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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`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,
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`v.
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`MAXIM INTEGRATED PRODUCTS, INC.,
`Patent Owner.
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`Case CBM2015-00098
`Patent No. 5,940,510
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`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
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`CBM2015-00098
`U.S. Patent No. 5,940,510
`Joint Motion to Terminate
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`Pursuant to 35 U.S.C. § 327(a), Petitioner constituents American Express
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`Company and American Express Travel Related Services Company, Inc.
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`(collectively, “American Express”) and Patent Owner Maxim Integrated Products,
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`Inc. (“Maxim”) (collectively, “the Parties”) jointly request termination of American
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`Express’s participation in this case, No. CBM2015-00098,1 as to American Express
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`only. Because additional petitioners remain, the grant of this motion will not result
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`in the termination of this Covered Business Method (“CBM”) review.
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`I.
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`Brief Explanation as to why Termination is Appropriate
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`American Express and Maxim have settled their dispute with respect to the
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`patent at issue. Because no final written decision has yet been entered and American
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`Express and Maxim are jointly making this motion, termination of this CBM review as
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`to American Express is appropriate, as the Board has not yet “decided the merits of the
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`proceeding.” 35 U.S.C. § 327(a).
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` Terminating this CBM review as to American Express promotes the
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`congressional goal to establish a more efficient and streamlined patent system that,
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`inter alia, limits unnecessary and counterproductive litigation costs. See “Changes to
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`Implement Inter Partes Review Proceedings, Post-Grant Review Proceedings, and
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`Transitional Program for Covered Business Method Patents,” Final Rule, 77 Fed. Reg.,
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`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.
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`2
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`no. 157, p. 48680 (August 14, 2012). Moreover, terminating post-grant proceedings,
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`CBM2015-00098
`U.S. Patent No. 5,940,510
`Joint Motion to Terminate
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`such as this CBM review, upon settlement fosters an environment that promotes
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`settlements, thereby creating a timely, cost-effective alternative to litigation. A
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`decision to continue the present CBM review as to American Express would therefore
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`be contrary to the congressional goal of speedy dispute resolution.
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`II.
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`Status of Related Litigation
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`The related District Court litigation between the Parties, No. 5:14-cv-1027-XR
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`(W.D. Tx.), has been settled and that action has been dismissed with prejudice. A
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`copy of the court’s order dismissing that action is being filed concurrently herewith as
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`Exhibit 1019.
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`III. Request to Treat Settlement Agreement as Confidential Information
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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 1020 pursuant to 35 U.S.C.
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`§ 327(b), along with the Parties’ joint request that the settlement agreement be treated
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`as business confidential information, and be kept separate from the file of the involved
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`patent.
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`IV. Conclusion
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`Maxim joins the present Motion solely for purposes of terminating American
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`Express’s participation in this case going forward. For at least these reasons, American
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`Express and Maxim respectfully request termination of this case as to American
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`CBM2015-00098
`U.S. Patent No. 5,940,510
`Joint Motion to Terminate
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`
` /Kenneth J. Weatherwax/
`Kenneth J. Weatherwax, Reg. No. 54,528
`Parham Hendifar, Reg. No. 71,470
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`LOWENSTEIN & WEATHERWAX LLP
`1880 Century Park East, Suite 815
`Los Angeles, CA 90067
`(310) 307-4503
`(310) 307-4509 (fax)
`weatherwax@lowensteinweatherwax.com
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`Counsel for Patent Owner
`Maxim Integrated Products, Inc.
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`Express.
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`Respectfully submitted,
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`/David M. Tennant/
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`David M. Tennant, Reg. No. 48,362
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`WHITE & CASE, LLP
`701 13th St. NW, #600
`Washington, DC 20005
`(202) 626-3684
`(202) 639-9355 (fax)
`dtennant@whitecase.com
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`Counsel for Petitioner American
`Express Company and American
`Express Travel Related Services
`Company, Inc.
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`Date: October 14, 2015
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`4
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`Exhibit
`Ex. 1001
`Ex. 1002
`Ex. 1003
`Ex. 1004
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`Ex. 1005
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`Ex. 1006
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`Ex. 1007
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`Ex. 1008
`Ex. 1009
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`Ex. 1010
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`CBM2015-00098
`U.S. Patent No. 5,940,510
`Joint Motion to Terminate
`PETITIONER’S UPDATED EXHIBIT LIST
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`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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`
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`CBM2015-00098
`U.S. Patent No. 5,940,510
`Joint Motion to Terminate
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`(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)
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`Ex. 1011
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`Ex. 1012
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`Ex. 1013
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`Ex. 1014
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`Ex. 1015
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`Ex. 1016
`Ex. 1017
`Ex. 1018
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`Ex.1019
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`Order of Dismissal With Prejudice, Maxim Integrated Prods., Inc.
`v. The American Express Company and American Express Travel
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`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.
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`Ex.1020
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`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.”
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`CBM2015-00098
`U.S. Patent No. 5,940,510
`Joint Motion to Terminate
`CERTIFICATE OF SERVICE
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`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,
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`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
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`JOINT REQUEST TO FILE SETTLEMENT AGREEMENT AS
`BUSINESS CONFIDENTIAL INFORMATION UNDER
`35 U.S.C. § 327(b)
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`Ex. 1019 ORDER OF DISMISSAL WITH PREJUDICE
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`The name and email address of the party being served is as follows:
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`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:
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`
`Kenneth J. Weatherwax
`Registration No. 54,528
`weatherwax@lowensteinweatherwax.com
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`Respectfully submitted,
`/David M. Tennant/
`David M. Tennant
`White & Case LLP
`Attorney for Petitioners American Express
`Company and American Express Travel
`Related Services
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`Date: October 14, 2015