Trials@uspto.gov Paper 18
`Tel: 571-272-7822
`
`
`
` Entered: March 21, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`ACXIOM CORPORATION,
`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.
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`

`
`CBM2015-00180
`Patent 8,352,317 B2
`
`
`DISH Network Corporation, DISH Network L.L.C. (collectively “the Dish
`Entities”), Advance America, Cash Advance Centers, Inc. (“Advance America”),
`and Acxiom Corporation filed a Corrected Petition (Paper 9, “Pet.”) to institute a
`covered business method review of claims 1, 9, 16, 18–25, 34, 49–52, and 57 (“the
`challenged claims”) of U.S. Patent No. 8,352,317 B2 (Ex. 1001, “the ’317 patent”).
`We granted a Joint Motion to Terminate this proceeding with respect to the Dish
`Entities (Paper 13). We also granted a Joint Motion to Terminate this proceeding
`with respect to Advance America (Paper 17). Thus, Acxiom Corporation
`(“Petitioner” or “Acxiom”) is the sole remaining Petitioner. Phoenix Licensing,
`LLC (“Patent Owner”) filed a Preliminary Response (Paper 16, “Prelim. Resp.”).
`We have jurisdiction under 35 U.S.C. § 324. See Section 18(a)(1) of the Leahy-
`Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284, 329 (2011)
`(“AIA”) (“[t]he transitional proceeding implemented pursuant to this subsection
`shall be regarded as, and shall employ the standards and procedures of, a post-grant
`review under chapter 32 of title 35, United States Code,” subject to exceptions).
`Upon consideration of the Petition and Preliminary Response, we determine
`that Acxiom does not have standing to file a Petition for a covered business
`method review of the ’317 patent under § 18(a)(1)(B) of the AIA and 37 C.F.R.
`§ 42.302. Accordingly, we deny institution of a covered business method patent
`review of the challenged claims of the ’317 patent.
`A. Related Proceedings
`Petitioner and Patent Owner state the ’317 patent has been asserted in a
`substantial number of district court proceedings. Pet. 5; Paper 7, 1–3.
`We denied for lack of standing a previous Petition by Acxiom and other
`petitioners seeking a covered business method review of the ’317 patent. Acxiom
`
`
`
`2
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`CBM2015-00180
`Patent 8,352,317 B2
`
`Corp. v. Phoenix Licensing, LLC, Case CBM2015-00068 (PTAB Aug. 11, 2015)
`(Paper 23), reh’g. denied (PTAB Oct. 29, 2015) (Paper 26) (“Acxiom 1”).
`The parties also identify a substantial number of reexamination and covered
`business method proceedings within the Patent and Trademark Office for patents
`that are asserted to be related to the ’317 patent. Pet. 5; Paper 7, 1–2. In each of
`cases CBM2015-00134 through 00140, directed to patents related to the ’317
`patent, and based on facts similar to those now before us, the petitions were denied
`based on lack of standing.
`
`II. ANALYSIS
`A. Standing for Covered Business Method Patent Review
`The parties disagree as to whether Petitioner has standing to file a petition for
`a covered business method review of the ’317 patent. See Pet. 20–23; Prelim. Resp.
`9–19.
`Standing to file a covered business method patent review is a threshold
`issue. Under § 18(a)(1)(B) of the AIA,
`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.
`See also 37 C.F.R. §§ 42.206, 42.302(a), 42.304(a) (trial rules on standing in a
`covered business method review). A petition for covered business method review
`must set forth the petitioner’s grounds for standing. 37 C.F.R. § 42.304(a). Rule
`42.304(a) states 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.” Id.
`
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`
`As explained in comments to the Final Rules governing covered business
`method patent review,
`To establish standing, a petitioner, at a minimum, would be
`required to certify with explanation that the patent is a covered
`business method patent and that the petitioner meets the eligibility
`requirements of § 42.302. This requirement is to ensure that a
`party has standing to file the covered business method patent
`review and would help prevent spuriously instituted reviews.
`Facially improper standing is a basis for denying the petition
`without proceeding to the merits of the decision.
`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).
