www.usplo.gov
`
`
`CDMMIEEIDNER FDR PATENTa
`UNITED STATES PATENT AND TRADEMARK OFFICE
`P.D. Box 145:)
`ALEXANDRIA, VA 22313-145D
`
`‘
`Senniger Powers LLP
`One Metropolitan Square, 16th floor
`St. Louis, Missouri 63102
`
`(For Patent Owner)
`
`Jeffrey B. Oster
`
`8339 SE 57th Street
`
`.
`
`I
`
`(For Third PartyeRelg‘uAesteaD
`
`Mercer Island, Washington 98040
`
`In re Guan et a1.
`
`Inter Partes ReexaminationProceeding
`Control No. 95/ 001045
`V Originally Deposited: May 26, 2008
`Filed: May 26, 2008
`For: US. Patent No 6,869,799
`
`AUG 2 5 2008
`
`mm REEXAMINATION UNIT
`
`.
`:
`: DECISION VACATING FILING
`2 DATE
`
`This is decision111 response to the third party requester’ s and the patent owner’s replies to
`the show cause Order mailed June 24,2008. The filing date of this request is VACATED.
`.
`
`The purpose of the show causeorder was to establish the identityof the real party in
`interest and thereby determine if the request met the requirements necessary to receive a
`filing date. On May 26, 2008, Troll Busters LLC (Troll Busters) filed a request for inter partes
`reexamination of patent number 6,869,799 (’799 patent). Troll Busters named itself as the
`sole real party in interest in the request for the inter partes reexamination. However, the
`' Office became aware of a website, hfipzz [www.troll-busterscomz that raised questions as
`to whether the requester had identified the actual real party in interest. On the website,
`Troll Busters stated that the ” Patent Troll will never know who or how many are behind the
`’hit’.” This information provided the impetus to inquire as to what parties may be
`considered real parties in interest within the meaning of 35 USC § 311(b)(1) and 37 CFR
`immmey
`
`BACKGROUND
`
`1. A request for inter partes reexamination of U.S. Patent No. 6,869,799 (”the ’799 patent”)
`was filed on May 26,2008 by third party requester Troll Busters LLC (Troll Busters) and was
`assigned control No. 95/ 001045 (”the ’1045 inter partes reexamination proceeding”). A filing
`date of May 26, 2008 had been assigned in error. The owner of the patent is Symyx
`Technologies .
`
`The request for inter partes reexamination included PTOL- form 1465 naming Troll
`2.
`Busters as the real party in interest.
`In addition, requester’s attachment to the I’TOL— form
`1465 also noted that Troll Busters was the real party in interest. The transmittal form was
`signed by registered practitioner Jeffrey Oster.
`[pR 2013-00639
`
`3. Troll Busters has a website ht_lp:[ [www.troll-bu
`business purpose is to ”secure freedom to operate .
`
`Unified Patents, Inc. v. Parallel Iron, LLC
`Parallel Iron LLC EX. 2004
`
`

