Allegations of Improper Communications with USPTO Officials in Blackberry Reexam

Thanks to Steve Nipper and Hal Wegner for pointing to allegations of improper communications by USPTO officials during the blackberry patent reexamination proceedings. In it's "Response to Final Office Action On February 24, 2006," NTP alleges, among other things:

. . . On Saturday, January 1, 2005, Theodore W. Kassinger, the Deputy Secretary
of the Department of Commerce, sent an email to Mr. Dudas to arrange a meeting
with RIM officials. The substance of Mr. Kassinger's email to Mr. Dudas has been redacted without the assertion of any claim of privilege or exemption under FOIA. Redaction of the email without an assertion of a privilege or exemption is improper. Further, to the extent that Mr. Kassinger's email reflects the substance of any discussion with RIM or its representatives, that information should have bee noted in the record of decision.

Mr. Dudas responded on January 2 thanking Mr. Kassinger for arranging the meeting. He indicated he would be in his office on Tuesday, January 4, and that Jennifer Lo, the Under Secretary of Commerce for Intellectual Property, could work with Jane Dana, the Acting General Counsel of the Department of Commerce, to "set up a convenient time to meet with Mr. Cameron", a lawyer for RIM. A copy of this
email is attached to the Anderson Declaration as Exhibit 5 p. 1.

Copied on Mr. Dudas' January 2 email, in addition to Ms. Lo, were Steve Pinkos, Deputy Under Secretary of Commerce and Deputy Director of the PTO, and Eleanor
K. Meltzer, an attorney-advisor in the office of Legislative and International Affairs of the PTO. Ms. Meltzer forwarded the emails between Mr. Kassinger and Mr. Dudas to James Toupin, General Counsel of the PTO, and John Whealan, Deputy General Counsel and Solicitor for the PTO. NTP infers from these facts and circumstances that Messrs. Toupin and Whealan joined Mr. Dudas and other Commerce Department and PTO officials to meet with Jim Balsille, President and Co-CEO of RIM, and Don Cameron, RIM's Canadian counsel, on January 4, 2005. See Anderson Declaration Exhibit 5, p. 45.

To prepare for the meeting with Mr. Balsille, Mr. Dudas requested that the PTO prepare briefing materials for him on, among other things, the status of the reexaminations of Patent Owner's patents and the lnfrngement Action. Ms. Meltzer sent a "High" Importance email at 9:36 A.M. on January 3 requiring, by 3:00 P.M. that day, the PTO to provide the following briefing materials for Mr. Dudas:

• Identification of the various outstanding patents (by number and owner), and whether they are inter partes reexams (IPRs) or director-ordered re-exams (DORs);
• current status of each;
• Procedural history of each IPR and DOR;
• Information-for each-on the volume of new materials being reviewed and the number of USPTO employees reviewing materials;
• summary of the litigation history; and
• Outstanding issues before the USPTO.

A copy of this email is attached to the Anderson Declaration as Exhibit 2, p. 87.

Ms. Meltzer's email indicated the briefing materials were for a meeting on January 4, at 4:00 P.M., where "Mr. Dudas, other Commerce Department representatives, and possibly representatives from the Department of Justice will meet to discuss the 'RIM' case." Prior to the meeting with RIM, an internal PTO meeting was scheduled for 11 :30 AM on January 4 with the subject "briefing RE: RIM". The email indicates "Required Attendees" were Mr. Dudas, Mr. Pinos, Nicholas Godici, Robert Bah, Elizabeth Doughery, Mr. Toupin, Mr. Whealan, Lois Boland, John Doll and Ms. Meltzer. A copy of this email is attached to the Anderson Declaration as Exhibit 3, p. 99.

It appears from the FOIA documents that the briefing materials Mr. Dudas requested for these meetings pertained directly to the reexaminations of Patent Owner's patents. NTP infers from these, the briefing materials contained non-public information related to the merits of the reexaminations, and the reexaminations where discussed in the meeting with RIM.

Further evidence that a meeting was scheduled between RIM and PTO officials involving the "RTP reexaminations" is contained in an email from Elizabeth Doughert in the Office of Patent Legal Administration. On March 31, 2005, Ms. Dougherty wrote to newly appointed PTO Commissioner John Doll to inquire about the propriety of "industry leaders" seeking an "audience with the Director." Ms. Dougherty states that although she does not know whether the meeting actually occurred, ''The present question reminds me somewhat of the situation in the
RIM/NTP reexaminations where RIM wished to meet with officials at the Department of Commerce and Jim Toupin and John Whealan were to attend the meeting." See Anderson Declaration Exhibit 4, p. 5.

Patent Owner believes there are numerous communications with the third-party requester related to the January 4, 2005 meeting that have not been produced in response to the FOIA request, and which have not been included in the record of decision as required by regulation. . . .

Under 37 CFR § 1.955, interviews "which discuss the merits of the proceeding" are prohibited in inter partes reexamination proceedings.