`
`Paper No.
`Filed: April 1, 2014
`
`
`Filed on behalf of: PNC Bank, N.A.,
`
`
`
`JP Morgan Chase & Co., and
`
`
`
`JP Morgan Chase Bank, N.A.
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`
`
`PNC BANK, N.A. AND JP MORGAN CHASE & CO.
`AND JP MORGAN CHASE BANK, N.A.
`Petitioner
`v.
`
`MAXIM INTEGRATED PRODUCTS, INC.
`Patent Owner
`
`
`
`
`
`
`
`
`
`
`
`Case CBM2014-00040
`Patent No. 6,105,013
`
`
`
`
`
`
`
`
`PETITIONERS’ MOTION REQUESTING ADVERSE JUDGMENT
`AGAINST PNC PURSUANT TO 37 C.F.R. § 42.73(b)(4)
`
`
`
`
`
`
`
`Case No. CBM2014-00040
`
`
`TABLE OF CONTENTS
`
`PRELIMINARY STATEMENT ............................................................................... 1
`
`PRECISE RELIEF REQUESTED ........................................................................... 1
`
`I.
`
`II.
`
`III. BACKGROUND .......................................................................................................... 1
`
`IV. ARGUMENT ................................................................................................................ 2
`
`A.
`
`Adverse Judgment for PNC is Consistent with PTO Regulations ............ 3
`
`B. Maxim Has No Basis to Challenge Adverse Judgment for PNC ............... 3
`
`C.
`
`D.
`
`E.
`
`JP Morgan Consents to Adverse Judgment for PNC .................................. 3
`
`The Statute and Regulations Expressly Provide for Multi-Party
`Proceedings, Including Means for Withdrawal by Those Parties ............... 3
`
`Petitioners’ Motion for Adverse Judgment as to PNC Would
`Demonstrably Promote Just, Speedy, and Inexpensive Resolution ........... 5
`
`CONCLUSION............................................................................................................. 5
`
`i
`
`V.
`
`
`
`
`
`
`
`Case No. CBM2014-00040
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Patent and Trademark Office Decisions
`
`BB&T v. Maxim Integrated Products, Inc.,
`CBM2013-00059, paper 12 (March 20, 2014) ............................................................. 1, 2
`
`Fandango et al. v. Ameranth Inc.,
`CBM2014-00013, paper 22 (March 24, 2014) ........................................................ 3, 4, 5
`
`SAP v. Pi-Net Int’l,
`CBM2013-00013, paper 15 (Sept. 19, 2013) .................................................................... 2
`
`Federal Statutes
`
`AIA § 18 .................................................................................................................................. 1, 2
`
`35 U.S.C. § 317 ........................................................................................................................... 3
`
`35 U.S.C. § 327 ....................................................................................................................... 2, 4
`
`Federal Regulations
`
`37 C.F.R. § 42.1 ...................................................................................................................... 2, 5
`
`37 C.F.R. § 42.73 ............................................................................................................... passim
`
`37 C.F.R. § 42.201 ..................................................................................................................... 1
`
`37 C.F.R. § 42.302 ..................................................................................................................... 1
`
`77 Fed. Reg. 48693 .................................................................................................................... 2
`
`
`
`
`
`ii
`
`
`
`Case No. CBM2014-00040
`
`I.
`
`PRELIMINARY STATEMENT
`
`Petitioners request adverse judgment against PNC Bank, N.A. (“PNC”) per 37
`
`C.F.R. § 42.73(b)(4). PNC filed four petitions for CBM review with JP Morgan Chase
`
`& Co. and JP Morgan Chase Bank, N.A. (“JP Morgan”) on November 22, 2013. At
`
`the time, the PTO allowed a declaratory judgment (DJ) plaintiff to petition for CBM
`
`review. See 37 C.F.R. § 42.302(a). Recently, however, the Board denied a CBM petition
`
`because the petitioner was a DJ plaintiff before it filed its CBM petition. See BB&T v.
`
`Maxim Integrated Products, Inc., CBM2013-00059, paper 12 (March 20, 2014). In view of
`
`this decision, PNC—a DJ plaintiff before it filed the four CBM petitions—seeks to
`
`withdraw from the four CBM proceedings, as allowed by 37 C.F.R. § 42.73(b).
`
`Although Maxim objects, the rules do not allow for an objection to adverse judgment.
`
`II.
`
`PRECISE RELIEF REQUESTED
`
`Petitioners request adverse judgment against PNC per 37 C.F.R. § 42.73(b)(4).
`
`III. BACKGROUND
`Consistent with Petitioners’ understanding of the statute and regulations
`
`governing CBM review, Petitioners filed four CBM petitions on November 22, 2013.
