- 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 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 - Acxiom Corporation v. Phoenix Licensing, LLCInstitution deniedPTAB · Nov 19, 2015 · CBM2015-00136 · APJ Stacey G White · CBM · Institution
The Board denied institution because Petitioner did not establish standing to seek covered business method review, failing to show it was a real party-in-interest or privy of a sued entity.
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.”).” 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 7,856,375 - Acxiom Corporation / Gerber Life Insurance Company et al. v. Phoenix Licensing, LLCInstitution deniedPTAB · Nov 19, 2015 · CBM2015-00135 · APJ Stacey G White · CBM · Institution
The Board denied institution because Acxiom did not show that Gerber was its real party in interest or privy, leaving Acxiom without CBM standing.
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.”).” 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
Discretionary denialPatents in suitUS 6,999,938 - Acxiom Corporation v. Phoenix Licensing, LLCInstitution deniedPTAB · Nov 19, 2015 · CBM2015-00140 · 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
“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)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 5,987,434 - Acxiom Corporation v. Phoenix Licensing, LLCRehearing deniedPTAB · Oct 29, 2015 · CBM2015-00068 · APJ Barry L Grossman · CBM · Rehearing
The Board denied Acxiom’s rehearing request, leaving in place the denial of CBM review because Acxiom itself did not meet the statutory standing requirement.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“an abuse of discretion. 37 C.F.R. § 42.71(c). The burdens and requirements of a request for rehearing are stated in 37 C.F.R. § 42.71(d): (d) Rehearing. . . . The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. Acxiom asserts that “from oversight or misapprehension” (Req. Reh’g 3) the” slip op. at 2
- PTAB / AIA Trials › Real party in interest / privityDecided for patent owner
“(emphases added). The statute further defines a “person” who may file a CBM petition as “a person who is not the owner of a patent.” 35 U.S.C. § 321(a).2 We construe the statute to mean that a person, such as a corporate petitioner, may file a CBM petition only if that individual entity, or its real parties in interest or privies, have been sued for, or charged with, infringement. See Joe Matal, A Guide to the Legislative History of the America Invents Act: Part II of II, 21 FED. CIR. B.J. 539, 626 (2012) (“[A] party may petition for a proceeding only if that party or its real parties in interest or privies have been ‘sued for infringement of the patent or . . . charged with infringement under that patent. ’” (emphases added)).” slip op. at 5
Discretionary denialPatents in suitUS 8,352,317 - Acxiom Corporation / AT&T Mobility LLC et al. v. Phoenix Licensing, LLCInstitution deniedPTAB · Aug 11, 2015 · CBM2015-00068 · APJ Barry L Grossman · CBM · Institution
The Board denied institution because Acxiom did not establish standing to seek covered business method review of claims 1, 9, 16, 18-25, 34, 49, 50-52, and 57.
RulingsInstitution decision- PTAB / AIA Trials › Real party in interest / privityInstitution denied rpiDenied
“business method patent review of the patent unless the petitioner, the petitioner's real party-in-interest, or a privy of the petitioner has been sued for infringement of the patent or has been charged with infringement under that patent.” 37 CFR § 42.302(a). Thus, Acxiom may acquire standing if (1) Acxiom has been sued for, or charged with, infringement of the patent for which it seeks review; or (2) if a party sued for, or charged with, infringement, is Acxiom’s real party-in-interest; or (3) if the party sued for, or charged with, infringement is a privy of Acxiom. Id. Petitioner has not directed us to persuasive evidence that it has standing under any of these options. The Petition does not assert that Acxiom has been sued or charged with infringement. We have not been directed to persuasive evidence that either Ford Motor Company or AT&T Mobility LLC, the parties sued for infringement of the ’317 patent, are Acxiom’s real party-in-interest or are privies of Acxiom. The allegation that Acxiom is a privy of one or more parties who have been sued for infringement (Pet. 20), even if supported by evidence, would not establish standing for Acxiom. During the September 2011 Senate debates on the AIA, Senator Schumer indicated that the word “privy,” in the context of § 18 of the AIA, “effectively means customers of the petitioner.” 157 Cong. Rec. S5432 (daily ed. Sept. 8, 2011) (statement of Sen. Schumer). Thus, for example, the fact that Ford has been sued for infringement of the ’317 patent does not thereby confer standing on every privy, or customer, of Ford to file a request for a covered business method patent review. Under the applicable statute and rules discussed above, in order to confer standing on Acxiom, the party sued must be a privy of Acxiom, not the” slip op. at 5
Discretionary denialPatents in suitUS 8,352,317 - Amazon.Com, Inc. / Amazon Web Services, Inc. v. Appistry, Inc.Institution deniedPTAB · Jul 13, 2015 · IPR2015-00480 · APJ Jo-Anne M Kokoski · IPR · Institution
The Board denied institution because the petition did not identify all real parties in interest and, even if corrected, would be untimely under § 315(b).
RulingsInstitution decision- PTAB / AIA Trials › Real party in interest / privityInstitution denied rpiDenied
“§ 312(a)(2) that a petition identify all real parties-in-interest is a threshold issue. See Atlanta Gas Light Co. v. Bennett Regulator Guards, Inc., Case IPR2013-00453, slip op. at 7–8 (PTAB Jan. 16, 2015) (Paper 88). We generally accept the petitioner’s identification of real parties-in-interest at the time of filing the petition. Our practice in this regard, however, acts as a rebuttable presumption that benefits the petitioner. When, as here, a patent owner provides sufficient rebuttal evidence that reasonably brings into question the accuracy of the petitioner’s identification of real parties-in-interest, the burden remains with the petitioner to establish that it has complied with the statutory requirement. This allocation of the burden for establishing whether a third party has, or has not, been identified properly as a real party-in-interest accounts appropriately for the fact that a petitioner is far more likely to be in possession of, or have access to, evidence relevant to the issue than the patent owner.” slip op. at 3
- PTAB / AIA Trials › §315(b) time barInstitution denied time barDenied
“statutory requirement to identify each real party-in-interest, the Board determines that the Petition is incomplete. Board Rule 42.106(b) provides that “[w]here a party files an incomplete petition, no filing date will be accorded, and the Office will dismiss the petition if the deficiency in the petition is not corrected within one month from the notice of an incomplete petition.” In this instance, however, it is uncontroverted that a complaint alleging infringement of the ’746 patent was served on December 23, 2013. Pet. 2; Prelim. Resp. 12. Thus, even if corrected, the earliest filing date that could be accorded to the Petition would not fall within the one-year period specified by 35 U.S.C. § 315(b), and the Petition would be denied as untimely.” slip op. at 6
Discretionary denialPatents in suitUS 8,200,746
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.