Have Your Cake and Indemnify It, Too

In many cases brought before the Board, the Petitioner is defending against a real-party-in-interest challenge. In Acxiom v. Phoenix Licensing, LLC, CBM2015-00134 et seq., which involved a covered business method review, the Petitioner was attempting to show that it was a real party in interest, and it failed.

In Acxiom, the Petitioner claimed that it was a real-party-in-interest or privy to third parties that had been sued for infringement of the subject patents. The Petitioner sought to substantiate this claim by submitting two items: an agreement redacted to show only two provisions relating to indemnity, and a declaration that claimed in substance that one of the third parties sent Petition a notice requesting indemnity.

The Board found this evidence to be insufficient. It noted that neither the demand notice itself, the response or any correspondence around the notice was submitted to the Board. And the Petitioner was deafeningly silent about its view on whether it believed that it had an indemnity obligation. The Board took notice of the silence.

Perhaps this is just a case of the Petitioner failing to bring sufficient evidence to show that Petitioner was subject to an indemnity obligation. There is also the possibility, however, that Petitioner wanted to have its cake and eat it, too. Perhaps the Petitioner was challenging or reserving its rights as to indemnity when the third party tendered the claim, while at the same time attempting to claim real-party-in-interest by virtue of the language of the indemnity provisions. One can’t help but wonder why evidence of an acceptance of the indemnity obligation was not presented if it existed. And if it did not exist, well, there likely would not be the control needed to show real party in interest. Just another reason to make sure you show you have standing to file a CBM.