The Patent Trial and Appeal Board (PTAB) recently dismissed Acxiom Corp.’s petition for covered business method review (CBM review) of a patent related to an automated process for marketing financial products based on lack of standing.  This decision highlights the requirement that a petition for CBM review explain the basis for petitioner’s standing to file the petition, and draws a clear distinction for purposes of standing between the situation where a CBM patent is asserted against a privy of the petitioner (i.e., petitioner has standing) and where the petitioner is a privy of a party against whom the patent is asserted (i.e., petitioner lacks standing).  This case also brings into focus the difference in standing requirements between petitions for CBM review and petitions for inter partes review (IPR).

In its petition, Acxiom Corp. alleged that it was a privy of a party against whom the patent owner had asserted the patent.  The PTAB dismissed the petition on the ground that Acxiom Corp. lacked standing, holding that being a privy of a party sued for patent infringement does not confer standing on the privy to file a petition for CBM review.1  In contrast, petitioner would have had standing had the patent been asserted against petitioner’s privy.2 

Section 18(a)(1)(B) of the Leahy-Smith America Invents Act (AIA) states:

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.3

The PTAB noted that it is Petitioner’s burden to demonstrate that the patent for which review is sought is a CBM patent, and that the petitioner has standing.4 

A party seeking CBM review should ensure that its petition contains an “assertion of standing … supported sufficiently by proof in the Petition.”5  Failure to do so will result in the PTAB denying institution of a CBM review without proceeding to the merits of the decision.6  Examples of proof supporting an assertion of standing include petitioner’s description of related litigation and the complaint in that litigation.7

In respect of “Grounds for Standing,” Acxiom Corp.’s petition merely asserted 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.”8  Acxiom Corp. presented no evidence that the patent that was the subject of the petition had been asserted against it, its real party-in-interest, or its privy.9  Thus, the sole basis for Acxiom Corp.’s standing was its assertion that it was a privy of a party who had been sued for infringement of the patent.  The PTAB held that such was insufficient to confer standing on Acxiom Corp.10

It should be noted that, unlike petitions for CBM review, third parties may file petitions for an IPR or post-grant review whether or not they have been sued for patent infringement (although there is a statutory bar to file within a year of service of a complaint if sued).11  While the grounds for CBM review are broader than for IPR,12 the standing requirement is more stringent for CBM review.13

Acxiom Corp. highlights several important points. 

  • The grounds for petitioner’s standing must be asserted in the petition for CBM review together with supporting evidence. 
  • To have standing to file a petition for CBM review, the petitioner, petitioner’s real party-in-interest, or a privy of petitioner must have been sued for, or charged with, infringement of the patent for which it seeks review.  A party does not acquire standing by being a privy of a party against whom the patent has been asserted. 
  • Practitioners should bear in mind that, unlike petitions for CBM review, petitions for an IPR may be filed by anyone (other than the patent owner) who wishes to challenge a patent’s validity based on a printed publication