- Emnos USA Corp. v. Dunnhumby LimitedInstitution deniedPTAB · Dec 30, 2015 · CBM2015-00162 · APJ Timothy J Goodson · CBM · Institution
The Board denied institution on all challenged claims because the Petition did not establish that the ’246 patent qualifies as a covered business method patent.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We have jurisdiction under 35 U.S.C. § 324. Pursuant to 35 U.S.C. § 324(a), the Director may not authorize a covered business method patent review unless the information in the petition, if unrebutted, “would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” As explained below, we do not institute a covered business method patent review because the Petition does not establish that the ’246 patent qualifies as a covered business method patent.” slip op. at 2
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“remains deficient. The Petition relies on the Oracle Pro*C reference as disclosing the script template limitations of the independent claims, but as Patent Owner points out, the Petition does not present evidence establishing that Oracle Pro*C qualifies as a prior art printed publication. See Pet. 32– 34; Prelim. Resp. 50–53. Petitioner asserts that Oracle Pro*C “was published in 2002” but does not point to any specific evidence of its publication or public availability in 2002. Id. at 33. If Petitioner’s assertion is based on the “March 2002” statement that appears on the cover of the Oracle Pro*C reference, that statement is hearsay, and Petitioner does not argue that any hearsay exception or exclusion applies. See Ex. 1041, 1; see also ServiceNow, Inc. v. Hewlett-Packard Co., Case IPR2015-00716, slip op. at 16 (PTAB Aug. 26, 2015) (Paper 13) (“To the extent that Petitioner relies on the date on the face of each exhibit and the indications of availability of these references for download . . . for the truth of that information, and considering that Petitioner has not established that any hearsay exception or exclusion applies, we agree [that the statements are inadmissible hearsay].”). Petitioner also argues, with citation to the testimony of Dr. Smyth, that Oracle Pro*C is a reference used by programmers who develop applications in Oracle database environments. Pet. 33 (citing Ex. 1030 ¶ 57). However, neither the Petition nor Dr. Smyth explains how or when the specific Programmer’s Guide, Release 9.2 that Petitioner relies on as the Oracle Pro*C reference (Ex. 1041) was made available to skilled artisans. Because the Petition does not establish that Oracle Pro*C qualifies as prior art, Section VIII.B. of the Petition does not remedy the deficient showing in Section III.D. of the Petition on the first consideration of the technological” slip op. at 11
§ 102 anticipationDiscretionary denialPatents in suitUS 8,214,246 - American Express Company / American Express Travel Related Services Company, Inc. v. Signature Systems, LLCInstitution deniedPTAB · Dec 28, 2015 · CBM2015-00153 · APJ Michael P Tierney · CBM · Institution
The Board denied institution for claims 1–16 because those originally issued claims had been cancelled or amended during reexamination; it did not reach the merits.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We are persuaded that the particular facts of this proceeding counsel against institution. Our decision whether to institute a covered business method patent review must be based on the claims of the ’402 patent as it exists today. See 35 U.S.C. § 324(a). Petitioner challenged original claims 1–16, which Patent Owner has either cancelled or amended during ex parte reexamination. See Ex. 3001. Original claims 1–16, as challenged by Petitioner, no longer exist, and any decision as to the patentability of original claims 1–16 we might reach in this proceeding would be moot and purely advisory. We do not see how the efficient administration of the Office, or the just, speedy, and inexpensive resolution of every proceeding, would be secured by instituting a covered business method patent review in this proceeding. 37 C.F.R. § 42.1(b). In denying institution, we do not reach the merits of the unpatentability arguments in the Petition, and express no opinion on those arguments at this time. Furthermore, based on the current record, we agree with Patent Owner that Petitioner is not prejudiced as they may elect to file a new Petition directed to the amended claims.3” slip op. at 8
Discretionary denialPatents in suitUS 8,423,402 - Corning Optical Communications RF, LLC v. PPC Broadband, Inc.Rehearing deniedPTAB · Dec 9, 2015 · IPR2014-00736 · APJ Jacqueline Wright Bonilla · IPR · Rehearing
The Board denied Corning’s rehearing request, leaving intact dismissal of the petitions because Corning Inc. and Corning Optical Communications LLC were unnamed real parties in interest.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co. Inc., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted). A request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed.” 37 C.F.R. § 42.71(d).” slip op. at 3
- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for patent ownerDecided for patent owner
“proof on Petitioner.” Req. Reh’g. 9–10. As noted in our Decision, we placed the ultimate burden of proof, i.e., burden of persuasion, on Patent Owner, not Petitioner. Dec. 13–14 (stating that if “a patent owner raises the RPI issue after institution and after filing a response to the petition, and in the form of a motion . . . , the burden of proof is on the patent owner as the proponent of the motion”). As explained recently by the Federal Circuit, the “burden of persuasion ‘is the ultimate burden assigned to a party who must prove something to a specified degree of certainty,’ such as by a preponderance of the evidence.” Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (quoting Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008)). Notwithstanding Patent Owner’s burden of persuasion, however, once it came forward with sufficient evidence indicating that Petitioner should have identified Corning Inc. and Corning NC as RPIs (as cited and discussed in Patent Owner’s Motion), a “shifting burden” came into play, i.e., a “burden of production” on Petitioner. Id. at 1379. To address that burden of production, Petitioner had an opportunity to “produc[e] additional evidence and present[] persuasive argument based on new evidence or evidence already of record” in its Opposition to Patent Owner’s Motion to Dismiss. Id. (citations omitted). It was in this capacity, only after determining that Patent Owner had made a sufficient showing regarding RPI, that we stated that Petitioner did not point “to credible evidence indicating that if interests of Corning Inc. and Petitioner ever diverged, Mr. Hulme and Mr. Vynalek, who are employees of Corning Inc. (Ex. 2100, 12– 14), would act in a matter contrary to Corning Inc.’s interests.” Dec. 22; Req. Reh’g. 9. Thereafter, based on all evidence before us, we concluded that Patent Owner had established by a preponderance of the evidence that Corning NC and Corning Inc. should have been named as RPIs in these proceedings. Dec. 13–14, 16, 25. Thus, Petitioner does not persuade us that we impermissibly placed the burden of persuasion on Petitioner.” slip op. at 5
Discretionary denialPatents in suitUS 6,676,446 - Corning Optical Communications RF, LLC v. PPC Broadband, Inc.Rehearing deniedPTAB · Dec 9, 2015 · IPR2014-00440 · APJ Jacqueline Wright Bonilla · IPR · Rehearing
The Board denied Corning’s rehearing request, leaving in place dismissal of the petitions, termination of the reviews, and vacatur of the institution decisions for failure to identify all RPIs.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co. Inc., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted). A request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed.” 37 C.F.R. § 42.71(d).” slip op. at 3
- PTAB / AIA Trials › Real party in interest / privityDecided for patent owner
“Notwithstanding Patent Owner’s burden of persuasion, however, once it came forward with sufficient evidence indicating that Petitioner should have identified Corning Inc. and Corning NC as RPIs (as cited and discussed in Patent Owner’s Motion), a “shifting burden” came into play, i.e., a “burden of production” on Petitioner. Id. at 1379. To address that burden of production, Petitioner had an opportunity to “produc[e] additional evidence and present[] persuasive argument based on new evidence or evidence already of record” in its Opposition to Patent Owner’s Motion to Dismiss. Id. (citations omitted). It was in this capacity, only after determining that Patent Owner had made a sufficient showing regarding RPI, that we stated that Petitioner did not point “to credible evidence indicating that if interests of Corning Inc. and Petitioner ever diverged, Mr. Hulme and Mr. Vynalek, who are employees of Corning Inc. (Ex. 2100, 12– 14), would act in a matter contrary to Corning Inc.’s interests.” Dec. 22; Req. Reh’g. 9. Thereafter, based on all evidence before us, we concluded that Patent Owner had established by a preponderance of the evidence that Corning NC and Corning Inc. should have been named as RPIs in these proceedings. Dec. 13–14, 16, 25. Thus, Petitioner does not persuade us that we impermissibly placed the burden of persuasion on Petitioner.” slip op. at 5
- PTAB / AIA Trials › Motions to amend / substitute claimsDenied
