Kroger-Excentus Loyalty Suit Reinstated

Agreed-upon dismissal fails to survive 120-day reconsideration period

Angel Abcede, Senior Editor/Tobacco, CSP

CINCINNATI -- Retailers hoping for a resolution to a longstanding lawsuit involving fuel discount patents and the process of rollbacks at the pump will have to continue their wait, as a federal judge reinstated the lawsuit involving Kroger Co. and Excentus Corp. just as a settlement filed this past spring was about to be finalized.

Back in March, both the Cincinnati-based grocery chain and the Dallas-based loyalty provider appeared to have reached some form of agreement on a string of patent-infringement suits and counter-suits that began in 2010. Both parties agreed to dismiss the lawsuit pending a 120-day period in which either party could have, "upon good cause," reopened the case.

Such appears to be the case, although court documents reinstating the lawsuit have no details as to which party or if both may have pulled back from the initial dismissal. Filed this past Tuesday in the U.S. District Court, Southern District of Ohio, Western Division, the most recent court document simply "vacates" the initial dismissal of the case, filed back on March 28 of this year.

Attorneys for both Kroger and Excentus did not return calls to comment on the reinstatement by press time.

The original lawsuit between the two details initial business arrangements and agreements that both appeared satisfied with. Over time, the suit alleges that disagreements arose, many ultimately involving the potential abuse and infringement of the Excentus patents.

A litigant in a similar case (with regards to the patent-infringement clauses) between Excentus and several other parties, including Tulsa-based QuikTrip, spoke to the issue earlier this month. In a press release, the president of Virginia Beach, Va.-based Midax Inc., a defendant in that case,  called the Excentus patents "invalid," saying, "We know that significant prior art exists and we firmly believe that evidence should invalidate each of the Excentus patents."

In a statement released at that time, a lawyer for Excentus said: "The U.S. Patent Office, Excentus and those who have licensed our patents believe that the Excentus fuel loyalty patents are valid. Statements by others accused of infringing these patents to the contrary, such as those recently made by Midax, are common. It is unfortunate that an accused infringer has made statements in the press as opposed to in a court proceeding supported by the clear and convincing evidence required by law to challenge a validly issued patent claim."

QuikTrip, which declined to comment on that story, filed its own response to the suit late last year, outright denying many of the charges while saying that a majority of them provided insufficient information for QuikTrip to respond.

That suit, filed in May 2012, also named several companies operating Price Chopper grocery stores out of the Kansas City area. As with QuikTrip, many of the responses to that initial lawsuit came to the courts late last year.

Prior to these cases, a 2009 patent-infringement lawsuit between Excentus and Pleasanton, Calif.-based Safeway Inc. ended in a settlement in 2010. A spokesperson for that grocery chain at the time said, "We are pleased to put this litigation behind us. We respect the breadth of the Excentus intellectual property portfolio and look forward to exploring ways to work together on fuel rewards."

Angel Abcede, CSP/Winsight By Angel Abcede, Senior Editor/Tobacco, CSP
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