To have standing to pursue CBM review, a petitioner or the petitioner’s real party-in-interest must have been sued or charged with infringement of the patent. AIA § 18(a)(1)(B) and 37 C.F.R. 42.302(a).
Acxiom Corp. v. Phoenix Licensing, LLC, CBM2015-00068, Paper 23 (PTAB Aug. 11, 2015). The Board denied institution of CBM review because petitioner did not have standing to challenge the patent under AIA § 18(a)(1)(B) and 37 C.F.R. § 42.302(a). Multiple petitioners cannot be treated as a single legal entity for the purpose of determining standing to file a CBM petition. Each petitioner must have standing at the time of filing, and if instituted, the case will proceed procedurally with the multiple petitioners treated as a single entity. The fact that a party itself has not been sued for infringement, or charged with infringement, does not preclude that party from filing a CBM petition. That party may acquire standing if its real party-in-interest or privy has been sued for, or charged with, infringement.
Westlake Services, LLC v. Credit Acceptance Corp., CBM2014-00176, Paper 41 (Sept. 3, 2015). The Board denied patent owner’s motion to terminate the proceeding, after the district court dismissed with prejudice patent owner’s infringement claim against petitioner. Patent owner argued that AIA § 18(a)(1)(B) and 37 C.F.R. § 42.302(a) impose a continuous standing requirement throughout a CBM proceeding, and that there is no remaining case or controversy sufficient to maintain the proceeding after dismissal of the infringement claim with prejudice. The Board disagreed, holding that standing for a CBM proceeding is conferred by AIA § 18(a)(1)(B), that standing for a CBM proceeding is evaluated at the time a petition is filed, and that there is no requirement for a continuous infringement controversy under AIA § 18(a)(1)(B).
J.P. Morgan Chase & Co. v. Intellectual Ventures II LLC, CBM2014-00157, Paper 40 (PTAB Jan. 12, 2016). A petitioner does not lose standing in a CBM proceeding if the claim that served as the basis for CBM eligibility is disclaimed by the patent owner during the proceeding. AIA § 18(a)(1)(B) provides that a person may not file a petition for CBM review “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.” Based on this provision, the Board held that “the plain language of the AIA requires us to determine whether petitioner had standing to file a petition for CBM patent review at the time the petition was filed; not whether petitioner has standing throughout the proceeding.” (emphasis original)
Ocean Tomo, LLC v. Patent Ratings, LLC, CBM2015-00157, Paper 16 (PTAB Jan. 25, 2016). Standing to file a covered business method patent review is a threshold issue. The petition must show through sufficient proof that the petitioner meets the requirements of 37 C.F.R. § 42.302. The Board denied institution because petitioner did not demonstrate that it has been sued for infringement of the challenged patent or been charged with infringement of the challenged patent. The controversy between the parties, which includes allegations of contractual and tortious conduct arising out of an employment and business relationship gone awry, does not meet the threshold requirements of 37 C.F.R. 42.302(a).
Acxiom Corp. v. Phoenix Licensing, LLC, CBM2015-00180, Paper 18 (PTAB Mar. 21, 2016). The Board denied institution of CBM review because petitioner did not have standing to challenge the patent under AIA § 18(a)(1)(B) and 37 C.F.R. § 42.302(a). The fact that petitioner itself has not been sued for infringement, or charged with infringement, does not preclude petitioner from filing a CBM petition. Petitioner may acquire standing if its real party-in-interest or privy has been sued for, or charged with, infringement. However, petitioner must establish more than just the fact that it sold products to an entity that has been sued for infringement. Claims of indemnity are not sufficient to establish privity. Petitioner must demonstrate that it has an obligation to indemnify those who have been sued for, or charged with, infringement of the challenged patent.