Petition for Covered Business Method Patent Review by Acxiom Corporation, CBM2015-00068 (PTAB August 11, 2015, Order) (Grossman, APJ)
Thursday, August 13, 2015
No CBM Standing for Customer of Party Sued for Infringement
The Board denied institution of covered business method review of a communications system patent because the petitioner did not have standing under § 18(a)(1)(B) and 37 CFR § 42.302. "The Petition does not assert that [the petitioner] has been sued or charged with infringement. . . . The allegation that [petitioner] is a privy of one or more parties who have been sued for infringement, even if supported by evidence, would not establish standing for [petitioner]. During the . . . Senate debates on the AIA, Senator Schumer indicated that the word 'privy,' in the context of § 18 of the AIA, 'effectively means customers of the petitioner.' Thus, for example, the fact that Ford has been sued for infringement of [the challenged patent] does not thereby confer standing on every privy, or customer, of Ford to file a request for a covered business method patent review. Under the applicable statute and rules . . . in order to confer standing on [petitioner], the party sued must be a privy of [petitioner], not the converse. . . .[W]e determine that the information presented in the Petition does not establish that [petitioner] had standing to file the Petition or to be named as a Petitioner."