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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`JP MORGAN CHASE & CO.
`AND JP MORGAN CHASE BANK, N.A.
`Petitioner
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`v.
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`MAXIM INTEGRATED PRODUCTS, INC.
`Patent Owner
`____________
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`Case CBM2014-00179
`Patent 5,940,510
`____________
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`JOINT MOTION
`TO TERMINATE PROCEEDING
`PURSUANT TO 35 U.S.C. § 327
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`DC: 5617269-1
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`Petitioner JP MORGAN CHASE & CO. and JP MORGAN CHASE BANK,
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`Case CBM2014-00179
`Patent 5,940,510
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`N.A. (collectively “Petitioner” or “Chase”) and Patent Owner MAXIM
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`INTEGRATED PRODUCTS, INC. (“Patent Owner” or “Maxim”) jointly request
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`termination of this covered business method (“CBM”) patent review case.
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`STATEMENT OF PRECISE RELIEF REQUESTED
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`Pursuant to 35 U.S.C. § 327, and the Board’s authorization provided on
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`February 25, 2015, Petitioner and Patent Owner jointly request termination of case
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`number CBM2014-00179 which is directed to U.S. Patent No. 5,940,510, pursuant
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`to settlement.1
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`STATEMENT OF FACTS
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`This is one of four pending CBM cases (collectively the “Cases”)2 filed by
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`Chase against Maxim, each involving one of four patents3 that were the subject of
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`litigation claims between Chase and Maxim relating to infringement (“the
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`Litigated Patents”).
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`1 Substantially similar joint motions to terminate pursuant to settlement are
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`being filed concurrently in this and each of the other Cases (defined below).
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`2 Case Nos. CBM2014-00177, -00178, -00179, and -00180.
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`3 U.S. Patent Nos. 6,237,095, 6,105,013, 5,940,510, and 5,949,880,
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`respectively.
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`1
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`Decisions instituting review (on at least one but not all requested grounds in
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`Case CBM2014-00179
`Patent 5,940,510
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`each case) issued in Cases CBM2014-00179 (paper 11) and -00180 (paper 14) on
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`February 20, 2015. Decisions on institution are believed to be due in Cases
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`CBM2014-00177 and -00178 on February 28, 2015.
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`Chase and Maxim have reached an agreement that settles all of the Cases.
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`A “Joint Request to File Settlement Agreement as Business Confidential
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`Information Under 35 U.S.C. § 327(b)” is being filed concurrently with this Joint
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`Motion to Terminate to treat the settlement agreement as business confidential
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`information and keep it separate from the file of the Involved Patent (U.S. Patent
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`No. 5,940,510).
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`Pursuant to the settlement agreement, the lawsuit styled Maxim Integrated
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`Products, Inc. v. JP Morgan Chase & Co., originally filed as Civil Action No. 12-
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`CV-1641 in the United States District Court for the Eastern District of Texas, and
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`transferred for pre-trial proceedings to the United States District Court for the
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`Western District of Pennsylvania as Civil Action No. 2:12-cv-1538-JFC, for
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`consolidation in the MDL proceedings In re Maxim Integrated Products, Inc.
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`Patent Litigation, identified by Civil Action No. 2:12-mc-244, has been settled
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`between Chase and Maxim. A stipulated motion made jointly by Chase and
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`Maxim for dismissal with prejudice of claims and counterclaims and proposed
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`2
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`order of dismissal was filed in the foregoing litigation February 18, 2015 and is
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`Case CBM2014-00179
`Patent 5,940,510
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`pending entry. Ex. 2004.
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`The related proceedings listed below alleging infringement of the
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`aforementioned U.S. Patent Nos. 6,237,095, 6,105,013, and 5,940,510, but not
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`5,949,880, remain pending. Chase is not a party to these related proceedings.
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` Maxim Integrated Prods., Inc. v. USAA Fed. Sav. Bank, 4:12-cv-00369-RAS
`(W.D. Tex) (filed November 19, 2014);
` Maxim Integrated Prods., Inc. v. Navy Fed. Credit Union, 4:12-cv-00369-RAS
`(W.D. Tex) (filed November 19, 2014);
` Maxim Integrated Prods., Inc. v. State Farm Mut. Auto. Ins. Co., 4:12-cv-
`00369-RAS (W.D. Tex) (filed November 19, 2014);
` Maxim Integrated Prods., Inc. v. Discover Fin. Serv., 4:12-cv-00369-RAS
`(W.D. Tex) (filed November 19, 2014);
` Maxim Integrated Prods., Inc. v. Am. Express Co., 4:12-cv-00369-RAS (W.D.
`Tex) (filed November 19, 2014);
` Maxim Integrated Prods., Inc. v. Compass Bank, d/b/a BBVA Compass, 4:12-
`cv-00369-RAS (W.D. Tex) (filed November 19, 2014).
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`ARGUMENT
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`A joint motion to terminate generally “must (1) include a brief explanation
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`as to why termination is appropriate; (2) identify all parties in any related litigation
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`involving the patents at issue; (3) identify any related proceedings currently before
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`the Office, and (4) discuss specifically the current status of each such related
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`litigation or proceeding with respect to each party to the litigation or proceeding.”