`Consequently, the petition must show that the petitioner meets the requirements of
`37 C.F.R. § 42.302, and such “[a] showing can only be made through sufficient
`proof.” Id. (Response to Comment 106). Acxiom 1, CBM2015-00068 (Paper 23,
`3), reh’g. denied (Paper 26); Global Tel*Link Corp. v. Securus Technologies., Inc.,
`Case CBM2014-00166, (PTAB Feb. 6, 2015) (Paper 17).
`For the reasons discussed below, we conclude that the Petition fails to show
`sufficient proof of Acxiom’s standing to file the request for a covered business
`method review.
`
`1. Petitioners as a “Single Legal Entity”
`The Petition asserts that “the Petitioner” is a “single legal entity consisting
`of” Acxiom, the Dish Entities, and Advance America. Pet. 1. Based on this
`assertion, Acxiom states that, at the time of filing the Petition, the “single legal
`entity” had been sued for infringement of the ’317 patent. Id. at 20–21 (citing
`Ex. 1803 and Ex. 1816). Exhibit 1803 is a complaint for patent infringement, filed
`July 30, 2015, asserting that Advance America infringes the ’317 patent.
`
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`Ex. 1803, 1, 16. Exhibit 1816 is a complaint for patent infringement, filed October
`17, 2014, asserting that the Dish Entities infringe the ’317 patent. Ex. 1816, 1, 5.
`Acxiom has not asserted that it has been sued for infringement of the ’317
`patent, nor has Acxiom directed us to any evidence that it has been sued for
`infringing the ’317 patent. Patent Owner states that it “has not sued Acxiom.”
`Prelim. Resp. 1.
`In Acxiom 1, we rejected the argument that multiple petitioners are treated as
`a “single legal entity” for purposes of standing to file a CBM petition. Acxiom 1,
`CBM2015-00068 (Paper 23), reh’g. denied (Paper 26, 6). We held that “each
`petitioner must have standing at time of filing, and if instituted, the case will
`proceed procedurally with the multiple petitioners treated as a single entity.” Id.
`(emphasis added). In the case before us, Acxiom has not demonstrated that it was
`sued for infringement of the ’317 patent or has been charged with infringement
`under the ’317 patent. Thus, Acxiom does not have standing to file a CBM
`petition in this case on the basis that it has been sued.
`2. Suits Against Privies
`The fact that Acxiom itself has not been sued for infringement, or charged
`with infringement, does not preclude Acxiom from filing a CBM petition. The
`statute provides other grounds to establish standing. As explained in Acxiom 1,
`Acxiom may acquire standing if a party sued for, or charged with, infringement is
`Acxiom’s real party-in-interest; or if the party sued for, or charged with,
`infringement is a privy of Acxiom. Acxiom 1, CBM2015-00068 (Paper 23, 5),
`reh’g. denied (Paper 26) (citing 37 C.F.R. § 42.302(a)).
`Acxiom asserts standing because “several of Acxiom’s customer[s] have
`been sued for infringement of the ’317 Patent at the time of filing of this petition
`based on their use of Acxiom’s software and services.” Pet. 21–22. Acxiom also
`
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`states that its sued customers have requested indemnification from Acxiom. Id. at
`22 n.7. Acxiom concludes from these facts that “its sued customers are privies of
`Acxiom.” Id. at 22–23.
`In the context of standing to file a CBM petition, the intent of § 18(a)(1)(B)
`of the AIA was to look to the law establishing declaratory jurisdiction in federal
`courts. See Ex. 3001, 4 (“[T]he [Patent and Trademark] Office should adopt a
`standard similar to the test for invoking declaratory judgment jurisdiction in the
`federal courts.”). This comment by Senator Schumer, one of the principal authors
`of Section 18, was made in the context of determining whether a petitioner has
`been charged with infringement. Id. Declaratory judgment jurisprudence also is
`helpful in informing us as to whether a customer is a “privy” of a petitioner for
`purposes of determining standing to file a CBM petition.
