Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 19
`Entered: June 3, 2014
`
`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
`
`
`
`
`
`
`
`
`
`Before SALLY C. MEDLEY, MITCHELL G. WEATHERLY, and
`MIRIAM L. QUINN, Administrative Patent Judges.
`
`WEATHERLY, Administrative Patent Judge.
`
`DECISION
`
`Denying Institution of Covered Business Method Patent Review
`
`37 C.F.R. § 42.208
`
`
`Tel: 571-272-7822
`
`Paper 19
`Entered: June 3, 2014
`
`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
`
`
`
`
`
`
`
`
`
`Before SALLY C. MEDLEY, MITCHELL G. WEATHERLY, and
`MIRIAM L. QUINN, Administrative Patent Judges.
`
`WEATHERLY, Administrative Patent Judge.
`
`DECISION
`
`Denying Institution of Covered Business Method Patent Review
`
`37 C.F.R. § 42.208
`
`
`
`Case CBM2014-00039
`Patent 5,949,880
`
`I.
`
`INTRODUCTION
`
`PNC Bank, N.A. (a subsidiary of The PNC Financial Services Group,
`
`Inc.) (“PNC”), JP Morgan Chase & Co., and JP Morgan Chase Bank, N.A.
`
`(collectively “JP Morgan” and collectively with PNC “Petitioner”) filed a
`
`petition, Paper 3 (“Pet.” or “Petition”), to institute a covered business
`
`method patent review (a “CBM review”) of claims 1–4 (the “challenged
`
`claims”) of U.S. Patent 5,949,880, Exhibit 1001 (“the ’880 patent”).
`
`35 U.S.C. § 321. Maxim Integrated Products, Inc. (“Maxim” or “Patent
`
`Owner”) timely filed a Preliminary Response. Paper 7 (“Prelim. Resp.”).
`
`Petitioner subsequently filed, with our prior authorization, “Petitioners’
`
`Motion Requesting Adverse Judgment Against PNC Pursuant to 37 C.F.R.
`
`§ 42.73(b)(4).” Paper 11 (the “Motion for Judgment”). In that Motion, PNC
`
`sought entry of adverse judgment against it and contended that JP Morgan
`
`could proceed with the Petition without further involvement by PNC. Id.
`
`at 3. Maxim opposed the Motion for Judgment. Paper 12. Petitioner filed a
`
`reply in support of the Motion for Judgment. Paper 13.
`
`For the reasons expressed below, we deny the Petition and decline to
`
`institute a CBM review. We also dismiss as moot the Motion for Judgment.
`
`II.
`
`BACKGROUND
`
`JP Morgan and PNC jointly filed their Petition on
`
`November 22, 2013. Pet. 2. JP Morgan and PNC are represented by the
`
`same lead and back up counsel. Id. at 5. JP Morgan and PNC identify
`
`themselves collectively as “Petitioner,” id. at i, and in every respect advance
`
`the same argument against the patentability of the challenged claims. Id. at
`
`1–68.
`
`2
`
`
`
`Case CBM2014-00039
`Patent 5,949,880
`
`When PNC filed the Petition, it was a plaintiff identified in the civil
`
`action captioned PNC Financial Services Group, Inc. and PNC Bank,
`
`National Association v. Maxim Integrated Products, Inc., No. 2:12-cv-
`
`00089-JFC (W.D. Pa.) (“the PNC Action”). Ex. 2001, 1. PNC filed its
`
`complaint in the PNC Action on January 25, 2012, and sought a declaration
`
`that the claims of the ’510 patent are invalid. Id. at 6.
`
`III. ANALYSIS
`
`Maxim contends that the Board cannot institute a covered business
`
`method review because Petitioner has filed a civil action challenging the
`
`validity of at least one claim of the ’880 patent. Prelim. Resp. 1–3. “A post-
`
`grant review may not be instituted under this chapter if, before the date on
`
`which the petition for such a review is filed, the petitioner or real party in
`
`interest filed a civil action challenging the validity of a claim of the patent.”
`
`35 U.S.C. § 325(a)(1).1 PNC is both a petitioner, Pet. i, and a real party in
`
`interest, id. at 2. Before filing the Petition, PNC filed a civil action
`
`challenging the validity of claims of the ’880 patent. Ex. 2001, 5.
`
`Therefore, § 325(a)(1) precludes institution of a review in this proceeding.
`
`Accordingly, we deny the Petition in all respects. We express no opinion
`
`regarding the likelihood that any party other than PNC would prevail in
`
`establishing that any of the challenged claims are unpatentable for the
`
`reasons set forth in the Petition.
`
`
`1 Section 18(a)(1) of the Leahy-Smith America Invents Act provides that a
`CBM review proceeding shall employ all the standards and procedures of a
`post-grant review under Chapter 32 of title 35 of the United States Code
`(i.e., 35 U.S.C. §§ 321–29) except for those expressly carved out (i.e.,
`35 U.S.C. §§ 321(c) and 325(b), (e)(2), and (f)). Therefore, this CBM
`review is governed by the requirements of 35 U.S.C. § 325(a)(1).
`
`3
`
`
`
`Case CBM2014-00039
`Patent 5,949,880
`
`Maxim also contends that § 325(a)(1) would continue to bar
`
`institution of review even if PNC were to “forswear all further control and
`
`participation in this case.” Prelim. Resp. 31. On May 23, Petitioner notified
`
`the Board that Maxim and PNC had settled the district court litigation
`
`entitled PNC Financial Services Group, Inc. v. Maxim Integrated Products.,
`
`Inc., No. 2:12-cv-00089-JFC (W.D. Pa.). Paper 16 at 2. Nevertheless, as
`
`Maxim has pointed out “PNC has already exerted substantial control over
`
`the case.” Prelim. Resp. 31. Moreover, granting PNC’s request for adverse
`
`judgment would not obviate the control that PNC has already exerted in this
`
`proceeding by its filing of the Petition. Therefore, ruling upon the Motion
`
`for Judgment would not alter our conclusion that § 325(a)(1) precludes
`
`institution of a CBM review as requested in the Petition. Accordingly, we
`
`dismiss PNC’s Motion for Judgment as moot and deny the Petition in all
`
`respects.
`
`IV. ORDER
`
`For the reasons given, it is:
`
`ORDERED that the Petition is DENIED; and
`
`FURTHER ORDERED that the Motion for Judgment is DISMISSED
`
`as moot.
`
`4
`
`
`
`Case CBM2014-00039
`Patent 5,949,880
`
`PETITIONER:
`
`Lionel M. Lavenue
`Timothy J. May
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
`lionel.lavenue@finnegan.com
`timothy.may@finnegan.com
`
`PATENT OWNER:
`
`Kenneth J. Weatherwax
`Parham Hendifar
`GOLDBERG, LOWENSTEIN & WEATHERWAX LLP
`weatherwax@glwllp.com
`parham@glwllp.com
`
`5
`
`
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