`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`
`AMERICAN AIRLINES, INC.,
`Petitioner
`
`v.
`
`ADVANCED TRANSACTIONS, LLC
`Patent Owner
`__________________
`
`Inter Partes Review No. IPR2023-01366
`U.S. Patent No. 7,065,555
`__________________
`
`
`JOINT MOTION TO TERMINATE PROCEEDING
`PURSUANT TO 35 U.S.C. § 317 AND
`37 C.F.R. § 42.72, 42.74
`
`
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`
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`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313–1450
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`
`
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`I. STATEMENT OF RELIEF REQUESTED
`Pursuant to 35 C.F.R. § 317 and 37 C.F.R. §§ 42.72 and 42.74, and the
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`IPR2023-01366
`Patent No. 7,065,555
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`Board’s authorization by email dated October 11, 2023, Petitioner American
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`Airlines, Inc. (American) and Patent Owner Advanced Transactions, LLC
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`(Advanced) jointly move to terminate the present inter partes review proceeding as
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`a result of a Settlement and License Agreement (the Agreement) between American
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`and Advanced (collectively, the Parties). The Agreement completely resolves all
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`pending controversies between the Parties concerning U.S. Patent 7,065,555 (the
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`’555 patent).
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`The Parties are concurrently filing a true, written copy of the Agreement in
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`connection with this matter as required by 37 C.F.R. § 42.74(b). The Parties further
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`jointly certify that there are no other agreements, or understandings, oral or written,
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`between them, including any collateral agreements, made in connection with, or in
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`contemplation of, the termination of this proceeding as set forth in 35 U.S.C.
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`§ 317(b).
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`The Parties request that the Agreement be treated as business confidential
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`information and kept separate from the file of the ’555 patent. A joint request for
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`such treatment pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) is being filed
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`concurrently herewith.
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`1
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`II. STATEMENT OF FACTS
`American asserted that it does not infringe the ’555 patent in the declaratory
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`IPR2023-01366
`Patent No. 7,065,555
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`action entitled American Airlines, Inc. v. Advanced Transactions, LLC, No. 4:23-cv-
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`00576 (N.D. Tex.) (the Litigation).
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`On September 8, 2023, the Parties entered into the Agreement. Among other
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`things, the Parties agreed to dismiss with prejudice any litigation relating to the ’555
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`patent and to seek termination of this IPR proceeding. Also on September 8, 2023,
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`American voluntarily dismissed all claims in the Litigation.
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`American also filed the following petition to institute inter partes proceedings
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`concerning another patent owned by Advanced:
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`IPR
`
`Patent
`
`Filed Date
`
`2023-01370
`
`U.S. Patent No. 7,386,594
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`August 31, 2023
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`
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`The Parties will also jointly move to terminate that proceeding in light of the
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`Agreement. Thus, once the Board grants that motion and this one, there will be no
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`other proceedings before the Patent Office involving both American and Advanced.
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`III. LEGAL STANDARD
`Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under this
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`chapter shall be terminated with respect to any petitioner upon the joint request of
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`the petitioner and the patent owner, unless the Office has decided the merits of the
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`proceeding before the request for termination is filed.” Similarly, 37 C.F.R. § 42.72
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`IPR2023-01366
`Patent No. 7,065,555
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`provides that “[t]he Board may terminate a trial without rendering a final written
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`decision, where appropriate . . . pursuant to a joint request under 35 U.S.C. 317(a).”
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`The Trial Practice Guide also observes that “[t]here are strong public policy reasons
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`to favor settlement between the parties to a proceeding” and that “[t]he Board
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`expects that a proceeding will terminate after the filing of a settlement agreement,
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`unless the Board has already decided the merits of the proceeding.” Patent Trial and
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`Appeal Board Consolidated Trial Practice Guide, § II.N, p. 86 (November 2019).
