petitioners
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`respectfully submit
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`this
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`reply
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`to Bozeman Financial’s
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`(“Bozeman”) Preliminary Response pursuant to the Board’s May 12, 2017 e-mail.
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`Bozeman’s claim that it “has not … accused Petitioners of infringing” the
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`related ‘640 and ‘840 Patents is both surprising and unexpected. Paper 5 at 5. Not
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`only is this claim not supported by the record evidence (including the declaration
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`of Bozeman’s managing principal), it is demonstrably untrue.
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`In December 2015 and January 2016, Bozeman contacted the Federal
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`Reserve Bank of Atlanta (the “Atlanta Bank”), accused the Federal Reserve Banks
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`(the named Petitioners) of infringing the ‘640 and ‘840 Patents, and stated that it
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`intends to extract fees from the Banks for their alleged infringement. See Ex. 1008
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`at ¶¶ 4-5; Ex. 1023 ¶¶ 2-4. Tellingly, Mr. Bozeman does not deny that these calls
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`occurred or that he accused the Banks of infringing these patents. See Paper 6.
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`Rather, he states only that he did not inform the Banks that they “must cease and
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`desist any activity based on the Bozeman patents….” Id. ¶ 11.
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`Whether Mr. Bozeman formally demanded that the Banks “cease and desist”
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`is immaterial. Bozeman expressly charged the Banks with infringing its patents,
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`committed
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`to extracting compensation from
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`the Banks for
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`their alleged
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`infringement, and provided an infringement chart based on publicly-available
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`information comparing the related ‘840 Patent to certain of the Banks’ existing
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`systems. See Ex. 1008 ¶¶ 4-6; Ex. 1022. These acts necessarily give rise to
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`declaratory judgment jurisdiction, and therefore, standing in a CBM proceeding.
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`See Cardinal Chem. Co. v. Morton Int’l, 113 S. Ct. 1967, 1975 (1993) (Where “a
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`party has actually been charged with infringement of the patent, there is,
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`necessarily, a case or controversy adequate to support [declaratory judgment]
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`jurisdiction”); 37 C.F.R. § 42.302.
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`The discussions that ensued over the next thirteen months were not ordinary
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`“business discussions” aimed at exploring potential “partnering” opportunities, as
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`Bozeman tries to paint. See Paper 6 ¶¶ 6-7, 10-13; Paper 5 at 6. Rather, the parties
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`engaged in those discussions in an effort to resolve Bozeman’s infringement
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`claims. See Ex. 1023 ¶ 7.
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`Thus,
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`the facts surrounding
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`the parties’ discussions, when viewed
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`objectively and in totality, show that Bozeman affirmatively contacted the Banks,
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`asserted that certain of the Banks’ systems infringe the patents-at-issue,
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`fees from the Banks,
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`communicated its intent to extract
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` The law does not require Petitioners to
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`continue to labor under the threat of liability in the face of such claims.
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`Accordingly, Petitioners have standing to bring this proceeding, and respectfully
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`request that the Board institute trial on the grounds set forth in their Petition.
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`Respectfully submitted, this 19th day of May, 2017.
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`/Natasha H. Moffitt #53,340/
`Natasha H. Moffitt
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` Reg. No. 53,340
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`Holmes J. Hawkins III
` Reg. No. 38,913
`KING & SPALDING LLP
`1180 Peachtree Street, NE
`Atlanta, GA 30309
`Tel.: (404) 572-4600
`Fax: (404) 572-5134
`nmoffitt@kslaw.com
`hhawkins@kslaw.com
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`Abby L. Parsons
` Reg. No. 61,473
`KING & SPALDING LLP
`1000 Louisiana Street
`Suite 4000
`Houston, TX 77002
`Tel.: (713) 751-3294
`Fax: (713) 751-3290
`aparsons@kslaw.com
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that on this day, a true and correct copy of the
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`foregoing PETITIONERS’ REPLY TO PATENT OWNER’S PRELIMINARY
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`RESPONSE, together with all exhibits and testimony relied upon, was served by
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`UPS NEXT DAY AIR on the attorneys of record for Patent Owner at the following
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`addresses:
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`John W. Goldschmidt, Jr.
`FERENCE & ASSOCIATES LLC
`409 Broad Street
`Pittsburgh, Pennsylvania 15143
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`Thomas J. Maiorino
`Maiorino Law Group LLC
`224 Amberfield Drive
`Mt. Laurel, New Jersey 08054
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`This 19th day of May, 2017.
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`/Natasha H. Moffitt #53,340/
`Natasha H. Moffitt
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`Reg. No. 53,340
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`KING & SPALDING LLP
`1180 Peachtree Street, NE
`Atlanta, GA 30309
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`Tel.: (404) 572-4600
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`Fax: (404) 572-5134
`Email: nmoffitt@kslaw.com
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