Acxiom Corporationv.Phoenix Licensing, LLC

Patent Trial and Appeal Board

Oct 29, 2015

13441799 (P.T.A.B. Oct. 29, 2015)

Trials@uspto.gov Paper 26
Tel: 571-272-7822 Entered: October 29, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________
ACXIOM CORPORATION,
Petitioner,

v.
PHOENIX LICENSING, LLC,
Patent Owner.
_______________

Case CBM2015-00068
Patent 8,352,317 B2
_______________

Before BARRY L. GROSSMAN, STACEY G. WHITE, and
PETER P. CHEN, Administrative Patent Judges.

GROSSMAN, Administrative Patent Judge.

DECISION
Request for Rehearing
37 C.F.R. § 42.71

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I. INTRODUCTION
Acxiom Corporation (“Acxiom”) filed a Request For Reconsideration of the
Decision Denying Institution of Covered Business Method Review (Paper 24,
“Req. Reh’g”) requesting rehearing of our decision (Paper 23, “Decision”)
declining to institute a covered business method patent review of U.S. Patent No.
8,352,317 B2 (“the ’317 patent”). The basis for our Decision was that Acxiom did
not establish that it satisfies the standing requirement for filing a petition for a
covered business method patent review.
For the reasons stated below, we deny Acxiom’s request.
II. DISCUSSION
When rehearing a decision on institution, the Board reviews the decision for
an abuse of discretion. 37 C.F.R. § 42.71(c). The burdens and requirements of a
request for rehearing are stated in 37 C.F.R. § 42.71(d):
(d) Rehearing. . . . The burden of showing a decision should be
modified lies with the party challenging the decision. The request
must specifically identify all matters the party believes the Board
misapprehended or overlooked, and the place where each matter
was previously addressed in a motion, an opposition, or a reply.
Acxiom asserts that “from oversight or misapprehension” (Req. Reh’g 3) the
Decision erred on three distinct issues:
1. the four separate and distinct entities filing the Petition constituted a
“single legal entity known as the Petitioner” at the time of filing (Req. Reh’g 1, 4);
2. the Petition asserted that Petitioners Ford Motor Company and AT&T
Mobility LLC each have been sued for infringement of the ’317 Patent, thus
conferring standing on Petitioner Acxiom (id. at 5–8); and
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3. once standing of any named Petitioner is established at the time of filing
the Petition, standing for all named Petitioners is established and continues
throughout the proceeding (id. at 8–10).
We address below each of these assertions.
A. “Single Legal Entity Known as the Petitioner”
Acxiom argues that “[f]our business entities came together to form the legal
entity known as the Petitioner.” Req. Reh’g 1. According to Acxiom, “the Board
has previously explained that, as a legal matter, a collection of multiple entities
that together file a single petition for CBM review are deemed to collectively
constitute a single ‘Petitioner.’” Id. at 2 (emphasis added). Acxiom misconstrues
our prior decisions. Neither Agilysis, Inc., v. Ameranth, Inc., Case CBM2014-
00014, (PTAB Feb. 11, 2014) (Paper No. 11) nor its related case, Fandango, LLC
v. Ameranth, Inc., Case CBM2014-00013, (PTAB Feb. 11, 2014) (Paper No. 14),
cited by Acxiom (Req. Reh’g 2), support Acxiom’s position.
Ameranth and Fandango were decided by the same panel of the Board, on
the same day, with substantially identical decisions. In Agilysis, thirty-five
companies were identified in the petition as “Petitioners.” Agilysis at 1. In
Fandango, five companies were identified in the petition as “Petitioners.”
Fandango at 1. In response to a Board inquiry about how the “proceeding [would
be] conducted,” a representative counsel spokesperson in each case stated the
filings with the Board would “articulate the differences” any of the multiple
Petitioner companies may have on any issues. Agilysis at 2, Fandango at 2. The
Board determined that, procedurally, this was “unacceptable.” Id. at 1. The Board
also determined that the “manner of conducting” this proceeding, as proposed by
counsel, “is not in accordance with the rules governing trial practice and procedure
before the Board.” Id. at 3 (emphases added).
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The Board’s statements in Agilysis and Fandango that “for each ‘petition’
there is but a single party filing the petition, no matter how many companies are
listed as petitioner or petitioners,” (id. at 3) and that the multiple companies “stand
in the shoes of a single ‘Petitioner’” (id.) were in the context of the manner of
conducting the proceeding. Neither Agilysis nor Fandango addresses standing to
file a covered business method patent review (“CBM”) petition. Neither Agilysis
nor Fandango determined that, as a legal matter, a collection of multiple entities
that together file a single petition for a CBM are deemed to meet the standing
requirement of a CBM proceeding if any one of the multiple entities meets the
statutory standing requirement. Our Decision is not inconsistent with Agilysis and
Fandango.
As the Federal Circuit has explained, “the starting point for a standing
determination for a litigant before an administrative agency is not Article III [of the
Constitution], but is the statute that confers standing before that agency.” Ritchie
v. Simpson, 170 F.3d 1092, 1095 (Fed. Cir. 1999); see also, Coach Servs., Inc. v.
Triumph Learning LLC, 668 F.3d 1356, 1376 (Fed. Cir. 2012) (“[F]or an agency
such as the PTO, standing is conferred by statute. . . . The purpose of the standing
requirement is ‘to prevent litigation where there is no real controversy between the
parties, where a plaintiff, petitioner or opposer, is no more than an intermeddler.’
Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 1028–29
(CCPA 1982)”).1
In this case, the starting point for a standing determination is the Leahy-
Smith America Invents Act (“AIA”), Pub. L. No. 112-29, § 18(a)(1)(B),

