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UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`STATE FARM MUTUAL AUTOMOBILE INSURANCE COMPANY,
`Petitioner,
`
`v.
`
`MAXIM INTEGRATED PRODUCTS, INC.,
`Patent Owner.
`
`Case CBM2015-00098
`Patent No. 5,940,510
`
`STATE FARM MUTUAL AUTOMOBILE INSURANCE COMPANY’S, AND
`MAXIM INTEGRATED PRODUCTS, INC.’S
`JOINT MOTION TO TERMINATE PROCEEDING WITH RESPECT TO
`STATE FARM MUTUAL AUTOMOBILE INSURANCE COMPANY
`PURSUANT TO 35 U.S.C. § 327
`
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`1
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`Pursuant to 35 U.S.C. § 327(a), Petitioner State Farm Mutual Automobile
`
`Insurance Company (“State Farm”) and Patent Owner Maxim Integrated Products,
`
`Inc. (“Maxim”) (collectively, “the parties”) jointly request termination of State
`
`Farm’s participation in this case, No. CBM2015-00098. Because no additional
`
`petitioners remain, the Board may choose to terminate this Covered Business
`
`Method (“CBM”) review.
`
`I.
`
`Brief Explanation as to why Termination is Appropriate
`
`
`
`State Farm and Maxim have settled their dispute with respect to the patent at
`
`issue. Because no final written decision has yet been entered and State Farm and
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`Maxim are jointly making this motion, termination of this CBM review as to State
`
`Farm is appropriate, as the Board has not yet “decided the merits of the proceeding.”
`
`35 U.S.C. § 327(a).
`
`
`
` Terminating this CBM review as to State Farm promotes the congressional goal
`
`to establish a more efficient and streamlined patent system that, inter alia, limits
`
`unnecessary and counterproductive litigation costs. See “Changes to Implement Inter
`
`Partes Review Proceedings, Post-Grant Review Proceedings, and Transitional Program
`
`for Covered Business Method Patents,” Final Rule, 77 Fed. Reg., no. 157, p. 48680
`
`(August 14, 2012). Moreover, terminating post-grant proceedings, such as this CBM
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`review, upon settlement fosters an environment that promotes settlements, thereby
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`creating a timely, cost-effective alternative to litigation. A decision to continue the
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`2
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`

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`present CBM review as to State Farm would therefore be contrary to the congressional
`
`goal of speedy dispute resolution.
`
`II.
`
`Status of Related Litigation
`
`
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`The related District Court litigation between the parties has been settled and the
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`case has been dismissed with prejudice. A copy of the court’s order dismissing the
`
`case is being filed concurrently herewith as Exhibit 1023.
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`
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`The parties’ settlement agreement has been made in writing, and a true and
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`correct copy is being filed concurrently herewith as Exhibit 1024 pursuant to 35 U.S.C.
`
`§ 327(b).
`
`III. Conclusion
`
`
`
`Maxim joins the present Motion solely for purposes of terminating State Farm’s
`
`participation in this case going forward. For at least these reasons, State Farm and
`
`Maxim respectfully request termination of this case as to State Farm.
`
`
`
`Respectfully submitted,
`
`
`
`
`/Truman H. Fenton/
`Truman H. Fenton, Reg. No. 64,766
`SLAYDEN GRUBERT BEARD PLLC
`401 Congress Ave., Ste. 1900
`Austin, TX 78701
`(512) 402-3572
`tfenton@sgbfirm.com
`
`Counsel for Petitioner State Farm
`Mutual Automobile Insurance Company
`
`
`
`
`/Kenneth J. Weatherwax/
`Kenneth J. Weatherwax, Reg. No. 54,528
`Parham Hendifar, Reg. No. 71,470
`
`LOWENSTEIN & WEATHERWAX LLP
`11400 W. Olympic Blvd., Suite 400
`Los Angeles, CA
`90064 (310) 307-4503
`(310) 307-4509 (fax)
`weatherwax@lowensteinweatherwax.com
`
`3
`
`

`
`
`
`
`
`
`Date: February 1, 2016
`
`
`
`
`CBM2015-00098
`U.S. Patent No. 5,940,510
`Joint Motion to Terminate
`
`
`Counsel for Patent Owner
`Maxim Integrated Products, Inc.
`
`
`
`

`
`
`
`
`
`Exhibit
`Ex. 1001
`Ex. 1002
`Ex. 1003
`Ex. 1004
`
`Ex. 1005
`
`Ex. 1006
`
`Ex. 1007
`
`Ex. 1008
`Ex. 1009
`
`Ex. 1010
`
`CBM2015-00098
`U.S. Patent No. 5,940,510
`Joint Motion to Terminate
`PETITIONER’S UPDATED EXHIBIT LIST
`Description
`U.S. Patent No. 5,940,510
`File History for U.S. Patent No. 5,940,510
`Int’l Pub. No. WO 83/03018 to P.V. Cremin et al. (“Cremin”)
`INTEGRATED CIRCUIT CARDS, TAGS AND TOKENS (P.L.
`Hawkes et al. eds., 1990) (collectively, the “Hawkes Chapters”):
`• P.L. Hawkes, Preface (“Hawkes Preface”);
`• Introduction to Integrated Circuit Cards, Tags and Tokens
`for Automatic Identification (“Hawkes Ch. 1”);
`• W.L. Price & B.J. Chorley, Secure Transactions with an
`Intelligent Token (“Hawkes Ch. 6”); and
`• D.W. Davies, Cryptography and the Smart Card (“Hawkes
`Ch. 8”)
`Rivest, et al., A Method for Obtaining Digital Signatures and
`Public-Key Cryptosystems, 21 COMMUNICATIONS OF THE
`ACM, 2, 120 (1978) (“Rivest”)
`Petition for CBM Review of US5940510, JPMorgan Chase & Co.
`and JP Morgan Chase Bank, N.A., v. Maxim Integrated Products,
`Inc., CBM 2014-179, Paper No. 1, August 21, 2014.
`Decision Institution, JPMorgan Chase & Co. and JP Morgan
`Chase Bank, N.A., v. Maxim Integrated Products, Inc., CBM 2014-
`179, Paper No. 11, February 20, 2015
`U.S. Patent No. 5,210,846 to R.D. Lee (“Lee”)
`Texas Instruments, TMS7000 Family Microarchitecture, User’s
`Guide, November 1982
`Special Master’s Report and Recommendation re Claim
`Construction, In re Maxim Integrated Products, Inc., Patent
`Litigation, No. 2:12-mc-00244-JFC (W.D. Pa.), Docket #691,
`
`

