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UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`AMERICAN EXPRESS COMPANY, AMERICAN EXPRESS TRAVEL
`RELATED SERVICES COMPANY, INC., COMPASS BANK, DISCOVER
`FINANCIAL SERVICES, DISCOVER BANK, DISCOVER PRODUCTS INC.,
`AND STATE FARM MUTUAL AUTOMOBILE INSURANCE COMPANY,
`Petitioner,
`
`v.
`
`MAXIM INTEGRATED PRODUCTS, INC.,
`Patent Owner.
`
`Case CBM2015-00098
`Patent No. 5,940,510
`
`AMERICAN EXPRESS COMPANY,
`AMERICAN EXPRESS TRAVEL RELATED SERVICES COMPANY, INC.,
`AND MAXIM INTEGRATED PRODUCTS, INC.’S
`JOINT MOTION TO TERMINATE PROCEEDING WITH RESPECT TO
`AMERICAN EXPRESS COMPANY AND AMERICAN EXPRESS TRAVEL
`RELATED SERVICES COMPANY, INC. PURSUANT TO 35 U.S.C. § 327
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`

`
`
`CBM2015-00098
`U.S. Patent No. 5,940,510
`Joint Motion to Terminate
`
`Pursuant to 35 U.S.C. § 327(a), Petitioner constituents American Express
`
`
`
`Company and American Express Travel Related Services Company, Inc.
`
`(collectively, “American Express”) and Patent Owner Maxim Integrated Products,
`
`Inc. (“Maxim”) (collectively, “the Parties”) jointly request termination of American
`
`Express’s participation in this case, No. CBM2015-00098,1 as to American Express
`
`only. Because additional petitioners remain, the grant of this motion will not result
`
`in the termination of this Covered Business Method (“CBM”) review.
`
`I.
`
`Brief Explanation as to why Termination is Appropriate
`
`
`
`American Express and Maxim have settled their dispute with respect to the
`
`patent at issue. Because no final written decision has yet been entered and American
`
`Express and Maxim are jointly making this motion, termination of this CBM review as
`
`to American Express 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 American Express 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.,
`
`1 American Express is one of several petitioner constituents in this CBM review.
`This motion is not joined by, and does not affect the continued participation of, the
`other petitioner constituents in the CBM review.
`
`
`
`2
`
`

`
`
`no. 157, p. 48680 (August 14, 2012). Moreover, terminating post-grant proceedings,
`
`
`CBM2015-00098
`U.S. Patent No. 5,940,510
`Joint Motion to Terminate
`
`such as this CBM review, upon settlement fosters an environment that promotes
`
`settlements, thereby creating a timely, cost-effective alternative to litigation. A
`
`decision to continue the present CBM review as to American Express would therefore
`
`be contrary to the congressional goal of speedy dispute resolution.
`
`II.
`
`Status of Related Litigation
`
`
`
`The related District Court litigation between the Parties, No. 5:14-cv-1027-XR
`
`(W.D. Tx.), has been settled and that action has been dismissed with prejudice. A
`
`copy of the court’s order dismissing that action is being filed concurrently herewith as
`
`Exhibit 1019.
`
`III. Request to Treat Settlement Agreement as Confidential Information
`
`
`
`The Parties’ settlement agreement has been made in writing, and a true and
`
`correct copy is being filed concurrently herewith as Exhibit 1020 pursuant to 35 U.S.C.
`
`§ 327(b), along with the Parties’ joint request that the settlement agreement be treated
`
`as business confidential information, and be kept separate from the file of the involved
`
`patent.
`
`IV. Conclusion
`
`
`
`Maxim joins the present Motion solely for purposes of terminating American
`
`Express’s participation in this case going forward. For at least these reasons, American
`
`Express and Maxim respectfully request termination of this case as to American
`
`
`
`3
`
`

`
`
`CBM2015-00098
`U.S. Patent No. 5,940,510
`Joint Motion to Terminate
`
`
` /Kenneth J. Weatherwax/
`Kenneth J. Weatherwax, Reg. No. 54,528
`Parham Hendifar, Reg. No. 71,470
`
`LOWENSTEIN & WEATHERWAX LLP
`1880 Century Park East, Suite 815
`Los Angeles, CA 90067
`(310) 307-4503
`(310) 307-4509 (fax)
`weatherwax@lowensteinweatherwax.com
`
`Counsel for Patent Owner
`Maxim Integrated Products, Inc.
`
`
`Express.
`
`
`
`Respectfully submitted,
`
`
`/David M. Tennant/
`
`David M. Tennant, Reg. No. 48,362
`
`WHITE & CASE, LLP
`701 13th St. NW, #600
`Washington, DC 20005
`(202) 626-3684
`(202) 639-9355 (fax)
`dtennant@whitecase.com
`
`Counsel for Petitioner American
`Express Company and American
`Express Travel Related Services
`Company, Inc.
`
`
`Date: October 14, 2015
`
`
`
`
`
`
`4
`
`

`
`
`
`
`
`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,
`
`

`
`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)
`
`Ex. 1011
`
`Ex. 1012
`
`Ex. 1013
`
`Ex. 1014
`
`Ex. 1015
`
`Ex. 1016
`Ex. 1017
`Ex. 1018
`
`
`
`Ex.1019
`
`
`
`Order of Dismissal With Prejudice, Maxim Integrated Prods., Inc.
`v. The American Express Company and American Express Travel
`
`
`
`
`
`

`
`
`
`
`
`CBM2015-00098
`U.S. Patent No. 5,940,510
`Joint Motion to Terminate
`Related Services, Inc.,2 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.1020
`
`
`
`
`2 Maxim’s Amended Complaint and therefore, the associated caption for the district
`court case incorrectly names as a Defendant, “The American Express Company,”
`which is a non-existent entity. It is understood that Maxim intended to name
`“American Express Company.”
`
`
`
`

`
`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 October
`14, 2015,
`
`JOINT MOTION TO TERMINATE PROCEEDING WITH
`RESPECT TO AMERICAN EXPRESS COMPANY AND
`AMERICAN EXPRESS TRAVEL RELATED SERVICES,
`INC. 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. 1019 ORDER OF DISMISSAL WITH PREJUDICE
`
`The name and email address of the party being served is as follows:
`
`
`
`William F. Long
`McKenna Long & Aldridge LLP
`blong@mckennalong.com
`Pursuant to agreement by Petitioner and Patent Owner, Ex. 1020
`Settlement and Patent Cross-License Agreement was served on only the following
`party in order to preserve confidentiality:
`
`
`Kenneth J. Weatherwax
`Registration No. 54,528
`weatherwax@lowensteinweatherwax.com
`
`Respectfully submitted,
`/David M. Tennant/
`David M. Tennant
`White & Case LLP
`Attorney for Petitioners American Express
`Company and American Express Travel
`Related Services
`
`
`
`
`
`Date: October 14, 2015

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