“sufficient “good cause” exists to waive our rules to allow correction of the RPIs identified in the Petitions without a loss of original filing dates. Dec. 24–25 (citing Reflectix, Inc. v. Promethean Insulation Tech. LLC, Case IPR2015-00039, slip op. at 13–18 (PTAB April 24, 2015) (Paper 18)). Petitioner’s incorrect determination of RPIs in its Petition, as argued in its Opposition to Patent Owner’s Motion to Dismiss and its Request now, “did not arise out of some mistake of fact.” Reflectix, Case IPR2015-00039, slip. op at 14 (Paper 18). Rather, Petitioner asserted that it “designated itself as the only RPI in good faith at the time the Petitions were filed, based on the guidance in the [Trial Practice Guide] before the Board’s RPI decisions cited in the Decision even existed.” Req. Reh’g. 12, 14–15. In other words, Petitioner “misunderstood the law as it applies to the RPI determination.” Reflectix, Case IPR2015-00039, slip. op at 14 (Paper 18). We agree with our colleagues in Reflectix that the Trial Practice Guide provides notable guidance, “as it devotes over a page of the Federal Register to discussing RPI and privity, and cites to precedent including the Supreme Court decision in Taylor v. Sturgell.” Id. at 14–15 (citing 77 Fed. Reg. at 48,759 (citing 553 U.S. 880 (2008)). Furthermore, a number of relevant Board decisions concerning RPI had issued by March 2, 2015, when we authorized Patent Owner to file its Motion for Additional Discovery regarding whether Corning Inc. and Corning NC should have been listed as RPIs. Paper 31. Petitioner did not request authorization to correct its Petitions thereafter, but instead suggested the possibility of correction in its Opposition to Patent Owner’s Motion to Dismiss. Opp. 1, 22, 23, 25. Our determination that Petitioner’s Motion to Dismiss was timely did not undercut the significance of Petitioner’s actions here. Req. Reh’g. 14–15. We are not persuaded, given the facts of this case, that Petitioner’s failure to name all RPIs in its Petitions, and its failure to request authorization to correct its Petitions regarding RPIs during trial, constitute a type of “error” that warrants permitting correction at this stage, without altering filing dates of the Petitions, even assuming no evidence of bad faith by Petitioner exists. Req. Reh’g. 15, 14. In addition, regardless of whether Petitioner “erred” when preparing its Petitions, Petitioner continued to maintain strongly its position regarding RPIs, even after it had access to all facts and evidence before us when we issued our Decision, thereby indicating that its position was not an “error” on Petitioner’s part, but rather a strategic position. As stated in 35 U.S.C. § 312(a)(2) (emphasis added), a petition for inter partes review “may be considered only if— . . . the petition identifies all real parties in interest.” In view of Petitioner’s actions here, we are not persuaded that we abused our discretion in determining the appropriate remedy here was to grant Patent Owner’s Motions to Dismiss, terminate the instant proceedings, and vacate our Decisions on Institution.” slip op. at 12
Discretionary denialPatents in suitUS 8,597,041 - Corning Optical Communications RF, LLC v. PPC Broadband, Inc.Rehearing deniedPTAB · Dec 9, 2015 · IPR2014-00441 · APJ Jacqueline Wright Bonilla · IPR · Rehearing
The Board denied rehearing, leaving intact dismissal of the petitions, termination of the proceedings, and vacatur of institution decisions for failure to identify all real parties in interest.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Under 37 C.F.R. § 42.71(c), “[w]hen rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co. Inc., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted). A request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed.” 37 C.F.R. § 42.71(d).” slip op. at 3
- PTAB / AIA Trials › Real party in interest / privityDecided for patent owner
“Notwithstanding Patent Owner’s burden of persuasion, however, once it came forward with sufficient evidence indicating that Petitioner should have identified Corning Inc. and Corning NC as RPIs (as cited and discussed in Patent Owner’s Motion), a “shifting burden” came into play, i.e., a “burden of production” on Petitioner. Id. at 1379. To address that burden of production, Petitioner had an opportunity to “produc[e] additional evidence and present[] persuasive argument based on new evidence or evidence already of record” in its Opposition to Patent Owner’s Motion to Dismiss. Id. (citations omitted). It was in this capacity, only after determining that Patent Owner had made a sufficient showing regarding RPI, that we stated that Petitioner did not point “to credible evidence indicating that if interests of Corning Inc. and Petitioner ever diverged, Mr. Hulme and Mr. Vynalek, who are employees of Corning Inc. (Ex. 2100, 12– 14), would act in a matter contrary to Corning Inc.’s interests.” Dec. 22; Req. Reh’g. 9. Thereafter, based on all evidence before us, we concluded that Patent Owner had established by a preponderance of the evidence that Corning NC and Corning Inc. should have been named as RPIs in these proceedings. Dec. 13–14, 16, 25. Thus, Petitioner does not persuade us that we impermissibly placed the burden of persuasion on Petitioner.” slip op. at 5
Discretionary denialPatents in suitUS 8,562,366 - Zhejiang Yankon Group, Ltd. v. Cordelia Lighting, Inc.Institution deniedPTAB · Nov 25, 2015 · IPR2015-01420 · APJ Jacqueline T Harlow · IPR · Institution
The Board denied institution because Zhejiang Yankon Group failed to identify Yankon-US as a real party-in-interest, and a corrected petition would be time-barred.
