• Washington Inventory Services D/B/A Wis International v. Rgis, LLCAll claims unpatentable
  PTAB · Dec 30, 2015 · CBM2014-00158 · APJ James T Moore · CBM · Final written decision

  Claims 1–19 are unpatentable under § 101 as directed to abstract inventory verification implemented with conventional technology, and under § 103 over Whitehouse and ordinary skill in the art.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner

    “We must not import unrecited elements into the claim from the specification. Phillips v. AWH Corp., 415 F.3d 1303, 1319–20 (Fed. Cir. 2005) (en banc). The specification observes its own exemplary nature—“[i]t should be understood that the description and specific examples are intended for purposes of illustration only and are not intended to limit the scope of the present disclosure.” Ex. 1001, 2:16–19.” slip op. at 11

  • Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalTerm construed board ownDecided for petitioner

    “During prosecution, in a responsive amendment, Patent Owner proffered that “mode” implied a device: Amended claim 1 recites “selecting a verification mode, which includes a set of rules that define a methodology for verifying the inventory dataset, from a plurality of verification modes” and “acquiring verification data in the completed area with the remote verification device based on the selected verification mode.” The McGraw-Hill Dictionary of Scientific and Technical Terms, 6th Edition, defines the word “mode” as “one of several alternative conditions or methods of operation of a device.” The portion regarding the “set of rules that define a methodology for verifying the inventory dataset” further clarifies what is meant by verification mode. Ex. 1002, 180–81. Claim 1, however, broadly interpreted, can reasonably refer to either “mode”—the verification mode, or the device mode. Moreover, the specification itself, in describing manual processing of prior art printed inventory sheets, also refers to that method of inventory verification as a “mode.” Ex. 1001, 1:31–38 (see in particular line 35). We, therefore, decline to limit the term “mode” to only “on a device” when inventory checking alone can have different “modes” of being” slip op. at 17

  • Skill levelSkill level board ownDecided for petitioner

    “Mr. Melucci opines that a person of ordinary skill in the art relevant to the ’658 patent “would have at least two years [of] experience related to collecting and verifying inventory data.” Ex. 1006 ¶ 27. Dr. Jagannathan testifies that “a person of ordinary skill in the art of the [’]658 Patent would have had: (1) a Bachelor’s degree in computer science, computer engineering, or related field; (2) one year of related professional experience; and (3) a basic understanding of inventory processes and the use of UPCs and other product identifiers. The professional experience may include, for example, work related to use of bar codes, stock keeping units, and the like. It is further my opinion that relevant professional or practical experience with computer systems and software may substitute for academic credentials.” Ex. 2001 ¶ 40. Based on our review of the ’658 patent, the types of problems and solutions described in the ’658 patent and cited prior art, and the testimony of the parties’ Declarants, we conclude that a person of ordinary skill in the art at the time of the claimed invention would have had at least two years of experience in computerized inventory management. We further note that the applied prior art reflects the appropriate level of skill at the time of the claimed invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 18

  • Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable

    “imports limitations into the claims from the specification. See, e.g., PO Resp. 35 (discussing the claims jointly). For example, Patent Owner asserts that Petitioner “ignores the actual claim language that requires the verification mode selection to be made on and with the device.” PO Resp. 37. The defect in this argument is that the language of “selecting a particular verification mode on the verification device” is absent from claim 1. See Ex. 1001, 6:2–14. Furthermore, the broadest reasonable interpretation of the term “mode” does not limit the step to a device. Claim 1 positively recites the device in the downloading, deploying, acquiring, computing, and displaying steps, but the term “device” is specifically omitted from the selecting step. Accordingly, we do not interpret claim 1 as requiring the step of selecting a verification mode on the device. Contrary to Patent Owner’s position, we are persuaded by Petitioner that each of challenged claims 1–14, and 18, as a whole, is directed to the fundamental concept of providing inventory verification. Pet. 23. In the Abstract, the ’658 patent states: “[a] system and method of verifying the completeness and accuracy of inventory records is disclosed.” Ex. 1001, Abst. Additionally, in the Background section, the ’658 patent states: Prior methods of verification require that the inventory records be printed out in a predetermined format which is then taken to a specific area in the facility for comparison to the inventory physically located there. These methods are inflexible, tedious and time consuming because the mode of verification is strictly depend[e]nt on the predetermined format of the printed reports and requires a repeated reference to the report and comparison with the actual inventory. Ex. 1001, 1:31–38. The only technological features recited in claims 1–14 and 18 are a computer performing conventional computer functions. Ex. 1001, 6:2–22. Specifically, those include downloading data from a computer to a device, deploying the device, acquiring data with the device, computing, and displaying.” slip op. at 23