`

`www.uspio.gov
`
`
`CDMMIEEIDNER FDR PATENTa
`UNITED STATES PATENT AND TRADEMARK OFFICE
`P.D. Box 145:)
`ALEXANDRIA, VA 22313-145D
`
`‘
`Senniger Powers LLP
`One Metropolitan Square, 16th floor
`St. Louis, Missouri 63102
`
`(For Patent Owner)
`
`Jeffrey B. Oster
`
`8339 SE 57th Street
`
`.
`
`I
`
`(For Third PartyeRelg‘uAesteaD
`
`Mercer Island, Washington 98040
`
`In re Guan et a1.
`
`Inter Partes ReexaminationProceeding
`Control No. 95/ 001045
`V Originally Deposited: May 26, 2008
`Filed: May 26, 2008
`For: US. Patent No 6,869,799
`
`AUG 2 5 2008
`
`mm REEXAMINATION UNIT
`
`.
`:
`: DECISION VACATING FILING
`2 DATE
`
`This is decision111 response to the third party requester’ s and the patent owner’s replies to
`the show cause Order mailed June 24,2008. The filing date of this request is VACATED.
`.
`
`The purpose of the show causeorder was to establish the identityof the real party in
`interest and thereby determine if the request met the requirements necessary to receive a
`filing date. On May 26, 2008, Troll Busters LLC (Troll Busters) filed a request for inter partes
`reexamination of patent number 6,869,799 (’799 patent). Troll Busters named itself as the
`sole real party in interest in the request for the inter partes reexamination. However, the
`' Office became aware of a website, hfipzz [www.troll-busterscomz that raised questions as
`to whether the requester had identified the actual real party in interest. On the website,
`Troll Busters stated that the ” Patent Troll will never know who or how many are behind the
`’hit’.” This information provided the impetus to inquire as to what parties may be
`considered real parties in interest within the meaning of 35 USC § 311(b)(1) and 37 CFR
`immmey
`
`BACKGROUND
`
`1. A request for inter partes reexamination of U.S. Patent No. 6,869,799 (”the ’799 patent”)
`was filed on May 26,2008 by third party requester Troll Busters LLC (Troll Busters) and was
`assigned control No. 95/ 001045 (”the ’1045 inter partes reexamination proceeding’’). A filing
`date of May 26, 2008 had been assigned in error. The owner of the patent is Symyx
`Technologies .
`
`The request for inter partes reexamination included PTOL- form 1465 naming Troll
`2.
`Busters as the real party in interest.
`In addition, requester’s attachment to the I’TOL— form
`1465 also noted that Troll Busters was the real party in interest. The transmittal form was
`signed by registered practitioner Jeffrey Oster.
`
`3L Troll Busters has a website ht_lp:[ [www.troll-busterscom in which it promotes that its
`business purpose is to ”secure freedom to operate for our customers (not clients)” Troll
`
`

`

`Control No. 95/001,045
`
`‘
`
`-2-
`
`Busters further states on its website the following: "Troll Busters invalidates patents, not
`just any patents but patents being asserted by patent trolls, those ugly beasts who try to
`dominate the innovafions of others."
`
`"Troll Busters takes
`4. Troll Busters’ website further includes the following statement:
`aim and fires in our own name. The Patent Troll will never know who or how many are
`behind the ’hit’.”
`
`5. Troll Busters also offers a “blue light special” on the same website where a party is
`invited to: ”Pick any five Affymetrix or Symyx US. patents and Troll Busters will invalidate
`a sixth for free!”
`'
`l
`'
`
`Troll Busters filed at least two requests for inter partes reexaminafion. The control
`6.
`numbers for the proceedings are 95/001,045 (this proceeding) and 95/ 001,046. In both
`proceedings, Troll Busters was named the third party requester and the real party in interest.
`
`7. On June 23, 2008, the USPTO inadvertently mailed a letter to both the requester and the
`patent oWner notifying the parfies that the filing date for the IP reexam proceeding 95/ 001,045
`was May 26, 2008. The mailing of this notificafion was an error in that a filing date should not
`have been established. The filing date is condifioned upon the outcome of the. show cause
`order.
`
`8. On July 9, 2008, Jeffrey Oster filed a response to the show cause order and asserted that he
`,, was_the_requester_and .that__Tro]l-Busters._was .the_real,.party_ininterest—Oster (requester).
`named himself as the requester. This was a change from the inifial filing in which Troll
`Busters was named as both the real party in interest and the third party requester.
`
`9. In the July 9, 2008 reply, the requester stated that Troll Busters is a company that provided
`”freedom to operate services" and ”is not a law firm and does not provide legal services” to
`clients. The requester further stated that Troll Busters has undertaken ”projects” to file
`reexaminau'ons to open up market compeu'fion and broaden compeu'u'On.
`
`In the July 9, 2008 reply, the requester stated that the he controlled the content of the
`10.
`request for inter partes reexaminafion and sought ”technical review” only to insure that each
`entryin each table in the SNQ is technically and completely accurate. The requester further
`_ asserted that at this time, Troll Busters plans to finance future prosecufion and no decision has
`been made what future assistance will be needed."
`
`11. In the July 9, 2008 reply, the requester asserted that the web site is an obvious exercise of
`comedy commensurate with the spirit of anfi-monopoly, anfi-Troll, and open source
`community.
`
`12. On July 23, 2008, the patent owner replied to the requester’s response to the order to show
`cause. Patent owner asserts that the requester’s response is deficient on numerous grounds.
`Patent owner asserts that requester’s reply is deficient because it fails to identify the enfity or
`enfities that financed the preparation or filing of the requested papers deposited on May 26,
`2008. Moreover, patent owner asserts that the requester failed to identify any enfih'es that
`provided technical suppOrt to assure that each entry in each table was completely accurate. In
`addifion, patent owner asserts that requester failed to identify any enh‘fies that will provide
`input into prosecufion of the IP reexaminah'on.
`
`

