ACC and IP Committee Letter regarding IPR and PGR

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over the Petitioner by the other party. Under the PTO’s definition of “control,” a Petitioner or anamed real party in interest may not receive a suggestion from a third party that a particularpatent should be the subject of a request for IPR or PGR and be compensated by that party forthe filing of the request without naming the third party in the petition. (See In re Guan InterPartes Reexamination Proceeding (commonly referred to as “In re Troll Busters”),Reexamination Control No. 95/001,045.)In In Re Troll-Busters, the Office of Patent Legal Administration (“the OPLA”)dismissed an Inter Partes reexamination where the real party in interest was not identified to itssatisfaction. In that case, the requester’s website described its service as completely anonymous,stating that “the Patent Troll will never know who or how many are behind the ‘hit’”(http://www.troll-busters.com/.) Based on the information posted on the Troll Busters webpages, the PTO issued a show cause order to establish the identity of the real party in interest.The PTO was not persuaded by Troll-Busters’ showing and terminated the reexamination statingthat “Troll Busters cannot act as a ‘shill’ in an INTER PARTES reexamination request to shieldthe identity of the real party or parties in interest.” (No. 95/001,045, “Decision Vacating FilingDate,” p. 7 (mailed Aug 25, 2008).) The PTO concluded that “an entity may not be paid, or bedirected or controlled as to the manner in which the request for Inter Partes reexamination isfiled for a given patent, without naming the party or parties who paid for, or directed/controlled,the filing of the request for Inter Partes reexamination.” (Id. at p. 8.)The PTO should adopt the common law general agency concepts it has already applied,where a principal is bound by the acts of an agent when the principal, expressly or impliedly,authorizes the agent to work under its control and on its behalf. (See O'Neill v. Department ofHousing and Urban Development, 220 F.3d 1354, 1360 (Fed. Cir. 2000) (“Agency ‘is thefiduciary relation which results from the manifestation of consent by one person to another thatthe other shall act on his behalf and subject to his control, and consent by the other to so act.’Restatement (Second) of Agency § 1 (1958). An agent acting on behalf of his principal has theauthority to ‘alter the legal relations between the principal and third persons,’ id. § 12, and a‘principal has the right to control the conduct of the agent with respect to matters entrusted tohim,’ id. § 14. Thus, proof of actual or apparent authority, see id. § 8, to act on behalf of theprincipal is necessary to establish that a person acts as an agent…under the common-law.”)).Therefore, the terms “real party in interest” and “privy” should be defined to include an entitythat pays for, directs/controls, and suggests that a separate entity file a petition for PGR or IPR.Companies often join trade associations to better address industry-wide issues includingpatent issues. Companies rely on such trade associations to spearhead/coordinate challenges topatents in some cases and create efficiencies of scale due to the expense of litigating patentrelated matters. The ACC believes that a company, which is merely a passive member of a tradeassociation that is petitioning for an IPR or PGR, should not be a real party in interest under therules, unless the company pays for, directs/controls, and makes suggestions to the tradeassociation directly related to the IPR or PGR proceeding.This proposed change is a balanced approach that will clarify and circumscribe thepreclusive effect of IPR and PGR proceedings, while preventing serial administrative challenges8
to patents by related parties that exercise control over and provide funding to the Petitioner ofrecord.IV. ConclusionWe believe that the foregoing revisions to the rules will ensure that the PTO deliversefficient, cost-effective legal outcomes for all parties engaging in IPR or PGR proceedings.Adoption of the ACC’s proposals will encourage companies to embrace these new proceedingsas a part of their overall Intellectual Property strategy and will provide companies and the publicgreater certainty regarding the quality of patents.The ACC and its Intellectual Property Committee sincerely appreciate the opportunity toprovide these comments and welcome any questions respecting them.Sincerely,Monica WinghartCommittee ChairIntellectual Property CommitteeDouglas B. LuftmanAdvocacy Subcommittee ChairIntellectual Property CommitteeAmar D. SarwalVice President and Chief Legal StrategistAssociation of Corporate Counsel1025 Connecticut Avenue, N.W., Suite 200Washington, D.C. 20036(202) 293-4103 x3659
Page 1 and 2: April 9, 2012The Honorable David J.
Page 3: C. The ACC and its Intellectual Pro
Page 10 and 11: EXHIBIT 1
Page 12 and 13: should be made applicable to that c
Page 14 and 15: dated and signed by counsel of reco
Page 16 and 17: (c) A chart identifying specificall
Page 19 and 20: is made by a party. If the defendan
Page 21 and 22: infringement that will rely on an o
Page 23 and 24: esolving differences, and facilitat
Page 25 and 26: (a) Not later than 45 days after se
Page 29 and 30: 1. SC OPE O F RU L ES1-1. TitleThes
Page 31 and 32: following categories of discovery r
Page 33 and 34: (a)(b)(c)(d)(e)Documents (e.g., con
Page 35 and 36: (b)(c)Recent discovery of material,
Page 37 and 38: (b)(c)(d)(e)of all references from
Page 41 and 42: consent or object. Non-exhaustive e
Page 43: (e) Whether any party proposes to c

ACC and IP Committee Letter regarding IPR and PGR

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