Trials@uspto.gov Paper 17
`Tel: 571-272-7822
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` Entered: February 3, 2016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`ACXIOM CORPORATION, and
`ADVANCE AMERICA, CASH ADVANCE CENTERS, INC.,
`Petitioner,
`
`v.
`
`PHOENIX LICENSING, LLC,
`Patent Owner.
`_______________
`
`Case CBM2015-00180
`Patent 8,352,317 B2
`_______________
`
`
`
`Before BARRY L. GROSSMAN, STACEY G. WHITE, and
`PETER P. CHEN, Administrative Patent Judges.
`
`GROSSMAN, Administrative Patent Judge.
`
`TERMINATION OF PETITIONER
`ADVANCE AMERICA, CASH ADVANCE CENTERS, INC.
`
`Conduct of the Proceedings
`37 C.F.R. § 42.74
`
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`
`

`
`CBM2015-00180
`Patent 8,352,317 B2
`
`
`Pursuant to authorization by the Board in an e-mail sent December 29, 2015,
`Patent Owner and Petitioner Advance America, Cash Advance Centers, Inc.
`(“Advance America”) filed a joint motion requesting termination of this
`proceeding with respect to Advance America. Paper 14 (“Joint Motion”).1 Also
`before us is a joint request by Patent Owner and Advance America to treat as
`confidential the submitted settlement agreement (Ex. 2011) on which the requested
`termination is based. Paper 15 (“Joint Request”)).2
`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
`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.
`A Patent Owner Preliminary Response was filed on December 30, 2015 (Paper
`16), the same day as the Joint Motion and the Joint Request. A decision whether to
`institute a trial has not been issued. Thus, this proceeding with respect to Advance
`America is at a stage eligible for termination.
`
`
`1 The Petition refers to Petitioner “Advance America, Cash Advance Centers, Inc.
`(‘Advance America’).” Pet.1. Advance America is identified in the Petition as a
`real party-in-interest. Id. at 4. The Motion refers to “Advance America and Cash
`Advance Centers, Inc. (‘AA Entities’).” Joint Motion 1 (emphasis added). The
`Joint Motion suggests that Cash Advance Centers, Inc. is a Petitioner separate and
`distinct from Advance America, which is inconsistent with the Petition. It is also
`inconsistent with the Settlement Agreement, which is with “Advance America,
`Cash Advance Centers, Inc. (‘Advance America’).” Ex. 2011, 1. We consider the
`Motion to be on behalf of the party identified in the Petition and the Settlement
`Agreement, which is Advance America.
`2 The Joint Request refers to “Advance America and Cash Advance Centers, Inc.
`(‘AA’).” Joint Request 1 (emphasis added). Based on the analysis above, we
`consider the Joint Request to be on behalf of the party identified in the Petition and
`the Settlement Agreement, which is Advance America.
`2
`
`
`
`

`
`CBM2015-00180
`Patent 8,352,317 B2
`
`
`Under 35 U.S.C. § 327(b), 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 the proceeding shall be in writing, and a true copy of such
`agreement or understanding shall be filed in the Office. In the Joint Motion, Patent
`Owner and Advance America certify that they reached an agreement resolving the
`dispute in identified in the Petition (Joint Motion 1), and that the entire agreement
`between Advance America and Patent Owner related to termination of Advance
`America from CBM2015-00180 is memorialized in Ex. 2011 filed in this
`proceeding (id. at 1–2).
`Based on the facts in the case before us, we grant the Joint Motion and
`terminate this proceeding with respect to Advance America. 37 C.F.R. § 42.74.
`We also grant the Joint Request to maintain Exhibit 2011 as business confidential
`in accordance with 37 C.F.R. § 42.74(c).
`ORDER
`
`Accordingly, it is:
`ORDERED that the Joint Motion to Terminate the proceeding with respect
`to Advance America is granted; and
`FURTHER ORDERED that the Joint Request that the agreement (Ex. 2011)
`submitted in support of the Joint Motion be treated as business confidential
`information, to be kept separate from the file of U.S. Patent No. 8,352,317, and
`made available only under the provisions of 35 U.S.C. § 327(b) and 37 C.F.R.
`§ 42.74(c), is granted.
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`3
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`

`
`CBM2015-00180
`Patent 8,352,317 B2
`
`For PETITIONER:
`W. Karl Renner
`axf@fr.com
`Roberto J. Devoto
`G. Hopkins Guy, III
`Jeremy J. Taylor
`Jamie R. Lynn
`CBM38784-0007CP2@fr.com
`Rob Kohse
`rob.kohse@sutherland.com
`
`For PATENT OWNER:
`
`Louis J. Hoffman
`LOUIS J. HOFFMAN, P.C.
`donald@valuablepatents.com
`
`Shawn Diedtrich
`PRUDENS LAW LLC
`shawn@prudenslaw.com
`
`John J. Love
`TUMEY L.L.P.
`jlove@tumeyllp.com
`
`
`
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`4