`

`Control No. 95/001,045
`
`-&
`
`13. On August 5, 2008, the requester submitted a reply and in the reply admitted that Troll
`Busters is applying for foundation grants to support its efforts.1
`
`RELEVANT STATUTES, REGULATIONS, AND PRACTICE
`
`35 U.S.C. §§ 311 (a) and (b) provide:
`
`(a) IN GENERAL.- Any third-party requester at any time may file a request for inter partes reexamination by
`the Office of a patent on the basis of any prior art cited under the provisions of 301.
`
`(b) REQUIREMENTS.- The request shall-
`
`(1) be in writing, include the identity of the real party in interest, and be accompanied by payment of an inter
`partes reexamination fee established by the Director under section 41; and
`
`(2) set forth the perfinency and manner of applying cited prior art to every claim for which reexamination is
`requested.
`
`35 U.S.C. § 314 (c) provides:
`
`(c) SPECIAL DISPATCH.- Unless otherwise provided by the Director for good cause, all inter partes
`reexamination proceedings under this section, including any appeal to the Board of Patent Appeals and
`Interferencesc shall be conducted withrspecial dispatch within the Office.
`
`35 U.S.C. § 315 (c) provides:
`
`(c) CIVIL ACTION.- A third-party requester whose request for an inter partes reexamination results in an order
`under section 313 is estopped from asserting at a later time, in any civil action arising in whole or in part under
`section 1338 of title 28, the invalidity of any claim finally determined to be valid and patentable on any ground
`" which the third-party requester raised or could have raised during the inter partes reexamination proceedings.
`This subsection does not prevent the assertion of invalidity based on newly discovered prior art unavailable to
`the third-party requester and the Patent and Trademark Office at the time of the inter partes reexamination
`proceedings.
`
`35 U.S.C. § 317 provides:
`
`(a) ORDER FOR REEXAMINATION.- Notwithstanding any provision of this chapter, once an order for inter
`partes reexamination of a patent has been issued under section 313, neither the third-party requester nor its
`privies may file a subsequent request for inter partes reexamination of the patent until an inter partes
`reexamination certificate is issued and published under section 316, unless authorized by the Director.
`
`(b) FINAL DECISION.- Once a final decision has been entered against a party in a civil action arising in whole or
`in part under section 1338 of title 28, that the party has not sustained its burden of proving the invalidity of any
`patent claim in suit or if a final decision in an inter partes reexamination proceeding instituted by a third-party
`requester is favorable to the patentability of any original or proposed amended or new claim of the patent, then
`neither that party nor its privies may thereafter request an inter partes reexamination of any such patent claim
`on the basis of issues which that party or its privies raised or could have raised in such civil action or inter partes
`reexamination proceeding, and an inter partes reexamination requested by that party or its privies on the basis
`
`' It is noted that the submission of the rebuttal paper filed‘on August 5, 2008~is an inappropriate paper under 37
`CFR 1.939. The third party requester does not have authority to submit a rebuttal response to the patent owner’s
`comments filed in response to the requester’s reply to the show cause order. However, the Office will waive
`consideration of the paper as an inappropriate paper and will consider the reply because the Office finds
`requester’s statement interesting in that the real party in interest is applying for foundation grants to support its
`efforts.
`
`

