Case CBM2014-00178
`Patent 6,105,013
`Attorney Docket No. 140828-002USCBM
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`JPMORGAN CHASE & CO.
`AND JPMORGAN CHASE BANK, N.A.
`Petitioner
`
`v.
`
`MAXIM INTEGRATED PRODUCTS, INC.
`Patent Owner
`____________
`
`Case CBM2014-00178
`Patent 6,105,013
`____________
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`PATENT OWNER MAXIM INTEGRATED PRODUCTS, INC.’S
`UPDATED MANDATORY NOTICES
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`Patent 6,105,013
`Attorney Docket No. 140828-002USCBM
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`JPMORGAN CHASE & CO.
`AND JPMORGAN CHASE BANK, N.A.
`Petitioner
`
`v.
`
`MAXIM INTEGRATED PRODUCTS, INC.
`Patent Owner
`____________
`
`Case CBM2014-00178
`Patent 6,105,013
`____________
`
`PATENT OWNER MAXIM INTEGRATED PRODUCTS, INC.’S
`UPDATED MANDATORY NOTICES
`
`
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`Case CBM2014-00178
`Patent 6,105,013
`Attorney Docket No. 140828-002USCBM
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`
`Pursuant to 37 C.F.R. § 42.8, Patent Owner Maxim Integrated Products, Inc.
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`submits the following Updated Mandatory Notices. This filing supersedes Patent
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`Owner’s previous Mandatory Notices filed September 11, 2014.
`
`Pursuant to the conference call initiated by the Board on January 28, 2015,
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`reference is made to Petitioner and Patent Owner's joint filings, in related
`
`consolidated proceeding In re Maxim Integrated Prods., Inc., MDL No. 2354, No.
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`2:12-mc-00244, of the (1) January 27, 2015 Joint Notice Regarding Case
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`Management Conference stating that Petitioner and Patent Owner “have agreed, in
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`principle, to settle their respective claims in this case, and expect to execute a
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`definitive agreement in the near future,” Exhibit 2004, and (2) February 18, 2015
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`Stipulated Motion For Dismissal With Prejudice Of Claims And Counterclaims,
`
`see Exhibit 2003.
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`1. Real Party-In-Interest
`
`In accordance with 37 C.F.R. § 42.8(b)(1), Patent Owner identifies the real
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`party-in-interest as Maxim Integrated Products, Inc.
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`
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`1
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`
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`Case CBM2014-00178
`Patent 6,105,013
`Attorney Docket No. 140828-002USCBM
`
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`2. Related Matters
`
`In accordance with 37 C.F.R. § 42.8(b)(2), Patent Owner identifies the
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`following related proceedings. As noted in connection with the individual
`
`proceedings, several of the identified proceedings have been dismissed in their
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`entirety.
`
`I. Proceedings Involving The ’013 Patent.
`
`a. PNC Bank N.A. et al. v. Maxim Integrated Prods., Inc., Covered Business
`
`Method Patent Review, Case No. CBM2014-00040, of US 6,105,013
`
`(petition for institution of review denied June 3, 2014, paper 19);
`
`b. Maxim Integrated Prods., Inc. v. Branch Banking & Trust Co., No. 2013-
`
`1495 (Fed. Cir.) (judgment affirmed March 10, 2014, Dkt. 51);
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`c. Maxim Integrated Prods., Inc. v. Branch Banking & Trust Co., 4:12-cv-
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`00369-RAS (E.D. Tex) (judgment affirmed March 10, 2014, Dkt. 33);
`
`d. In re Maxim Integrated Prods., Inc., MDL No. 2354, No. 2:12-mc-00244
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`(A Joint Notice Regarding Case Management Conference, filed on
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`January 27, 2015, stated that Patent Owner and Petitioner “have agreed,
`
`in principle, to settle their respective claims in this case, and expect to
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`execute a definitive agreement in the near future,” see Exhibit 2004. A
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`stipulated motion for dismissal with prejudice of all claims and
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`2
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`Case CBM2014-00178
`Patent 6,105,013
`Attorney Docket No. 140828-002USCBM
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`counterclaims between Patent Owner and Petitioner was filed February
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`
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`18, 2015, Exhibit 2003);
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`e. As transferred for MDL purposes:
`
`− Maxim Integrated Prods., Inc. v. JP Morgan Chase & Co., No. 2:12-
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`cv- 01641-JFC (see § 2.I.d., supra)
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`− Branch Banking & Trust Co. v. Maxim Integrated Prods., Inc., No.
