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`Paper No.
`Filed: April 7, 2014
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`Filed on behalf of: PNC Bank, N.A.,
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`JP Morgan Chase & Co., and
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`JP Morgan Chase Bank, N.A.
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`PNC BANK, N.A. AND JP MORGAN CHASE & CO.
`AND JP MORGAN CHASE BANK, N.A.
`Petitioner
`v.
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`MAXIM INTEGRATED PRODUCTS, INC.
`Patent Owner
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`Case CBM2014-00039
`Patent No. 5,949,880
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`PETITIONERS’ REPLY TO PATENT OWNER’S OPPOSITION TO
`PETITIONERS’ MOTION REQUESTING ADVERSE JUDGMENT
`AGAINST PNC PURSUANT TO 37 C.F.R. § 42.73(b)(4)
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`Case No. CBM2014-00039
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`I.
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`II.
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`TABLE OF CONTENTS
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`MAXIM’S THREE REASONS TO DENY ADVERSE JUDGMENT
`TO PNC ARE NOT ONLY INCORRECT BUT CONTRARY TO
`LAW ................................................................................................................. 1
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`IN DESPERATION, MAXIM IMPROPERLY AND BASELESSLY
`RAISES FALSE QUESTIONS OF PETITIONERS’ GOOD FAITH ........... 1
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`III. MAXIM INTENTIONALLY MISREPRESENTS FACTUAL
`INFORMATION TO THE BOARD, AND PNC CAN PROVE IT .............. 2
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`IV. PNC SEEKS UNCONDITIONAL ABANDONMENT ................................ 2
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`i
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`Case No. CBM2014-00039
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`TABLE OF AUTHORITIES
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`Page(s)
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`CASES
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`Horn v. Lockhart et al.,
`84 U.S. 570, 21 L.Ed. 657 (1873) ...................................................................................... 1
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`STATUTES
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`35 U.S.C. §§ 317 and 327 ......................................................................................................... 1
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`OTHER AUTHORITIES
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`37 C.F.R. § 42.302(a) ................................................................................................................. 2
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`37 C.F.R. § 42.73(b) .............................................................................................................. 1, 2
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`37 C.F.R. § 42.23 ....................................................................................................................... 2
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`ii
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`Case No. CBM2014-00039
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`I. MAXIM’S THREE REASONS TO DENY ADVERSE JUDGMENT
`TO PNC ARE NOT ONLY INCORRECT BUT CONTRARY TO LAW
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`Maxim presents three erroneous arguments why PNC may not seek adverse
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`judgment: (1) the erroneous argument that one party from a multi-party petition may
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`not withdraw, but 35 U.S.C. §§ 317 and 327 contemplate exactly that; (2) the
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`erroneous argument that PNC remains a real-party-in-interest, even if it abandons, but
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`37 C.F.R. § 42.73(b) contradicts that argument; and (3) the erroneous argument that
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`PNC’s abandonment does not “erase” any commonality between PNC and JP
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`Morgan, but Fandango confirms PNC may abandon under these circumstances.1
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`II.
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`IN DESPERATION, MAXIM IMPROPERLY AND BASELESSLY
`RAISES FALSE QUESTIONS OF PETITIONERS’ GOOD FAITH
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`Maxim argues that PNC and JP Morgan somehow acted improperly by
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`submitting the CBM petition, because PNC was a DJ plaintiff. But, before the Board
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`issued the ruling in BB&T, the PTO had never resolved the issue whether a DJ
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`plaintiff may seek a CBM. Thus, Maxim’s argument that PNC and JP Morgan acted
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`improperly (using JP Morgan as a “straw man”) is ludicrous. Indeed, Maxim
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`withholds the fact that JP Morgan was sued by Maxim. See Paper 3 at 3. And, Maxim
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`provides no factual basis for its baseless allegations, ignoring that JP Morgan
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`1 Maxim’s contention that jurisdiction cannot be cured by removing a party
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`contradicts 100 years of jurisprudence. See Horn v. Lockhart et al., 84 U.S. 570, 21 L.Ed.
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`657 (1873) (dismissal of parties causing a jurisdiction problem obviated the issue).
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`Case No. CBM2014-00039
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`independently meets the CBM requirements, without PNC. See 37 C.F.R. § 42.302(a).
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`Petitioners acted in good faith, and because Maxim offers no support of its
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`outrageous allegations, it violates at least Rule 42.23 (in addition to the page limits).
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`III. MAXIM INTENTIONALLY MISREPRESENTS FACTUAL
`INFORMATION TO THE BOARD, AND PNC CAN PROVE IT
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`During the telephone conference with the Board, PNC explained that, although
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`PNC and Maxim had reached settlement terms, the written settlement was not
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`complete, so PNC sought abandonment per 37 C.F.R. § 42.73(b). In Maxim’s
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`Opposition, however, Maxim asserts that “there is no settlement” as to PNC. See
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`Paper 12 at 2, fn. 2. This directly contradicts filings in the district court, which state
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`that “PNC and Maxim have agreed, in principle, to settle their respective claims …
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`[and] are currently diligently working to execute a settlement agreement.” Ex. 1017.
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`IV. PNC SEEKS UNCONDITIONAL ABANDONMENT
`After admitting that PNC may abandon, Maxim then claims that PNC’s request
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`is conditional. 37 C.F.R. § 42.73(b) provides that "a party may request judgment
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`against itself.” (Emphasis added). Adverse judgment disposes of issues related to the
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`requesting party, PNC, but not all issues. In Fandango, the Board denied the
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`Petitioners’ request because Apple was asking for a second bite at the apple by
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`requesting leave to re-file after having received a preliminary response. PNC does not.
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`Respectfully submitted,
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`/ Lionel M. Lavenue
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`Lionel M. Lavenue, Lead Counsel, Reg. No. 46,859
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`Case No. CBM2014-00039
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`CERTIFICATE OF SERVICE
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`I hereby certify that on this 7th day of April 2014, a copy of Petitioners’ Reply
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`to Patent Owner’s Opposition to Petitioners’ Motion Requesting Adverse Judgment
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`Against PNC Pursuant to 37 C.F.R. § 42.73(b)(4) with associated exhibit was served
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`via e-mail and Express Mail upon the following:
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`Kenneth J. Weatherwax, Esq.
`Weatherwax@glwllp.com
`Parham Hendifar, Esq.
`Hendifar@glwllp.com
`GOLDBERG, LOWENSTEIN & WEATHERWAX LLP
`11400 West Olympic Boulevard, Suite 400
`Los Angeles, CA 90064
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`Stefani Smith, Esq.
`Stefani.smith@tensegritylawgroup.com
`TENSEGRITY LAW GROUP, LLP
`555 Twin Dolphin Drive, Suite 360
`Redwood Shores, CA 94065
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` Respectfully submitted,
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`Date: April 7, 2014
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` /Ashley F. Cheung/
`Ashley Cheung
`Case Manager
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`FINNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER, L.L.P.
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`3
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