`Filed August 7, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`GROUPON INC.,
`
`Petitioner
`
`v.
`
`MAXIM INTEGRATED PRODUCTS, INC.,
`
`Patent Owner.
`
`Case CBM2014-00090
`
`U.S. Patent No. 5,805,702
`
`JOINT MOTION OF PETITIONER AND PATENT OWNER
`TO TERMINATE PROCEEDING
`PURSUANT TO 35 U.S.C. § 327
`
`
`
`Case CBM2014-00090
`U.S. Patent No. 5,805,702
`
`STATEMENT OF PRECISE RELIEF REQUESTED
`
`Pursuant to 35 U.S.C. § 327, and the Board’s Authorization provided on
`
`August 5, 2014 (Order, Paper No. 7), Petitioner Groupon Inc. (Groupon) and
`
`Patent Owner Maxim Integrated Products, Inc. (Maxim) jointly request termination
`
`of the covered business method patent review of U.S. Patent No. 5,805,702 (“the
`
`’702 patent”), Case No. CBM2014-00090.
`
`STATEMENT OF FACTS
`
`Groupon filed its petition for covered business method patent review on
`
`March 14, 2014. Paper No. 3. Maxim filed its Patent Owner’s Preliminary
`
`Response on June 27, 2014. Paper No. 6. Review of CBM2014-00090 has not yet
`
`been instituted. Groupon and Maxim have settled their dispute with respect to the
`
`’702 patent. On July 31, 2014, Groupon and Maxim jointly filed a stipulation of
`
`dismissal in the corresponding litigation, Maxim Integrated Products, Inc. v.
`
`Groupon Inc., No. 2:12-cv-881-JFC (W.D. Pa.). See Ex. 1012. The joint
`
`stipulation dismisses all claims against Groupon relating to the ’702 patent with
`
`prejudice. Id. The joint stipulation serves as the written agreement between the
`
`parties to settle their dispute regarding the ’702 patent. On August 1, 2014, the
`
`Court granted the stipulation of dismissal with prejudice. See Ex. 1013.
`
`-1-
`
`
`
`Case CBM2014-00090
`U.S. Patent No. 5,805,702
`
`ARGUMENT
`
`The Board should terminate CBM2014-00090 because the review is still in
`
`its early stages and the Office has not yet decided whether to institute covered
`
`business method review of the ’702 patent. In addition, Groupon and Maxim have
`
`settled the corresponding litigation with respect to the ’702 patent and all claims
`
`against Groupon with respect to the ’702 patent have been dismissed with
`
`prejudice. See Ex. 1013. Further, Groupon and Maxim agree that this review
`
`should be terminated.
`
`In addition, Maxim’s claim against Starbucks Corp. regarding the ’702
`
`patent (see Patent Owner Mandatory Notices, Paper No. 5, at 1, identifying Maxim
`
`Integrated Products, Inc. v. Starbucks Corp., No. 2:12-cv-00877-JFC) has been
`
`dismissed and there is no longer any pending litigation based on the ’702 patent.
`
`For at least the foregoing reasons, Groupon and Maxim respectfully request
`
`termination of Covered Business Method Patent Review No. CBM2014-00090 of
`
`U.S. Patent No. 5,805,702. Should the Board terminate this proceeding as jointly
`
`requested by Groupon and Maxim, no estoppel under 35 U.S.C. § 325(e) shall
`
`attach to Groupon. See 35 U.S.C. § 327(a).
`
`-2-
`
`
`
`Case CBM2014-00090
`U.S. Patent No. 5,805,702
`
`August 7, 2014
`
`Respectfully submitted,
`
`/s/ James C. Yoon
`James C. Yoon
`USPTO Reg. No. 43,297
`WILSON SONSINI GOODRICH &
`ROSATI
`650 Page Mill Road
`Palo Alto, CA 94304-1050
`Tel.: 650-493-9300
`Email: groupon-maxim@wsgr.com
`
`/s/ Kenneth J. Weatherwax
`Kenneth J. Weatherwax
`USPTO Reg. No. 54,528
`GOLDBERG, LOWENSTEIN &
`WEATHERWAX LLP
`11400 West Olympic Boulevard
`Suite 400
`Los Angeles, CA 90064
`Tel. 310-307-4503
`Email: weatherwax@glwllp.com
`
`-3-
`
`
`
`Case CBM2014-00090
`U.S. Patent No. 5,805,702
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6, the undersigned hereby certifies that service
`
`was made on Patent Owner as detailed below.
`
`Date of Service:
`
`August 7, 2014
`
`Manner of Service:
`
`Electronic Mail; and
`The Patent Review Processing System.
`
`Documents Served:
`
`JOINT MOTION OF PETITIONER AND PATENT
`OWNER TO TERMINATE PROCEEDING
`PURSUANT TO 35 U.S.C. § 327
`EXHIBITS 1012 AND 1013
`
`Persons Served:
`
`Kenneth J. Weatherwax
`USPTO Reg. No. 54,528
`GOLDBERG, LOWENSTEIN &
`WEATHERWAX LLP
`11400 West Olympic Boulevard
`Suite 400
`Los Angeles, CA 90064
`Tel. 310-307-4503
`Email: weatherwax@glwllp.com
`
`Dated: August 7, 2014
`
`Parham Hendifar
`USPTO Reg. No. 71,470
`GOLDBERG, LOWENSTEIN &
`WEATHERWAX LLP
`11400 West Olympic Boulevard
`Suite 400
`Los Angeles, CA 90064
`Tel. 310-307-4510
`Email: hendifar@glwllp.com
`
`/s/ James C. Yoon
`James C. Yoon
`USPTO Reg. No. 43,297
`WILSON SONSINI GOODRICH &
`ROSATI
`650 Page Mill Road
`Palo Alto, CA 94304-1050
`Tel.: 650-493-9300
`Email: groupon-maxim@wsgr.com
`
`-4-
`
`
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