On August 11, 2015, the Patent Trial and Appeals Board (PTAB) denied institution of a covered business method review (CBMR) petition by Acxiom because the petitioner did not have standing under § 18(a)(1)(B) of the AIA. The original petition was filed by Acxiom, AT&T, and Ford Motor. But the patent owner had only filed lawsuits against AT&T and Ford Motor. Shortly after filing the present petition, AT&T and Ford Motor filed joint motions to terminate the CBMR, leaving Acxiom as the sole petitioner.
Under § 18(a)(1)(B) of the AIA, a party may not file a petition for CBMR unless the party or its “real party in interest or privy has been sued for infringement of the patent or has been charged with infringement under the patent.” In its petition, Acxiom argued that it was a privy of one or more parties who had been sued for infringement.
The PTAB, however, held that Acxiom lacked standing to file the CBMR petition. The PTAB noted that “the fact that Ford has been sued for infringement . . . does not thereby confer standing on every privy, or customer, of Ford . . . . [I]n order to confer standing on Acxiom, the party sued must be a privy of Acxiom, not the converse.” Because Acxiom was a customer of the party charged with infringement, and not the other way around, the PTAB denied institution.
Acxiom Corp. v. Phoenix Licensing, LLC, CBM2015-00068, Paper 23 (PTAB Aug. 11, 2015).