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Case CBM2013-00059
`Patent 5,949,880
`Attorney Docket No. 131004-001USCBM
`
`  
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`BRANCH BANKING AND TRUST COMPANY
`Petitioner
`
`v.
`
`MAXIM INTEGRATED PRODUCTS, INC.
`Patent Owner
`____________
`
`Case CBM2013-00059
`Patent 5,949,880
`____________  
`
`PATENT OWNER MAXIM INTEGRATED PRODUCTS, INC.’S
`SUPPLEMENTAL MANDATORY NOTICES
`
`
`
`
`
`1
`
`
`
`
`
`  
`
`

`

`Case CBM2013-00059
`Patent 5,949,880
`Attorney Docket No. 131004-001USCBM
`
`  
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`
`Patent Owner Maxim Integrated Products, Inc. submits the following
`
`supplement to its Mandatory Notices pursuant to 37 C.F.R. § 42.8 previously filed
`
`on October 7, 2013, and the errata thereto previously filed on December 13, 2013.
`
`Supplement: Related Matters
`
`Patent Owner submits the following additional information pursuant to 37
`
`C.F.R. § 42.8(b)(2).
`
`The following proceedings have been dismissed pursuant to stipulation:
`
`- Clairmail Inc. v. Maxim Integrated Prods., Inc., No. 2:12-cv-00923-NBF
`(dismissed August 31, 2012, Dkt. 146)
`
`- KeyCorp v. Maxim Integrated Prods., Inc., No. 2:12-cv-00860-JFC
`(dismissed August 20, 2013, Dkt. 648)
`
`- Maxim Integrated Prods., Inc. v. Capital One Fin. Corp., No. 2:12-cv-
`00879-JFC (dismissed December 12, 2013, Dkt. 738)
`
`- Maxim Integrated Prods., Inc. v. Union Bank, N.A., No. 2:12-cv-00882-
`JFC (dismissed February 6, 2014, Dkt. 763)
`
`- Maxim Integrated Prods., Inc. v. Walmart Stores, Inc., No. 2:12-cv-
`01643-JFC (dismissed February 6, 2014, Dkt. 764)
`
`- Vanguard Grp., Inc. v. Maxim Integrated Prods., Inc., No. 2:12-cv-
`00862-JFC (dismissed February 19, 2014, Dkt. 773)
`
`
`  
`
`2
`
`

`

`Case CBM2013-00059
`Patent 5,949,880
`Attorney Docket No. 131004-001USCBM
`
`  
`
`- Maxim Integrated Prods., Inc. v. First United Bank & Trust Co., No.
`2:12-cv-00876-JFC (dismissed February 19, 2014, Dkt. 774)
`
`- Jack Henry & Assocs., Inc. v. Maxim Integrated Prods., Inc., No. 2:12-
`cv-00863-JFC (dismissed February 20, 2014, Dkt. 775)
`
`The following additional proceedings are identified:
`
`e.
`PNC Bank N.A. et al. v. Maxim Integrated Prods., Inc., Covered
`Business Method Patent Review Case No. CBM2014-00038, of USP
`(petition accorded filing date of November 22, 2013).
`
`f.
`PNC Bank N.A. et al. v. Maxim Integrated Prods., Inc., Covered
`Business Method Patent Review Case No. CBM2014-00039 (petition
`accorded filing date of November 22, 2013).
`
`g.
`PNC Bank N.A. et al. v. Maxim Integrated Prods., Inc., Covered
`Business Method Patent Review Case No. CBM2014-00040 (petition
`accorded filing date of November 22, 2013).
`
`h.
`PNC Bank N.A. et al. v. Maxim Integrated Prods., Inc., Covered
`Business Method Patent Review Case No. CBM2014-00041 (petition
`accorded filing date of November 22, 2013).
`
`i.
`Ex Parte Reexamination, Control No. 90/013,063, of USP 5,940,510
`(request accorded filing date of December 16, 2013).
`
`
`
`  
`
`Respectfully submitted,
`
`
`____/Kenneth J. Weatherwax/_________
`Kenneth J. Weatherwax, Reg. No. 54,528
`Goldberg, Lowenstein & Weatherwax LLP
`
`Date: March 11, 2014
`
`3
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In re: Covered Business Method Review of
`U.S. Patent No. 5,949,880
`Case No. CBM2013-00059
`Filed: September 16, 2013
`For: TRANSFER OF VALUABLE
`INFORMATION BETWEEN A SECURE
`MODULE AND ANOTHER MODULE
`
`Administrative Patent Judge: Sally Medley
`Atty. Docket: 131004-001USCBM
`
`Certificate of Service
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`March 11, 2014
`Sir:
`
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned, on behalf of the Patent Owner,
`hereby certifies that a copy of the following document is being served on the Petitioner by
`Express Mail on March 11, 2014:
`
`PATENT OWNER MAXIM INTEGRATED PRODUCTS, INC.’S
`SUPPLEMENTAL MANDATORY NOTICES
`The name and address of the party being served is as follows:
`
`ROPES & GRAY LLP
`IPRM – Floor 43
`Prudential Tower
`800 Boylston Street
`Boston, Massachusetts 02199-3600
`
`Very truly yours,
`
`____/Kenneth J. Weatherwax/_________
`Kenneth J. Weatherwax, Reg. No. 54,528
`Goldberg, Lowenstein & Weatherwax LLP
`
`

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