On May 26, 2008, Troll Busters LLC (Troll Busters) filed a request for inter partes reexamination of U. S. Patent No. 6,869,779 (“the ‘799 patent”). Originally, Troll Busters named itself as both the sole real party in interest and the third party requester. However, as the PTO became aware of Troll Buster’s website, http://www.troll-busters.com, questions arose as to whether the actual real party in interest was correctly identified as required by 35 U.S.C. § 311(b)(1) and 37 C.F.R. 1.915(b)(8). On their website, Troll Busters proclaims that “Troll Busters invalidates patents, not just any patents but patents being asserted by patent trolls, those ugly beasts who try to dominate the innovations of others….Troll Busters takes aim and fires in our own name. The patent Troll will never know who or how many are behind the ‘hit’.” If Troll Busters had filed an ex-parte re-examination request the real party in question would not have been an issue. However, in inter partes reexamination, “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… and be compensated by that party for the filing of the request …without naming the [other] party[.]” Inter Partes Reexamination Proceeding Control No. 95/001,045, Decision Vacating Filing Date, p. 7-8, August 25, 2008. Furthermore, “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 parties who paid for, or directed/controlled, the filing of the request for inter partes reexamination.” Id at 8. The provisions 35 U.S.C. §§ 315 and 317 and 37 C.F.R. 1.907 were intended to limit the potential for circumvention of the inter partes reexamination estoppel provisions. Primarily, these provisions were drafted to prevent a requester, and its privies, from filing additional inter partes reexamination requests on any such patent that would contravene the estoppel provisions of sections 315 as well as 317. Upon awareness of the Troll Buster’s business model, the PTO, after originally assigning a filing date to Troll Buster’s request, issued a show cause order to verify the real parties in interest. However, in response Troll Busters did not identify if other individuals involved in the project engaged Troll Busters to file the request for inter partes reexamination. Troll Busters claimed that future financing will be paid by Troll Busters, but did not attest to who paid the expenses for filing the original request. In defense, Troll Busters claimed it provided freedom to operate services and undertook such “projects” on its own volition to open up markets and broaden competition. However, Troll Busters also admitted it was “seeking” foundation grants to continue its work. Although the Office found the relationship between grants and filing of specific requests to be unclear, the Office decided that whoever provided the grant would appear to be a real party in interest. The Office concluded its “Decision Vacating Filing Date” with a list of three actions undertaken by the requester which may constructively establish another entity as a 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. 2) Obtain money for foundation grants, file a “quid pro quo” request for 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 reexamination is to be based) of the request whether such is termed “technical review” or some other phrase.
