throbber
Case CBM2014-00039
`Patent 5,949,880
`Attorney Docket No. 131209-002USCBM
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`PNC BANK, N.A., JP MORGAN CHASE & CO.
`AND JP MORGAN CHASE BANK, N.A.
`Petitioner
`
`v.
`
`MAXIM INTEGRATED PRODUCTS, INC.
`Patent Owner
`____________
`
`Case CBM2014-00039
`Patent 5,949,880
`____________
`
`PATENT OWNER MAXIM INTEGRATED PRODUCTS, INC.’S
`SECOND SUPPLEMENTAL MANDATORY NOTICES
`
`
`
`
`
`
`
`
`
`
`

`

`Case CBM2014-00039
`Patent 5,949,880
`Attorney Docket No. 131209-002USCBM
`
`
`
`
`
`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 second
`
`supplement to its Mandatory Notices and Supplemental Mandatory Notices
`
`pursuant to 37 C.F.R. § 42.8 previously filed on December 13, 2013 and March 14,
`
`2014 respectively.
`
`Second Supplement: Related Matters
`
`Patent Owner submits the following additional information pursuant to 37
`
`C.F.R. § 42.8(b)(2) regarding proceedings identified as related matters by Patent
`
`Owner’s Mandatory Notices.
`
`The following proceedings have been dismissed pursuant to stipulation:
`
`- Fidelity Brokerage Servs. LLC v. Maxim Integrated Prods., Inc., No.
`2:12-cv-00871- JFC (dismissed May 16, 2014, Dkt. 66)
`
`- Maxim Integrated Prods., Inc. v. Starbucks Corp., No. 2:12-cv-00877-
`JFC (dismissed March 27, 2014, Dkt. 77)
`
`- Maxim Integrated Prods., Inc. v. Southwest Airlines, Co., No. 2:12-
`cv-00883-JFC (dismissed May 05, 2014, Dkt. 48)
`
`- Maxim Integrated Prods., Inc. v. QVC, Inc., No. 2:12-cv-00891-JFC
`(dismissed March 14, 2014, Dkt. 82)
`
`- Maxim Integrated Prods., Inc. v. Citigroup, Inc., No. 2:12-cv-01628-
`JFC (dismissed March 31, 2014, Dkt. 37)
`
`1
`
`

`

`
`
`Case CBM2014-00039
`Patent 5,949,880
`Attorney Docket No. 131209-002USCBM
`
`
`- Maxim Integrated Prods., Inc. v. Target Corp., No. 2:12-cv-01629-
`JFC (dismissed April 23, 2014, Dkt. 51)
`
`- Maxim Integrated Prods., Inc. v. Wells Fargo & Co., No. 2:12-cv-
`01639-JFC (dismissed May 01, 2014, Dkt. 45)
`
`
`
`The following proceeding is currently the subject of a joint stipulation of
`
`dismissal of claims:
`
`- PNC Fin. Servs. Grp., Inc. v. Maxim Integrated Prods., Inc., No. 2:12-
`cv-00089-JFC (filed May 21, 2014, Dkt. 120)
`
`As to the above matter, PNC Financial Services Group, Inc., as party to the
`
`above litigation and corporate parent of a constituent of Petitioner, has an ongoing
`
`interest in a decision in the present proceeding, because such an interest may
`
`depend not only on whether infringement litigation as to the patent-at-issue is
`
`ongoing, but also on other factors such as the possibility that litigated issues will be
`
`revisited or reopened depending on later events; the common interests or
`
`agreements, if any, between entities in the litigation and entities in this proceeding;
`
`the possibility that alleged liability based on the patent-at-issue may arise in
`
`connection with future facts or products; and Petitioner’s past admissions and
`
`actions bearing on its interest in this proceeding.
`
`Therefore, with this new development, all constituents of Petitioner continue
`
`to have an ongoing interest in this proceeding.
`
`2
`
`

`

`Case CBM2014-00039
`Patent 5,949,880
`Attorney Docket No. 131209-002USCBM
`
`Respectfully submitted,
`
`____/Kenneth J. Weatherwax/_________
`Kenneth J. Weatherwax, Reg. No. 54,528
`Goldberg, Lowenstein & Weatherwax LLP
`
`Date: May 27, 2014
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In re: Covered Business Method Review of
`U.S. Patent No. 5,949,880
`Case No. CBM2014-00039
`Filed: November 22, 2013
`For: TRANSFER OF VALUABLE
`INFORMATION BETWEEN A SECURE
`MODULE AND ANOTHER MODULE
`
`
`
`Administrative Patent Judge: Sally Medley
`Atty. Docket: 131209-002USCBM
`
`
`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
`May 27, 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 May 27, 2014:
`
`PATENT OWNER MAXIM INTEGRATED PRODUCTS, INC.’S
`SECOND SUPPLEMENTAL MANDATORY NOTICES
`The names and addresses of the parties being served are as follows:
`
`Lionel M. Lavenue
`Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
`Two Freedom Square
`11955 Freedom Drive
`Reston, VA 20190-5675
`
`Timothy J. May
`Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
`901 New York Avenue, NW
`Washington, DC 20001-4413
`
`
`
`
`

`

`Very truly yours,
`
`
`____/Kenneth J. Weatherwax/_________
`Kenneth J. Weatherwax, Reg. No. 54,528
`Goldberg, Lowenstein & Weatherwax LLP
`
`

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