- Servicenow, Inc. v. BMC Software, Inc.Institution deniedPTAB · Dec 18, 2015 · IPR2015-01329 · APJ Brian P Murphy · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood of proving claims 1, 4, and 7 obvious over Glasser and Davis.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We agree with Patent Owner. Petitioner’s evidence does not establish that the ACLs in Glasser’s system are stored in a folder or file within a hierarchical namespace. To the contrary, the evidence shows that Glasser stores the ACLs in registry 167, separate from the hierarchically organized arrangement of folders and files that Petitioner identifies as the asserted “objects” defined in the ’586 patent. See Pet. 34 (arguing that the Windows 95 “folders and files [in Glasser and Davis] qualify as ‘objects’”), 35 (“Glasser and Davis confirm that folders and files are self‐contained entities that contain data, and therefore, qualify as ‘objects’ that were added to the namespace.”). Petitioner also acknowledges that “[a] folder object in Glasser can inherit values from the access control list (ACL) of its parent folder” (Pet. 43 (emphasis added)), which is not the same thing as inheriting ACL values from the parent folder. Therefore, Petitioner has not provided sufficient evidence to establish that i) the ACLs are contained in Glasser’s hierarchy of folders and files, which are the recited “objects” identified by Petitioner, and ii) the ACLs are “shar[ed] . . . with a plurality of the one or more computer system[s],” because the ACLs are not dynamically inherited by a child folder (the recited “instance” object) from a parent folder, i.e., “from the prototype” object, as recited in claim 1 of the ’586 patent. For the reasons given above, we are not persuaded by Petitioner that Glasser or Davis discloses the self-contained “objects” defined in the ’586 patent or “sharing the plurality of objects with a plurality of the one or more computer system[s]” by “dynamic[] inherit[ance],” as recited in claim 1. Claims 4 and 7 depend from claim 1. Therefore, for the same reasons, we are not persuaded by Petitioner’s obviousness argument regarding claims 4 and 7. III. CONCLUSION Petitioner has failed to demonstrate a reasonable likelihood of prevailing with respect to at least one of the claims challenged in this Petition, based on the ground asserted and information presented therein. IV. ORDER For the reasons given, it is ORDERED that the Petition is denied.” slip op. at 13
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for petitioner
“according to their broadest reasonable interpretation in light of the patent specification. 37 C.F.R. § 42.100(b); In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1279–81 (Fed. Cir. 2015). Under the broadest reasonable interpretation standard, we assign claim terms their ordinary and customary meaning, as understood by one of ordinary skill in the art, in the context of the entire patent disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special definition for a claim term must be set forth in the specification with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). The ’586 patent provides the following definition of the term “object”: “As used herein, an object is a self‐contained entity that contains data and/or 1 U.S. Patent No. 5,956,715 issued September 21, 1999 to Glasser et al., on an application filed September 23, 1996, which is a continuation of an earlier application filed December 13, 1994. Ex. 1003 (“Glasser”). Petitioner asserts that Glasser qualifies as prior art under 35 U.S.C. §§ 102(a), (e). Pet. 21. 2 Davis, selected excerpts from Fred Davis, THE WINDOWS BIBLE, Peachpit Press (1996). Ex. 1004 (“Davis”). Petitioner asserts that Davis qualifies as prior art under 35 U.S.C. § 102(b). Pet. 22. procedures to manipulate the data. Objects may be stored in a volatile memory and/or a nonvolatile memory.” Ex. 1001, 9:19–22. The ’586 patent uses lexicography to define the term “object” with reasonable clarity, deliberateness, and precision. Petitioner and Patent Owner both agree to the broadest reasonable construction of “object” as it is defined in the ’586 patent. Pet. 14, 16; Prelim. Resp. 8, 10. Therefore, we construe the term “object” as “a self-contained entity that contains data and/or procedures to manipulate the data, which may be stored in a volatile memory and/or a nonvolatile memory.”3” slip op. at 6
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“We agree with Patent Owner. Petitioner’s evidence does not establish that the ACLs in Glasser’s system are stored in a folder or file within a hierarchical namespace. To the contrary, the evidence shows that Glasser stores the ACLs in registry 167, separate from the hierarchically organized arrangement of folders and files that Petitioner identifies as the asserted “objects” defined in the ’586 patent. See Pet. 34 (arguing that the Windows 95 “folders and files [in Glasser and Davis] qualify as ‘objects’”), 35 (“Glasser and Davis confirm that folders and files are self‐contained entities that contain data, and therefore, qualify as ‘objects’ that were added to the namespace.”). Petitioner also acknowledges that “[a] folder object in Glasser can inherit values from the access control list (ACL) of its parent folder” (Pet. 43 (emphasis added)), which is not the same thing as inheriting ACL values from the parent folder. Therefore, Petitioner has not provided sufficient evidence to establish that i) the ACLs