`
`Section 18(a)(1) of the AIA left open the question of whether a DJ plaintiff could
`
`petition for CBM review. But, the PTO regulations and practice expressly allowed a
`
`DJ plaintiff to petition for CBM review. Compare 37 C.F.R. § 42.201(a) (identifying
`
`who may petition for post-grant review and explicitly precluding DJ plaintiffs from
`
`doing so) with 37 C.F.R. § 42.302(a) (identifying who may petition for CBM review
`
`
`
`1
`
`
`
`Case No. CBM2014-00040
`
`and not addressing DJ plaintiffs); 77 Fed. Reg. 48693 (“This is consistent with section
`
`18(a)(1) of the AIA, which provides that the transitional proceeding shall be regarded
`
`as, and shall employ the standards and procedures of, a post-grant review with certain
`
`exceptions.”); SAP v. Pi-Net Int’l, CBM2013-00013, Paper No. 15 (Sept. 19, 2013)
`
`(instituting CBM review despite Petitioner being a DJ plaintiff). In view of PTO
`
`regulations and practice, PNC’s filing of the CBM petitions was entirely in good faith.
`
`However, on March 20, 2014, the Board issued an order in BB&T, holding for
`
`the first time that a petitioner’s filing of a DJ action bars institution of CBM review.
`
`Thus, PNC immediately requested a conference call with the Board to withdraw PNC
`
`from the four CBM proceedings. On March 28, 2014, the Board issued an Order on
`
`Conduct of the Proceedings, directing PNC to file this motion requesting adverse
`
`judgment.
`
`IV. ARGUMENT
`37 C.F.R. § 42.73(b)(4) explicitly permits PNC’s request for adverse judgment.
`
`Although PNC and JP Morgan jointly filed the CBM petitions-at-issue, the statutory
`
`and regulatory framework under 35 U.S.C. § 327 and 37 C.F.R. § 42.73(b) expressly
`
`allow for adverse judgment against PNC, and the Patent Owner has no basis to object
`
`to PNC’s request. Further, PNC’s request will cause no prejudice to the Patent
`
`Owner and will help “secure the just, speedy, and inexpensive resolution” of the
`
`proceedings. See 37 C.F.R. § 42.1(b). Therefore, Petitioners’ motion for adverse
`
`judgment against PNC pursuant to 37 C.F.R. § 42.73(b)(4) should be granted.
`2
`
`
`
`
`
`Case No. CBM2014-00040
`
`Adverse Judgment for PNC is Consistent with PTO Regulations
`
`A.
`37 C.F.R. § 42.73(b) allows a party to withdraw by requesting an adverse
`
`judgment. Among the methods of seeking adverse judgment, the abandonment of a
`
`proceeding constitutes a request for adverse judgment. 37 C.F.R. § 42.73(b)(4).
`
`Indeed, the Board has recognized that a party may remove itself from a proceeding by
`
`requesting adverse judgment by abandonment. See Fandango et al. v. Ameranth Inc.,
`
`CBM2014-00013, paper 22 at 8 (March 24, 2014) (“Apple may remove itself from this
`
`proceeding, by requesting entry of adverse judgment as to Apple, or by settling with
`
`Patent Owner and filing a joint motion to terminate the proceeding with respect to
`
`Apple.”). Here, PNC expressly abandons the CBM proceedings and will no longer
`
`participate. Nothing more is required to grant PNC’s request for adverse judgment.
`
`B. Maxim Has No Basis to Challenge Adverse Judgment for PNC
`Maxim opposes PNC’s request for adverse judgment, but Section 42.73(b) does
`
`not allow a Patent Owner an opportunity to challenge a request for adverse judgment.
`
`Further, Maxim will not be prejudiced in any way by an adverse judgment as to PNC.
`
`JP Morgan Consents to Adverse Judgment for PNC
`
`C.
`JP Morgan consents to PNC’s request for adverse judgment, and once granted,
`
`JP Morgan (which was not a DJ plaintiff) will maintain all the pending CBM petitions.
