`571.272.7822
`
`Paper No. 24
`Filed: October 20, 2015
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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 5,940,510
`____________
`
`Before TREVOR M. JEFFERSON, MITCHELL G. WEATHERLY, and
`KERRY BEGLEY, Administrative Patent Judges.
`
`BEGLEY, Administrative Patent Judge.
`
`
`
`DECISION
`Joint Motion to Terminate Proceeding with Respect to American Express;
`Joint Request to File Settlement Agreement as Business Confidential
`Information
`35 U.S.C. § 327, 37 C.F.R. § 42.74
`
`
`
`
`
`CBM2015-00098
`Patent 5,940,510
`
`
`On October 14, 2015, Petitioners American Express Company and
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`American Express Travel Related Services Company (collectively,
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`“American Express”) and Patent Owner Maxim Integrated Products, Inc.
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`(“Maxim”) filed a joint motion to terminate the proceeding with respect to
`
`American Express. Paper 21 (“Mot.”). Along with the motion, American
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`Express and Maxim filed what they represent to be a “true and correct” copy
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`of their Settlement Agreement, in accordance with 37 C.F.R. § 42.74(b).
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`Ex. 1020; Mot. 3. The parties also submitted a joint request to file the
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`Settlement Agreement as business confidential information, pursuant to
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`37 C.F.R. § 42.74(c). Paper 22. For the reasons set forth below, the Motion
`
`and Request are granted.
`
`Under 35 U.S.C. § 327(a), an instituted covered business method
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`patent review “shall be terminated with respect to any petitioner upon the
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`joint request of the petitioner and the patent owner, unless the Office has
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`decided the merits of the proceeding before the request for termination is
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`filed.” 35 U.S.C. § 327(a); see Leahy-Smith America Invents Act (“AIA”),
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`Pub. L. No. 112-29, § 18(a)(1), 125 Stat. 284, 331 (2011) (stating that
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`chapter 32 of title 35, United States Code, which governs post-grant reviews,
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`is applicable to covered business method patent reviews with the exception
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`of 35 U.S.C. § 321(c), 35 U.S.C. § 325(b), (e)(2), (f)). We instituted trial in
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`this proceeding less than one month before American Express and Maxim
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`filed the present Motion. As a result, the Board has not yet decided the
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`merits of the proceeding.
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`Upon consideration of the facts before us, we determine that it is
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`appropriate to terminate this proceeding with respect to American Express.
`
`See 35 U.S.C. § 327(a); 37 C.F.R. § 42.74(b). We note that termination of
`
`
`
`2
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`
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`CBM2015-00098
`Patent 5,940,510
`
`American Express’s involvement in this proceeding does not terminate the
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`proceeding, because Compass Bank, Discover Financial Services, Discover
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`Bank, Discover Products Inc., and State Farm Mutual Automobile Insurance
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`Company remain as petitioners. See Mot. 2 & n.1.
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`Turning to the joint request to file the Settlement Agreement as
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`business confidential information, we determine that American Express and
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`Maxim have complied with the requirements of 37 C.F.R. § 42.74(c) to have
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`their Settlement Agreement treated as business confidential information that
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`is kept separate from the files of the patent-at-issue. Accordingly, the
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`Agreement shall be made available only to a government agency on written
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`request to the Board or to any other person upon a showing of good cause
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`and compliance with the other requirements of 37 C.F.R. § 42.74(c)(2).
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`For the foregoing reasons, it is:
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`ORDER
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`ORDERED that the Motion to Terminate Proceeding with Respect to
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`American Express Company and American Express Travel Related Services
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`Company, Inc. Pursuant to 35 U.S.C. § 327 (Paper 21) is granted;
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`FURTHER ORDERED that the proceeding continues with Compass
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`Bank, Discover Financial Services, Discover Bank, Discover Products Inc.,
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`and State Farm Mutual Automobile Insurance Company as petitioners;
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`FURTHER ORDERED that any subsequent papers filed in this case
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`should not include American Express Company and American Express
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`Travel Related Services Company, Inc. in the caption; and
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`FURTHER ORDERED that the Request to File Settlement Agreement
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`as Business Confidential Information Under 35 U.S.C. § 327(b) (Paper 22)
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`is granted.
`
`
`
`3
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`
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`CBM2015-00098
`Patent 5,940,510
`
`PETITIONER:
`
`David Tennant
`dtennant@whitecase.com
`
`William Long
`blong@mckennalong.com
`
`
`
`PATENT OWNER:
`
`Kenneth Weatherwax
`Weatherwax@lowensteinweatherwax.com
`
`Parham Hendifar
`hendifar@lowensteinweatherwax.com
`
`
`
`
`4