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IN THE 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,
`
`MAXIM INTEGRATED PRODUCTS, INC.,
`Patent Owner.
`
`Case No. CBM2014—00180
`
`Patent No. 5,949,880
`
`PETITIONER’S UPDATED MANDATORY NOTICE
`
`
`
`

`

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`CBM2014~00180
`
`020358.0206—USO6
`
`Pursuant to 37 CPR. § 42.8 and in accordance with the Board’s Order dated
`
`January 29, 2015 (Paper No. 9), JP Morgan Chase & Co. and JP Morgan Chase
`
`Bank, NA. (“Petitioner”) submit the following Updated Mandatory Notice.
`
`Related Matters (37 CPR. § 42.8(b) (2))
`
`In a complaint dated October 1, 2012 (EX. 1010), US. Patent No. 5,949,880
`
`(“the ’880 Patent”) was asserted against Petitioner in the action captioned Maxim
`
`Integrated Prods, Inc. v. JP Morgan Chase & Co., No. 2:12—CV-01641-JFC (W.D.
`
`Pa.) (“JPMC Litigation”). This action was consolidated into the multidistrict
`litigation described below. On October 20, 2014, the Court entered an order (EX.
`1017) dismissing with prejudice all claims against Petitioner relating to the ’880
`Patent, and dismissing without prejudice Petitioner’s affirmative defenses relating
`
`to the ’880 Patent.
`
`To Petitioner’s knowledge and understanding, the ’880 Patent has also been
`
`asserted in 26 other cases consolidated into multidistrict litigation as In re: Maxim
`
`Integrated Prods, Inc., MDL No. 2354, Misc. No. 12—244-JFC (W.D. Pa.) (“MDL
`
`Litigation”). However, Petitioner understands that most of those cases have been
`
`dismissed from the MDL Litigation as indicated below:
`
`0 PNC Fin. Servs Grp., Inc. v. Maxim Integrated Prods, Inc., No. 2:12-cv—
`
`00089~JFC (Dismissed, May 29, 2014, Text Only Docket Order)
`
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`
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`
`

`

`CBM2014—00180
`
`02035 8.0206—USO6
`
`KeyCorp v. Maxim Integrated Prods., Inc., No. 2:12-cv-00860-JFC
`
`(Dismissed, August 21, 2013, Docket # 648)
`
`Vanguard Grp., Inc. v. Maxim Integrated Prods., Inc., No. 2:12-cv-00862—JFC
`
`(Dismissed, February 19, 2014, Docket # 772, 773)
`
`Jack Henry &Assocs., Inc. 1/. Maxim Integrated Prods., No. 2:12—cv—00863-
`
`JFC (Dismissed, February 20, 2014, Docket # 775)
`
`Maxim Integrated Prods., Inc. v. Comerica Inc., No. 2:12—cv-00869-JFC
`
`(Dismissed, August 20, 2014, Text Only Docket Order)
`
`Fidelity Brokerage Servs. LLC v. Maxim Integrated Prods., Inc. , No. 2:12-CV-
`
`00871—JFC (Dismissed, May 16, 2014, Text Only Docket Order)
`
`Maxim Integrated Prods., Inc. v. First United Bank & Trust Co., No. 2:12-CV—
`
`00876—JFC (Dismissed, February 19, 2014, Docket # 774)
`
`Maxim Integrated Prods., Inc. 1/. Starbucks Corp, No. 2:12—CV-00877-JFC
`
`(Dismissed, April 7, 2014, Text Only Docket Order)
`
`Maxim Integrated Prods., Inc. v. Expedia, Inc., No. 2:12—CV—00878—JFC
`
`(Dismissed, July 10, 2014, Text Only Docket Order)
`
`Maxim Integrated Prods., Inc. v. Capital One Fin. Corp, No. 2:12—CV—00879—
`
`JFC (Dismissed, December 12, 2013, Docket #738)
`
`Maxim Integrated Prods., Inc. v. Bank of the West, No. 2:12-cv-00880~JFC
`
`(All substantive claims dismissed, September 24, 2014, Minute Order)
`
`
`
`
`
`

