`571.272.7822
`
`Paper No. 40
`Filed: February 10, 2016
`
`
`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 5,940,510
`____________
`
`Before TREVOR M. JEFFERSON, MITCHELL G. WEATHERLY, and
`KERRY BEGLEY, Administrative Patent Judges.
`
`BEGLEY, Administrative Patent Judge.
`
`
`JUDGMENT
`Termination of the Proceeding
`35 U.S.C. § 327(a), 37 C.F.R. § 42.72
`
`Petitioner State Farm Mutual Automobile Insurance Company
`(“Petitioner”), the only remaining petitioner in this proceeding, and Patent
`Owner Maxim Integrated Products, Inc. (“Maxim”) filed a Joint Motion to
`Terminate this proceeding with respect to Petitioner, pursuant to 35 U.S.C.
`§ 327. Paper 39. Along with the motion, the parties filed what they
`
`
`
`CBM2015-00098
`Patent 5,940,510
`
`represent to be a “true and correct” copy of their settlement agreement, in
`accordance with 35 U.S.C. § 327(b) and 37 C.F.R. § 42.74(b). Id. at 3;
`Ex. 1024. The parties request that the settlement agreement be treated as
`business confidential information under 35 U.S.C. § 327(b) and 37 C.F.R.
`§ 42.74(c). Paper 39, 3.
`The Motion was filed without prior authorization from the Board and,
`thus, violates 37 C.F.R. § 42.20(b). Nevertheless, in the interests of justice
`and pursuant to 37 C.F.R. § 42.5(b), we waive the authorization requirement
`of 37 C.F.R. § 42.20(b) and consider the motion on its merits. For the
`reasons set forth below, the joint motion to terminate as well as the request
`to treat the settlement agreement as business confidential information are
`granted.
`Under 35 U.S.C. § 327(a), an instituted covered business method
`patent review “shall be terminated with respect to any petitioner upon the
`joint request of the petitioner and the patent owner, unless the Office has
`decided the merits of the proceeding before the request for termination is
`filed.” 35 U.S.C. § 327(a); see Leahy-Smith America Invents Act (“AIA”),
`Pub. L. No. 112-29, § 18(a)(1), 125 Stat. 284, 329 (2011) (stating that
`chapter 32 of title 35, United States Code, which governs post-grant reviews,
`is applicable to covered business method patent reviews with the exception
`of 35 U.S.C. § 321(c), 35 U.S.C. § 325(b), (e)(2), (f)). Since institution of
`this proceeding, Patent Owner has not filed a Response, Petitioner has not
`filed a Reply, and no oral hearing has been held. As a result, the Board has
`not yet decided the merits of the proceeding. Upon consideration of the
`facts before us, we determine that it is appropriate to terminate this trial and
`
`
`
`2
`
`
`
`CBM2015-00098
`Patent 5,940,510
`
`enter judgment without rendering a final written decision. See 35 U.S.C.
`§ 327(a); 37 C.F.R. § 42.72.
`Turning to the joint request to file the Settlement Agreement as
`business confidential information, we determine that Petitioner and Patent
`Owner have complied with the requirements of 37 C.F.R. § 42.74(c) to have
`their settlement agreement treated as business confidential information that
`is kept separate from the files of the patent-at-issue. Accordingly, the
`agreement shall be made available only to a government agency on written
`request to the Board or to any other person upon a showing of good cause
`and compliance with the other requirements of 37 C.F.R. § 42.74(c)(2).
`ORDER
`For the foregoing reasons, it is:
`ORDERED that the Corrected Joint Motion to Terminate Proceeding
`with Respect to State Farm Mutual Automobile Insurance Company
`Pursuant to 35 U.S.C. § 327 (Paper 39) is granted;
`FURTHER ORDERED that the parties’ joint request that the Board
`treat their settlement agreement as business confidential information under
`35 U.S.C. § 327(b) and 37 C.F.R. § 42.74(c) is granted; and
`FURTHER ORDERED that this proceeding is terminated pursuant to
`35 U.S.C. § 327.
`
`3
`
`
`
`
`
`
`
`CBM2015-00098
`Patent 5,940,510
`
`PETITIONER:
`
`William F. Long
`DENTONS US LLP
`bill.long@dentons.com
`
`Truman Fenton
`SLAYDEN GRUBERT BEARD PLLC
`tfenton@sgbfirm.com
`
`
`
`PATENT OWNER:
`
`Kenneth J. Weatherwax
`Nathan Lowenstein
`LOWENSTEIN & WEATHERWAX LLP
`weatherwax@lowensteinweatherwax.com
`lowenstein@lowensteinweatherwax.com
`
`
`
`4
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