- Acxiom Corporation v. Phoenix Licensing, LLCInstitution deniedPTAB · Mar 21, 2016 · CBM2015-00180 · APJ Barry L Grossman · CBM · Institution
The Board denied institution of CBM review of claims 1, 9, 16, 18-25, 34, 49-52, and 57 because Acxiom failed to establish standing.
RulingsInstitution decision- PTAB / AIA Trials › Real party in interest / privityInstitution denied rpiDenied
“Acxiom must establish more than just the fact that it has sold products to an entity that has been sued for infringement. It must establish that the relationship between itself and a sued customer is sufficient to constitute privity.1 The evidence provided by Acxiom, which will be discussed in detail below, in short, indicates that Acxiom has sold some unspecified software and/or other goods and services to a variety of entities and that some of those entities have approached Acxiom with claims of indemnity. We are not persuaded that these requests for indemnity without evidence or an acknowledgement of an obligation to indemnify are sufficient to establish privity. See Microsoft Corp. v. DataTern, Inc., 755 F. 3d 899 (Fed. Cit. 2014); Arris Group, Inc. v. British Telecomm. PLC, 639 F.3d 1368, 1375 (Fed. Cir. 2011).” slip op. at 6
Discretionary denialPatents in suitUS 8,352,317 - 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
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.