`
`D. The Statute and Regulations Expressly Provide for Multi-Party
`Proceedings, Including Means for Withdrawal by Those Parties
`
`The statute contemplates that, in a multi-party proceeding, less than all of the
`
`parties may remove themselves from the proceeding. Statutorily, 35 U.S.C. §§ 317(a)
`3
`
`
`
`
`
`Case No. CBM2014-00040
`
`and 327(a) allow inter partes and post-grant reviews to be terminated with respect to “a
`
`petitioner” and further provide that “[i]f no petitioner remains in the inter partes [or
`
`post-grant] review, the Office may terminate the review . . . .” Thus, the statute
`
`expressly contemplates more than one party to a post-grant proceeding. Indeed, the
`
`Board recently addressed multi-party proceedings in some detail, where less than all of
`
`entities forming the petitioner had requested removal. In Fandango, 35 companies
`
`collectively filed a single petition, where the parties were represented as a single party
`
`by the same lead and back-up counsel. The Board recognized that one of the 35
`
`entities forming the petitioner (specifically, Apple) could withdraw by requesting
`
`adverse judgment under 37 C.F.R. § 42.73(b)(4), as PNC does here, but that the single
`
`entity could not conditionally withdraw (Apple wanted to withdraw, refile, and then
`
`rejoin with separate lead and back-up counsel), which PNC does not do here. See
`
`Fandango, CBM2014-00013, paper 22 at 8. The Board did not allow a conditional
`
`withdrawal by Apple, explaining that it is “unreasonable . . . [to] expect[] . . . that each
`
`. . . constituent member[] of Petitioner is entitled to advance its own separate position,
`
`. . . other than in the context of a request for entry of adverse judgment or settlement.” See
`
`Fandango, CBM2014-00013, paper 22 at 10 (emphasis added). PNC unconditionally
`
`seeks abandonment and adverse judgment per 37 C.F.R. § 42.73(b)(4), so PNC fully
`
`satisfies the Boards’ recognition that each member is entitled to advance its own
`
`separate position in the context for entry of adverse judgment. That is PNC here.
`
`Maxim objects to PNC’s abandonment, because the Petition lists PNC as a real
`4
`
`
`
`
`
`Case No. CBM2014-00040
`
`party-in-interest. See Paper 7 at 29-34. But, 37 C.F.R. § 42.73(b) provides no basis for
`
`Maxim to object—any objection by Maxim is fully inconsistent with Fandango.
`
`Additionally, once PNC takes adverse judgment, it is no longer a real-party-in-interest.
`
`E.
`
`Petitioners’ Motion for Adverse Judgment as to PNC Would
`Demonstrably Promote Just, Speedy, and Inexpensive Resolution
`
`
`
`PNC’s request for adverse judgment under 37 C.F.R. § 42.73(b) will help
`
`“secure the just, speedy, and inexpensive resolution” of the proceedings. See 37 C.F.R.
`
`§ 42.1(b). Adverse judgment for PNC advances a “just resolution” here, because 37
`
`C.F.R. § 42.73(b) specifically allows for it. Adverse judgment for PNC advances a
`
`“speedy resolution” here, because, if the Board denies PNC’s request and summarily
`
`denies the petitions because PNC was a DJ plaintiff, then JP Morgan will re-file the
`
`CBM petitions, which will significantly delay resolution of the patentability issues
`
`herein. And, adverse judgment for PNC advances an “inexpensive resolution” here,
`
`because the alternative would duplicate costs for JP Morgan and Maxim. JP Morgan
`
`would incur additional attorney fees to prepare (and filing fees to file) the second
`
`series of petitions, and Maxim would incur added attorney fees in response.
`
`V.
`
`CONCLUSION
`
`For the foregoing reasons, Petitioners respectfully request that the Board grant
`
`Petitioners’ motion for adverse judgment pursuant to 37 C.F.R. § 42.73(b)(4).
`
`
`
`Respectfully submitted,
`
`
`
`/ Lionel M. Lavenue/
`
`Lionel M. Lavenue, Lead Counsel, Reg. No. 46,859
`
`
`
`5
`
`
`
`Case No. CBM2014-00040
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on this 1st day of April 2014, a copy of Petitioner’s Motion
`
`Requesting Adverse Judgment Against PNC Pursuant to 37 C.F.R. § 42.73(b)(4) was
`
`served via Express Mail upon the following:
`
`Kenneth J. Weatherwax, Esq.
`Parham Hendifar, Esq.
`GOLDBERG, LOWENSTEIN & WEATHERWAX LLP
`11400 West Olympic Boulevard, Suite 400
`Los Angeles, CA 90064
`
`Stefani Smith, Esq.
`TENSEGRITY LAW GROUP, LLP
`555 Twin Dolphin Drive, Suite 360
`Redwood Shores, CA 94065
`
`
` Respectfully submitted,
`
`
`
`
`
`
`
`Date: April 1, 2014
`
`
`
`
`
`
`
`
`
`
`
`
`
` /Ashley F. Cheung/
`Ashley Cheung
`Case Manager
`
`
`
`
`
`
`
`FINNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER, L.L.P.
`
`6
`
`