  Patent outcomesUS 8,606,658 unpatentable
  Claim construction§ 101 eligibility§ 103 obviousnesscites Alice · Mayo · Bilski · Phillips · Graham
  Patents in suitUS 8,606,658
• Johns Manville Corporation v. Knauf Insulation, Inc.Institution denied
  PTAB · Dec 17, 2015 · IPR2015-01569 · APJ Fred E Mckelvey · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of prevailing on either obviousness ground for the challenged claims.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “Petitioner bears the burden of proof. We have not been given sufficient evidence to support, even at this stage, a finding that it is likely that a block made from Example 3, modified by using a mixture of ammonium sulfate and sulfuric acid, would meet claim 32 as it depends from claim 1.” slip op. at 12

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundNot shown unpatentable

    “Gogek renders the . . . [sulfuric acid] limitation of . . . Claim 32 . . . obvious at least because it discloses that the chemical adjunct may comprise sulfuric acid. Ex. 1003, 1:72–2:4. At the time of the . . . invention of the ’089 Patent, it would have been obvious to a person of ordinary skill in the art to add a small amount of the sulfuric acid as taught in Gogek to the specific formulation of Example 3 of Gogek in order to acid catalyze the inversion of the sucrose in the molasses to produce additional reducing sugars (e.g., dextrose) available for consumption during curing. Producing additional reducing sugar reactants in situ would help ensure that all of the ammonium cations react with the carbonyl group of a reducing sugar, and allow the reaction to run to completion through the consumption of all reactants. Completing the reaction would also improve the quality of the binder. Therefore, one of ordinary skill in the art would have been motivated to use the sulfuric acid expressly disclosed in Gogek with the ammonium sulfate used in the formulation from Example 3 of Gogek in order to achieve these well-known benefits. Agreeing arguendo with Dr. Hirsekorn’s observations, those observations at best prove that one would have found it obvious to use sulfuric acid along with, or possibly in place of, the ammonium sulfate described in Gogek Example 3. But, those observations in no way purport to prove that use of ammonium sulfate with a small amount of sulfuric acid or sulfuric acid in place of ammonium sulfate would produce a block having the characteristics of the material of claim 32 as it depends from claim 1.” slip op. at 11

  • BurdenNot shown unpatentable

    “observations at best prove that one would have found it obvious to use sulfuric acid along with, or possibly in place of, the ammonium sulfate described in Gogek Example 3. But, those observations in no way purport to prove that use of ammonium sulfate with a small amount of sulfuric acid or sulfuric acid in place of ammonium sulfate would produce a block having the characteristics of the material of claim 32 as it depends from claim 1.” slip op. at 11

  § 103 obviousness
  Patents in suitUS 8,940,089
• Johns Manville Corporation v. Knauf Insulation, Inc.Institution denied
  PTAB · Dec 17, 2015 · IPR2015-01527 · APJ Fred E Mckelvey · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that Gogek inherently disclosed claim 1’s subject matter or that it would prevail on the dependent challenged claims.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “We have broad discretion to assign weight to be accorded witness testimony. 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); In re American Academy of Sci. Tech. Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004); Velander v. Garner, 348 F.3d 1359, 1370–71 (Fed. Cir. 2003); Bronshtein v. Roser, 61 USPQ2d 1745, 1756 (BPAI 2002) (opinion testimony given little weight where underlying basis has not been provided). Section 42.62(a) is applicable at any stage, including during a “preliminary proceeding” which (1) begins with the filing of a petition and (2) ends with a written decision as to whether a trial will be instituted. Nothing in the Federal Rules of Evidence, which are applicable to IPRs (37 C.F.R. § 42.62(a)), or Federal Circuit jurisprudence, requires a fact finder to credit unsupported assertions of an expert witness. Rohm and Haas Co. v. Brotech Corp., 127 F.3d 1089, 1092 (Fed. Cir. 1997). See also Ashland Oil, Inc. v. Delta Resins and Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985) (lack of factual support for expert opinion may render the testimony of little probative value in a validity determination). Petitioner seems to argue that, at least at this stage, we should not doubt Dr. Hirsekorn’s statement. But, Petitioner’s argument cannot justify a lack of credible underlying support for its expert’s opinions. A lack of credible underlying support is no justification to put a patent owner to the expense of defending an inter partes review trial. 37 C.F.R. § 42.1(b) (“This part shall be construed to secure the just, speedy, and inexpensive resolution of every proceeding.”).” slip op. at 13