are contained in Glasser’s hierarchy of folders and files, which are the recited “objects” identified by Petitioner, and ii) the ACLs are “shar[ed] . . . with a plurality of the one or more computer system[s],” because the ACLs are not dynamically inherited by a child folder (the recited “instance” object) from a parent folder, i.e., “from the prototype” object, as recited in claim 1 of the ’586 patent. For the reasons given above, we are not persuaded by Petitioner that Glasser or Davis discloses the self-contained “objects” defined in the ’586 patent or “sharing the plurality of objects with a plurality of the one or more computer system[s]” by “dynamic[] inherit[ance],” as recited in claim 1. Claims 4 and 7 depend from claim 1. Therefore, for the same reasons, we are not persuaded by Petitioner’s obviousness argument regarding claims 4 and 7.” slip op. at 13
Claim construction§ 103 obviousnessPatents in suitUS 6,895,586 - 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 - Arris Group, Inc. / Tellabs, Inc. et al. v. Cirrex Systems LLCAll claims unpatentablePTAB · Dec 2, 2015 · IPR2014-00815 · APJ Trenton A Ward · IPR · Final written decision
Claim 30 is unpatentable as anticipated by Nicholson and Yokoyama and obvious over Shih.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“claim language. Bell Atl. Network Servs., Inc. v. Covad Comm. Grp., Inc., 262 F.3d 1258, 1268 (Fed. Cir. 2001). To overcome this presumption, the patentee must “clearly set forth” and “clearly redefine” a claim term away from its ordinary meaning. Id. The disavowal must be “unmistakable” and “unambiguous.” Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1322 (Fed. Cir. 2012). This standard is “exacting.” Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1366 (Fed. Cir. 2012). We do not find that Patent Owner has met this exacting standard, and, in the absence of an express definition for the term “thin-film filter,” we decline to incorporate Patent Owner’s lengthy recitation as the broadest reasonable interpretation of the term “thin-film filter.” In view of the plain and ordinary meaning of the term “thin-film filter” and the disclosure in the ’953 patent Specification, we construe the term “thin-film filter” to mean “a filter comprised of stacked layers for filtering light.”” slip op. at 13
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Claim 30 further requires “a mask in intimate contact with at least one of said filter surfaces, said mask substantially opaque in at least some spectral region.” For this claim limitation, Petitioner relies upon Nicholson’s disclosure of absorbance layer 12, shown in the annotated Figure 1 above. Pet. 31 (citing Ex. 1005, 3:23–25). Nicholson states that the “absorbance layer 12 [is] formed of highly optical absorbent material such as carbon black.” Ex. 1005, 3:24–25. Petitioner argues that this highly absorbent material, such as carbon black, would be substantially opaque in at least some spectral region. Pet. 31–32 (citing Ex. 1003 ¶ 94). As discussed above, we construe a mask as “a material that blocks the passage of at least selected photons.” We are persuaded that Petitioner sufficiently demonstrates that absorbance layer 12 in Nicholson provides a material that blocks the passage of at least selected photons. In its Response, Patent Owner argues that Nicholson does not anticipate because it fails to teach a thin-film filter with layers having packing factors approaching 100%. PO Resp. 6–7. As we do not adopt Patent Owner’s proposed construction of “thin-film filter” requiring these limitations, Patent Owner’s arguments are moot. In fact, during the oral argument, Patent Owner conceded that, if the Board were to adopt the same construction for “thin-film filter” as set forth in the decision to institute, Nicholson would anticipate claim 30. Tr. 38.5 As discussed above, we maintain the same construction for “thin-film filter” as in the decision to institute. Dec. on Inst. 6. For the foregoing reasons, we determine that Petitioner has demonstrated by a preponderance of the evidence that claim 30 is anticipated by Nicholson.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“To determine whether there was an apparent reason to combine the known elements in the way a patent claims, it will often be necessary to look . . . [at] the background knowledge possessed by a person having ordinary skill in the art.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 401 (2007). Petitioner argues that thin-film filters were well known in the art. Pet. 25 (citing Ex. 1003 ¶ 45). As discussed above, we construe “thin-film filter,” to mean “a filter comprised of stacked layers for filtering light.” Shih discloses that antireflection coatings are comprised of “layers of TiO2 and SiO2” and that “[t]he antireflection coatings enhance the transmission of light in the forward direction through the input fiber 20.” Ex. 1004, 4:42– 48. Thus, we are persuaded that Petitioner has presented sufficiently an “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR, 550 U.S. at 418 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)) (internal quotation marks omitted). For the foregoing reasons, we determine that Petitioner has demonstrated by a preponderance of the evidence that claim 30 would have been obvious in view of Shih. slip op. at 24
Patent outcomesUS 6,404,953 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 6,404,953 - 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.