Trials@uspto.gov
`571-272-7822
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` CBM2014-00177, Paper No. 10
` CBM2014-00178, Paper No. 10
`CBM2014-00179, Paper No. 9
`CBM2014-00180, Paper No. 9
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`Entered: January 29, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`JP MORGAN CHASE & CO., and
`JP MORGAN CHASE BANK, N.A.,
`Petitioner,
`
`v.
`
`MAXIM INTEGRATED PRODUCTS, INC.,
`Patent Owner.
`____________
`
`Case CBM2014-00177, Patent 6,237,095 B1
`Case CBM2014-00178, Patent 6,105,013
`Case CBM2014-00179, Patent 5,940,510
`Case CBM2014-00180, Patent 5,949,880
`____________
`
`
`Before TREVOR M. JEFFERSON, MITCHELL G. WEATHERLY, and
`KERRY BEGLEY, Administrative Patent Judges.
`
`BEGLEY, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding, Request for Briefing
`37 C.F.R. § 42.5
`
`
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`
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`571-272-7822
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` CBM2014-00177, Paper No. 10
` CBM2014-00178, Paper No. 10
`CBM2014-00179, Paper No. 9
`CBM2014-00180, Paper No. 9
`
`Entered: January 29, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`JP MORGAN CHASE & CO., and
`JP MORGAN CHASE BANK, N.A.,
`Petitioner,
`
`v.
`
`MAXIM INTEGRATED PRODUCTS, INC.,
`Patent Owner.
`____________
`
`Case CBM2014-00177, Patent 6,237,095 B1
`Case CBM2014-00178, Patent 6,105,013
`Case CBM2014-00179, Patent 5,940,510
`Case CBM2014-00180, Patent 5,949,880
`____________
`
`
`Before TREVOR M. JEFFERSON, MITCHELL G. WEATHERLY, and
`KERRY BEGLEY, Administrative Patent Judges.
`
`BEGLEY, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding, Request for Briefing
`37 C.F.R. § 42.5
`
`
`
`
`
`
`CBM2014-00177, -00178, -00179, -00180
`Patents 6,237,095 B1; 6,105,013; 5,940,510; 5,949,880
`
`
`A conference call was held on January 28, 2015. The conference was
`
`attended by Judges Weatherly and Begley; Andrea Reister and Gregory
`Discher for Petitioner JP Morgan Chase & Co. and JP Morgan Chase Bank,
`N.A. (collectively, “Petitioner”); Kenneth Weatherwax and Parham Hendifar
`for Patent Owner Maxim Integrated Products, Inc. (“Patent Owner”).
`
`The Board scheduled the call to discuss the status of the district court
`cases related to these proceedings and any settlement discussions between
`the parties. In particular, each of the Petitions in these four proceedings
`states that Patent Owner is currently asserting the patent at issue (U.S. Patent
`Nos. 6,237,095 B1; 6,105,013; 5,940,510; 5,949,880) against Petitioner in a
`district court case filed in the U.S. District Court for the Western District of
`Pennsylvania, Maxim Integrated Products, Inc. v. JP Morgan Chase & Co.,
`No. 2:12-cv-01641-JFC (“the District Court Case”), which has been
`consolidated into a multidistrict litigation before the court. E.g., CBM2014-
`00180, Pet. 4; see, e.g., CBM2014-00180, Paper 8. Patent Owner’s
`Preliminary Responses, however, indicate in a footnote that U.S. Patent No.
`5,949,880 (“the ’880 patent”), which is at issue in CBM2014-00180, is no
`longer “asserted in the litigation against [Petitioner].” E.g., CBM2014-
`00180, PO Resp. 6 n.2. Neither party has provided any further information
`regarding the status of the District Court Case.
`
`During the call, Petitioner and Patent Owner explained that counsel
`for each party in the District Court Case are different than the counsel in
`these proceedings before the Board. To the best of counsel’s knowledge, the
`merits of the claims involving the ’880 patent have been resolved and are no
`longer at issue in the District Court Case. A motion for attorney’s fees with
`
`
`
`2
`
`
`
`CBM2014-00177, -00178, -00179, -00180
`Patents 6,237,095 B1; 6,105,013; 5,940,510; 5,949,880
`
`
`respect to these claims, however, remains pending before the district court.
`The court has scheduled a hearing on this motion, as well as a status and
`scheduling conference, for February 5, 2015. The parties have not settled
`the District Court Case with respect to the three other patents at issue in
`these four proceedings before the Board. Similarly, the parties have not
`agreed to terminate any of the proceedings before the Board.