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`IV. GOOD CAUSE EXISTS TO TERMINATE THE ABOVE-CAPTIONED
`IPR
`Termination of this IPR is appropriate because the Parties have settled their
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`entire dispute concerning the ’555 patent and the Board has not yet decided the
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`merits of this proceeding. Thus, under 35 U.S.C. § 317(a), the Board should
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`terminate this proceeding. “Generally, the Board expects that a proceeding will
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`terminate after the filing of a settlement agreement.” DTN, LLC v. Farms Tech.,
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`LLC, IPR2018-01412, Paper 21 (June 14, 2019) (precedential) (citing 35 U.S.C.
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`§ 317(a), 37 C.F.R. § 42.72, and the Office Patent Trial Practice Guide, 77 Fed. Reg.
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`48,756, 48,768 (Aug. 14, 2012)).
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`Other factors weigh in favor of terminating this IPR proceeding. The above-
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`captioned petition is in its early phase. The Board has not yet made a decision
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`regarding institution of the petition. And no decisions on the merits of the proceeding
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`IPR2023-01366
`Patent No. 7,065,555
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`have been made. Dismissal of the proceeding at this early stage promotes the
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`congressional goal to establish a more efficient and streamlined patent system that
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`limits unnecessary and counterproductive litigation costs. See 37 C.F.R. § 42.1(b).
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`In similar circumstances involving IPRs in such an early juncture, the Board has
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`previously granted motions to terminate using its authority under at least 37 C.F.R.
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`§§ 42.5(a) and 42.71(a). See, e.g., RPC Formatec GMBH v. Trudell Medical Int’l,
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`Case Nos. IPR2014-01040, IPR2014-01127, Paper 10 (PTAB, Oct. 24, 2014)
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`(granting joint motion to terminate); Samsung Elecs. Co., Ltd. v. Telefonaktiebolaget
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`LM Ericsson, IPR2021-00446, Paper 7 (PTAB, Aug. 3, 2021) (same); Huawei
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`Techs. Co., Ltd. v. Verizon Patent & Licensing Inc., IPR2021-00616, -00617, Paper
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`9 (PTAB, Sept. 9, 2021) (same).
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`Further, termination of the proceeding is a just and fair resolution. The Parties
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`agree that neither American nor Advanced will be prejudiced by the termination.
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`Finally, the Parties will benefit from preserving resources that would otherwise be
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`expended if this motion is denied.
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`V. CONCLUSION
`For at least these reasons, the Parties respectfully request that the Board grant
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`this Joint Motion to Terminate the above-captioned IPR proceeding. The Parties also
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`request that the Board grant their joint request to treat the Agreement as business
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`IPR2023-01366
`Patent No. 7,065,555
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`confidential information and keep it separate from the file of the ’555 patent.
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`
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`Respectfully submitted,
`/s/ John B. Campbell
`John B. Campbell, Lead Counsel
`Reg. No. 54,665
`Telephone: (512) 692-8700
`Facsimile: (512) 692-8744
`jcampbell@McKoolSmith.com
`MCKOOL SMITH, P.C.
`303 Colorado, Suite 2100
`Austin, Texas 78701
`Counsel for Petitioner
`
`/s/ Tedd W. VanBuskirk
`Tedd W.Van Buskirk, Lead Counsel
`Reg. No. 46,282
`Telephone: (201) 736-6741
`tvanbuskirk@daignaultiyer.com
`DAIGNAULT IYER LLP
`8618 Westwood Center Drive, Suite 150
`Vienna, VA 22182
`Counsel for Patent Owner
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`
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`5
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`CERTIFICATE OF SERVICE
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`IPR2023-01366
`Patent No. 7,065,555
`
`The undersigned certifies that the foregoing Joint Motion to Terminate was served
`on October 11, 2023, to Lead and Back-Up Counsel for Patent Owner and
`Petitioner at the service address provided:
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`Tedd W. Van Buskirk
`tvanbuskirk@dagignaultiyer.com
`Chandran B. Iyver
`cbiyer@dagignaultiher.com
`DAIGNAULT IYER, LLP
`8618 Westwood Center Drive, Suite 150
`Vienna, VA 22182
`
`Dated: October 11, 2023
`
`/s/ John B. Campbell
`John B. Campbell (Reg. No. 54,665)
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`6
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