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 CBM2014-00180
`Patent 5,949,880
`____________
`
`JOINT MOTION
`TO TERMINATE PROCEEDING
`PURSUANT TO 35 U.S.C. § 327
`
`
`
`
`
`
`
`DC: 5617269-1
`
`
`
`____________
`
`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 CBM2014-00180
`Patent 5,949,880
`____________
`
`JOINT MOTION
`TO TERMINATE PROCEEDING
`PURSUANT TO 35 U.S.C. § 327
`
`
`
`
`
`
`
`DC: 5617269-1
`
`
`
`
`
`Petitioner JP MORGAN CHASE & CO. and JP MORGAN CHASE BANK,
`
`Case CBM2014-00180
`Patent 5,949,880
`
`
`N.A. (collectively “Petitioner” or “Chase”) and Patent Owner MAXIM
`
`INTEGRATED PRODUCTS, INC. (“Patent Owner” or “Maxim”) jointly request
`
`termination of this covered business method (“CBM”) patent review case.
`
`STATEMENT OF PRECISE RELIEF REQUESTED
`
`Pursuant to 35 U.S.C. § 327, and the Board’s authorization provided on
`
`February 25, 2015, Petitioner and Patent Owner jointly request termination of case
`
`number CBM2014-00180, which is directed to U.S. Patent No. 5,949,880, pursuant
`
`to settlement.1
`
`STATEMENT OF FACTS
`
`This is one of four pending CBM cases (collectively the “Cases”)2 filed by
`
`Chase against Maxim, each involving one of four patents3 that were the subject of
`
`litigation claims between Chase and Maxim relating to infringement (“the
`
`Litigated Patents”).
`
`1 Substantially similar joint motions to terminate pursuant to settlement are
`
`being filed concurrently in this and each of the other Cases (defined below).
`
`2 Case Nos. CBM2014-00177, -00178, -00179, and -00180.
`
`3 U.S. Patent Nos. 6,237,095, 6,105,013, 5,940,510, and 5,949,880,
`
`respectively.
`
`
`
`1
`
`
`
`
`Decisions instituting review (on at least one but not all requested grounds in
`
`Case CBM2014-00180
`Patent 5,949,880
`
`
`each case) issued in Cases CBM2014-00179 (paper 11) and -00180 (paper 14) on
`
`February 20, 2015. Decisions on institution are believed to be due in Cases
`
`CBM2014-00177 and -00178 on February 28, 2015.
`
`Chase and Maxim have reached an agreement that settles all of the Cases.
`
`A “Joint Request to File Settlement Agreement as Business Confidential
`
`Information Under 35 U.S.C. § 327(b)” is being filed concurrently with this Joint
`
`Motion to Terminate to treat the settlement agreement as business confidential
`
`information and keep it separate from the file of the Involved Patent (U.S. Patent
`
`No. 5,949,880).
`
`Pursuant to the settlement agreement, the lawsuit styled Maxim Integrated
`
`Products, Inc. v. JP Morgan Chase & Co., originally filed as Civil Action No. 12-
`
`CV-1641 in the United States District Court for the Eastern District of Texas, and
`
`transferred for pre-trial proceedings to the United States District Court for the
`
`Western District of Pennsylvania as Civil Action No. 2:12-cv-1538-JFC, for
`
`consolidation in the MDL proceedings In re Maxim Integrated Products, Inc.
`
`Patent Litigation, identified by Civil Action No. 2:12-mc-244, has been settled
`
`between Chase and Maxim. A stipulated motion made jointly by Chase and
`
`Maxim for dismissal with prejudice of claims and counterclaims and proposed
`
`
`
`2
`
`
`
`
`order of dismissal was filed in the foregoing litigation February 18, 2015 and is
`
`Case CBM2014-00180
`Patent 5,949,880
`
`
`pending entry. Ex. 2001.
`
`The related proceedings listed below alleging infringement of the
`
`aforementioned U.S. Patent Nos. 6,237,095, 6,105,013, and 5,940,510, but not
`
`5,949,880, remain pending. Chase is not a party to these related proceedings.