`Acxiom must establish more than just the fact that it has sold products to an
`entity that has been sued for infringement. It must establish that the relationship
`between itself and a sued customer is sufficient to constitute privity.1 The
`evidence provided by Acxiom, which will be discussed in detail below, in short,
`indicates that Acxiom has sold some unspecified software and/or other goods and
`services to a variety of entities and that some of those entities have approached
`Acxiom with claims of indemnity. We are not persuaded that these requests for
`indemnity without evidence or an acknowledgement of an obligation to indemnify
`are sufficient to establish privity. See Microsoft Corp. v. DataTern, Inc., 755 F. 3d
`899 (Fed. Cit. 2014); Arris Group, Inc. v. British Telecomm. PLC, 639 F.3d 1368,
`1375 (Fed. Cir. 2011).
`
`
`1 See generally Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,759
`(Aug. 14, 2012) (discussing the terms “real party-in-interest” and “privy”
`particularly in the context of statutory estoppel provisions).
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`
`Arris concerned the question of standing to bring a declaratory judgment
`action in district court for a determination of non-infringement and invalidity. In
`Arris, the Federal Circuit found jurisdiction over a declaratory judgment action
`because an actual controversy existed between the parties. 639 F.3d at 1371.
`British Telecommunications (“BT”) accused Arris customers of infringing its
`patents by using Arris’s products. Id. There was substantial communication
`between BT, the customers, and Arris regarding BT’s theories of infringement
`against both Arris and its customers before the declaratory judgment action was
`filed. Id. at 1372. BT explicitly and repeatedly singled out Arris’s products to
`support its infringement contentions. Id. at 1377. Additionally, the customers had
`demanded that Arris indemnify them from BT’s assertions of infringement. Id.
`at 1372. Arris was involved directly and substantially in BT’s infringement and
`licensing negotiations with Arris’s customers. Id. at 1378. Moreover, the Federal
`Circuit found that the “protracted process between Arris and BT” supports the
`conclusion that there was an issue between Arris and BT as to whether Arris was
`contributorily infringing the patents-in-suit. Id. at 1379. Based on these facts, the
`Federal Circuit reversed the district court’s dismissal for lack of subject matter
`jurisdiction and remanded for further proceedings.
`In Arris, the Federal Circuit set forth a two-part test to determine standing of
`a supplier to bring a declaratory judgment action based on allegations of
`infringement against its customers:
`where a patent holder accuses customers of direct infringement based
`on the sale or use of a supplier's equipment, the supplier has standing
`to commence a declaratory judgment action if (a) the supplier is
`obligated to indemnify its customers from infringement liability, or (b)
`there is a controversy between the patentee and the supplier as to the
`
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`
`supplier's liability for induced or contributory infringement based on
`the alleged acts of direct infringement by its customers.
`Id. at 1375.
`Concerning the first part of the Arris test, in GSI Commerce Solutions, Inc.,
`v. Arunachalam, Case CBM2014-00101, slip op. at 3–4 (PTAB Oct. 7, 2014)
`(Paper 10), the Board found standing to file a covered business method patent
`review based on undisputed representations in the Petition that Petitioner’s
`customers had been sued and that Petitioner was obligated to indemnify those
`customers. Acxiom has made no such representation in this case.
`Similarly, in Texas Assoc. of Realtors, v. Property Disclosure Technologies,
`LLC, Case CBM2015-00069, slip op. at 10, (PTAB July 28, 2015) (Paper 15), the
`Board declined to find privity where the Petitioner did not “proffer[] sufficient
`facts to establish that the Petitioner is obligated to indemnify its client and
`customers who have been sued by Patent Owner” (emphasis added). In so holding,
`the Board relied on Arris Group, Inc. Id.
`In Acxiom Corp. v. Phoenix Licensing, LLC, Case CBM2015-00134, slip op.
`at 5, (PTAB Nov. 19, 2015) (Paper 22) (“Acxiom 2”), the Board denied the
`petitions for lack of standing because “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” (emphasis added).
`Thus, a customer demand for indemnification alone is not enough to
`establish standing to file a CBM petition; there must be an obligation to
`
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`indemnify.2 Microsoft, 755 F.3d at 904 (Fed. Cir. 2014) (rejecting an argument
`that a customer request to indemnify gives rise to standing without regard to the
`merit of the customer request).