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “However, Dr. Hirsekorn does not explain what one skilled in the art would have understood “fines” to mean in the phrase “asbestos fines” as of the filing date (1 April 1958) or issue date (20 December 1960) of Gogek. Dr. Hirsekorn states that “Superwool 607 was designed to replace asbestos and is equivalent to asbestos for purposes of the insulating blocks made according to Example 3 of Gogek.” No contemporaneous documentation was offered by Petitioner in support of Dr. Hirsekorn’s statement. Id. For example, no literature supporting Dr. Hirsekorn’s belief that Superwool 607 was designed to replace asbestos has been called to our attention. No literature is cited to show that Superwool 607 is considered by those skilled in the art to be “equivalent to asbestos” for making insulating blocks. Certainly nothing in Gogek confirms the “equivalency” alleged by Petitioner. Nor is there any testimony that Superwool 607 is “fines” having particles sizes consistent with the meaning of “fines” as described in the Gogek patent. Dr. Hirsekorn also states an opinion that “[u]sing Superwool 607 instead of asbestos [fines] would not materially alter the physical properties of the insulating block and would not affect the amounts of residual ionic species of sulfates, phosphates, nitrates, carbonates, and combinations thereof that are assessed in a leach test.” Ex. 1004 ¶ 48 (last sentence). No explanation is given as to why Dr. Hirsekorn is able to state his opinion, particularly since Dr. Hirsekorn does not address the differences, if any, between Gogek’s “asbestos fines” and Superwool 607. We have broad discretion to assign weight to be accorded witness testimony. 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); In re American Academy of Sci. Tech. Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004); Velander v. Garner, 348 F.3d 1359, 1370–71 (Fed. Cir. 2003); Bronshtein v. Roser, 61 USPQ2d 1745, 1756 (BPAI 2002) (opinion testimony given little weight where underlying basis has not been provided). Section 42.62(a) is applicable at any stage, including during a “preliminary proceeding” which (1) begins with the filing of a petition and (2) ends with a written decision as to whether a trial will be instituted. Nothing in the Federal Rules of Evidence, which are applicable to IPRs (37 C.F.R. § 42.62(a)), or Federal Circuit jurisprudence, requires a fact finder to credit unsupported assertions of an expert witness. Rohm and Haas Co. v. Brotech Corp., 127 F.3d 1089, 1092 (Fed. Cir. 1997). See also Ashland Oil, Inc. v. Delta Resins and Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985) (lack of factual support for expert opinion may render the testimony of little probative value in a validity determination). Petitioner seems to argue that, at least at this stage, we should not doubt Dr. Hirsekorn’s statement. But, Petitioner’s argument cannot justify a lack of credible underlying support for its expert’s opinions. A lack of credible underlying support is no justification to put a patent owner to the expense of defending an inter partes review trial. 37 C.F.R. § 42.1(b) (“This part shall be construed to secure the just, speedy, and inexpensive resolution of every proceeding.”).” slip op. at 12

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureInherency not foundNot shown unpatentable

    “If the prior art reference does not expressly set forth a particular element of the claim, that reference still may anticipate if that element is “inherent” in its disclosure. To establish inherency, the extrinsic evidence “must make clear that the missing descriptive matter is necessarily present in the thing described in the reference, and that it would be so recognized by persons of ordinary skill.” Continental Can Co. v. Monsanto Co., 948 F.2d 1264, 1268 . . . (Fed. Cir. 1991). “Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” Id. at 1269 . . . (quoting In re Oelrich, 666 F.2d 578, 581 (CCPA 1981). Id. at 745 (italics, except for case citations, added; USPQ citations omitted). The burden of showing something by a preponderance of the evidence simply requires the trier of fact to believe that the existence of a fact is more probable than its nonexistence before the trier of fact may find in favor of the party who has the burden to persuade the trier of fact of the fact’s existence. Concrete Pipe & Products of California, Inc. v. Construction Laborers Pension Trust for Southern California, 508 U.S. 602, 622 (1993). At first blush one might conclude that there is a tension between Robertson’s probabilities and Concrete Pipe’s probable. The tension is resolved if one considers Robertson’s probabilities to mean “may” and Concrete Pipe’s probable to mean “likely.”” slip op. at 8

  § 102 anticipation
  Patents in suitUS 8,940,089
• Johns Manville Corporation / Johns Manville, Inc. v. Knauf Insulation, Inc. And Knauf Insulation SPRLInstitution denied
  PTAB · Dec 17, 2015 · IPR2015-01598 · APJ Fred E Mckelvey · IPR · Institution

