SANFORD J. A SMAN
ATTORNE Y A T LAW

570 VJNINGTON CO li RT
ATLANTA, G EORGIA 30350 - U.S. A .
Telephone: (770) 391-0215

E-moil: sandy@asman.com

Facsimile: (770) 668-\1144

May 14. 2015

Via U.S. Mail a nd Email ro Danicl(@.eflorg
Daniel Nazer and Eleccronic Frontier Foundation (··El-!"")
815 Ecldy Street
San Francisco CA 94109
Re:

Scott A. Horstcmeyer, l::sq.
Our File : I 70809-70 l 0

Dear Mr. Nazer and EfF:

I represent Scou A. Horsremeyer, Esq. an attorney-at-law and member in good standing
of the Bars of Georgia. Ohio, and the District of Columbia. Tn addition, Mr. Horstcmeycr is a
Registered Patent Allomey, duly licensed to practice before the Linited States Patent and
Trademark Office ("the PTO").
IL has come to our :mention that on or about April 30. 2015 an online ··article"' entitled
"Siupid PQlenr ofthe .'1!0111/r: Eclipse JP Casts A Shadow 0-.·er Innovation"' wa~ publisherl by the
Elcccronic Fromicr Foundation ("'£Ff"') under the byline ofMr. Nazer. While both Mr. Nazer
and the E.FF are entitled to eirpress their opinions, such entitlement does not extend to the
publication of false. malicious. and defamatory remarks made under the pretext of"reporring".
The article specifically names. and maliciously defames, Mr. Horstemeyer in several ways. ln
particular, the false, malicious. and defamatory remarks in the article include. at least. the
following stau:rnents:
A.

" P at ent 11pplicants and their a ttorn eys huve a n ethical obligation to disclose any

inJ'ormatioo maicriaJ to patcotability."
In fact. patent attorneys and applicants are obligated by Title 37, Code ofFe~eml
Regulations. Section 1.56 (rather than by an "ethical obligation·", as incorrectly stated in the
article) LO disclose information that is relevant co the patentabiliiy of claims pending in an
existing application. 37 CfR §1.56 Cll.'J)ressly states. "' Tltere is 110 duty to s uhmh i11formation
wltic/J is 1101 material to tire pntentabilily of any existing claim.~ Whi le the EFF article
(incorrectly) states and implies that Mr. Horstemeyer had an ethical duty to disclose Judge Wu's
order to the Patent E.'i:amincr. Mr. Horstcmeyer was under neither aa ethical nor a legal duiy to
do so, as Judge wu·s decision la) did not relate to the claims then under consideration; {b)
related to claims to different subject matter than lhat claimed in the patents invalidated by Judge
Wu and referenced in the article: and tc) was already made of record in the PTO (as set forth
below '~ith respect to the filing ofFoans AO 120). Specifically. the legal duty to disclose
infom1ation relates to prior art, so that the Examiner is able to make a derermioation as to the
relevance of such prior art to the patcntabiliiy of the claims based on 35 U.S.C. § I02 and 35
U.S.C. § 103. The specific issue addressed by District Judge Wu related to the issue of whether

 Daniel Nazer and Electronic Fromier Foundation ("'EFF.. )
May 14, 2015
- Page2 the claims in the patents before him ·were directed to pmemable subject mauer pursuant to 35
U.S.C. §JOI. rather than prior an of the cype thai would be c-0nsidered by a Patent Examiner
based on 35U.S.C.§102 or 35 U.S.C. §103. Further. subsequent to the U.S. Supreme Court's
decision in Alice Corp. v. CLS Bank. l 34 S.Ct. 2347 (2014). the PTO issued specific gu idelines
to its Examiners relating to the manner in which the Examiners were to determine subject matter
eli.gibi lity (See, /111p:1 \1w111. u.lf)LO.gav1pu1en1 laws-a11d-reg11/wions1exami11ation-po/icv/20 J.J.

mlerim-guidance-.mhjec/-mat[§r-t!ligibilil)•·O).

B.

" While Hor st emeyer has not made any genuine con tribution to notification
' technology,• he has shown advaJlced skill at gaming the patent system."

The foregoing statement impugns and defames Mr. Horstemeyer in his professions, both
as an inventor (who bas been awarded 28 U .S. Patents) and as an attorney, whereby it constitutes
libel, per se.

C.

"Tt appe.a rs Uorstemeyer hoped the Office woulcl nof notice flheA/ice] decision and
wo uld simply rubber-stamp his application."

As set out above, the PTO not only ··noticed" the Alice decision. but ir put into place
specific guidelines to address the issues raised therein. Further. it is the obligation of the Clerk
of every U.S. District Court to file a Form AO 120 wilh the PTO upon lhe filing of any civil
action relating to any patent (or rmdemark), whereby that form is made of record within the PTO.
In the case cited within the article. r.vo such Form AO 120's were. in fact, filed with the PTO.
thereby giving notice of' the pendency of the action involving the patents held by Judge Wu to
include claims that were not direc1ed to patentable subject matter. As the Clerks are aware, the
J'orm AO 120's must be filed both (a) when a patent (or trademark) is Lhe subject of an action~
and (b) when the action is concluded with a statement as to the outcome of the case, whereby
two AO 12o·s were filed with respect to each of the three patents that included claims
invalidated by Judge Wu as relating 10 ineligible subject matter. and the forms AO 120 that were
filed at !he conclusion of the matter ind uded aful/ copy of Judge Wu's opi11io11, wherefore
everything about which the article staled as 10 the failure 10 disclose information to the PTO was
demonstrably both factually and legally false.

ln view of the forcg,oing false, defamatory, and malicious statements made in the cited
article I am hereby demanding (a) that both Daniel Nazcr and the EFF immediately publish
retractions: (b) that the EFl~ publish an editorial expressly repudiating the false. defamatory . and
malicious statements set forth in the article; and (c) that both Daniel Nazer and the EFF provide
me with copies of both the retractions and editorials upon their publication. Absent immediate
compliance with the foregoing demands. and notification of the same by the close of busi ness on
May 22,_J-01~ I shall take such action as is appropriate without further notice.
Very truly yours,