RulingsInstitution decision- PTAB / AIA Trials › Real party in interest / privityInstitution denied rpiDenied
“Because Cordelia provides sufficient rebuttal evidence that reasonably brings into question the accuracy of Yankon-China’s identification of real” slip op. at 17
- PTAB / AIA Trials › §315(b) time barInstitution denied time barDenied
“E. Corrected Petition Would Be Time-Barred The Petition was accorded a filing date of June 16, 2015. Paper 3, 1. At this stage of the proceeding, correction of the Petition to include Yankon- US as a real party-in-interest would require assignment of a new filing date. See 37 C.F.R. § 42.106(b). Granting Yankon-US a new filing date would be futile in this instance because, even if corrected, the earliest filing date that could be accorded to the Petition would fall outside the one-year time bar for pursuing inter partes review set forth in 35 U.S.C. § 315(b). III. ORDER In consideration of the foregoing, it is ORDERED that the Petition is DENIED and no trial is instituted.” slip op. at 19
Discretionary denialPatents in suitUS 8,454,204 - Acxiom Corporation v. Phoenix Licensing, LLCInstitution deniedPTAB · Nov 19, 2015 · CBM2015-00134 · APJ Stacey G White · CBM · Institution
The Board denied the petitions because Acxiom did not establish standing as a real party in interest or privy of an entity sued for infringement.
RulingsInstitution decision- PTAB / AIA Trials › Real party in interest / privityInstitution denied rpiDenied
“authority with respect to the defense, settlement, or compromise of any such claim.” Id. As to the Declaration, Brian Williamson, Senior Account Executive for Acxiom’s Gerber Account, declares that it is his “understanding that Gerber sent Acxiom notice of a demand for indemnification for costs and potential liabilities arising from the [patent infringement suits involving the subject patents] referencing the indemnification provision in the Services and Data Agreement.” Ex. 1128 ¶¶ 2, 6. We do not find this evidence to be sufficient to show that Petitioner has standing to bring this Petition. See 37 C.F.R. § 42.304(a) (stating that it is Petitioner’s burden to “demonstrate that the patent for which review is sought is a covered business method patent, and that the petitioner meets the eligibility requirements of § 42.302.”). As Patent Owner points out, “the Petition does not supply the demand for indemnification, Acxiom’s response, or any correspondence regarding indemnification.” Prelim. Resp. 4; cf. General Electric Co. v. Transdata, Inc., Case IPR2014-01380, slip op. at 7–8 (PTAB Apr. 15, 2015) (Paper 34) (an agreement to indemnify as to a specific lawsuit was sufficient evidence of privity). Similarly, the Williamson Declaration does not provide any details as to the purported demand for indemnity nor does it inform us of Petitioner’s view as to the merits of any such demand for indemnity. Nor does Mr. Williamson testify as to whether the Agreement was in force at the relevant time. Thus, Petitioner has not provided evidence sufficient to show that it has an obligation to indemnify Gerber or any other entity that may have been sued for infringement.3 Also, as discussed 3 AAA also is listed as a real party-in-interest. Pet. 3. Petitioner, however, provides no argument or evidence as to why it believes that AAA is a real party-ininterest of Petitioner. Thus, we have no basis to ascertain whether Petitioner may above, Petitioner has not provided evidence sufficient to show what services, if any, Petitioner provides to Gerber. Therefore, Petitioner does not provide us with evidence sufficient to show that Gerber is a real party-in-interest of Petitioner. Also, the heavily redacted Agreement does not provide us with sufficient evidence regarding the relationship between these entities to show that Gerber is a privy of Petitioner sufficient to support Petitioner’s argument for standing. Thus, we do not have sufficient evidence to show that Petitioner has proper standing to bring this Petition. Therefore, we deny Petitioner’s request to institute a covered business method review of the challenged claims. See Changes to Implement Inter Partes Review Proceedings, Post-Grant Review Proceedings, and Transitional Program for Covered Business Method Patents, 77 Fed. Reg. 48,680, 48,709 (Aug. 14, 2012) (Response to Comment 102) (“Facially improper standing is a basis for denying the petition without proceeding to the merits of the decision.”).” slip op. at 5
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Motion to exclude, deniedDenied
“Default Protective Order and moves to seal Exhibits 1128 and 1129, as confidential pursuant to the Default Protective Order. Paper 5, 1. These Exhibits, however, are cited extensively in the Decision. Confidential information relied upon in a decision to grant or deny a request to institute ordinarily will be made public. Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,760 (Aug. 14, 2012). We are not persuaded that there is sufficient reason to depart from that principle. Therefore, Petitioner’s Motion to Seal is denied. Accordingly, we order Exhibits base its standing on its relationship with AAA. See Acxiom Corp. v. Phoenix Licensing, LLC, Case CBM2015-00068, slip. op at 4–6 (PTAB Aug. 11, 2015) (Paper 23). 1128 and 1129 to be UNSEALED forty-five (45) days after the entry date of this decision.” slip op. at 6
Discretionary denialPatents in suitUS 8,234,184 - Acxiom Corporation v. Phoenix Licensing, LLCInstitution deniedPTAB · Nov 19, 2015 · CBM2015-00137 · APJ Stacey G White · CBM · Institution
The Board denied the petitions because Acxiom did not establish standing to seek covered business method review; it did not reach the merits of the challenged claims.
