- Mylan Pharmaceuticals Inc. v. Astrazeneca ABInstitution deniedPTAB · Dec 9, 2015 · IPR2015-01340 · APJ Robert A Pollock · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1, 2, 4, 6–22, 25–30, 32–37, and 39–42 would have been obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon considering the Petition, Preliminary Response, and Reply, we conclude that Petitioner has not established a reasonable likelihood that it would prevail in showing the unpatentability of any challenged claim of the ’186 patent. Therefore, we deny an inter partes review of the challenged claims of the ’186 patent.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“a personal of ordinary skill would have chosen compound 25 as a lead compound. Accepting that compound 25 is a lead compound, it nevertheless “remains necessary to identify some reason that would have led a chemist to modify a known compound in a particular manner to establish prima facie obviousness of a new claimed compound.” Takeda Chem. Indus., Ltd. v. Alphapharm Pty., Ltd., 492 F.3d 1350, 1357 (Fed. Cir. 2007). Here, we focus on whether the evidence of record supports Petitioner’s contention that one of ordinary skill in the art would have been motivated to replace the 6- carbon cyclohexyl group at the 2-position of compound 25 with a 10-carbon adamantyl moiety. 1. Stability Petitioner points to the stability of compound 25 as an important reason for selecting it as a lead compound. See, e.g., Pet. 25; Reply 3–4. For example, Petitioner argues that Ashworth I teaches the advantages of a large cycloalkyl moiety, such as the cyclohexyl group of compound 25, in promoting both stability (by preventing cyclization of the primary amine) and affinity (by biasing the molecule toward the trans configuration). Pet. 25; see also Ex. 1003 ¶¶ 111–121. Petitioner further argues, however, that one of ordinary skill in the art would have been motivated to substitute the cyclohexyl group of compound 25 with the even larger cycloalkyl adamantyl group taught by Villhauer to increase its stability and potency (affinity).2 Ex. 1003 ¶ 113; Pet. 26. Petitioner does not, however, explain why one of ordinary skill in the art would have sought to further increase the stability of compound 25. In light of the evidence of record, we agree with Patent Owner that such motivation is lacking. Prelim. Resp. 44–47.” slip op. at 7
- Skill levelSkill level petitioner adoptedOther
“Applying this analysis, Petitioner contends that one of ordinary skill in the art1 would have selected Ashworth I compound 25 (“compound 25”) as a lead compound in the development of DP-IV inhibitors “because of its superior combination of potency and stability.” Reply 1 (citing Pet. 24–25). Compound 25 has the structure shown below: Compound 25 comprises a glycyl moiety having a primary amine (NH2), a cyclohexyl group on the β-carbon (2-position) of the glycyl moiety, and a 1 At this stage of the proceeding, we accept Petitioner’s contention that a person of ordinary skill in the art would typically “have an advanced degree (e.g., a Ph.D.) in pharmaceutics, pharmaceutical chemistry, medicinal chemistry or a related field and at least 2-3 years of practical experience in the design of drugs” or less education but considerably more professional experience. Pet. 12; see Prelim. Resp. 31.” slip op. at 6
§ 103 obviousness - TRW Automotive US LLC v. Magna Electronics Inc.All claims unpatentablePTAB · Dec 7, 2015 · IPR2014-01010 · APJ Barry L Grossman · IPR · Final written decision
Claims 6, 7, and 10 are unpatentable under § 103(a) as obvious over Ponziana and Rayner, with Kakinami added for claim 7.
RulingsFinal written decision- Skill levelSkill level board ownOther
“We determine that the patentability of the challenged claims does not depend on whether Petitioner’s or Patent Owner’s asserted definition is used. The differences among the asserted positions are insignificant in resolving the issue of the patentability of the challenged claims. Moreover, the prior art itself reflects an appropriate level of skill and a need for testimony is not shown. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 16
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“less” added, to create thereby the word “fastenerless.” The plain and ordinary meaning of the term “fastenerless” means “without a fastener.” Applying this meaning to claim 10, a “fastenerless attachment” is something that detachably mounts accessory module 10 to an attachment member without using a fastener. Petitioner’s assertion that “fastenerless” means a “detachable mount other than a screw” is not supported by the Specification or by a common dictionary definition. We construe the term “fastenerless attachment” in claim 10 to mean an attachment device that does not use a fastener to mount detachably the accessory module. An example of a “fastenerless attachment” is spring clip 400 from the ’687 patent that does not have or use the optional hole or slot 412 in ends 408 and 410 in order to receive a fastener 413 for attaching the respective end to a surface. Ex. 1007, col. 10, ll. 12–19. slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“For a rain sensor mounted on a vehicle windshield, the area to be photographed or sensed may be the windshield itself, as disclosed in Ponziana, or it may be “a larger area,” also as disclosed in Ponziana. Ex. 1004, col. 3, ll. 37–60. For a data recorder as disclosed in Rayner, used to reconstruct events leading up to a vehicle accident, and the accident itself (Ex. 1005, col. 1, ll. 29–41), the area to be photographed or sensed includes preferably “the entire area ahead of the vehicle” (id. at col. 1, ll. 50–55). Rayner also recognizes the need for some “adjustability” to ensure proper orientation of the camera. Ex. 1005, col. 3, ll. 23–27. “A person of ordinary skill is also a person of ordinary creativity, not an automaton.” KSR, 550 U.S. at 421. Under the correct analysis under § 103(a), “any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.” Id. In considering the orientation of a camera within an