Denying Institution because Petitioner Found to Lack Standing CBM2015-00180

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Takeaway: To establish a supplier’s privity for standing purposes in a CBM review in relation to customers that have been sued for infringement, a supplier should present evidence tying the customers’ accused products to the supplier’s products as well as evidence showing the supplier’s obligation to indemnify its customers.

In its Decision, the Board denied institution of any covered business method patent review because Petitioner lacked standing. Petitioner Phoenix Licensing was the sole remaining petitioner after several parties had been terminated from the proceeding.  Because Phoenix Licensing itself did not have standing, the Board denied institution. Continue reading

Denying Institution for Lack of Standing where Petitioner Not Previously Sued for Patent Infringement CBM2015-00157

Takeaway: Petitioner’s district court action seeking declaratory judgment for non-breach of a license agreement relating to alleged contractual and tortious business conduct did not create a real and substantial controversy as to any patent infringement meeting the threshold standing requirements of 37 C.F.R. § 42.302(a). Continue reading

Institution of Post-Grant Review of a Patent Issuing from a Transition Application PGR2015-00017

Takeaway: The inquiry into whether a patent issued from a transition application is subject to the AIA first inventor to file statutory provisions and, thus, available for post-grant review turns on whether the patent contains a claim that has an effective filing date on or after March 16, 2013.

In its Institution Decision, the Board instituted Post-Grant Review of the ‘395 patent. The ‘395 patent discloses “a method and apparatus to identify at least one component from a plurality of components in a fluid mixture,” including “a detector apparatus which detects and identifies selected components” and “a laser which emits a laser beam which damages or kills selected components of the plurality of components.” The Board found that claims 1-14 of the ‘395 patent were more likely than not unpatentable. Continue reading

Reply to Preliminary Response Authorized To Address Standing CBM2015-00168, 178

Takeaway: When the Patent Owner Preliminary Response raises an issue concerning standing of Petitioner, the Board may authorize Petitioner to file a Reply limited to addressing the standing issue.

In its Order, the Board authorized Petitioner to file a Reply to Patent Owner’s Preliminary Response limited to addressing Petitioner’s interpretation of statutes and regulations related to the issue of standing. The Board also authorized Petitioner to file an additional briefing regarding the claim construction issue. Continue reading

Final Written Decision Finding Standing Based on Eminent Domain Lawsuit CBM2014-00116

Takeaway: Standing for a covered business method patent review was demonstrated by a suit for unlicensed use of the patent under an eminent domain statute, 28 U.S.C. § 1498.

In its Final Written Decision, the Board found that Petitioner had demonstrated by a preponderance of the evidence that claims 39-44 of the ’548 patent are unpatentable. Also, the Board denied-in-part and dismissed-in-part each of Patent Owner’s and USPS’s Motion to Exclude. Continue reading

Institution Denied Where Customer Indemnification Insufficient to Establish Standing as Real Party in Interest CBM2015-00134

Takeaway:  Indemnifying customer for alleged patent infringement, without sufficient substantiation, does not make an entity a real party in interest for a transitional proceeding with respect to a covered business method patent.

In its Decision, the Board denied institution of covered business method patent review of seven related cases.  Two Petitioners (AAA and Gerber) had previously “settled with Phoenix Licensing LLC (‘Patent Owner’) and have been terminated from each of the proceedings.”  The Board determined “that Petitioner [Acxiom] has not demonstrated that it has standing to file these Petitions for covered business method review under § 18(a)(1)(B) of AIA and 37 C.F.R. § 42.302.” Continue reading

Decision on Institution CBM2015-00051

Takeaway: In order to have standing to bring a petition for covered business method patent review, a petitioner need not be sued for infringement, but just charged with infringement. Such a finding can be based on a facts showing not only that patent owner stated that there has been infringement of the patent at issue, but also that patent owner is litigious and has sued petitioner or others for infringement of related patents. 

In its Decision, the Board instituted review of all of the challenged claims (claims 1-11) of the ’407 Patent. The ’407 Patent is directed to a process for conducting electronic transactions, particularly “a more effective and efficient way to make a payment over the Internet.” Continue reading

Denying Authorization to File Motion to Terminate Asserting Lack of Case or Controversy Standing CBM2014-00176

Takeaway: Standing to file a CBM proceeding is evaluated at the time of the filing of the Petition, and does not require article III standing to be maintained throughout the proceeding.

In its Decision, the Board ordered that Patent Owner is not authorized to file a motion to terminate. A conference call was held, where Patent Owner sought authorization to file a motion to terminate the CBM proceeding based on a lack or case or controversy between the parties. Continue reading

Denying Covered Business Method Patent Review Because Petitioner Did Not Have Standing CBM2015-00068

Takeaway: While a petitioner may have standing to file a covered business method patent review if the petitioner’s privy has been sued for infringement, a petitioner does not obtain standing merely on the basis of being a privy of some company that has been sued for infringement.

In its Decision, the Board denied institution because it determined that Petitioner did not have standing to file a covered business method patent review of the ’317 Patent. The Board explained that under § 18(a)(1)(B) of the AIA, “[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.” Thus, a Petitioner may acquire standing if (1) Petitioner has been sued for, or charged with infringement of the patent for which it seeks review; (2) if a party sued for, or charged with infringement, is Acxiom’s real party-in-interest; or (3) if the party sued for, or charged with, infringement is a privy of Acxiom. Continue reading

Denying Institution for Lack of Standing CBM2015-00069

Takeaway: In order to have standing to file a petition for covered business method patent review, the petitioner must provide facts sufficient to show it would have standing to bring a declaratory judgment action in federal court. The fact that its clients or customers have been sued is not enough on its own to confer such standing. 

In its Decision, the Board determined that Petitioner did not have standing to file a covered business method patent review of the ’167 Patent; therefore, it did not institute trial.
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