Delta Air Lines, Inc.v.Loyalty Conversion Systems Corporation

Patent Trial and Appeal Board

Oct 27, 2014

13863556 (P.T.A.B. Oct. 27, 2014)

Trials@uspto.gov Paper 37 (CBM2014-00095)
571-272-7822 Paper 28 (CBM2014-00096)
Entered: October 27, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

DELTA AIRLINES, INC., FRONTIER AIRLINES, INC.,
UNITED AIRLINES, INC., US AIRWAYS, INC.,
AND AMERICAN AIRLINES, INC.,
Petitioner,

v.

LOYALTY CONVERSION SYSTEMS CORPORATION,
Patent Owner.
____________

Case CBM2014-00095 (Patent 8,313,023)
Case CBM2014-00096 (Patent 8,511,550)1
____________

Before GRACE KARAFFA OBERMANN, JON B. TORNQUIST, and
TINA E. HULSE, Administrative Patent Judges.

TORNQUIST, Administrative Patent Judge.

JUDGMENT
Termination of the Proceedings
37 C.F.R. §§ 42.72-42.73

1 This order addresses issues that are common to both cases; therefore, we
issue a single judgment to be entered in each case. Paper numbers refer to
CBM2014-00095, unless otherwise noted.
Case CBM2014-00095 (Patent 8,313,023)
Case CBM2014-00096 (Patent 8,511,550)

2
On September 29, 2014, the Board instituted a covered business
method patent review of U.S. Patent No. 8,313,023 in CBM2014-00095 and
U.S. Patent No. 8,511,550 in CBM2014-00096. See CBM2014-00095,
Paper 32; CBM2014-00096, Paper 23. No patent owner response has been
filed in either proceeding and no final hearing has been held.
On October 20, 2014, the parties filed a joint motion to terminate
CBM2014-00095 and CBM2014-00096. See Paper 34. The parties
represent that the motion to terminate was filed pursuant to a written
settlement agreement and that a true copy of this agreement was filed with
the Board as Paper 36.2 Id. at 1–3. The parties further represent that they
have settled all adverse proceedings related to the involved patents. Id.
In their joint motion to terminate, the parties assert that, because “the
parties to the CBMs have resolved their dispute,” and the corresponding
district court patent infringement litigation has been dismissed, “there is no
reason to continue these proceedings.” Paper 34, 3. Although the Board is
not a party to the settlement agreement, and “may independently determine
any question of jurisdiction, patentability, or Office practice,” strong public
policy reasons favor settlement between the parties. See, e.g., Office Trial
Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). Therefore, the
Board expects that a proceeding ordinarily will terminate after the filing of a
settlement agreement. See id.
In view of the early stage of the current proceedings, and in light of
the settlement of all related adverse proceedings involving the parties and

2 The parties jointly request that their settlement agreement be treated as
confidential business information and kept separate from the files of the
involved patents. See Paper 35.

Case CBM2014-00095 (Patent 8,313,023)
Case CBM2014-00096 (Patent 8,511,550)

3
the involved patents, we conclude that termination is appropriate. The joint
motion to terminate the proceedings in CBM2014-00095 and CBM2014-
00096 is, therefore, GRANTED.
Accordingly, it is
ORDERED that the joint motion to terminate CBM2014-00095 and
CBM2014-00096 is granted;
FURTHER ORDERED that the proceedings in CBM2014-00095 and
CBM2014-00096 are hereby terminated, pursuant to 35 U.S.C. § 327(a), as
to all parties;
FURTHER ORDERED that the parties’ joint request that the
settlement agreement be treated as business confidential information and
kept separate from the file of the respective patents is granted; and
FURTHER ORDERED that the Initial Conference Call scheduled for
October 28, 2014, is hereby cancelled.
Case CBM2014-00095 (Patent 8,313,023)
Case CBM2014-00096 (Patent 8,511,550)

4
PETITIONER:
Saqib J. Siddiqui
ssiddiqui@mayerbrown.com

PATENT OWNER:
Richard Neifeld
rneifeld@neifeld.com

Scott Garrertt
Scott.garrett@patentsondemand.com