Trials@uspto.gov Paper 21
`Tel: 571-272-7822
`
`Entered: October 26, 2015
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`ACXIOM CORPORATION, et al.,
`Petitioner,
`
`v.
`
`PHOENIX LICENSING, LLC,
`Patent Owner.
`_______________
`
` Case CBM2015-00134 Patent 8,234,184 B21
`Case CBM2015-00135 Patent 6,999,938 B1
`Case CBM2015-00136 Patent 7,856,375 B2
`Case CBM2015-00137 Patent 7,890,366 B2
`Case CBM2015-00138 Patent 8,738,435 B2
`Case CBM2015-00139 Patent 7,860,744 B2
`Case CBM2015-00140 Patent 5,987,434
`
`_______________
`
`
`
`Before STACEY G. WHITE, PETER P. CHEN, ROBERT J. WEINSCHENK, and
`ROBERT A. POLLOCK, Administrative Patent Judges.
`
`WHITE, Administrative Patent Judge.
`
`
`TERMINATION OF PETITIONERS AAA LIFE INSURANCE COMPANY and
`GERBER LIFE INSURANCE COMPANY
`Conduct of the Proceedings
`37 C.F.R. § 42.74
`
`
`1 This order addresses a similar issue in the seven cases. Therefore, we exercise
`discretion to issue one order to be filed in each case. The parties, however, are not
`authorized to use this style of heading in subsequent papers.
`
`

`
`CBM2015-00134 Patent 8,234,184 B2 CBM2015-00135 Patent 6,999,938 B1
`CBM2015-00136 Patent 7,856,375 B2 CBM2015-00137 Patent 7,890,366 B2
`CBM2015-00138 Patent 8,738,435 B2 CBM2015-00139 Patent 7,860,744 B2
`CBM2015-00140 Patent 5,987,434
`
`
`Pursuant to authorization by the Board, Phoenix Licensing LLC (“Patent
`Owner”) and Petitioner AAA Life Insurance (“AAA”) filed joint motions
`requesting termination of CBM2015-00134 (Paper 12), CBM2015-00135 (Paper
`12), CBM2015-00136 (Paper 13), and CBM2015-00140 (Paper 12) with respect to
`AAA, and joint requests to treat as confidential the submitted settlement agreement
`(CBM2015-00134 (Paper 13), CBM2015-00135 (Paper 13), CBM2015-00136
`(Paper 14), and CBM2015-00140 (Paper 13)). In addition, Patent Owner and
`Petitioner Gerber Life Insurance (“Gerber”) filed joint motions requesting
`termination of CBM2015-00134 (Paper 11), CBM2015-00135 (Paper 11),
`CBM2015-00136 (Paper 12), CBM2015-00137 (Paper 10), CBM2015-00138
`(Paper 10), CBM2015-00139 (Paper 10), and CBM2015-00140 (Paper 11) with
`respect to Gerber. Pursuant to our October 14, 2015 Order (Paper 162), Gerber and
`Patent Owner submitted Ex. 2002-A, which is a written memorialization of the oral
`agreement between Patent Owner and Geber regarding the termination of the CBM
`proceedings between Gerber and Patent Owner. Gerber and Patent Owner filed
`Joint Requests to treat Exhibit 2002-A as confidential. Paper 20. In addition,
`Patent Owner jointly with each AAA and Gerber submitted Joint Certifications
`(Papers 18, 19) stating that all agreements relating to the termination of AAA and
`Gerber from these proceedings have been filed with the Board.
`Under 35 U.S.C. § 327(a), applicable to post-grant review proceedings for
`review of the patentability of covered business method patents, a proceeding shall
`be terminated with respect to any petitioner upon the joint request of the petitioner
`
`
`2 The Orders, Motions, and supporting documents are identical in each case for the
`respective petitioning parties. Thus, for ease of reference we will refer to the
`filings in CBM2015-00134.
`
`
`
`2
`
`