`

`CBM2014-00180
`
`02035 8.0206-USO6
`
`0 Maxim Integrated Prods, Inc. v. Groapon, Inc., No. 2:12—CV—00881—JFC
`
`(Dismissed, August 20, 2014, Text Only Docket Order)
`
`0 Maxim Integrated Prods, Inc. v. Union Bank, NA, No. 2:12—CV—00882—JFC
`
`(Dismissed, February 6, 2014, Text Only Docket Order)
`
`0 Maxim Integrated Prods, Inc. v. SouthwestAirlineS, Co., No. 2:12-CV—00883-
`
`JFC (Dismissed, May 5, 2014, Text Only Docket Order)
`
`0 Chipotle Mexican Grill, Inc. v. Maxim Integrated Prods, Inc., No. 2:12-cv—
`
`00887—JFC (Dismissed, August 5, 2014, Text Only Docket Order)
`
`0 Maxim Integrated Prods, Inc. v. QVC, Inc., No. 2:12—CV-00891—JFC
`
`(Dismissed, March 14, 2014, Text Only Docket Order)
`
`0 Clairmail Inc. v. Maxim Integrated Prods, Inc., No. 2:12-CV-00923—NBF
`
`(Dismissed, August 31, 2012, Docket # 146)
`
`0 Branch Banking & Trust Co. v. Maxim Integrated Prods, Inc., No. 2:12-cv—
`
`00945—JFC
`
`0 BMO Harris Bank Nat ’1 Ass ’n v. Maxim Integrated Prods, Inc., No. 2:12-CV-
`
`01538-JFC (Dismissed, October 8, 2014, Text Only Docket Order)
`
`0 Deutsche BankAG v. Maxim Integrated Prods, Inc., No. 2:12-cv-01604—JFC
`
`(Dismissed, September 25, 2014, Text Only Docket Order)
`
`0 Maxim Integrated Prods, Inc. v. Citigroap, Inc., No. 2:12-CV-01628-JFC
`
`(Dismissed, May 22, 2014, Text Only Docket Order)
`
`-3-
`
`
`
`

`

`CBM2014-00180
`
`02035 8.0206—USO6
`
`0 Maxim Integrated Prods, Inc. 1/. Target Corp., No. 2:12—CV—01629-JFC
`
`(Dismissed, April 23, 2014, Text Only Docket Order)
`
`0 Maxim Integrated Prods, Inc. 1/. Wells Fargo & Co., No. 2:12~cv—01639-JFC
`
`(Dismissed, May 1, 2014, Text Only Docket Order)
`
`0 Maxim Integrated Prods, Inc. 1/. Bank ofAm. Corp, No. 2:12-CV-01640—JFC
`
`(Dismissed, June 19, 2014, Text Only Docket Order)
`
`0 Maxim Integrated Prods, Inc. v. US. Bancorp, No. 2:12-cv—01642~JFC
`
`(Dismissed, August 20, 2014, Text Only Docket Order)
`
`0 Maxim Integrated Prods, Inc. v. Walmart Stores, Inc., No. 2:12-CV-01643~JFC
`
`(Dismissed, February 6, 2014, Text Only Docket Order)
`
`The ’880 patent has also been asserted in Maxim Integrated Prods, Inc. v.
`
`Branch Banking & Trust Co., 4:12—cv—00369-RAS (E.D. Tex.) (Terminated, July
`
`16,2012)
`
`All other information previously provided remains the same.
`
`

`

`il
`
`i lllii i ii:
`
`CBM2014—00180
`
`020358.0206-U806
`
`Date: February 4, 2015
`
`Respectfully Submitted,
`
`Andrea G.
`
`ei ter
`
`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
`Washington, DC 20001
`(202) 662-6000
`Attorneys for Petitioner
`
`

`

`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6, I hereby certify that on this 4th day of February 2015,
`
`the foregoing Petitioner’s Updated Mandatory Notice was served Via electronic mail
`
`by agreement of the parties on the following counsel of record for Patent Owner.
`
`Kenneth J. Weatherwax
`
`Parham Hendifar
`
`Goldberg, Lowenstein & Weatherwax LLP
`weatherwax@glwllp.com
`hendifar@glwllp.com
`
` Date: February 4, 2015
`
`Gregory S. Discher, Esq.
`Registration No.: 42,488
`
`
`
`

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