`
`Paper No.
`Filed: April 7, 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 CBM2014-00041
`Patent No. 6,237,095
`
`
`
`
`
`
`
`
`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)
`
`
`
`
`
`
`
`Case No. CBM2014-00041
`
`I.
`
`II.
`
`TABLE OF CONTENTS
`
`MAXIM’S THREE REASONS TO DENY ADVERSE JUDGMENT
`TO PNC ARE NOT ONLY INCORRECT BUT CONTRARY TO
`LAW ................................................................................................................. 1
`
`IN DESPERATION, MAXIM IMPROPERLY AND BASELESSLY
`RAISES FALSE QUESTIONS OF PETITIONERS’ GOOD FAITH ........... 1
`
`III. MAXIM INTENTIONALLY MISREPRESENTS FACTUAL
`INFORMATION TO THE BOARD, AND PNC CAN PROVE IT .............. 2
`
`IV. PNC SEEKS UNCONDITIONAL ABANDONMENT ................................ 2
`
`
`
`
`
`
`
`
`i
`
`
`
`Case No. CBM2014-00041
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`
`
`
`CASES
`
`Horn v. Lockhart et al.,
`84 U.S. 570, 21 L.Ed. 657 (1873) ...................................................................................... 1
`
`STATUTES
`
`35 U.S.C. §§ 317 and 327 ......................................................................................................... 1
`
`OTHER AUTHORITIES
`
`37 C.F.R. § 42.302(a) ................................................................................................................. 2
`
`37 C.F.R. § 42.73(b) .............................................................................................................. 1, 2
`
`37 C.F.R. § 42.23 ....................................................................................................................... 2
`
`
`
`
`
`
`ii
`
`
`
`Case No. CBM2014-00041
`
`I. MAXIM’S THREE REASONS TO DENY ADVERSE JUDGMENT
`TO PNC ARE NOT ONLY INCORRECT BUT CONTRARY TO LAW
`
`Maxim presents three erroneous arguments why PNC may not seek adverse
`
`judgment: (1) the erroneous argument that one party from a multi-party petition may
`
`not withdraw, but 35 U.S.C. §§ 317 and 327 contemplate exactly that; (2) the
`
`erroneous argument that PNC remains a real-party-in-interest, even if it abandons, but
`
`37 C.F.R. § 42.73(b) contradicts that argument; and (3) the erroneous argument that
`
`PNC’s abandonment does not “erase” any commonality between PNC and JP
`
`Morgan, but Fandango confirms PNC may abandon under these circumstances.1
`
`II.
`
`IN DESPERATION, MAXIM IMPROPERLY AND BASELESSLY
`RAISES FALSE QUESTIONS OF PETITIONERS’ GOOD FAITH
`
`Maxim argues that PNC and JP Morgan somehow acted improperly by
`
`submitting the CBM petition, because PNC was a DJ plaintiff. But, before the Board
`
`issued the ruling in BB&T, the PTO had never resolved the issue whether a DJ
`
`plaintiff may seek a CBM. Thus, Maxim’s argument that PNC and JP Morgan acted
`
`improperly (using JP Morgan as a “straw man”) is ludicrous. Indeed, Maxim
`
`withholds the fact that JP Morgan was sued by Maxim. See Paper 3 at 2. And, Maxim
`
`provides no factual basis for its baseless allegations, ignoring that JP Morgan
`
`
`1 Maxim’s contention that jurisdiction cannot be cured by removing a party
`
`contradicts 100 years of jurisprudence. See Horn v. Lockhart et al., 84 U.S. 570, 21 L.Ed.
`
`657 (1873) (dismissal of parties causing a jurisdiction problem obviated the issue).
`
`
`
`1
`
`
`
`Case No. CBM2014-00041
`
`independently meets the CBM requirements, without PNC. See 37 C.F.R. § 42.302(a).
`
`Petitioners acted in good faith, and because Maxim offers no support of its
`
`outrageous allegations, it violates at least Rule 42.23 (in addition to the page limits).
`
`III. MAXIM INTENTIONALLY MISREPRESENTS FACTUAL
`INFORMATION TO THE BOARD, AND PNC CAN PROVE IT
`
`During the telephone conference with the Board, PNC explained that, although
`
`PNC and Maxim had reached settlement terms, the written settlement was not
`
`complete, so PNC sought abandonment per 37 C.F.R. § 42.73(b). In Maxim’s
`
`Opposition, however, Maxim asserts that “there is no settlement” as to PNC. See
`
`Paper 12 at 2, fn. 2. This directly contradicts filings in the district court, which state
`
`that “PNC and Maxim have agreed, in principle, to settle their respective claims …
`
`[and] are currently diligently working to execute a settlement agreement.” Ex. 1014.
`
`IV. PNC SEEKS UNCONDITIONAL ABANDONMENT
`After admitting that PNC may abandon, Maxim then claims that PNC’s request
`
`is conditional. 37 C.F.R. § 42.73(b) provides that "a party may request judgment
`
`against itself.” (Emphasis added). Adverse judgment disposes of issues related to the
`
`requesting party, PNC, but not all issues. In Fandango, the Board denied the
`
`Petitioners’ request because Apple was asking for a second bite at the apple by
`
`requesting leave to re-file after having received a preliminary response. PNC does not.
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`
`
`/ Lionel M. Lavenue/
`
`Lionel M. Lavenue, Lead Counsel, Reg. No. 46,859
`
`
`
`2
`
`
`
`Case No. CBM2014-00041
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on this 7th day of April 2014, a copy of 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) with associated exhibit was served
`
`via e-mail and Express Mail upon the following:
`
`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
`
`Stefani Smith, Esq.
`Stefani.smith@tensegritylawgroup.com
`TENSEGRITY LAW GROUP, LLP
`555 Twin Dolphin Drive, Suite 360
`Redwood Shores, CA 94065
`
`
` Respectfully submitted,
`
`
`
`
`
`
`
`Date: April 7, 2014
`
`
`
`
`
`
`
`
`
`
`
`
`
` /Ashley F. Cheung/
`Ashley Cheung
`Case Manager
`
`
`
`
`
`
`
`FINNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER, L.L.P.
`
`3
`
`