`

`Control No. 95/001,045
`
`~4—
`
`of such issues may not thereafter be maintained by the Office, notwithstanding any other provision of this
`chapter. This subsection does not prevent the assertion of invalidity based on newly discovered prior art
`unavailable to the third-party requester and the Patent and Trademark Office at the time of the inter partes
`reexamination proceedings.
`
`37 CFR 1.907 provides:
`
`-
`
`(a) Once an order to reexamine has been issued under § 1.931, neither the third party requester, nor its privies,
`may file a subsequent request for inter partes reexamination of the patent until an inter partes reexamination
`certificate is issued under § 1.997, unless authorized by the Director.
`
`(b) Once a final decision has been entered against a party in a civil action arising in whole or in part under 28
`U.S.C. 1338 that the party has not sustained its burden of proving invalidity of any patent claim-in—suit, then
`neither that party nor its privies may thereafter request inter partes reexamination of any such patent claim on
`the basis of issues which that party, or its privies, raised or could have raised in such civil action, and an inter
`partes reexamination requested by that party, or its privies, on the basis of such issues may not thereafter be
`maintained by the Office.
`
`(c) If a final decision in an inter partes reexamination proceeding instituted by a third party requester is favorable
`to patentability of any original, proposed amended, or new claims of the patent, then neither that party nor its
`privies may thereafter request inter partes reexamination of any such patent claims on the basis of issues which
`that party, or its privies, raised or could have raised in such inter partes reexamination proceeding.
`
`37 CFR 1.913 provides:
`
`Except as provided for in § 1.907, any person other than the patent owner or its privies may, atany time during
`the period of enforceability of a patent which issued from an original application filed in the United States on or
`—— ~after November-29,—1999,‘file*a-request*for interpartes"reexamination'by‘the’Office'of 'any‘claim of the‘patent on— —
`the basis of prior art patents or printed publications cited under § 1.501.
`
`37 CFR 1.915 provides:
`
`(a) The request must be accompanied by the fee for requesting inter partes reexamination set forth in § 120(c)(2).
`
`(b) A request for inter partes reexamination must include the following parts:
`
`(1) An identification of the patent by patent number and every claim for which reexamination is requested.
`
`(2) A citation of the patents and printed publications which are presented to provide a substantial new question
`of patentability.
`
`(3) A statement pointing out each substantial new question of patentability based on the cited patents'and
`printed publications, and a detailed explanation of the pertinency and manner of applying the patents and
`printed publications to every claim for which reexamination is requested.
`
`(4) A copy of every patent or printed publication relied upon or referred to in paragraphs (b)(1) through (3) of
`this section, accompanied by an English language translation of all the necessary and pertinent parts of any non-
`English language document.
`
`(5) A copy of the entire patent including the front face, drawings, and specification/ claims (in double column
`format) for which reexamination is requested, and a copy of any disclaimer, certificate of correction, or
`reexamination certificate issued in the patent. All copies must have each page plainly written on only one side of
`a sheet of paper.
`
`(6) A certification by the third party requester that a copy of the request has been served in its entirety on the
`patent owner at the address provided for in §1.33(c). The name and address of the party served must be
`indicated. If service was not possible, a duplicate copy of the request must be supplied to the Office.
`
`