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`Case CBM2014-00179
`Patent 5,940,510
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`Heartland Tanning, Inc. v. Sunless, Inc., IPR2014-00018, Paper 26 at 2 (PTAB Jul.
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`28, 2014). The second, third and fourth of these requirements are included in the
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`above statement of facts. The first of these requirements is satisfied below.
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`The Board should terminate this case as the parties jointly request, for the
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`following reasons.
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`First, Petitioner and Patent Owner have met the statutory requirement that
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`they file a “joint request” to terminate before the office “has decided the merits of
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`the proceeding.” 35 U.S.C. § 327(a). Under section 327(a), a post-grant review
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`shall be terminated upon such joint request “unless the Office has decided the
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`merits of the proceeding before the request for termination is filed.” There are no
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`other preconditions of 35 U.S.C. § 327(a). In Cases CBM2014-00177 and
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`CBM2014-00178, a decision on institution has not issued. In each of Cases
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`CBM2014-00179 and CBM2014-00180, a decision on institution and scheduling
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`order issued February 20, 2015 granting review on at least one, but not all,
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`proposed grounds, but no other filings or proceedings following institution have
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`yet taken place. No prior motions are pending in any of the Cases.
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`Second, the parties have reached a settlement as to all the disputes in this
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`proceeding, and as to the Involved Patent. A copy of the settlement agreement is
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`4
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`filed concurrently herewith along with the parties’ joint request that the settlement
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`Case CBM2014-00179
`Patent 5,940,510
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`agreement be treated as business confidential information and be kept separate
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`from the file of the involved patent. See Ex. 2006. The parties further jointly
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`certify that there is no other agreement or understanding between Chase and
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`Maxim, including any collateral agreements, made in connection with, or in
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`contemplation of, the termination of the present proceeding as set forth in 35
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`U.S.C. § 327(b).
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`Third, termination of this proceeding will preserve the Board’s resources and
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`obviate the need for any more Board involvement in this matter.
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`For at least the foregoing reasons, Petitioner and Patent Owner respectfully
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`request termination of this CBM Review of the Involved Patent.
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`February 25, 2015
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`Respectfully Submitted,
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` / Andrea G. Reister /
`Andrea G. Reister
` Registration No. 36,253
`Gregory S. Discher
` Registration No. 42,488
`Jay I. Alexander
` Registration No. 32,678
`COVINGTON & BURLING LLP
`One CityCenter
`850 Tenth Street, NW
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`5
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`Case CBM2014-00179
`Patent 5,940,510
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`Washington, DC 20001
`202-662-6000
`Attorneys for Petitioner
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` / Kenneth J. Weatherwax /
`Kenneth J. Weatherwax
` USPTO Reg. No. 54,528
`Parham Hendifar
` USPTO Reg. No. 71,470
`GOLDBERG, LOWENSTEIN &
`WEATHERWAX LLP
`11400 West Olympic Boulevard
`Suite 400
`Los Angeles, California 90064
`Telephone: 310-307-4503
`Facsimile: 310-307-4509
`Attorneys for Patent Owner
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`6
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`UPDATED EXHIBIT LIST
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`Case CBM2014-00179
`Patent 5,940,510
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`Exhibit 2001
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`Exhibit 2002
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`Exhibit 2003
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`Exhibit 2004
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`Exhibit 2005
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`Hearing Transcript, In re Maxim Integrated Products,
`Inc., Misc. No. 12-244 (MDL No. 2354) (W.D. Pa.
`Mar. 20, 2013) (excerpt)
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`2010-12-30 Notice of Allowance and Fees Due
`Application No. 10/415,022
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`Memorandum Opinion, In re Maxim Integrated
`Products, Inc., Misc. No. 12-244 (MDL No. 2354)
`(W.D. Pa. Dec. 17, 2013)
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`2015-02-18 Stipulated Motion For Dismissal With
`Prejudice Of Claims And Counter Claims
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`2015-01-27 Joint Notice Regarding Case Management
`Conference
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`Exhibit 2006
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`Settlement Agreement
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`7
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`Case CBM2014-00179
`Patent 5,940,510
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`CERTIFICATE OF SERVICE
`The undersigned hereby certifies that the following documents were served
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`by Express Mail on February 25, 2015
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`JOINT MOTION TO TERMINATE PROCEEDING PURSUANT TO 35
`U.S.C. § 327
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`EXHIBIT 2006 – SETTLEMENT AGREEMENT
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`The names and addresses of the parties being served are as follows:
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`Andrea G. Reister
`Jay I. Alexander
`Gregory S. Discher
`Covington & Burling LLP
`1201 Pennsylvania Avenue, NW
`Washington, DC 20004
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`Respectfully submitted,
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`____/ Kenneth J. Weatherwax /______
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`Kenneth J. Weatherwax
`Registration No. 54,528
`Attorney for Patent Owner
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`Date: February 25, 2015
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