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`2:12-cv-00945-JFC
`
`− PNC Fin. Servs. Grp., Inc. v. Maxim Integrated Prods., Inc., No. 2:12-
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`cv-00089-JFC (dismissed and terminated May 29, 2014, Dkt. 844)
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`− KeyCorp v. Maxim Integrated Prods., Inc., No. 2:12-cv-00860-JFC
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`(dismissed and terminated August 20, 2013, Dkt. 648)
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`− Vanguard Grp., Inc. v. Maxim Integrated Prods., Inc., No. 2:12-cv-
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`00862-JFC (dismissed and terminated February 19, 2014, Dkt. 773)
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`− Jack Henry & Assocs., Inc. v. Maxim Integrated Prods., Inc., No.
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`2:12-cv-00863-JFC (dismissed and terminated February 20, 2014,
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`Dkt. 775)
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`− Maxim Integrated Prods., Inc. v. Comerica Inc., No. 2:12-cv-00869-
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`JFC (dismissed and terminated August 20, 2014, Dkt. 887)
`
`3
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`Case CBM2014-00178
`Patent 6,105,013
`Attorney Docket No. 140828-002USCBM
`
`− Fidelity Brokerage Servs. LLC v. Maxim Integrated Prods., Inc., No.
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`2:12-cv-00871-JFC (dismissed and terminated May 16, 2014, Dkt.
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`840)
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`− Maxim Integrated Prods., Inc. v. First United Bank & Trust Co., No.
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`2:12-cv-00876-JFC (dismissed and terminated February 19, 2014,
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`Dkt. 774)
`
`− Maxim Integrated Prods., Inc. v. Starbucks Corp., No. 2:12-cv-00877-
`
`JFC (dismissed and terminated April 7, 2014, Dkt. 798)
`
`− Maxim Integrated Prods., Inc. v. Expedia, Inc., No. 2:12-cv-00878-
`
`JFC (dismissed and terminated July 10, 2014, Dkt. 873)
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`− Maxim Integrated Prods., Inc. v. Capital One Fin. Corp., No. 2:12-cv-
`
`00879-JFC (dismissed and terminated September 12, 2013, Dkt. 738)
`
`− Maxim Integrated Prods., Inc. v. Bank of the West, No. 2:12-cv-
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`00880-JFC (dismissed as to all pleaded claims; one motion may still
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`be pending, September 24, 2014, Minute Entry)
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`− Maxim Integrated Prods., Inc. v. Groupon, Inc., No. 2:12-cv-00881-
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`JFC (dismissed and terminated August 20, 2014, Dkt. 886)
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`− Maxim Integrated Prods., Inc. v. Union Bank, N.A., No. 2:12-cv-
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`00882-JFC (dismissed and terminated February 6, 2014, Dkt. 763)
`
`4
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`
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`Case CBM2014-00178
`Patent 6,105,013
`Attorney Docket No. 140828-002USCBM
`
`− Maxim Integrated Prods., Inc. v. Southwest Airlines, Co., No. 2:12-
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`cv-00883-JFC (dismissed and terminated May 5, 2014, Dkt. 836)
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`− Chipotle Mexican Grill, Inc. v. Maxim Integrated Prods., Inc., No.
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`2:12-cv-00887-JFC (dismissed and terminated August 5, 2014, Dkt.
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`882)
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`− Maxim Integrated Prods., Inc. v. QVC, Inc., No. 2:12-cv-00891-JFC
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`(dismissed and terminated March 14, 2014, Dkt. 789)
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`− Clairmail Inc. v. Maxim Integrated Prods., Inc., No. 2:12-cv-00923-
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`NBF (dismissed and terminated August 31, 2012, Dkt. 146)
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`− BMO Harris Bank Nat’l Ass’n v. Maxim Integrated Prods., Inc., No.
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`2:12-cv-01538-JFC (dismissed and terminated October 8, 2014, Dkt.
