`
`UNITED STATES DISTRICT COURT
`WESTERN DISTRICT OF TEXAS
`SAN ANTONIO DIVISION
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` CASE NO.: 5:14-cv-1027
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`COMPLAINT FOR PATENT
`INFRINGEMENT
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`DEMAND FOR JURY TRIAL
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`Plaintiff,
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`Defendant.
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`MAXIM INTEGRATED PRODUCTS, INC.,
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`
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`v.
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`THE AMERICAN EXPRESS COMPANY,
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`
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`Maxim Integrated Products, Inc. (“Maxim”) hereby alleges for its Complaint for patent
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`infringement against defendant The American Express Company (“American Express”) on
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`personal knowledge as to its own actions and on information and belief as to the actions of others,
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`as follows:
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`THE PARTIES
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`1.
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`Plaintiff Maxim is a Delaware corporation with places of business at 120 San
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`Gabriel Drive, Sunnyvale, California 94086, and 9651 Westover Hills, San Antonio, TX 78251.
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`2.
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`On information and belief, defendant American Express is a corporation existing
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`and organized under the laws of New York. American Express is doing business in the Western
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`District of Texas, and has its principal place of business in New York, NY.
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`JURISDICTION AND VENUE
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`3.
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`This action for patent infringement arises under the patent laws of the United
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`States, Title 35 of the United States Code.
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`4.
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`This Court has subject matter jurisdiction pursuant to 28 U.S.C. §§ 1331 and
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`1338(a).
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`5.
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`Maxim maintains a substantial presence in Texas and this District, and does
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`business in Texas and this district, including operation of a semiconductor fabrication facility in
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`San Antonio, Texas, employing more than 500 people.
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`6.
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`This Court has general and specific personal jurisdiction over American Express.
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`American Express has substantial contacts with the forum as a consequence of conducting
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`substantial business in the State of Texas and within this district. On information and belief,
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`American Express has transacted business in Texas and/or in this district, including that it offers
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`for sale, sells, and advertises its products and services utilizing the claimed systems and methods
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`with and for customers residing in Texas, including within this district; and provides products
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`and services directly to consumers in Texas, including within this district. American Express has
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`committed and continues to commit acts of patent infringement in Texas and this district.
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`7.
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`Venue is proper in this District under 28 U.S.C. §§ 1391(b) and (c), and 1400(b)
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`because a substantial part of the events giving rise to the claims against American Express
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`occurred and are occurring in this district, and/or because American Express has regular and
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`established practice of business in this district and has committed acts of infringement in this
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`district.
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`THE ASSERTED PATENTS
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`8.
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`On August 17, 1999, the United States Patent and Trademark Office duly and
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`legally issued U.S. Patent No. 5,940,510 (“the ’510 Patent”), entitled “Transfer of Valuable
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`Information Between a Secure Module and Another Module,” to Stephen M. Curry, Donald W.
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`Loomis, and Michael L. Bolan. A copy of the ’510 Patent is attached to the Complaint as
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`Exhibit A.
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`9.
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`The ’510 Patent is directed to a system for communicating data securely, such as
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`for secure mobile financial transactions, including a coprocessor for processing encryption
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`calculations and a real time clock circuit for time stamping data transactions.
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`10.
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`On August 15, 2000, the United States Patent and Trademark Office duly and
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`legally issued U.S. Patent No. 6,105,013 (“the ’013 Patent”), entitled “Method, Apparatus,
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`System, and Firmware for Secure Transactions,” to Stephen M. Curry, Donald W. Loomis, and
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`Christopher W. Fox. A copy of the ’013 Patent is attached to the Complaint as Exhibit B.
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`11.
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`The ’013 Patent is directed to a secure transaction integrated circuit including a
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`microcontroller core; a modular exponentiation accelerator circuit or a math coprocessor for
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`performing or handling encryption and decryption calculations; an input/output circuit for
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`exchanging data information with an electronic device; and real-time clock or a clock circuit for
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`providing a time measurement.
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`12.
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`On May 22, 2001, the United States Patent and Trademark Office duly and legally
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`issued U.S. Patent No. 6,237,095 (“the ’095 Patent”), entitled “Apparatus for Transfer of Secure
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`Information Between a Data Carrying Module and an Electronic Device,” to Stephen M. Curry,
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`Donald W. Loomis, and Christopher W. Fox. A copy of the ’095 Patent is attached to the
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`Complaint as Exhibit C.
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`13.
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`The ’095 Patent is directed to an apparatus for receiving and transmitting
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`encrypted data, such as for secure transfers of financial information.
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`14. Maxim is the owner by assignment of all rights, title, and interest to and in
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`the ’510,’013, and ’095 Patents (collectively, the “Asserted Patents”).
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`COUNT I: Infringement of the ’510 Patent
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`15. Maxim incorporates and realleges paragraphs 1 – 14 above as if fully set forth
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`herein.
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`16.