RulingsInstitution decision- PTAB / AIA Trials › Real party in interest / privityDenied
“authority with respect to the defense, settlement, or compromise of any such claim.” Id. As to the Declaration, Brian Williamson, Senior Account Executive for Acxiom’s Gerber Account, declares that it is his “understanding that Gerber sent Acxiom notice of a demand for indemnification for costs and potential liabilities arising from the [patent infringement suits involving the subject patents] referencing the indemnification provision in the Services and Data Agreement.” Ex. 1128 ¶¶ 2, 6. We do not find this evidence to be sufficient to show that Petitioner has standing to bring this Petition. See 37 C.F.R. § 42.304(a) (stating that it is Petitioner’s burden to “demonstrate that the patent for which review is sought is a covered business method patent, and that the petitioner meets the eligibility requirements of § 42.302.”).” slip op. at 5
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Denied
“Default Protective Order and moves to seal Exhibits 1128 and 1129, as confidential pursuant to the Default Protective Order. Paper 5, 1. These Exhibits, however, are cited extensively in the Decision. Confidential information relied upon in a decision to grant or deny a request to institute ordinarily will be made public. Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,760 (Aug. 14, 2012). We are not persuaded that there is sufficient reason to depart from that principle. Therefore, Petitioner’s Motion to Seal is denied. Accordingly, we order Exhibits” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied rpiInstitution denied
“their real parties-in-interest or privies that have been sued or charged with infringement of a “covered business method patent,” which does not include patents for “technological inventions.” AIA §§ 18(a)(1)(B), 18(d)(1); see 37 C.F.R. § 42.302. Of key importance in this case is the requirement that “a person may not file a petition for a transitional proceeding with respect to a covered business method patent unless the person or the person’s real party in interest or privy has been sued for infringement of the patent or has been charged with infringement under that patent.” AIA § 18(a)(1)(B) (emphases added); see 37 C.F.R. § 42.302(a). Regarding this requirement, Petitioner does not allege that it has been charged with or sued for infringement, but instead contends that its” slip op. at 3
Discretionary denialPatents in suitUS 7,890,366 - Acxiom And Gerber v. Phoenix Licensing, LLCInstitution deniedPTAB · Nov 19, 2015 · CBM2015-00139 · APJ Stacey G White · CBM · Institution
The Board denied institution because Acxiom did not show it had standing as a real party in interest or privy of an entity sued for infringement.
