Case CBM2014-00180
`Patent 5,949,880
`Attorney Docket No. 140828-004USCBM
`
`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 CBM2014-00180
`Patent 5,949,880
`____________
`PATENT OWNER MAXIM INTEGRATED PRODUCTS, INC.’S
`UPDATED MANDATORY NOTICES
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`Patent 5,949,880
`Attorney Docket No. 140828-004USCBM
`
`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 CBM2014-00180
`Patent 5,949,880
`____________
`PATENT OWNER MAXIM INTEGRATED PRODUCTS, INC.’S
`UPDATED MANDATORY NOTICES
`
`
`
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`Case CBM2014-00180
`Patent 5,949,880
`Attorney Docket No. 140828-004USCBM
`
`
`
`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 and the Board’s Order dated January 29, 2015,
`
`Patent Owner Maxim Integrated Products, Inc. submits the following Updated
`
`Mandatory Notices. This filing supersedes Patent Owner’s previous Mandatory
`
`Notices filed September 11, 2014.
`
`1. Real Party-In-Interest
`
`In accordance with 37 C.F.R. § 42.8(b)(1), Patent Owner identifies the real
`
`party-in-interest as Maxim Integrated Products, Inc.
`
`2. Related Matters
`
`In accordance with 37 C.F.R. § 42.8(b)(2), Patent Owner identifies the
`
`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 or have had all infringement claims pertaining to the ’880 Patent
`
`dismissed.
`
`//
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`1
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`Case CBM2014-00180
`Patent 5,949,880
`Attorney Docket No. 140828-004USCBM
`
`I. Proceedings Involving The ’880 Patent.
`
`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
`
`Method Patent Review, Case No. CBM2014-00039, of US 5,949,880
`
`(petition for review denied June 3, 2014, paper 20);
`
`c. Maxim Integrated Prods., Inc. v. Branch Banking & Trust Co., No. 2013-
`
`1495 (Fed. Cir.) (judgment affirmed March 10, 2014, Dkt. 51);
`
`d. Maxim Integrated Prods., Inc. v. Branch Banking & Trust Co., 4:12-cv-
`
`00369-RAS (E.D. Tex) (judgment affirmed March 10, 2014, Dkt. 33);
`
`e. In re Maxim Integrated Prods., Inc., MDL No. 2354, No. 2:12-mc-00244
`
`(all claims brought by Patent Owner against Petitioner relating to ’880
`
`Patent dismissed with prejudice and all affirmative defenses relating to
`
`’880 Patent dismissed October 20, 2014, Dkt. 937);
`
`2
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`Case CBM2014-00180
`Patent 5,949,880
`Attorney Docket No. 140828-004USCBM
`
`f. As transferred for MDL purposes:
`
` Maxim Integrated Prods., Inc. v. JP Morgan Chase & Co., No. 2:12-
`
`cv- 01641-JFC (see § 2.I.e., supra)
`
` Branch Banking & Trust Co. v. Maxim Integrated Prods., Inc., No.
`
`2:12-cv-00945-JFC
`
` PNC Fin. Servs. Grp., Inc. v. Maxim Integrated Prods., Inc., No. 2:12-
`
`cv-00089-JFC (dismissed and terminated May 29, 2014, Dkt. 844)
`
` KeyCorp v. Maxim Integrated Prods., Inc., No. 2:12-cv-00860-JFC
`
`(dismissed and terminated August 20, 2013, Dkt. 648)
`
` Vanguard Grp., Inc. v. Maxim Integrated Prods., Inc., No. 2:12-cv-
`
`00862-JFC (dismissed and terminated February 19, 2014, Dkt. 773)
`
` 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,
`
`Dkt. 775)
`
` Maxim Integrated Prods., Inc. v. Comerica Inc., No. 2:12-cv-00869-
`
`JFC (dismissed and terminated August 20, 2014, Dkt. 887)
`
` Fidelity Brokerage Servs. LLC v. Maxim Integrated Prods., Inc., No.
`
`2:12-cv-00871-JFC (dismissed and terminated May 16, 2014, Dkt.
`
`840)
`
`3
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`Case CBM2014-00180
`Patent 5,949,880
`Attorney Docket No. 140828-004USCBM
`
` Maxim Integrated Prods., Inc. v. First United Bank & Trust Co., No.
`
`2:12-cv-00876-JFC (dismissed and terminated February 19, 2014,
`
`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)
`
` 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-
`
`00880-JFC (dismissed as to all pleaded claims; one motion may still
`
`be pending, September 24, 2014, Minute Entry)
`
` Maxim Integrated Prods., Inc. v. Groupon, Inc., No. 2:12-cv-00881-
`
`JFC (dismissed and terminated August 20, 2014, Dkt. 886)
`
` Maxim Integrated Prods., Inc. v. Union Bank, N.A., No. 2:12-cv-
`
`00882-JFC (dismissed and terminated February 6, 2014, Dkt. 763)
`
` Maxim Integrated Prods., Inc. v. Southwest Airlines, Co., No. 2:12-
`
`cv-00883-JFC (dismissed and terminated May 5, 2014, Dkt. 836)
`
`4
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`Case CBM2014-00180
`Patent 5,949,880
`Attorney Docket No. 140828-004USCBM
`
` 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.
`
`882)
`
` Maxim Integrated Prods., Inc. v. QVC, Inc., No. 2:12-cv-00891-JFC
`
`(dismissed and terminated March 14, 2014, Dkt. 789)
`
` Clairmail Inc. v. Maxim Integrated Prods., Inc., No. 2:12-cv-00923-
`
`NBF (dismissed and terminated August 31, 2012, Dkt. 146)
`
` BMO Harris Bank Nat’l Ass’n v. Maxim Integrated Prods., Inc., No.
