Acxiom Corporation v. Phoenix Licensing, LLC

Addressing the issue of standing, the Patent Trial and Appeal Board (PTAB or Board) denied institution of a covered business method (CBM) patent review, finding that the petitioner failed to provide sufficient proof demonstrating it had standing to file its petition. Acxiom Corporation v. Phoenix Licensing, LLC, Case No. CBM2015-00068 (PTAB, Aug. 11, 2015) (Grossman, APJ).

Four entities—Acxiom Corporation, AT&T Mobility LLC, AT&T Services, Inc., and Ford Motor Company—filed a petition for CBM patent review, challenging all claims of Phoenix Licensing’s patent relating to the use of client information to automatically select products appropriate for the client. Acxiom became the sole remaining petitioner after the Board granted termination of the proceeding with respect to AT&T Mobility, AT&T Services and Ford Motor.

Analyzing 37 CFR § 42.302, the Board found that the remaining petitioner failed to present sufficient proof that it was either sued for infringement or charged with infringement at the time it filed its petition. (See IP Update, Vol. 18, No. 3 report on CBM 2014-00166.) The Board concluded it had found no persuasive evidence, or even allegations, indicating that the petitioner had been sued or was a real-party-in-interest or in privy with the entities sued by the patent owner. The Board concluded that there was not sufficient proof that either Ford Motor or AT&T Mobility, the parties sued for infringement, were real parties-in-interest or privies of the remaining petitioner.

The Board explained that the party sued for infringement must either be the petitioner or privy of the petitioner, not the converse; dismissing the petitioner’s argument that it was a privy of one or more parties who had been sued for infringement. The Board explained that a party having been sued for infringement does not confer standing on every customer of that party, finding that the word “privy,” in the context of § 18 of the America Invents Act (AIA), “effectively means customers of the petitioner.” The Board thus denied institution of the CBM patent review.