Trials@uspto.gov
`571.272.7822
`
`Paper No. 22
`Filed: November 19, 2015
`
`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.
`
`
`
`DECISION
`Denying Institution of Covered Business Method Patent Review
`37 C.F.R. § 42.208
`
`
`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
`
`
`I. INTRODUCTION
`
`A. Background
`
`Acxiom Corporation (“Acxiom” or “Petitioner”), along with AAA Life
`
`Insurance Company (“AAA”) and/or Gerber Life Insurance Company (“Gerber”),
`
`filed a series of Petitions requesting covered business method patent reviews
`
`pursuant to § 18 of the Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125
`
`Stat. 284, 331 (Sept. 16, 2011) (“AIA”). The cases (“the Petitions”) are
`
`summarized in the table below.
`
`Case
`CBM2015-00134
`CBM2015-00135
`CBM2015-00136
`CBM2015-00137
`CBM2015-00138
`CBM2015-00139
`CBM2015-00140
`
`
`Petitioning Parties
` Acxiom, Gerber, and AAA
` Acxiom, Gerber, and AAA
` Acxiom, Gerber, and AAA
` Acxiom and Gerber
` Acxiom and Gerber
` Acxiom and Gerber
` Acxiom, Gerber, and AAA
`
`U.S. Patent No.
`8,234,184 B2
`6,999,938 B1
`7,856,375 B2
`7,890,366 B2
`8,738,435 B2
`7,860,744 B2
`5,987,434
`
`AAA and Gerber settled with Phoenix Licensing, LLC (“Patent Owner”) and
`
`have been terminated from each of the proceedings. Paper 21.2 Patent Owner filed
`
`a Preliminary Response. Paper 14 (“Prelim. Resp.”). We have jurisdiction under
`
`35 U.S.C. § 324, which provides that a covered business method patent review
`
`may not be instituted “unless . . . it is more likely than not that at least 1 of the
`
`claims challenged in the petition is unpatentable.”
`
`
`2 For the purposes of this Decision, the Petitions, Preliminary Responses, and
`supporting documents in the seven cases do not differ in a material way. 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
`
`
`Upon consideration of the Petition and Preliminary Response, we determine
`
`that Petitioner has not demonstrated that it has standing to file these Petitions for
`
`covered business method review under § 18(a)(1)(B) of AIA and 37 C.F.R.
`
`§ 42.302. Accordingly, we deny institution of a covered business method patent
`
`review of the challenged claims of each of the challenged patents.
`
`B. Related Matters
`
`The parties indicate that the subject patents are at issue in more than three
`
`dozen district court cases in the United States District Court for the Eastern District
`
`of Texas. Paper 4 (“Pet.”), 4; Paper 8 (Patent Owner’s Listing of Related Matters);
`
`Paper 9 (Petitioner’s Updated Mandatory Notices).
`
`
`
`A. Grounds for Standing
`
`II. ANALYSIS
`
`Section 18 of the AIA created a transitional program, limited to persons or
`
`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
`
`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
`
`
`standing arises from its relationship to other entities that have been sued for
`
`infringement of the ’184 patent.
`
`Specifically, Petitioner argues that it is a real party-in-interest or privy to one
`
`or more entities that has been sued for infringement of the subject patent. Pet. 19.
`
`Gerber, a party that has settled with the Patent Owner and has been terminated
`
`from the proceedings, is cited as an example of such an entity. Id. Gerber was
`
`sued for infringement of the subject patent. See Ex. 1119. We, however, do not
`
`find Petitioner’s evidence sufficient to show that Gerber is a real party-in-interest
`
`or privy of Petitioner.
`
`Petitioner argues that its standing arises from that of its customer, Gerber,
`
`because Gerber “sent Acxiom a demand for indemnification of costs and potential
`
`liabilities arising from the infringement suit, referencing a Services and Data
`
`Agreement between the two companies.” Pet. 19. Petitioner provides two pieces
`
`of evidence to support its claim for standing, a heavily redacted Services and Data
`
`Agreement (the “Agreement;” Ex. 1129), and the Declaration of Brian Williamson
`
`(Ex. 1128).
`
`The Agreement is approximately a dozen pages, but only two paragraphs are
`
`reproduced in unredacted form. The first of these paragraphs indicates that
`
`Petitioner contracted with Gerber to provide “services” as “set forth in one or more
`
`documents executed by the parties and made subject to this Agreement.”
`
`Ex. 1129, 1. Petitioner provides no evidence as to what services are contemplated
`
`under this Agreement. The second of these paragraphs indicates that there may be
`
`indemnity for alleged patent infringement provided that the indemnified party
`
`provides a proper written demand for indemnity. Id. at 6. If there is a proper
`
`demand for indemnity, “the indemnifying party shall have sole control and
`
`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
`
`
`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-in-
`interest of Petitioner. Thus, we have no basis to ascertain whether Petitioner may
`
`5
`
`

`
`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
`
`
`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.”).
`
`B. Motion to Seal
`
`Petitioner filed a Motion to Seal (Paper 5), in which it seeks entry of the
`
`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).
`
`6
`
`

`
`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
`
`
`1128 and 1129 to be UNSEALED forty-five (45) days after the entry date of this
`
`decision.
`
`
`
`III. CONCLUSION
`
`Petitioner has not established that it satisfies the standing requirement for
`
`filing a petition for covered business method patent review.
`
`
`
`IV. ORDER
`
`For the reasons given, it is:
`
`ORDERED that the Petitions are denied; and
`
`FURTHER ORDERED that no covered business method patent review is
`
`instituted; and
`
`FURTHER ORDERED that Petitioner’s Motion to Seal is denied; and
`
`FURTHER ORDERED that Exhibits 1128 and 1129 shall be UNSEALED
`
`forty-five (45) days after the entry date of this decision.
`
`
`
`7
`
`
`
`

`
`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
`
`
`
`8
`
`PETITIONER:
`
`W. Karl Renner
`axf@fr.com
`Roberto J. Devoto
`Matthew M. Jakubowski
`CBM38784-0006CP1@fr.com
`
`
`
`PATENT OWNER:
`
`Shawn Diedtrich
`shawn@prudenslaw.com
`
`
`
`Louis J. Hoffman
`louis@valuablepatents.com
`
`
`
`John J. Love
`jlove@tumeyllp.com