`
` 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).
`
`ARGUMENT
`
`A joint motion to terminate generally “must (1) include a brief explanation
`
`as to why termination is appropriate; (2) identify all parties in any related litigation
`
`involving the patents at issue; (3) identify any related proceedings currently before
`
`the Office, and (4) discuss specifically the current status of each such related
`3
`
`
`
`
`
`
`litigation or proceeding with respect to each party to the litigation or proceeding.”
`
`Case CBM2014-00180
`Patent 5,949,880
`
`
`Heartland Tanning, Inc. v. Sunless, Inc., IPR2014-00018, Paper 26 at 2 (PTAB Jul.
`
`28, 2014). The second, third and fourth of these requirements are included in the
`
`above statement of facts. The first of these requirements is satisfied below.
`
`The Board should terminate this case as the parties jointly request, for the
`
`following reasons.
`
`First, Petitioner and Patent Owner have met the statutory requirement that
`
`they file a “joint request” to terminate before the office “has decided the merits of
`
`the proceeding.” 35 U.S.C. § 327(a). Under section 327(a), a post-grant review
`
`shall be terminated upon such joint request “unless the Office has decided the
`
`merits of the proceeding before the request for termination is filed.” There are no
`
`other preconditions of 35 U.S.C. § 327(a). In Cases CBM2014-00177 and
`
`CBM2014-00178, a decision on institution has not issued. In each of Cases
`
`CBM2014-00179 and CBM2014-00180, a decision on institution and scheduling
`
`order issued February 20, 2015 granting review on at least one, but not all,
`
`proposed grounds, but no other filings or proceedings following institution have
`
`yet taken place. No prior motions are pending in any of the Cases.
`
`Second, the parties have reached a settlement as to all the disputes in this
`
`proceeding, and as to the Involved Patent. A copy of the settlement agreement is
`
`
`
`4
`
`
`
`
`filed concurrently herewith along with the parties’ joint request that the settlement
`
`Case CBM2014-00180
`Patent 5,949,880
`
`
`agreement be treated as business confidential information and be kept separate
`
`from the file of the involved patent. See Ex. 2002. The parties further jointly
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`certify that there is no other agreement or understanding between Chase and
`
`Maxim, including any collateral agreements, made in connection with, or in
`
`contemplation of, the termination of the present proceeding as set forth in 35
`
`U.S.C. § 327(b).
`
`Third, termination of this proceeding will preserve the Board’s resources and
`
`obviate the need for any more Board involvement in this matter.
`
`For at least the foregoing reasons, Petitioner and Patent Owner respectfully
`
`request termination of this CBM Review of the Involved Patent.
`
`
`
`February 25, 2015
`
`
`
`
`
`
`
`Respectfully Submitted,
`
`
`
`
`
` / 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
`
`
`
`5
`
`
`
`Case CBM2014-00180
`Patent 5,949,880
`
`
`Washington, DC 20001
`202-662-6000
`Attorneys for Petitioner
`
` / 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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`
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`UPDATED EXHIBIT LIST
`
`Case CBM2014-00180
`Patent 5,949,880
`
`
`Exhibit 2001
`
`2015-02-18 Stipulated Motion For Dismissal With
`Prejudice Of Claims And Counter Claims
`
`Exhibit 2002
`
`Settlement Agreement
`
`
`
`
`
`
`
`
`7
`
`
`
`Case CBM2014-00180
`Patent 5,949,880
`
`
`CERTIFICATE OF SERVICE
`The undersigned hereby certifies that the following documents were served
`
`by Express Mail on February 25, 2015
`
`
`
`
`
`
`
`
`JOINT MOTION TO TERMINATE PROCEEDING PURSUANT TO 35
`U.S.C. § 327
`
`EXHIBIT 2001 – STIPULATION FOR DISMISSAL
`
`EXHIBIT 2002 – SETTLEMENT AGREEMENT
`
`
`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 25, 2015
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