RulingsInstitution decision- PTAB / AIA Trials › Real party in interest / privityInstitution denied rpiInstitution denied
“authority with respect to the defense, settlement, or compromise of any such claim.” Id. As to the Declaration, Brian Williamson, Senior Account Executive for Acxiom’s Gerber Account, declares that it is his “understanding that Gerber sent Acxiom notice of a demand for indemnification for costs and potential liabilities arising from the [patent infringement suits involving the subject patents] referencing the indemnification provision in the Services and Data Agreement.” Ex. 1128 ¶¶ 2, 6. We do not find this evidence to be sufficient to show that Petitioner has standing to bring this Petition. See 37 C.F.R. § 42.304(a) (stating that it is Petitioner’s burden to “demonstrate that the patent for which review is sought is a covered business method patent, and that the petitioner meets the eligibility requirements of § 42.302.”). As Patent Owner points out, “the Petition does not supply the demand for indemnification, Acxiom’s response, or any correspondence regarding indemnification.” Prelim. Resp. 4; cf. General Electric Co. v. Transdata, Inc., Case IPR2014-01380, slip op. at 7–8 (PTAB Apr. 15, 2015) (Paper 34) (an agreement to indemnify as to a specific lawsuit was sufficient evidence of privity). Similarly, the Williamson Declaration does not provide any details as to the purported demand for indemnity nor does it inform us of Petitioner’s view as to the merits of any such demand for indemnity. Nor does Mr. Williamson testify as to whether the Agreement was in force at the relevant time. Thus, Petitioner has not provided evidence sufficient to show that it has an obligation to indemnify Gerber or any other entity that may have been sued for infringement.3 Also, as discussed” slip op. at 5
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Motion to exclude, deniedDenied
“Default Protective Order and moves to seal Exhibits 1128 and 1129, as confidential pursuant to the Default Protective Order. Paper 5, 1. These Exhibits, however, are cited extensively in the Decision. Confidential information relied upon in a decision to grant or deny a request to institute ordinarily will be made public. Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,760 (Aug. 14, 2012). We are not persuaded that there is sufficient reason to depart from that principle. Therefore, Petitioner’s Motion to Seal is denied. Accordingly, we order Exhibits” slip op. at 6
Discretionary denialPatents in suitUS 7,860,744 - Acxiom Corporation v. Phoenix Licensing, LLCInstitution deniedPTAB · Nov 19, 2015 · CBM2015-00138 · APJ Stacey G White · CBM · Institution
The Board denied institution because Acxiom did not establish standing as a real party in interest or privy of an entity sued for infringement.
RulingsInstitution decision- PTAB / AIA Trials › Real party in interest / privityInstitution denied rpiInstitution denied
“authority with respect to the defense, settlement, or compromise of any such claim.” Id. As to the Declaration, Brian Williamson, Senior Account Executive for Acxiom’s Gerber Account, declares that it is his “understanding that Gerber sent Acxiom notice of a demand for indemnification for costs and potential liabilities arising from the [patent infringement suits involving the subject patents] referencing the indemnification provision in the Services and Data Agreement.” Ex. 1128 ¶¶ 2, 6. We do not find this evidence to be sufficient to show that Petitioner has standing to bring this Petition. See 37 C.F.R. § 42.304(a) (stating that it is Petitioner’s burden to “demonstrate that the patent for which review is sought is a covered business method patent, and that the petitioner meets the eligibility requirements of § 42.302.”). As Patent Owner points out, “the Petition does not supply the demand for indemnification, Acxiom’s response, or any correspondence regarding indemnification.” Prelim. Resp. 4; cf. General Electric Co. v. Transdata, Inc., Case IPR2014-01380, slip op. at 7–8 (PTAB Apr. 15, 2015) (Paper 34) (an agreement to indemnify as to a specific lawsuit was sufficient evidence of privity). Similarly, the Williamson Declaration does not provide any details as to the purported demand for indemnity nor does it inform us of Petitioner’s view as to the merits of any such demand for indemnity. Nor does Mr. Williamson testify as to whether the Agreement was in force at the relevant time. Thus, Petitioner has not provided evidence sufficient to show that it has an obligation to indemnify Gerber or any other entity that may have been sued for infringement.3 Also, as discussed” slip op. at 5
- ExcludeDenied
“Default Protective Order and moves to seal Exhibits 1128 and 1129, as confidential pursuant to the Default Protective Order. Paper 5, 1. These Exhibits, however, are cited extensively in the Decision. Confidential information relied upon in a decision to grant or deny a request to institute ordinarily will be made public. Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,760 (Aug. 14, 2012). We are not persuaded that there is sufficient reason to depart from that principle. Therefore, Petitioner’s Motion to Seal is denied. Accordingly, we order Exhibits base its standing on its relationship with AAA. See Acxiom Corp. v. Phoenix Licensing, LLC, Case CBM2015-00068, slip. op at 4–6 (PTAB Aug. 11, 2015) (Paper 23). 1128 and 1129 to be UNSEALED forty-five (45) days after the entry date of this decision.” slip op. at 6
Discretionary denialPatents in suitUS 8,738,435
Holdings, summaries, rulings, issues, outcomes, winners and claim constructions shown for a decision were generated by a large language model reading the opinion. They are a guide to the decision, not the decision. Confirm every one against the court's own text before relying on it. Outcomes read from the patent owner’s side. Party names are extracted from the decision and are missing on about 900 short Director denials and scans, which carry the trial number instead.