`571.272.7822
`
`Paper No. 36
`Filed: December 3, 2015
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`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 the Discover Entities’ Participation in This Case;
`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 November 24, 2015, Petitioners Discover Financial Services,
`Discover Bank, and Discover Products Inc. (collectively, “Discover”) and
`Patent Owner Maxim Integrated Products, Inc. (“Maxim”) filed a joint
`motion to terminate Discover’s participation in this proceeding. Paper 32
`(“Mot.”). Along with the motion, Discover and Maxim filed what they
`represent to be a “true and correct” copy of their Settlement Agreement, in
`accordance with 37 C.F.R. § 42.74(b). Ex. 2007; Mot. 1. The parties also
`submitted a joint request to file the Settlement Agreement as business
`confidential information, pursuant to 35 U.S.C. § 327(b). Paper 33. For the
`reasons set forth below, the Motion and Request are granted.
`Under 35 U.S.C. § 327(a), an instituted covered business method
`patent review “shall be terminated with respect to any petitioner upon the
`joint request of the petitioner and the patent owner, unless the Office has
`decided the merits of the proceeding before the request for termination is
`filed.” 35 U.S.C. § 327(a); see Leahy-Smith America Invents Act (“AIA”),
`Pub. L. No. 112-29, § 18(a)(1), 125 Stat. 284, 329 (2011) (stating that
`chapter 32 of title 35, United States Code, which governs post-grant reviews,
`is applicable to covered business method patent reviews with the exception
`of 35 U.S.C. § 321(c), 35 U.S.C. § 325(b), (e)(2), (f)). We recently
`instituted trial in this proceeding. Maxim has not filed a Response to the
`Petition, Petitioner has not filed a Reply, and no oral hearing has been held.
`As a result, the Board has not yet decided the merits of the proceeding.
`Upon consideration of the facts before us, we determine that it is
`appropriate to terminate this proceeding with respect to Discover. See
`35 U.S.C. § 327(a); 37 C.F.R. § 42.74(b). We note that termination of
`Discover’s involvement in this proceeding does not terminate the
`
`
`
`2
`
`
`
`CBM2015-00098
`Patent 5,940,510
`
`proceeding, because State Farm Mutual Automobile Insurance Company
`remains as a petitioner. See Mot. 1 n.1.
`Turning to the joint request to file the Settlement Agreement as
`business confidential information, we determine that Discover and Maxim
`have complied with the requirements of 37 C.F.R. § 42.74(c) to have their
`Settlement Agreement treated as business confidential information that is
`kept separate from the files of the patent-at-issue. Accordingly, the
`Agreement shall be made available only to a government agency on written
`request to the Board or to any other person upon a showing of good cause
`and compliance with the other requirements of 37 C.F.R. § 42.74(c)(2).
`ORDER
`For the foregoing reasons, it is:
`ORDERED that the Joint Motion to Terminate the Discover Entities’
`Participation in this Case Pursuant to 35 U.S.C. § 327 (Paper 32) is granted;
`FURTHER ORDERED that the proceeding continues with State Farm
`Mutual Automobile Insurance Company as petitioner;
`FURTHER ORDERED that any subsequent papers filed in this case
`should not include Discover Financial Services, Discover Bank, and
`Discover Products Inc. in the caption; and
`FURTHER ORDERED that the Joint Request to File Settlement
`Agreement as Business Confidential Information Under 35 U.S.C. § 327(b)
`(Paper 33) is granted.
`
`
`
`3
`
`
`
`CBM2015-00098
`Patent 5,940,510
`
`PETITIONER:
`
`William F. Long
`DENTONS US LLP
`bill.long@dentons.com
`
`Truman Fenton
`SLAYDEN GRUBERT BEARD PLLC
`tfenton@sgbfirm.com
`
`PATENT OWNER:
`
`Kenneth J. Weatherwax
`Nathan Lowenstein
`LOWENSTEIN & WEATHERWAX LLP
`weatherwax@lowensteinweatherwax.com
`lowenstein@lowensteinweatherwax.com
`
`
`
`4
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