`Concerning the second part of the Arris test, on the record before us, as
`discussed below, there is no persuasive argument or evidence that there is a
`controversy between the patentee and Acxiom as to Acxiom’s liability for induced
`or contributory infringement based on the alleged acts of direct infringement by its
`customers.
`Accordingly, we look to the evidence on which Acxiom relies to determine
`whether Acxiom has an obligation to indemnify its customers who have been sued
`for, or threatened with suit for, infringement of the ’317 patent. As explained
`below, the evidence before us does not establish that Acxiom is obligated to
`indemnify its customers.
`Acxiom relies on evidence that several of its customers have been sued for
`infringement based on their use of Acxiom’s software and services. Pet. 21–22
`(citing Exhibits 1802, 1804, 1807, 1808, 1815). Acxiom also relies on evidence
`that its customers Advance America, American Express Co., and Amica Insurance
`Co. sent letters to Acxiom requesting indemnification for costs and potential
`liabilities. Id. at 22 n.7 (also citing the same Exhibits 1802, 1804, 1807, 1808,
`1815).
`
`
`
`2 Acxiom misconstrues Acxiom 1 in asserting that the Acxiom 1 Decision denying
`institution of a CBM review held that “a Petitioner’s privies include its customers.”
`Pet. 21 (citing Acxiom 1 (Paper 23, 5–6)). The quoted statement does not mean
`that every customer is a “privy.” As pointed out in Acxiom 1, this statement was in
`the context of explaining that “the party sued must be a privy of Acxiom, not the
`converse.” Acxiom 1, (Paper 23, 5–6 (citing Arris Group, Inc.)).
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`
`a. The Lloyd Declaration – Ex. 1802
`Michael Lloyd, a Group Vice President of Sales and Account Management
`of Acxiom, testifies that Acxiom customers have been sued for allegedly infringing
`the ’317 patent. Ex. 1802 ¶¶ 1–3. Mr. Lloyd also testifies that Acxiom has
`agreements with its customers that include an indemnification provision.
`Id. at ¶¶ 4, 5. Additionally, Mr. Lloyd testifies that several of Acxiom's customers
`have requested indemnification under these agreements for costs and potential
`liabilities arising from the lawsuits. Id. at ¶ 6. Mr. Lloyd concludes that “[b]ased
`on these requests, and based on Acxiom’s observation that these patents have been
`asserted against many Acxiom customers, in serial fashion, Acxiom apprehends
`financial and business-related risks surrounding these patents.” Id. at ¶ 11.
`Mr. Lloyd does not testify, however, that Acxiom has an obligation to
`indemnify its customers under any of the cited agreements. Moreover, Acxiom’s
`mere “[apprehension of] financial and business-related risks” does not establish
`that Acxiom has standing to file a CBM petition. Arris, 639 F.3d at 1374
`(“economic injury is not alone sufficient to confer standing” in patent cases
`seeking a declaratory judgment); Texas Assoc. of Realtors, slip op. at 7, Case
`CBM2015-00069 (Paper 15) (“suffering an attenuated, non-proximate, effect from
`the existence of a patent, however, does not meet the Supreme Court’s requirement
`for an adverse legal controversy of sufficient immediacy and reality to warrant the
`issuance of a declaratory judgment” (citing MedImmune, Inc. v. Genentech, Inc.,
`549 U.S. 118, 127 (2007)).
`
`b. Advance America
`Acxiom relies on a letter from counsel for Advance America to counsel for
`Acxiom, dated September 4, 2015 (Ex. 1804) (Pet. 22), and a Limited Data
`Agreement, dated May 25, 2007 (Exhibit 1805) (Pet. 23), as evidence of CBM
`
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`standing based on a suit against its customer Advance America. We note that the
`letter from counsel does not refer to the Limited Data Agreement.