`

`Control No. 95/ 001,045
`
`'
`
`V
`
`>
`
`-5-
`
`(7) A certification by' the third party requester that the estoppel provisions of § 1.907 do not prohibit the inter
`partes reexamination.
`
`(8) A statement identifying the real party in interest to the extent necessary for a subsequent person filing an
`inter partes reexamination request to determine whether that person is a privy.
`
`(c) If an inter partes request is filed by an attorney or agent identifying another party on whose behalf the request
`is being filed, the attorney or agent must have a' power of attorney from that party'or be acting in a
`representative capacity pursuant to § 1.34.
`
`(d) If the inter partes request does not include the fee for requesting inter partes reexamination required by
`paragraph (a) of this section and meet all the requirements of paragraph (b) of this section, then the person
`idenu'fied as requesting inter partes reexamination will be so nou'fied and will generally' be given an opportunity
`to complete the‘request within a specified time. Failure to comply with the notice will result in the inter partes
`reexamination request not being granted a filing date, and will result in placement of the request in the patent
`file as a citation if it complies with the requirements of § 1.501.
`
`37 CFR 1.919 provides:
`
`(a) The filing date of a request for inter partes reexamination is the date on which the request satisfies all the
`- requirements for the request set forth in §1.915.
`
`(b) If the request is not granted a filing date, the request will be placed in the patent file as a citation of prior art if
`it complies with the requirements of § 1.501
`
`, A. Summary_of,Requesterfsposition
`
`
`, , ,
`,
`-
`-
`-
`
`The requester responded to the show cause order by stating the following:
`
`1). The website is not relevant to the project undertaken by Troll Busters..
`
`2). Troll Busters is not a law firm and does not provide legal services to clients.
`
`3). Troll Busters has undertaken projects to open up market segments competition to
`broader competition. Troll Busters is engaged in a specific project to prevent Symyx from
`dominating chemistry screening of catalyst.
`
`4). Troll Busters objects to the intrusion into its business affairs and objects to the inquiry
`regarding the RPI.
`
`5). The requester controlled the content of the present request. The requester sought and
`obtained technical review only to insure that each entry in each table is technically and
`completely accurate.
`
`6). Troll Busters plans to finance future prosecution. Troll Busters has made no decision
`regarding what future assistance will be needed.
`
`7). Troll Busters filed the first reexamination against the ’799 patent and therefore no public
`policy is served to deny Requester and real party in interest (Troll Busters) its right to file an
`inter partes reexamination.
`
`

`

`Control No. 95/001,045
`
`'6'
`
`B. Patent Owner’s position
`
`1). The Office inquiry into the identity of the real party in interest is proper in that it is‘ the
`Office's duty to insure that the statutory requirements are satisfied.
`
`2). The purpose of 37 CFR 1.915(b)(8) is prospective (i.e., in order for a subsequent person
`filing an inter partes to determine whether that person is a privy in connection with the
`requirement of a certification under 37 CFR 1.915(b)(7) that the estoppel provisions of 37
`CFR 1.907 do not prohibit the inter partes reexamination).
`
`3). The public policy goals of 37 CFR 1.915(b)(8) and the estoppel provisions of 35 USC
`315(c) and 37 CFR 1.907 would be easily circumvented by naming a straw man if every first
`request for inter partes reexamination filed against a patent could avoid identifying the
`actual real party in interest;
`
`4). Failure to enforce this policy would allow unnamed privies to assert invalidity in a civil
`action or file additional inter partes reexamination proceedings on the same patent on issues
`which that party or it privies, raised or could have raised in the inter partes reexamination
`proceeding.
`
`5). Troll Busters is deficient in responding to the Office inquiries. Specifically,-Troll Busters
`«failed to address who paid the-cost of thepresent‘requestfor inter-partes reexamination '
`' "
`request.
`
`C. Analysis and Findings
`
`The Office has authority to require applicants (i.e., third party requester and real party in
`interest) to address reasonable concerns that may arise during the examination of an
`application or proceeding. One of the statutory requirements that the Office is responsible
`for enforcing is that the request for inter partes reexamination include an identification of all
`of the real parties in interest. Congress has required that the request include the identity of
`the real party in interest. See 35 USC § 311 (b)(1). Accordingly, when the Office
`implemented the statutory scheme, the Office required that the request include a ”statement
`identifying the real party in interest to the extent necessary for a subsequent person filing an
`inter partes reexamination request to determine whether that person is in privy." See 37 CFR
`1.915(b)(8).
`
`Moreover, if a final decision in an inter partes reexamination proceeding instituted by a
`requester is favorable to patentability of any original, proposed amended, or new claims of
`the patent, then neither that party nor its privies may thereafter request inter partes
`reexamination of any such patent claims on the basis of issues which that party, or its
`privies, raised or could have raised in such inter partes reexamination proceeding. See 35
`USC § 317 and 37 CFR 1.907 (c). Because the naming of the real party in interest is essential
`to establish who is precluded from thereafter requesting additional inter partes
`reexamination of the same patent, the Office has established that a filing date will not be
`granted until the actual real party in interest is named in the first request for reexamination
`of the patent. See 37 CFR 1.915 and 1.919(a).
`
`