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`914)
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`− Deutsche Bank AG v. Maxim Integrated Prods., Inc., No. 2:12-cv-
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`01604-JFC (dismissed and terminated September 25, 2014, Dkt. 901)
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`− Maxim Integrated Prods., Inc. v. Citigroup, Inc., No. 2:12-cv-01628-
`
`JFC (dismissed and terminated May 22, 2014, Dkt. 800)
`
`− Maxim Integrated Prods., Inc. v. Target Corp., No. 2:12-cv-01629-
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`JFC (dismissed and terminated April 23, 2014, Dkt. 821)
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`5
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`Case CBM2014-00178
`Patent 6,105,013
`Attorney Docket No. 140828-002USCBM
`
`− Maxim Integrated Prods., Inc. v. Wells Fargo & Co., No. 2:12-cv-
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`01639-JFC (dismissed and terminated May 1, 2014, Dkt. 831)
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`− Maxim Integrated Prods., Inc. v. Bank of Am. Corp., No. 2:12-cv-
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`01640-JFC (dismissed and terminated June 19, 2014, Dkt. 861)
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`− Maxim Integrated Prods., Inc. v. U.S. Bancorp, No. 2:12-cv-01642-
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`JFC (dismissed and terminated August 20, 2014, Dkt. 888)
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`− Maxim Integrated Prods., Inc. v. Walmart Stores, Inc., No. 2:12-cv-
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`01643-JFC (dismissed and terminated February 6, 2014, Dkt. 764).
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`f. Maxim Integrated Prods., Inc. v. USAA Fed. Sav. Bank, 4:12-cv-00369-
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`RAS (W.D. Tex) (filed November 19, 2014);
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`g. Maxim Integrated Prods., Inc. v. Navy Fed. Credit Union, 4:12-cv-
`
`00369-RAS (W.D. Tex) (filed November 19, 2014);
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`h. Maxim Integrated Prods., Inc. v. State Farm Mut. Auto. Ins. Co., 4:12-cv-
`
`00369-RAS (W.D. Tex) (filed November 19, 2014);
`
`i. Maxim Integrated Prods., Inc. v. Discover Fin. Serv., 4:12-cv-00369-
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`RAS (W.D. Tex) (filed November 19, 2014);
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`j. Maxim Integrated Prods., Inc. v. Am. Express Co., 4:12-cv-00369-RAS
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`(W.D. Tex) (filed November 19, 2014);
`
`6
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`Case CBM2014-00178
`Patent 6,105,013
`Attorney Docket No. 140828-002USCBM
`
`k. Maxim Integrated Prods., Inc. v. Compass Bank, d/b/a BBVA Compass,
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`4:12-cv-00369-RAS (W.D. Tex) (filed November 19, 2014).
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`II. Proceedings Involving Other US Patents.
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`US Patent No. 6,105,013 is a continuation of application No. 08/594,983,
`
`which claims priority to provisional application No. 60/004,510, to which US
`
`Patent No. 6,237,095 also claims priority. US 6,237,095 is a divisional from
`
`application No. 08/595,014, from which the US Patent No. 5,805,702 issued. US
`
`Patent No. 5,940,510 contains related subject matter to and incorporates by
`
`reference application No. 08/595,014, from which the application issuing as US
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`6,237,095 was a divisional. US Patent No. 5,949,880 is a divisional from
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`application no. 08/594,975, from which US 5,940,510 issued. Numerous related
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`proceedings identified above involving the ’013 Patent also involve one or all of
`
`these patents.
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`Patent Owner identifies below the following additional proceedings not
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`directly involving the ’013 Patent but relating to one or more of US 5,805,702, US
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`5,940,510, US 5,949,880, and US 6,237,095. As noted in connection with the
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`individual proceedings, several of the identified proceedings have been dismissed.
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`7
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`Case CBM2014-00178
`Patent 6,105,013
`Attorney Docket No. 140828-002USCBM
`
`a. Branch Banking & Trust Co. v. Maxim Integrated Prods., Inc., Covered
`
`Business Method Patent Review, Case No. CBM2013-00059, of US
`
`5,949,880 (petition for institution of review denied March 20, 2014,
`
`paper 12);
`
`b. PNC Bank N.A. et al. v. Maxim Integrated Prods., Inc., Covered Business
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`Method Patent Review, Case No. CBM2014-00038, of US 5,940,510
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`(petition for institution of review denied June 3, 2014, paper 19);
`
`c. PNC Bank N.A. et al. v. Maxim Integrated Prods., Inc., Covered Business