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`On information and belief, American Express has and continues to infringe one or
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`more claims of the ’510 Patent pursuant to 35 U.S.C. § 271(a), literally or under the doctrine of
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`equivalents, by making, using, selling, and/or offering to sell in the United States and without
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`authority products, devices, systems, and/or components of systems that embody the patented
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`invention, including for example products, devices, systems and/or components of systems that
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`include or make use of the “Amex Mobile” smartphone applications. When, for example, these
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`applications are installed on a portable computing device, such as Android or iOS™ devices, and
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`combined with components of American Express’s banking infrastructure for performing secure
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`financial transactions, the resulting systems are made and/or used, thereby infringing, literally or
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`under the doctrine of equivalents, one or more claims of the ’510 Patent.
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`17. Maxim has suffered damages as a result of American Express’s infringement of
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`the ’510 Patent. In addition, Maxim will continue to suffer severe and irreparable harm unless
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`this Court issues a permanent injunction prohibiting American Express, its agents, servants,
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`the ’510 Patent.
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`employees, representatives, and all others acting in active concert therewith from infringing
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`COUNT II: Infringement of the ’013 Patent
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`18. Maxim incorporates and realleges paragraphs 1 – 14 above as if fully set forth
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`herein.
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`19.
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`On information and belief, American Express has and continues to infringe one or
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`more claims of the ’013 Patent pursuant to 35 U.S.C. § 271(a), literally or under the doctrine of
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`equivalents, by making, using, selling, and/or offering to sell in the United States and without
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`authority products, devices, systems, and/or components of systems that embody the patented
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`invention, including for example products, devices, systems and/or components of systems that
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`include or make use of the “Amex Mobile” smartphone applications. When, for example, these
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`applications are installed on a portable computing device, such as Android or iOS™ devices, the
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`resulting systems are made and/or used, thereby infringing, literally or under the doctrine of
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`equivalents, one or more claims of the ’013 Patent.
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`20. Maxim has suffered damages as a result of American Express’s infringement of
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`the ’013 Patent. In addition, Maxim will continue to suffer severe and irreparable harm unless
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`this Court issues a permanent injunction prohibiting American Express, its agents, servants,
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`the ’013 Patent.
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`employees, representatives, and all others acting in active concert therewith from infringing
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`COUNT III: Infringement of the ’095 Patent
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`21. Maxim incorporates and realleges paragraphs 1 – 14 above as if fully set forth
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`herein.
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`22.
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`On information and belief, American Express has and continues to infringe one or
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`more claims of the ’095 Patent pursuant to 35 U.S.C. § 271(a), literally or under the doctrine of
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`equivalents, by making, using, selling, and/or offering to sell in the United States and without
`
`authority products, devices, systems, and/or components of systems that embody the patented
`
`invention, including for example products, devices, systems and/or components of systems that
`
`include or make use of the “Amex Mobile” smartphone applications. When, for example, these
`
`applications are installed on a portable computing device, such as Android or iOS™ devices, the
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`resulting systems are made and/or used, thereby infringing, literally or under the doctrine of
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`equivalents, one or more claims of the ’095 Patent.
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`23. Maxim has suffered damages as a result of American Express’s infringement of
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`the ’095 Patent. In addition, Maxim will continue to suffer severe and irreparable harm unless
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`this Court issues a permanent injunction prohibiting American Express, its agents, servants,
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`employees, representatives, and all others acting in active concert therewith from infringing
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`the ’095 Patent.
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`PRAYER FOR RELIEF
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`For the above reasons, Maxim respectfully requests that this Court grant the following
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`relief in favor of Maxim and against American Express:
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`(a)
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`A judgment in favor of Maxim that American Express has infringed (either
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`literally or under the doctrine of equivalents) one or more claims of the Asserted
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`Patents;
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`(b)
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`A permanent injunction enjoining American Express and its officers, directors,
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`agents, servants, affiliates, employees, divisions, branches, subsidiaries, parents,
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`and all others acting in active concert or participation with American Express,
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`from infringing the Asserted Patents;
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`(c)
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`A judgment and order requiring American Express to pay Maxim its damages,
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`costs, expenses, and pre-judgment and post-judgment interest for American
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`Express’s infringement of the Asserted Patents;
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`(d)
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`A judgment and order finding that this is an exceptional case within the meaning
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`of 35 U.S.C. § 285 and awarding Maxim its reasonable attorney fees; and
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`(e)
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`Any and all such other relief as the Court deems just and proper.
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`DEMAND FOR JURY TRIAL
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`Pursuant to Rule 38(b) of the Federal Rules of Civil Procedure, Plaintiff Maxim demands
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`a trial by jury of this action.
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`Dated: November 19, 2014
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`
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`
`
`By, /s/ Matthew D. Powers
`Matthew D. Powers
`CA Bar No. 104795 (Admitted W.D. Tex.)
`Steven S. Cherensky
`CA Bar No. 168275 (Admitted W.D. Tex.)
`TENSEGRITY LAW GROUP LLP
`555 Twin Dolphin Drive, Suite 360
`Redwood Shores, CA 94065
`Phone: (650) 802-6000
`Fax: (650) 802-6001
`Email:
`matthew.powers@tensegritylawgroup.com
`steven.cherensky@tensegritylawgroup.com
`
`Attorneys for Plaintiff,
`Maxim Integrated Products, Inc.
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