`

`Control No. 95/ 001,045
`
`-7-
`
`Generally, the Office will not look beyond the required statement identifying the real party
`in interest. However, where the statement related to the real party in interest is not facially
`accurate, or is ambiguous, the Office will inquire as to the identity of the actual real party
`(or parties) in interest by ordering the third party requester and/ or the real party in interest
`identified in the request to show cause as to why the proceeding should be granted a filing
`date. A persuasive response to the show cause order that asserts that the request named the
`proper real party or parties in interest would establish that as filed, there was no facial
`inaccuracy or ambiguity in such identification.
`
`It is noted that an ambiguity may arise from the records submitted with the request, from
`varying similar yet different identifications of the real party in interest, or may be
`'
`established by extrinsic evidence. An example of an ambiguity from the request may
`include the REQUEST FOR INTER PARTES TRANSMITTAL FORM (SB58) naming one
`entity as the real party in interest while the detailed request names a different entity as the
`real party in interest.
`
`Extrinsic evidence may be submitted by the patent owner to support a petition to vacate the
`filing date_or the Office may use extrinsic evidence to, sua sponte, Order the requester/ real
`party in interest to show cause as to why the Office should either grant a filing date if one
`has not be granted or not vacate a filing date if a filing date has been granted.
`
`'
`
`The present request is an example where the ambiguity concerning the real party in interest
`can be gleaned from extrinsic evidence. It is clear from extrinsic evidence that Troll Busters
`established a website where it held» out a—primary-function of TrollBusters is filing requests ‘ '
`in their own name to maintain the anonymous nature of a party or parties. Moreover, it is
`further evident that Troll Busters website took specific aim at Symyx (Owner of ’799 patent)
`because the website included the following statement: ”Pick any five Affymetrix or Symyx
`US. patents and Troll Busters will invalidate a sixth for free!”
`
`Requester asserts that the Troll Buster’s prior website is an obvious exercise of comedy
`commensurate with the spirit of the anti-monopoly, anti-troll, and open source community.
`Moreover, requester asserts that Troll Busters’ website is not relevant to the ”Project”
`undertaken by Troll Busters and was written a year ago or more prior to undertaking the
`present project. Finally, the requester argues that Troll Busters is not a law firm or a legal
`service provider. Assuming arguendo that Troll Busters arguments are correct, the Office
`still finds that there is a reasonable basis to inquire of Troll Busters as to the relation of the
`named real party in interest and other parties who may also qualify as real parties in
`interest regardless of whether or not Troll Busters is a law firm or a legal service provider
`because the statute requires that the request identify every entity that qualifies as a real
`party in interest.
`
`Regardless of whether the requester and Troll Busters ’.’object to the intrusion on the
`business affairs of Troll Busters, Troll Busters cannot act as a ”shill” in an inter partes
`reexamination request to shield the identity of the real party or parties in interest.
`
`Entities are not allowed to file a request for inter partes reexamination and name as the real
`party in interest any entity other than the actual real party in interest. An entity named as
`the sole real party in interest may not receive a suggestion from another party that a
`particular patent should be the subject of a request for inter partes reexamination and be
`compensated by that party for the filing of the request for inter partes reexamination of that
`patent without naming the party who suggest and compensated the entity for the filing of a
`
`