  The Board denied institution on both § 103 grounds because Petitioner did not clearly articulate the differences or show the proposed combinations would meet the challenged claims.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied

    “D. Claims 3, 16–21, 27, 34, 43, 45–49, 51–56, 63, and 73 1. Failure to articulate a clear difference Petitioner has failed to set out precise differences between Swift and the subject matter of the challenged claims. As we explained in declining to institute on Ground 2 in Johns Manville Corp. v. Knauf Insulation, Inc., IPR2015-01402 (PTAB Oct. 21, 2015) (Paper 18, pages 12–14), failure of a petitioner to set out differences in a § 103 context complicates consideration of a petition, both for the Board and the patent owner. Due to Petitioner’s failure to articulate a clear difference between the subject matter of the challenged claims and Swift, we decline to institute an IPR trial in this case. See also 35 U.S.C. § 312(a)(3) (petition identifies with particularity) and 37 C.F.R. 41.104(b)(4) (set out how claim is unpatentable).” slip op. at 9

  • BurdenNot shown unpatentable

    “those observations at best prove that one would have found it obvious to use an ammonium phosphate in place of ammonium sulfate described in Gogek Example 3. But, those observations in no way purport to prove that use of mono-ammonium phosphate would produce a block having the characteristics of the material of claim 27 as it depends from claim 1. We believe our concern, and that of Patent Owner, is more than theoretical. Gogek indicates a preference for using ammonium sulfate. Ex. 1004, col. 1:72. Once Example 3 is replicated with a change to something that would not be the preferred embodiment, it is not unreasonable to assume that a block made according to Example 3 with ammonium phosphate would have properties that might differ from those made in accordance with Example 3 with ammonium sulfate. Petitioner bears the burden of proof. We have not been given sufficient evidence to support a finding that it is likely that a block made from Example 3, modified by using mono-ammonium phosphate, would meet claim 27 as it depends from claim 1.” slip op. at 12

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “The testimony in support of obviousness of the subject matter of claim 27 is that of Dr. Hirsekorn. Ex. 1006, ¶ 105: At the time of the purported invention of the ’089 Patent, it would have been obvious to a person of ordinary skill in the art to add a monoammonium phosphate to the binder composition of Example 3 of Gogek in order to reduce the corrosivity of the binder and preserve . . . manufacturing equipment. In the continuous manufacturing process disclosed in Swift, some manufacturing equipment will be in contact with the solution at all times, amplifying the need to include a corrosion inhibitor to extend the life of the manufacturing equipment. Accordingly, in order to prevent corrosion and “decrease the cost of manufacturing bound materials” (Ex. 1003, ¶ [0073]), it would have been obvious to a person of ordinary skill in the art to add a mono-ammonium phosphate as disclosed in Swift to the binder of Example 3 of Gogek to inhibit corrosion. Assuming arguendo that Dr. Hirsekorn’s observations are correct, those observations at best prove that one would have found it obvious to use an ammonium phosphate in place of ammonium sulfate described in Gogek Example 3. But, those observations in no way purport to prove that use of mono-ammonium phosphate would produce a block having the characteristics of the material of claim 27 as it depends from claim 1. We believe our concern, and that of Patent Owner, is more than theoretical. Gogek indicates a preference for using ammonium sulfate. Ex. 1004, col. 1:72. Once Example 3 is replicated with a change to something that would not be the preferred embodiment, it is not unreasonable to assume that a block made according to Example 3 with ammonium phosphate would have properties that might differ from those made in accordance with Example 3 with ammonium sulfate. Petitioner bears the burden of proof. We have not been given” slip op. at 11

  § 103 obviousness
  Patents in suitUS 8,940,089
• Mylan Pharmaceuticals Inc. v. Astrazeneca ABInstitution denied
  PTAB · 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
• Acxiom Corporation v. Phoenix Licensing, LLCInstitution denied
  PTAB · 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 denial
  Patents in suitUS 8,234,184
• Acxiom Corporation v. Phoenix Licensing, LLCInstitution denied
  PTAB · 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 denial
  Patents in suitUS 7,890,366
• Acxiom And Gerber v. Phoenix Licensing, LLCInstitution denied
  PTAB · 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 denial
  Patents in suitUS 7,860,744
• Acxiom Corporation v. Phoenix Licensing, LLCInstitution denied
  PTAB · 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 denial
  Patents in suitUS 8,738,435
• Acxiom Corporation v. Phoenix Licensing, LLCInstitution denied
  PTAB · 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 denial
  Patents in suitUS 7,856,375

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.