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`
`
`CBM2015-00098
`U.S. Patent No. 5,940,510
`Joint Motion to Terminate
`
`(10/09/2013) (“R&R”)
`Corrective Entry to Special Master’s Report and Recommendation
`re Claim Construction, In re Maxim Integrated Products, Inc.,
`Patent Litigation, No. 2:12-mc-00244-JFC (W.D. Pa.), Docket
`#693, (10/15/2013) (“R&R Correction”)
`Memorandum Opinion re Special Master’s Report and
`Recommendation re Claim Construction, In re Maxim Integrated
`Products, Inc., Patent Litigation, No. 2:12-mc-00244-JFC (W.D.
`Pa.), Docket #742, (12/17/2013) (“CC Op.”)
`Complaint in Maxim Integrated Prods., Inc. v. American Express
`Company and American Express Travel Related Services
`Company, Inc., No. 5:14-cv-1027-XR (W.D. Tx.), Docket #1
`(11/19/14)
`Martin Marshall, Motorola Unveils Details of 68040,
`INFOWORLD, April 3, 1989 at 105.
`Erik Sandberg-Diment, The Executive Computer; How To
`Improve A PC’s Math Skills, THE NEW YORK TIMES, January
`19, 1986.
`Declaration of Peter Alexander (“Alexander Decl.”)
`Curriculum Vitae of Peter Alexander
`Declaration of Stephen Bristow (“Bristow Decl.”), which was
`exhibit 1017 in the proceeding, JPMorgan Chase & Co. and JP
`Morgan Chase Bank, N.A., v. Maxim Integrated Products, Inc.,
`CBM 2014-179 (filed August 21, 2014)
`
`
`
`
`
`
`
`Order of Dismissal With Prejudice, Maxim Integrated Prods., Inc.
`v. The American Express Company and American Express Travel
`Related Services, Inc., Civil Action No. 5:14-cv-01027-XR
`“Board Only” Confidential Settlement and Patent Cross-License
`Agreement between Maxim Integrated Products, American
`Express Company, American Express Travel Related Services
`Company, Inc.
`
`Ex. 1011
`
`Ex. 1012
`
`Ex. 1013
`
`Ex. 1014
`
`Ex. 1015
`
`Ex. 1016
`Ex. 1017
`Ex. 1018
`
`Ex.1019
`
`Ex.1020
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`

`
`CBM2015-00098
`U.S. Patent No. 5,940,510
`Joint Motion to Terminate
`Order of Dismissal With Prejudice, Maxim Integrated
`Prods., Inc. v. Compass Bank d/b/a BBVA Compass,
`Civil Action No. 5:14-cv 01028-XR (W.D. Tex.
`November 23, 2015)
`Confidential Settlement and License Agreement
`between Maxim Integrated Products, Inc. and
`Compass Bank d/b/a BBVA Compass
`Order of Dismissal With Prejudice, Maxim Integrated
`Prods., Inc. v. State Farm Mutual Automobile Insurance
`Company, Civil Action No. 5:14-cv 01030-XR (W.D. Tex.
`January 19, 2016)
`Covenant Not To Sue between Maxim Integrated Products, Inc.
`and State Farm Mutual Automobile Insurance Company
`
`
`
`
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`
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`Ex.1021
`
`Ex.1022
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`Ex.1023
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`Ex.1024
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`

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`CBM2015-00098
`U.S. Patent No. 5,940,510
`Joint Motion to Terminate
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that pursuant to agreement by Petitioner and
`Patent Owner the following documents were served by electronic mail on February
`1, 2016,
`
`JOINT MOTION TO TERMINATE PROCEEDING WITH
`RESPECT TO STATE FARM AUTOMOBILE
`INSURANCE COMPANY PURSUANT TO 35 U.S.C.
`§ 327
`
`EX. 1023 – ORDER OF DISMISSAL WITH PREJUDICE
`
`EX. 1024 – COVENANT NOT TO SUE BETWEEN MAXIM AND
`STATE FARM
`
`The name and email address of the party being served is as follows:
`
`
`
`William F. Long
`McKenna Long & Aldridge LLP
`blong@mckennalong.com
`
`Kenneth J. Weatherwax
`Registration No. 54,528
`weatherwax@lowensteinweatherwax.com
`
`Respectfully submitted,
`/Truman H. Fenton/
`Truman H. Fenton
`Slayden Grubert Beard PLLC
`Attorney for Petitioner State Farm Mutual
`Automobile Insurance Company
`
`
`
`Date: February 1, 2016

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