Of the many procedural wrinkles of post-grant reviews, Petitioners may sometimes overlook the seemingly trivial matter of standing. A recent decision illustrates how this issue should be considered more cautiously.
In Acxiom Corporation v. Phoenix Licensing, LLC, the PTAB denied the institution of a CBM review upon finding that the sole remaining petitioner, Acxiom Corporation, lacked standing under § 18(a)(1)(B) of the America Invents Act. See Acxiom Corp. v. Phoenix Lic., CBM2015-00068. Initially, Acxiom had filed the Petition jointly with three other entities – AT&T Mobility, LLC, AT&T Services, Inc., and Ford Motor Company. Upon Joint Motions to Terminate, the other three entities were removed from the Petition, leaving only Acxiom. The PTAB found the Petition failed to show standing for Acxiom.
Regarding Acxiom, the Petition stated in the “Grounds for Standing” section that, “Acxiom Corporation and AT&T Services, Inc. are both real parties-in-interest to and/or privies of one or more parties who have been sued for infringement.” The PTAB found this statement deficient because (1) no persuasive evidence was provided to show that the parties sued for infringement are Acxiom ‘s real party-in-interest or privies of Acxiom and (2) Acxiom’s statement that it was privy of one or more parties who have been sued for infringement could not have justified standing, even if true.
Regarding the first point, the PTAB’s decision makes clear that the Board will not confer standing based on unsupported assertions alone. Practitioners are advised to articulate the evidentiary basis for such assertions. Regarding the second point, the PTAB explicitly clarified that privy status can only confer standing when the party sued is a privy of a Petitioner, but not the converse. Looking to legislative history of the AIA, the PTAB noted that the word “privy… effectively means customers of the petitioner.” 157 Cong. Rec. S5432 (daily ed. Sept. 8, 2011)(statement of Sen. Schumer). In other words, a Petitioner may only have standing based on privy status if a customer of the Petitioner is the party sued. The converse does not hold: the fact that a party is sued does not confer standing to every customer of that party.