1 Ritchie, Coach Servs., and Lipton are appeals under the Lanham Act from
decisions of the Trademark Trial and Appeal Board.
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125 Stat. 284, 330 (2011). The law governing standing to file a petition for a CBM
is clear. AIA Section 18(a)(1)(B) states:
(B) 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.
(emphases added). The statute further defines a “person” who may file a CBM
petition as “a person who is not the owner of a patent.” 35 U.S.C. § 321(a).2 We
construe the statute to mean that a person, such as a corporate petitioner, may file a
CBM petition only if that individual entity, or its real parties in interest or privies,
have been sued for, or charged with, infringement. See Joe Matal, A Guide to the
Legislative History of the America Invents Act: Part II of II, 21 FED. CIR. B.J. 539,
626 (2012) (“[A] party may petition for a proceeding only if that party or its real
parties in interest or privies have been ‘sued for infringement of the patent or . . .
charged with infringement under that patent. ’” (emphases added)).
Our implementing rules are equally clear:
(a) A petitioner may not file with the Office a petition to
institute a covered business method patent review of the patent
unless the petitioner, the petitioner’s real party-in-interest, or a
privy of the petitioner has been sued for infringement of the
patent or has been charged with infringement under that patent.
Charged with infringement means a real and substantial
controversy regarding infringement of a covered business
method patent exists such that the petitioner would have standing
to bring a declaratory judgment action in Federal court.
37 CFR § 42.302(a) (emphases added).

2 AIA § 18(a)(1) provides that CBM proceedings “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.”
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Based on the statute and rule, each named petitioner in a CBM petition filed
by multiple petitioners must satisfy the CBM standing requirement at the time the
petition is filed. Acxiom does not direct us to persuasive authority to the contrary.
A contrary interpretation would allow a person without standing readily to
circumvent the statutory requirement for standing by simply associating, for
purposes of filing a CBM petition, with a person that does have standing. Thus,
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, as was
done in Agilysis and Fandango. Accordingly, Acxiom has not demonstrated that
we abused our discretion or misapprehended or overlooked facts, law, or
arguments in determining that Acxiom did not have standing to file a CBM petition
in this case. 3
B. Conferred Standing
It is undisputed that, out of the four original petitioners, only two, Ford
Motor Company and AT&T Mobility, were sued for infringement of the
’317 patent. Dec. 4. There is no evidence or allegation that Acxiom has been sued
or has had its real-party-in-interest or privy sued. Id. Acxiom asserts the standing
of Ford and AT&T Mobility is conferred on Acxiom merely because Acxiom is a

3 Cf. PNC Bank, N.A. et al. v. Maxim Integrated Prods., Inc., Case CBM2014-
00041 (PTAB June 3, 2014) (Paper No. 19). In PNC Bank, , PNC, one of three
Petitioners violated 35 U.S.C. § 325(a)(1) by filing the CBM petition after it had
filed a district court suit challenging the validity of the patent challenged in the
CBM. In an attempt to eliminate the statutory bar against PNC, PNC moved for
entry of adverse judgment against it in the CBM proceeding and contended that
other Petitioners could proceed with the Petition without further involvement by
PNC. The Board denied institution on the CBM petition and dismissed the motion
because PNC already had exerted substantial control over the case and granting
PNC’s request for adverse judgment would not obviate the control that PNC
already had exerted. Id., slip op. at 4.
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co-petitioner. Req. Reh’g 5–8. Based on our determination above that the
governing statute requires each entity named as a petitioner in a CBM petition to
have standing for that petitioner to be able to participate, Acxiom’s unrelated co-
petitioners, Ford Motor Company and AT&T Mobility, cannot confer their
standing on Acxiom. Accordingly, Acxiom has not demonstrated that we abused
our discretion or misapprehended or overlooked facts, law, or arguments in
determining that Acxiom did not have standing to file a CBM petition in this case.
C. At Time of Filing
Based on our determination above that the governing statute requires each
entity named as a petitioner in a CBM petition to have standing, on the record
before us, there was no evidence establishing that Acxiom had standing at the time
the Petition was filed. We agree with Acxiom’s premise that that the requirements
for standing need be met only at the time of filing. Req. Reh’g 8–10. This has
been our consistent interpretation of the governing statute and rule. Westlake
Servs., v. Credit Acceptance Corp., Case CBM2014-00176 (PTAB Sept. 3,
2015) (Paper 41); eBay Enterprise, Inc. v. Lockwood, Case CBM2014-00026
(PTAB May 15, 2014) (Paper 25). Our Decision does not contravene this premise.
We determined that Acxiom itself did not have standing at the time the petition
was filed. Acxiom has not asserted error in that determination. Accordingly,
Acxiom has not demonstrated that we abused our discretion or misapprehended or
overlooked facts, law, or arguments in determining that Acxiom did not have
standing to file a CBM petition in this case.
III. CONCLUSION
Petitioner has not persuaded us that the determination not to institute a
covered business method review of the ’317 patent was an abuse of our discretion,
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or that we misapprehended or overlooked any matter. Accordingly, we deny the
request for rehearing.
IV. ORDER
For the reasons given, it is
ORDERED that the request for rehearing is denied.

FOR PETITIONER:

Walter Renner
Roberto Devoto
FISH & RICHARDSON P.C.
axf@fr.com
CBM38784-0007CP1@fr.com

Jason Mudd
ERISE IP, P.A.
jason.mudd@eriseip.com

Nathan Rees
NORTON ROSE FULBRIGHT US LLP
nate.rees@nortonrosefulbright.com

FOR PATENT OWNER:

Louis J. Hoffman
LOUIS J. HOFFMAN, P.C.
Louis@valuablepatents.com

Shawn Diedtrich
PRUDENS LAW LLC
shawn@prudenslaw.com

John Love
TUMEY L.L.P.
jlove@tumeyllp.com