`
`2:12-cv-01538-JFC (dismissed and terminated October 8, 2014, Dkt.
`
`914)
`
` Deutsche Bank AG v. Maxim Integrated Prods., Inc., No. 2:12-cv-
`
`01604-JFC (dismissed and terminated September 25, 2014, Dkt. 901)
`
` 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-
`
`JFC (dismissed and terminated April 23, 2014, Dkt. 821)
`
` Maxim Integrated Prods., Inc. v. Wells Fargo & Co., No. 2:12-cv-
`
`01639-JFC (dismissed and terminated May 1, 2014, Dkt. 831)
`
`5
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`
`
`Case CBM2014-00180
`Patent 5,949,880
`Attorney Docket No. 140828-004USCBM
`
` Maxim Integrated Prods., Inc. v. Bank of Am. Corp., No. 2:12-cv-
`
`01640-JFC (dismissed and terminated June 19, 2014, Dkt. 861)
`
` Maxim Integrated Prods., Inc. v. U.S. Bancorp, No. 2:12-cv-01642-
`
`JFC (dismissed and terminated August 20, 2014, Dkt. 888)
`
` Maxim Integrated Prods., Inc. v. Walmart Stores, Inc., No. 2:12-cv-
`
`01643-JFC (dismissed and terminated February 6, 2014, Dkt. 764).
`
`II. Proceedings Involving Other US Patents.
`
`US Patent No. 5,949,880 is a divisional from application no. 08/594,975,
`
`from which US 5,940,510 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 Patent No. 6,237,095 was a divisional. 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 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. Numerous related proceedings
`
`identified above involving the ’880 Patent also involve one or all of these patents.
`
`Patent Owner identifies below the following additional proceedings not
`
`directly involving the ’880 Patent but relating to one or more of US 5,805,702, US
`
`6
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`
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`Case CBM2014-00180
`Patent 5,949,880
`Attorney Docket No. 140828-004USCBM
`
`
`
`5,940,510, US 6,105,013, and US 6,237,095. As noted in connection with the
`
`individual proceedings, several of the identified proceedings have been dismissed.
`
`a. PNC Bank N.A. et al. v. Maxim Integrated Prods., Inc., Covered Business
`
`Method Patent Review, Case No. CBM2014-00038, of US 5,940,510
`
`(petition for institution of review denied June 3, 2014, paper 19);
`
`b. 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);
`
`c. PNC Bank N.A. et al. v. Maxim Integrated Prods., Inc., Covered Business
`
`Method Patent Review, Case No. CBM2014-00041, of US 6,237,095
`
`(petition for institution of review denied June 3, 2014, paper 19);
`
`d. Ex Parte Reexamination, Control No. 90/013,063, of USP 5,940,510
`
`(request accorded filing date of December 16, 2013);
`
`e. 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);
`
`f. JPMorgan Chase & Co. v. Maxim integrated Products, Inc., Covered
`
`Business Method Patent Review, Case No. CBM2014-00178, of US
`
`6,105,013 (petition accorded filing date of August 21, 2014);
`
`7
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`
`
`Case CBM2014-00180
`Patent 5,949,880
`Attorney Docket No. 140828-004USCBM
`
`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. Groupon Inc. v. Maxim Integrated Products, Inc., Covered Business
`
`Method Patent Review, Case No. CBM2014-00090, of US 5,805,702
`
`(terminated August 20, 2014, paper 12);
`
`i. Maxim Integrated Prods., Inc. v. USAA Fed. Sav. Bank, 4:12-cv-00369-
`
`RAS (W.D. Tex) (filed November 19, 2014);
`
`j. Maxim Integrated Prods., Inc. v. Navy Fed. Credit Union, 4:12-cv-
`
`00369-RAS (W.D. Tex) (filed November 19, 2014);
`
`k. Maxim Integrated Prods., Inc. v. State Farm Mut. Auto. Ins. Co., 4:12-cv-
`
`00369-RAS (W.D. Tex) (filed November 19, 2014);
`
`l. Maxim Integrated Prods., Inc. v. Discover Fin. Serv., 4:12-cv-00369-
`
`RAS (W.D. Tex) (filed November 19, 2014);
`
`m. Maxim Integrated Prods., Inc. v. Am. Express Co., 4:12-cv-00369-RAS
`
`(W.D. Tex) (filed November 19, 2014);
`
`n. Maxim Integrated Prods., Inc. v. Compass Bank, d/b/a BBVA Compass,
`
`4:12-cv-00369-RAS (W.D. Tex) (filed November 19, 2014).
`
`8
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`Case CBM2014-00180
`Patent 5,949,880
`Attorney Docket No. 140828-004USCBM
`
`
`
`
`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
`
`
`
`9
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`Case CBM2014-00180
`Patent 5,949,880
`Attorney Docket No. 140828-004USCBM
`
`
`
`
`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
`
`
`
`Date: February 4, 2015
`
`Respectfully submitted,
`
`____/ Kenneth J. Weatherwax /_________
`Kenneth J. Weatherwax, Reg. No. 54,528
`Goldberg, Lowenstein & Weatherwax LLP
`
`10
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`
`
`Case CBM2014-00180
`Patent 5,949,880
`Attorney Docket No. 140828-004USCBM
`
`
`CERTIFICATE OF SERVICE
`The undersigned hereby certifies that the following documents were served
`
`by Express Mail on February 4, 2015
`
`
`PATENT OWNER MAXIM INTEGRATED PRODUCTS, INC.’S
`UPDATED MANDATORY NOTICES
`
`
`
`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 4, 2015
`
`
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