`i. Indemnity Demand Letter – Exhibit 1804
`The letter from counsel for Advance America informs counsel for Acxiom
`that Advance America has been sued for infringing six patents, one of which is the
`’317 patent. Ex. 1804, 1. The letter also states “Advance America utilizes
`software and services provided by Acxiom for marketing to customers and
`potential customers.” Id. at 2. The letter does not link the “software and services
`provided by Acxiom” to the ’317 patent. The letter demands, however, that
`“Acxiom indemnify and hold Advance America harmless from the infringement
`allegations contained in the Complaint.” Id. Counsel for Advance America asserts
`that “Acxiom could be found . . . liable to Phoenix Licensing for infringement, or
`to Advance America for indemnity or contribution.”3 Id. The letter concludes,
`“good business practices recommend taking on the defense of your customers,
`such as Advance America, who merely are using Acxiom’s products and services
`for their intended purposes.” Id.
`The record before us does not contain any evidence that Acxiom responded
`to this letter in any way or agreed to indemnify Advance America. Moreover, we
`have not been directed to any persuasive evidence indicating that the basis of the
`suit against Advance America for allegedly infringing the ’317 patent was the
`
`
`3 We have not been directed to any persuasive evidence that the Patent Owner
`made any allegation, directly or indirectly, that Acxiom itself was liable for direct
`or contributory infringement of the ’317 patent, or for inducing infringement.
`Cf. Arris, 639 F.3d 1379 (“[E]ven in the absence of an express accusation against
`Arris, we think the circumstances indicate there is a dispute between Arris and BT
`concerning Arris’s liability for contributory infringement.”); see also Microsoft,
`755 F.3d at 904–05 (holding that suits against customers do not automatically give
`rise to a case or controversy regarding induced infringement).
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`software and services provided by Acxiom.4 We are not persuaded that this
`“demand” letter alone is evidence that Acxiom was obligated to indemnify
`Advance America for the alleged infringement of the ’317 patent. Microsoft, 755
`F.3d at 904 (a customer request to indemnify does not give rise to standing without
`regard to the merit of the request).
`ii. The 2007 Agreement – Exhibit 1805
`The 2007 Limited Data Agreement is approximately three pages. The entire
`agreement is redacted except for the first six lines, which merely identify the type
`of agreement, the parties, and the effective date, and two sections of an
`“Indemnification” clause. Ex. 1805. Paragraph 13.1 states that the “Client”
`[Advance America] agrees to indemnify Acxiom for use of “Products” in breach of
`the terms of the Agreement. Ex. 1805, 2. The redacted exhibit does not identify
`the “Products.”
`Paragraph 13.2 states that Acxiom agrees to indemnify its Client for any
`liability resulting from “use of the Client Data by Acxiom” in breach of the
`Agreement. Acxiom’s indemnity obligation under Paragraph 13.2 does not
`mention an indemnity for patent infringement liability.
`There is no evidence that this Agreement relates in any way to the goods or
`services that are alleged to infringe the ’317 patent. Moreover, Petitioner has not
`provided evidence sufficient to show that it has an obligation under this Agreement
`or otherwise to indemnify Advance America for allegedly infringing the ’317
`patent.
`
`
`4 Compare the generic statement from Advance America seeking indemnity
`because it “utilizes software and services provided by Acxiom” to the substantial
`evidence in Arris linking the Arris products to the act of infringement. 639 F.3d
`at 1377 (“BT explicitly and repeatedly singled out Arris’s products used in Cable
`One’s network to support its infringement contentions.”).
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`c. Amica
`Acxiom relies on a letter from Amica to Acxiom, dated September 4, 2015
`(Ex. 1807) (Pet. 22), a Services and Data Agreement, dated December 5, 2011
`(Exhibit 1808) (id.), and a Data Agreement, dated July 29, 2011 (Ex. 1815) (id.), as
`evidence of CBM standing based on a suit against its customer Amica.
`i. Indemnity Demand Letter – Exhibit 1807
`The indemnity demand letter from Amica invokes the indemnification
`provisions in the December 5, 2011 (Ex. 1808), and the July 29, 2011 (Ex. 1815)
`agreements based on allegations of patent infringement in a lawsuit against Amica
`alleging, among other things, infringement of the ’317 patent. See Ex. 1806, 17–
`19. According to the letter, the allegations “stem from Amica’s use of the licensed
`Acxiom products.” Ex. 1807.