`

`Control No. 95/001,045
`
`.
`
`-8-
`
`request for inter partes reexamination of the patent. Similarly, an entity may not be paid, or
`be directed or controlled as to the manner in which the request for inter partes reexamination
`is filed for a given patent, without naming the party or partieswho paid for, or
`directed/ controlled, the filing of the request for inter partes reexamination. The naming of
`the real party in interest has significant legal consequences for the named party. See 35
`USC §§ 315, 317 and 37 CFR 1.907(c). 35 USC §§ 315 and 317 were drafted as limits to the
`use of inter partes reexamination to avoid a perceived danger of patent owner harassment.
`One of the methods of preventing such perceived harassment is to prevent a requester, and
`its privies, from filing additional inter partes reexamination requests on any such patent on
`the basis of issues which that party, or its privies, raised or could have raised in the inter
`partes reexamination proceeding. Otherwise, as pointed out by patent owner, the
`provisions of 35 USC § 315(c) and 37 CFR 1.907 would easily be circumvented by naming a
`straw man in every first request.
`
`The requester’s response to the show cause order was not sufficient to find that Troll
`Busters is the only or actual real party in interest. The requester’s response does not
`establish that 37 CFR 1.915(b) (8) has been met. The requester has failed to assert who paid
`
`for the request in this proceeding. Requester only states that future financing will be paid
`by Troll Busters. Moreover, requester states that Troll Buster is undergoing a ”project” to
`open up market segments to broader competition. However, Troll Busters does not identify
`if other individuals involved in this project have engaged Troll Busters to file the present
`request for inter partes reexamination and if so, how many. Moreover, Troll Busters also
`admits that it is ”seeking” foundation grants to continue its work. However, the relationship
`.betweenthe foundationgrantsand the—filing of-aspecific—requestis—unclear; as stated-above; - ,
`a party paying for a particular patent to be the subject of a request for inter partes
`reexamination would appear to be a real party in interest.
`
`,
`
`Troll Busters cannot do any of the following and not identify the other entity as real party in
`interest:
`
`1). Accept payment from another group, pay the requester to file the request for inter partes
`reexamination, and have itself named solely as the real party in interest.
`
`2). Obtain money for foundation grants, file a ”quid pro quo” request for an inter partes
`reexamination where the foundation wants reexamination on a specific patent that the
`foundation deems anti-competitive, and name itself solely as real party in interest.
`
`3). Allow another entity to direct or control the content, (e.g., provide the prior
`patents/ printed publications on which the reexam is to be based) of the request whether
`such is termed ”technical review” or some other phrase.
`
`It should be noted that Troll Busters can file a request for ex parte reexamination and not
`name the real party in interest. The ex parte reexamination statutes reflect a different
`balance between patentee, the public and interested third parties. Anonymity is statutorily
`authorized in ex partes reexamination.
`
`As stated in the show cause order, third party requester’s response to the present Order to
`Show Cause must include an explanatiOn of why the ’1045 inter partes reexamination request
`is entitled to a filing date. Such explanation must unambiguously name the real party (or
`parties) in interest, for this proceeding, which includes any party or parties required to be
`identified as real parties in interest. Having failed to adequately respond to the show cause
`
`

`

`Control No. 95/001,045
`
`-9—
`
`the requirements of 37- CFR 1.915(b)(8) are not met.
`the Office finds that
`Order,
`Accordingly, the request will not receive a filing date as specified in 37 CFR 1.919(a). Since
`the Office errantly established a filing date, the filing date is hereby vacated.
`
`CONCLUSION
`
`1.
`
`The Office will not grant a filing date for this request for inter partes reexamination.
`Due to the errant mailing of a notification of the filing date, the Office is herby vacating
`the filing date of the reexamination proceeding.
`
`2. Because the requester has not met all of the requirements of 37 CFR 1.915 and the filing
`date is being vacated, the Office will refund the filing fee in accordance with 37 CFR
`1.26(c).
`
`3.
`
`The proceeding will be terminated and the paperwork will not be further processed.
`
`4.
`
`The Office will place the request in the patent file as a citation of prior art under 37 CFR
`1.501.
`
`5.
`
`Telephone inquiries related to this decision should be directed to Kery A. Fries, Senior
`Legal Advisor, Office of Patent Legal Administration, and Office ofDeputy
`m Commissioner for Patent Examination Policy at (57—1) 27—2-7757. _,
`
`Brian E. Hanlon
`
`Deputy Director of the Office of Patent Legal Administration
`Office of Deputy Commissioner
`For Patent Examination Policy
`
`