`
`CBM2015-00134 Patent 8,234,184 B2 CBM2015-00135 Patent 6,999,938 B1
`CBM2015-00136 Patent 7,856,375 B2 CBM2015-00137 Patent 7,890,366 B2
`CBM2015-00138 Patent 8,738,435 B2 CBM2015-00139 Patent 7,860,744 B2
`CBM2015-00140 Patent 5,987,434
`
`and the patent owner, unless the Office has decided the merits of the proceeding
`before the request for termination is filed. This matter is in its preliminary stage.
`Patent Owner Preliminary Responses were filed in the respective cases on various
`dates in September 2015. Decisions whether to institute a trial have not been
`issued. Thus, these proceedings with respect to AAA and Gerber are at a stage
`eligible for termination.
`Pursuant to 35 U.S.C. § 327 and 37 C.F.R § 42.74, Patent Owner and AAA
`state in the Joint Motion and Joint Certification that they have reached an
`agreement resolving the disputes in CBM2015-00134, CBM2015-00135,
`CBM2015-00136, and CBM2015-00140, and submitted Exhibit 2001 as evidence
`of their agreement. As to the other settling party, Gerber and Patent Owner
`originally submitted Exhibit 2002 as evidence of their agreement. This document,
`however, was not the complete agreement between the parties as required by
`35 U.S.C. § 327(b) and 37 C.F.R. § 42.74(b). Section 327(b) requires that
`(b)Agreements in Writing. – Any agreement or understanding
`between the patent owner and a petitioner, including any collateral
`agreements referred to in such agreement or understanding, made in
`connection with, or in contemplation of, the termination of a post-
`grant review under this section shall be in writing, and a true copy of
`such agreement or understanding shall be filed in the Office before the
`termination of the post-grant review as between the parties.
`
`Thus, the filing of Exhibit 2002 did not satisfy the requirements of this rule
`because, as the parties now admit in their Joint Certification, there was an oral
`agreement that had not been committed to writing. See Paper 19. We remind the
`parties of their obligation to fulfill the requirements of all applicable statutory
`provisions and regulations.
`
`
`
`3
`
`

`
`CBM2015-00134 Patent 8,234,184 B2 CBM2015-00135 Patent 6,999,938 B1
`CBM2015-00136 Patent 7,856,375 B2 CBM2015-00137 Patent 7,890,366 B2
`CBM2015-00138 Patent 8,738,435 B2 CBM2015-00139 Patent 7,860,744 B2
`CBM2015-00140 Patent 5,987,434
`
`
`Exhibit 2002-A has been executed by Gerber and Patent Owner and it
`memorializes the oral agreement that previously had not been submitted or
`disclosed to the Board. Concurrent with the filing of Exhibit 2002-A, Gerber and
`Patent Owner certified that there are no other agreements regarding the termination
`of Gerber from these CBM proceedings and no other agreements between Gerber
`and Patent Owner regarding the patentability of the patents at issue in these
`proceedings. Id.
`Based on the facts before us, we grant the Joint Motions and terminate
`CBM2015-00134, CBM2015-00135, CBM2015-00136, and CBM2015-00140
`with respect to AAA and we terminate CBM2015-00134, CBM2015-00135,
`CBM2015-00136, CBM2015-00137, CBM2015-00138, CBM2015-00139, and
`CBM2015-00140 with respect to Gerber. 37 C.F.R. § 42.74. We also grant the
`Joint Requests to maintain Exhibit 2011 and Exhibit 2002-A as business
`confidential in accordance with 37 C.F.R. § 42.74(c).
`
`
`ORDER
`
`Accordingly, it is:
`ORDERED that the Joint Motions to Terminate with respect to AAA are
`granted;
`FURTHER ORDERED that the Joint Motions to Terminate with respect to
`the Gerber are granted; and
`FURTHER ORDERED that the parties’ joint requests that the agreements
`submitted in support of the Joint Motions (Exs. 2001, 2002-A) be treated as
`business confidential information, to be kept separate from the files of U.S. Patent
`Nos. 8,234,184 B2; 6,999,938 B1; 7,856,375 B2; 7,890,366 B2; 8,738,435 B2;
`
`
`
`4
`
`

`
`CBM2015-00134 Patent 8,234,184 B2 CBM2015-00135 Patent 6,999,938 B1
`CBM2015-00136 Patent 7,856,375 B2 CBM2015-00137 Patent 7,890,366 B2
`CBM2015-00138 Patent 8,738,435 B2 CBM2015-00139 Patent 7,860,744 B2
`CBM2015-00140 Patent 5,987,434
`
`7,860,744 B2; or 5,987,434, and made available only under the provisions of
`35 U.S.C. § 327(b) and 37 C.F.R. § 42.74(c), are granted.
`
`
`
`PETITIONER
`
`Walter Renner
`Roberto Devoto
`Matthew M. Jakubowski
`FISH & RICHARDSON P.C.
`axf@fr.com
`CBM38784-0006CP1@fr.com
`CBM38784-0012CP1@fr.com
`CBM38784-0003CP1@fr.com
`CBM38784-0005CP1@fr.com
`CBM38784-0010CP1@fr.com
`CBM38784-0004CP1@fr.com
`CBM38784-0002CP1@fr.com
`
`
`
`PATENT OWNER:
`
`Shawn Diedtrich
`PRUDENS LAW LLC
`shawn@prudenslaw.com
`
`Louis J. Hoffman
`LOUIS J. HOFFMAN, P.C.
`louis@valuablepatents.com
`
`John J. Love
`TUMEY L.L.P.
`jlove@tumeyllp.com
`
`
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`5