`
`We directed the parties’ attention to 37 C.F.R. §§ 42.8(a)(3), (b)(2),
`pursuant to which the parties have an ongoing obligation to file an updated
`mandatory notice “within 21 days of a change of the information” required
`in such notices, which includes “any other judicial or administrative matter
`that would affect, or be affected by, a decision in the proceeding.” We
`instructed Petitioner and Patent Owner to file an updated mandatory notice
`in at least CBM2014-00180, involving the ’880 patent.
`
`In addition, we explained that the developments in the District Court
`Case regarding the ’880 patent may or may not affect Petitioner’s standing
`in CBM2014-00180 under Section 18(a)(1)(B) of the Leahy-Smith America
`Invents Act (“AIA”) and 37 C.F.R. § 42.302(a). We, therefore, ordered
`briefing on this legal question. We also request that the briefing include a
`specific factual update regarding developments in the District Court Case
`with respect to the ’880 patent (e.g., whether Patent Owner’s claims against
`Petitioner involving the ’880 patent were dismissed in the District Court
`Case, and if so, when the claims were dismissed and whether they were
`dismissed with or without prejudice). Given that Patent Owner is not
`required to file a Preliminary Response, we will not require Patent Owner to
`address standing at this stage of the proceeding, before a determination on
`
`
`
`3
`
`
`
`CBM2014-00177, -00178, -00179, -00180
`Patents 6,237,095 B1; 6,105,013; 5,940,510; 5,949,880
`
`
`whether to institute trial. See 37 C.F.R. § 42.207(a). Accordingly, Petitioner
`is required to file a brief addressing standing, whereas Patent Owner is
`authorized to do so. Each party’s brief may be up to 10 pages and, given the
`upcoming statutory deadline for our determination of whether to institute
`trial, must be filed no later than February 4, 2015.
`
`As an alternative to filing this briefing on standing, Petitioner
`requested authorization for the parties to file a joint motion to terminate
`CBM2014-00180. We granted authorization for the parties to file, instead of
`this briefing on standing, a joint motion to terminate the proceeding in
`CBM2014-00180 on or before the deadline for the briefing. If the parties
`file such a joint motion to terminate, they should be mindful of the
`requirements set forth in 35 U.S.C. § 327(b) and 37 C.F.R. § 42.74 that any
`agreement between the parties made in connection with the termination of
`the proceeding must be in writing and a copy must be filed with the Board.
`To the extent that the parties wish to maintain some level of confidentiality
`for such an agreement, the parties should refer to the procedures set forth in
`37 C.F.R. § 42.74(c). Specifically, if the parties wish to have a settlement
`agreement treated as business confidential information under 37 C.F.R.
`§ 42.74(c), the parties must file the confidential settlement electronically in
`the Patent Review Processing System (“PRPS”) as an exhibit in accordance
`with the instructions provided on the Board’s website (uploading as “Parties
`and Board Only”). The parties are directed to FAQ G2 on the Board’s
`website at http://www.uspto.gov/ip/boards/bpai/prps.jsp for instructions on
`how to file a settlement agreement as confidential.
`
`
`
`4
`
`
`
`CBM2014-00177, -00178, -00179, -00180
`Patents 6,237,095 B1; 6,105,013; 5,940,510; 5,949,880
`
`
`
`ORDER
`
`
`
`Accordingly, it is:
`ORDERED that Petitioner and Patent Owner each file updated
`mandatory notices in CBM2014-00180, pursuant to 37 C.F.R. §§ 42.8(a)(3),
`(b)(2), by February 4, 2015;
`FURTHER ORDERED that the parties are authorized to file a joint
`motion to terminate CBM2014-00180;
`FURTHER ORDERED that unless Petitioner and Patent Owner have
`filed a joint motion to terminate the proceeding, Petitioner file a brief of no
`more than 10 pages addressing Petitioner’s standing in CBM2014-00180 by
`February 4, 2015; and
`FURTHER ORDERED that Patent Owner is authorized to file a brief
`of no more than 10 pages addressing Petitioner’s standing in CBM2014-
`00180 by February 4, 2015.
`
`
`
`
`
`5
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`
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`CBM2014-00177, -00178, -00179, -00180
`Patents 6,237,095 B1; 6,105,013; 5,940,510; 5,949,880
`
`
`PETITIONER:
`Andrea G. Reister
`Jay I. Alexander
`Gregory S. Discher
`COVINGTON & BURLING LLP
`One CityCenter
`850 Tenth Street, NW
`Washington, DC 20001-4956
`areister@cov.com
`jalexander@cov.com
`gdischer@cov.com
`
`PATENT OWNER:
`Kenneth J. Weatherwax
`Parham Hendifar
`GOLDBERG, LOWENSTEIN & WEATHERWAX LLP
`11400 West Olympic Boulevard, Suite 400
`Los Angeles, California 90064
`weatherwax@glwllp.com
`hendifar@glwllp.com
`
`
`
`6
`
`
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