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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
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`AMERICAN EXPRESS COMPANY, AMERICAN EXPRESS TRAVEL
`RELATED SERVICES COMPANY, INC., COMPASS BANK, DISCOVER
`FINANCIAL SERVICES, DISCOVER BANK, DISCOVER PRODUCTS INC.,
`NAVY FEDERAL CREDIT UNION, AND STATE FARM MUTUAL
`AUTOMOBILE INSURANCE COMPANY,
`Petitioner,
`
`v.
`
`
`
`MAXIM INTEGRATED PRODUCTS, INC.,
`Patent Owner.
`
`
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`
`
`Case CBM2015-00098
`Patent No. 5,940,510
`
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`NAVY FEDERAL CREDIT UNION AND
`MAXIM INTEGRATED PRODUCTS, INC.’S
`JOINT MOTION TO TERMINATE
`NAVY FEDERAL CREDIT UNION’S PARTICIPATION IN THIS CASE
`PURSUANT TO 35 U.S.C. § 327
`
`
`Mail Stop: Patent Board
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`
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`
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`EXHIBIT LIST
`
`Exhibit 2001
`
`Exhibit 2002
`
`Order of Dismissal With Prejudice, Maxim Integrated
`Prods., Inc. v. Navy Fed. Credit Union, Civil Action
`No. 5:14-cv 01032-XR (W.D. Tex. May. 18, 2015)
`
`Confidential Settlement and License Agreement
`between Maxim Integrated Products and Navy Federal
`Credit Union
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`
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`Pursuant to 35 U.S.C. § 327(a), Petitioner constituent Navy Federal Credit
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`Union (“NFCU”) and Patent Owner Maxim Integrated Products, Inc. (“Maxim”)
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`jointly request termination of NFCU’s participation in this case, No. CBM2015-
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`00098.1
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`
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`This case is in the preliminary proceeding stage; no institution of a trial has
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`been made. NFCU and Maxim have settled their dispute with respect to the patent
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`at issue. NFCU and Maxim have submitted a joint stipulated motion to dismiss the
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`related matter in the District Court (see Petition § I.B) with prejudice as to NFCU
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`which was granted on May 18, 2015. A copy of the order of dismissal is filed
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`concurrently herewith as Exhibit 2001.
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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 2002 pursuant to 35
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`U.S.C. § 327(b), along with the parties’ joint request that the settlement agreement
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`be treated as business confidential information and be kept separate from the file of
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`the involved patent.
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`1NFCU is one of several petitioner constituents in this case. This motion is not
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`joined by, and does not affect the continued participation of, the other petitioner
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`constituents in the case.
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`1
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`Maxim joins the present Motion solely for purposes of terminating NFCU’s
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`participation going forward.
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`
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`Therefore, NFCU and Maxim respectfully request termination of this case as
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`to NFCU.
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`Respectfully submitted,
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`/ Ozzie A. Farres /_____
`
`Ozzie A. Farres
`Registration No. 43,606
`
`HUNTON & WILLIAMS LLP
`2200 Pennsylvania Avenue, NW
`Washington, DC 20037
`(202) 955-1500
`(202) 778-2201 (fax)
`ofarres@hunton.com
`Counsel for Petitioner
`Navy Federal Credit Union
`
`Date: June 1, 2015
`
`
`
`/Kenneth J. Weatherwax/ ____
`
`Kenneth J. Weatherwax, Reg. 54,528
`Parham Hendifar, Reg. 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
`Counsel for Patent Owner
`Maxim Integrated Products, Inc.
`
`
`
`2
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`
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`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that pursuant to agreement by
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`Petitioner and Patent Owner the following documents were served by electronic mail
`on June 1, 2015,
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`JOINT MOTION TO TERMINATE PROCEEDING WITH
`PURSUANT TO 35 U.S.C. § 327
`
`JOINT REQUEST TO FILE SETTLEMENT AGREEMENT AS
`BUSINESS CONFIDENTIAL INFORMATION UNDER
`35 U.S.C. § 327(b)
`
`Ex. 2001 ORDER OF DISMISSAL WITH PREJUDICE
`
`The names and addresses of the parties being served are as follows:
`
`
`
`William F. Long
`McKenna Long & Aldridge LLP
`blong@mckennalong.com
`
`David M. Tennant
`White & Case LLP
`dtennant@whitecase.com
`WCAXPMaximCBMTeam@whitecase.com.
`
`Pursuant to agreement by Petitioner and Patent Owner, Ex. 2002
`SETTLEMENT AGREEMENT was served on only the following party in order to
`preserve confidentiality.
`
`Ozzie A. Farres
`Hunton & Williams LLP
`ofarres@hunton.com
`
`
`Respectfully submitted,
`
`/Kenneth J. Weatherwax/
`
`
`
`Kenneth J. Weatherwax
`Registration No. 54,528
`Attorney for Patent Owner
`
`
`
`
`
`Date: June 1, 2015
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