`The record before us does not contain any evidence that Acxiom responded
`to this letter in any way or agreed to indemnify Amica. We have not been directed
`to any persuasive evidence linking the accusation of infringement of the ’317
`patent to the Acxiom products or services provided to Amica. Similar to our
`analysis above, we are not persuaded that this “demand” letter alone establishes
`that Acxiom was obligated to indemnify Amica for the alleged infringement of the
`’317 patent. Microsoft v. DataTern, 755 F.3d at 904 (a customer request to
`indemnify does not give rise to standing without regard to the merit of the request).
`ii. The 2011 Agreements – Exhibits 1808, 1815
`The entirety of the 2011 Agreements are redacted except for the first several
`lines, which merely identify the type of agreement, the parties, and the effective
`date, four sections of an “Indemnification” clause, and signatures. Ex. 1808, 1815.
`In each Agreement, the four sections of the Indemnity clause that are not redacted
`substantially are identical. Compare Ex. 1808 §§ 11.1–11.4, with Ex. 1815
`
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`§§ 13.1–13.4. Accordingly, we address only the Indemnification clause in Exhibit
`1808.
`
`Under Section 11.1(a) of Exhibit 1808, each party shall defend and
`indemnify the other from liabilities arising out of any claim that “the materials
`provided to it by the indemnifying party pursuant to this Agreement (including
`Client5 provided data, Work Product, Confidential Information, Acxiom Data, or
`Client-provided content) infringes a valid patent.” Ex. 1808, 2.
`The indemnification clause applies only if: (1) the indemnified party
`provides “prompt written notice of such claim and reasonable cooperation,
`information, and assistance in connection therewith,” and (2) the indemnifying
`party has “sole control and authority with respect to the defense, settlement, or
`compromise of any such claim.” Id.
`Section 11.1(c) also qualifies and limits the indemnification clause. Under
`Section 11.1(c),
`Neither party shall have any liability or obligation to the other for any
`infringement claim to the extent caused by or based upon: (i) the
`combination of materials with other products or services not furnished
`or authorized by the party providing the materials; or (ii) additions or
`modifications made to the materials after delivery that are not made by
`the party providing the materials or authorized by this Agreement.
`
`Id.
`
`We do not find the 2011 Agreements to be sufficient to show that Acxiom
`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.”). Acxiom has not provided evidence sufficient to show
`
`
`5 Per the definitions in the Agreement, Amica is the “Client.” Ex. 1808, 1.
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`that it has an obligation to indemnify Amica under the terms of its Agreements.
`There is no persuasive evidence linking the products and services provided by
`Acxiom under these agreements to the actions of Amica alleged to infringe the
`method and apparatus recited in the challenged claims.
`d. American Express
`As evidence of CBM standing based on a suit against its customer American
`Express, Acxiom relies on a letter from American Express to Acxiom, dated May
`7, 2015 (Ex. 1810) (Pet. 22), and a Master Services Agreement, dated October 1,
`2009 (Ex. 1811).
`
`i. Indemnity Demand Letter – Exhibit 1810
`The indemnity demand letter from American Express refers to the Master
`Services Agreement. The letter states that based on American Express’ “internal
`investigation of Plaintiff’s claims and recent events in the litigation, it has become
`clear that Acxiom’s involvement in allegedly infringing activities is significant and
`that Phoenix LPL’s claims are largely ‘based upon . . . materials provided by
`[Acxiom]’”. Ex. 1810, 1. The letter refers to Section 12.1 of the Master Services
`Agreement as the basis of its indemnity demand. Id. at 2. The complaint for
`infringement against American Express provided by Petitioners is dated May 21,
`2014 (Ex. 1809, 14), approximately one year before the demand letter was sent.
`By the time the letter was written, a tentative settlement was being finalized.