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`Method Patent Review, Case No. CBM2014-00039, of US 5,949,880
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`(petition for review denied June 3, 2014, paper 20);
`
`d. PNC Bank N.A. et al. v. Maxim Integrated Prods., Inc., Covered Business
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`Method Patent Review, Case No. CBM2014-00041, of US 6,237,095
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`(petition for institution of review denied June 3, 2014, paper 19);
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`e. Ex Parte Reexamination, Control No. 90/013,063, of USP 5,940,510
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`(request accorded filing date of December 16, 2013);
`
`f. JPMorgan Chase & Co. v. Maxim integrated Products, Inc., Covered
`
`Business Method Patent Review, Case No. CBM2014-00177, of US
`
`6,237,095 (petition accorded filing date of August 21, 2014);
`
`8
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`
`
`Case CBM2014-00178
`Patent 6,105,013
`Attorney Docket No. 140828-002USCBM
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`g. JPMorgan Chase & Co. v. Maxim integrated Products, Inc., Covered
`
`Business Method Patent Review, Case No. CBM2014-00179, of US
`
`5,940,510 (petition accorded filing date of August 21, 2014);
`
`h. JPMorgan Chase & Co. v. Maxim integrated Products, Inc., Covered
`
`Business Method Patent Review, Case No. CBM2014-00180, of US
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`5,949,880 (petition accorded filing date of August 21, 2014);
`
`i. Groupon Inc. v. Maxim Integrated Products, Inc., Covered Business
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`Method Patent Review, Case No. CBM2014-00090, of US 5,805,702
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`(terminated August 20, 2014, paper 12);
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`
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`9
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`Case CBM2014-00178
`Patent 6,105,013
`Attorney Docket No. 140828-002USCBM
`
`
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`3. Lead and Back-Up Counsel
`
`In accordance with 37 C.F.R. § 42.8(b)(3), Patent Owner identifies Kenneth
`
`J. Weatherwax as lead counsel and Parham Hendifar as back-up counsel:
`
`Kenneth J. Weatherwax, Lead Counsel
`USPTO Reg. No. 54,528
`GOLDBERG, LOWENSTEIN & WEATHERWAX LLP
`11400 West Olympic Boulevard, Suite 400
`Los Angeles, California 90064
`Telephone: (310) 307-4503
`Facsimile: (310) 307-4509
`Email: weatherwax@glwllp.com
`
`Parham Hendifar, Back-Up Counsel
`USPTO Reg. No. 71,470
`GOLDBERG, LOWENSTEIN & WEATHERWAX LLP
`11400 West Olympic Boulevard, Suite 400
`Los Angeles, California 90064
`Telephone: (310) 307-4510
`Facsimile: (310) 307-4509
`Email: hendifar@glwllp.com
`
`
`
`10
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`
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`Case CBM2014-00178
`Patent 6,105,013
`Attorney Docket No. 140828-002USCBM
`
`
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`4. Service Information
`
`In accordance with 37 C.F.R. § 42.8(b)(4), Patent Owner identifies the
`
`following service information:
`
`Stefani Smith, Esq.
`Tensegrity Law Group, LLP
`555 Twin Dolphin Drive, Suite 360
`Redwood Shores, California 94065
`
`Email: stefani.smith@tensegritylawgroup.com
`Telephone: 650-802-6050
`Facsimile: 650-802-6001
`
`
`
`Respectfully submitted,
`
`
`____/ Kenneth J. Weatherwax /_________
`Kenneth J. Weatherwax, Reg. No. 54,528
`Goldberg, Lowenstein & Weatherwax LLP
`
`Date: February 19, 2015
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`11
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`UPDATED EXHIBIT LIST
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`Exhibit 2001
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`Exhibit 2002
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`Exhibit 2003
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`Exhibit 2004
`
`Hearing Transcript, In re Maxim Integrated Products,
` Inc., Misc. No. 12-244 (MDL No. 2354) (W.D. Pa.
` Mar. 20, 2013) (excerpt)
`
`2010-12-30 Notice of Allowance and Fees Due
` Application No. 10/415,022
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`2015-02-18 Stipulated Motion For Dismissal With
` Prejudice Of Claims And Counter Claims
`
`2015-01-27 Joint Notice Regarding Case Management
` Conference
`
`
`
`Case CBM2014-00178
`Patent 6,105,013
`Attorney Docket No. 140828-002USCBM
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that the following documents were served
`
`by Express Mail on February 19, 2015
`
`
`PATENT OWNER MAXIM INTEGRATED PRODUCTS, INC.’S
`UPDATED MANDATORY NOTICES
`
`
`
`
`
`
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`EXHIBIT 2003 - STIPULATION FOR DISMISSAL
`
`EXHIBIT 2004 - JOINT NOTICE REGARDING CASE MANAGAMENT
`CONFERENCE
`
`The names and addresses of the parties being served are as follows:
`
`
`Andrea G. Reister
`Jay I. Alexander
`Gregory S. Discher
`Covington & Burling LLP
`1201 Pennsylvania Avenue, NW
`Washington, DC 20004
`
`
`Respectfully submitted,
`
`____/ Kenneth J. Weatherwax /______
`
`Kenneth J. Weatherwax
`Registration No. 54,528
`Attorney for Patent Owner
`
`Date: February 19, 2015
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