accessory module mounted to a windshield to obtain the desired field of view for the camera, a person of ordinary skill and creativity, that is a person with a degree in engineering and at least two years of relevant experience (Pet. 13–14; PO Resp. 1), would recognize the myriad factors that may affect the orientation of the camera. The angle of the windshield may be substantially raked or angled towards the rear of a vehicle, as in a sports car, or may be substantially vertical, as in a modern bus. The camera may be at 90 degrees to the windshield-facing portion of the module when mounted to a bus windshield, as shown in Ponziana and Rayner, and would be at an angle other than 90 degrees when mounted to the sleek sports car. Both applications compensate for the angle of the windshield to ensure that the field of view of the camera covers the entire area ahead of the vehicle, as disclosed in Rayner, and as recited in claim 6. We find unpersuasive Patent Owner’s assertion” slip op. at 19
- Obviousness (§103) › KSR rationalesMotivation foundUnpatentable
“mounting element 26. Pet. 12, 17–18. As stated in Ponziana, a first mounting element 26 is on windshield 15 (Ex. 1004, col. 3, ll. 11–13), and the accessory module (rain sensor 24) attaches to mounting element 26 by a complementary mounting area 32 on housing 30 (id. at col. 3, ll. 16–20). Thus, the issue is whether the combined teachings of the references would have suggested to a person of ordinary skill that the alternative accessory module mounting elements of either suction cups or Velcro-type hook and pile fasteners, as disclosed in Rayner, should be complementary to the windshield mounting element (i.e., element 26), as disclosed in Ponziana. We determine, based on the reference disclosures, that this combination would have been obvious. Rayner discloses that the fastening devices disclosed are alternatives to other known mounting devices. Ex. 1005, col. 7, ll. 30–37. Among the myriad fastening options available, ranging from adhesives to the more complex structure disclosed in Ponziana, we are persuaded, based on the reference disclosures, that it would have been obvious to a person of ordinary skill and creativity to choose the preferred fastening option. We note that claim 6 recites an interior rearview assembly and a “separate” accessory module. Ex. 1002, col. 53, ll. 10–11 (“an accessory module separate from said interior rearview mirror assembly”). In Ponziana and in the embodiment shown and described with respect to Figure 1 in Rayner, the mirror mount and the module mount are integrated. Figure 2 in Rayner, however, discloses a module mount separate and distinct from a mirror mount. As stated clearly in Rayner, the embodiment in Figure 2 “does not include a mirror or function as a rear-view mirror.” Ex. 1005, col. 7, ll. 4–6. Based on this disclosure, a person of ordinary skill would have appreciated the simplicity of Rayner’s Figure 2 embodiment, which allows for more basic mounting structures, ranging from an adhesive to a Velcro-type attachment, than when the mirror and module use a common mounting system. The Velcro-type hook and pile fastener disclosed in Rayner uses two components, a hook component and a pile component. As suggested by the mounting structure in Ponziana, one mounting component is connected to the windshield; and the second component is connected to the module. By attaching the first component to the second component, the module is attached to the windshield.” slip op. at 21
Patent outcomesUS 7,533,998 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,533,998 - TRW Automotive U.S. LLC v. Magna Electronics Inc.No claims unpatentablePTAB · Nov 19, 2015 · IPR2014-01355 · APJ James P Calve · IPR · Final written decision
Claims 58–76, 78–80, and 82–86 were not shown unpatentable because the proposed combinations did not establish a reason to extend the frit layer beyond the mount and add a camera opening.
RulingsFinal written decision- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“footprint of an accessory in Figure 2C and Figures 3A–3E. Opaque layer 40 extends beyond where storage compartment 42 and outer wall 52 attach to inner surface 30 of window panel 28. However, Carter extends frit layer 40 from top wall 48 of storage compartment 42 only to gasket/grommet 36 at peripheral edge 34 of upper window panel 28. See id. at 3:59–61, Fig. 2C. Carter does not extend frit layer 40 to the front windshield. Thus, we are not persuaded that this teaching would have motivated a skilled artisan to extend a frit layer beyond the footprint of Blank’s mounting button 70 or mount 44 at windshield 22. The issue is not whether a skilled artisan could extend a frit layer beyond an attachment point or whether it would have been trivial to do so. See Pet. Reply 23. The issue is whether a skilled artisan would have been motivated to do so based on teachings of the references; the effects of demands known to the design community or present in the marketplace; and the background knowledge possessed by a person having ordinary skill in the art, all in order to determine whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).” slip op. at 15
- Expert testimonyOther
“of accessories from exterior view, the frit coating “conforms substantially to the regions of the window panel which receive the accessory [which] is referred to as the footprint of the accessory.” Ex. 1007, 8:33–38 (emphasis added). As shown in Figures 4A, 4C, 5A, and 5C of Carter, reproduced above, frit layers 108, 170 conceal storage compartments 102, 162 where those accessories attach to window panels 106, 166. Id. at 6:57–67, 7:6–22, 7:59–8:5; Ex. 1016 ¶ 28. Frit layers 108, 170 conform to “footprints” where accessories 102, 162 attach to window panel 106, 166. Ex. 1016 ¶¶ 28, 29.” slip op. at 15
Patent outcomesUS 8,481,916 not shown unpatentable§ 103 obviousnesscites KSRPatents in suitUS 8,481,916 - 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 - 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
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.