`Ex. 1810, 2. Nonetheless, American Express requested Acxiom to assume the
`defense of the case “to the extent it relates to Acxiom functionality or contribute
`$400,000 towards [American Express’s] settlement of this Action.” Id. American
`Express also requested Acxiom to “reimburse [American Express] for at least 40%
`of its defense costs to date, approximately $500,000, which we believe reasonably
`relate to the Acxiom functionality.” Id.
`
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`While a specific demand was made, American Express indicates its demand
`is negotiable. American Express requested a response by the next day confirming
`that Acxiom would accept the defense as it relates to Acxiom functionality or
`advise “what amount Acxiom will contribute to the settlement of this Action.” Id.
`American Express also asked Acxiom to state “what amount Acxiom will
`reimburse [American Express] for its already incurred defenses costs.”
`The record before us does not contain any evidence that Acxiom responded
`to this letter in any way or agreed to indemnify American Express. Moreover, we
`have not been directed to any persuasive evidence linking the accusation of
`infringement of the ’317 patent to the Acxiom products or services provided to
`American Express. We are not persuaded that this “demand” letter alone
`establishes that Acxiom was obligated to indemnify American Express for the
`alleged infringement of the ’317 patent. Microsoft, 755 F.3d at 904 (a customer
`request to indemnify does not give rise to standing without regard to the merit of
`the request).
`
`ii. The 2009 Agreement – Exhibit 1811
`The entirety of 2009 Agreement is redacted except for the first several lines,
`which merely identify the type of agreement, the parties, and the effective date,
`five sections of an “Indemnification” clause, Sections 12.1–12.5, and signatures.
`Ex. 1811.
`The Agreement covers “alleged infringement or violation of any intellectual
`property right.” Id. at 2 (Article 12.1). The Agreement also gives the “Vendor”
`(Acxiom) “the right to conduct the defense of any such claim or action and,
`consistent with Amexco’s rights hereunder, all negotiations for its settlement;
`provided, however, that Amexco may participate in such defense or negotiations to
`protect its interests.” Id. (emphasis added). As stated above, by the time American
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`Express sent its indemnity demand letter, a tentative settlement was “being
`finalized.” Ex. 1810, 2 (emphasis added).
`Article 12.4 qualifies and limits the indemnification clause:
`Neither party shall have any liability or obligation to the other for any
`infringement claim to the extent caused by or based upon: (i) the
`combination of materials with other products or services not furnished
`or authorized by the party providing the materials; or (ii) additions or
`modifications made to the materials after delivery that are not made by
`the party providing the materials or authorized by this Agreement.
`Ex. 1811, 3. Based on the demand letter, American Express indicates that not all
`of the alleged liability relates to Acxiom’s products, thus suggesting Article 12.4
`may apply. Ex. 1810, 2 (reimburse “40% of its defense costs to date,
`approximately $500,000, which we believe reasonably relate to the Acxiom
`functionality”).
`Article 12.5 also limits any indemnification liability. It states, “[n]o party
`shall have any obligation to defend or indemnify the other party pursuant to this
`Article 12 if the indemnifying party is not notified promptly of the claim and is
`materially prejudiced thereby.” Ex. 1811, 3. As noted above, American Express
`notified Acxiom of the suit and indemnity demand about 1 year after American
`Express was sued, at a time when a tentative settlement was being finalized. The
`settlement was so close to being completed that Acxiom was given only one day to
`respond to the indemnity demand. Ex. 1810, 2.
`We do not find the American Express Agreement to be sufficient to show
`that Acxiom 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”). Acxiom has not provided evidence
`sufficient to show that it has an obligation to indemnify American Express under
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`the terms of its Agreement. There is no persuasive evidence linking the products
`and services provided by Acxiom under this Agreement to the actions of American
`Express alleged to infringe the method and apparatus recited in the challenged
`claims.
`
`3. Standing to Bring a Declaratory Judgment Action
`Acxiom also argues that it has standing because its co-Petitioners, the Dish
`Entities and Advance America, have been sued for infringing the ’317 patent, as
`have several other Acxiom customers, thus giving Acxiom standing to bring a
`declaratory judgment action in Federal court. Pet. 23. We disagree. Any standing
`that the Dish Entities and Advance America may have had is n