Case CBM2015-00101
`Patent 6,105,013
`Attorney Docket No. 150326-002USCBM
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`COMPASS BANK, AMERICAN EXPRESS COMPANY, AMERICAN
`EXPRESS TRAVEL RELATED SERVICES COMPANY, INC.,
`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
`____________
`
`Case CBM2015-00101
`Patent 6,105,013
`____________
`PATENT OWNER MAXIM INTEGRATED PRODUCTS, INC.’S
`MANDATORY NOTICES
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`Patent 6,105,013
`Attorney Docket No. 150326-002USCBM
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`COMPASS BANK, AMERICAN EXPRESS COMPANY, AMERICAN
`EXPRESS TRAVEL RELATED SERVICES COMPANY, INC.,
`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
`____________
`
`Case CBM2015-00101
`Patent 6,105,013
`____________
`PATENT OWNER MAXIM INTEGRATED PRODUCTS, INC.’S
`MANDATORY NOTICES
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`Case CBM2015-00101
`Patent 6,105,013
`Attorney Docket No. 150326-002USCBM
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`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`
`Pursuant to 37 C.F.R. § 42.8, Patent Owner Maxim Integrated Products, Inc.
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`submits the following Mandatory Notices.
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`1. Real Party-In-Interest
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`In accordance with 37 C.F.R. § 42.8(b)(1), Patent Owner identifies the real
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`party-in-interest as Maxim Integrated Products, Inc.
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`2. Related Matters
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`In accordance with 37 C.F.R. § 42.8(b)(2), Patent Owner identifies the
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`following related current and former proceedings.
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`I. Current Proceedings Involving The Patent-At-Issue.
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`a. In re Maxim Integrated Prods., Inc., MDL No. 2354, No. 2:12-mc-
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`00244;
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`b. As transferred for MDL purposes:
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` Branch Banking & Trust Co. v. Maxim Integrated Prods., Inc., No.
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`2:12-cv-00945-JFC
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`c. Maxim Integrated Prods., Inc. v. USAA Fed. Sav. Bank, 5:14-cv-01031-
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`XR (W.D. Tex) (filed November 19, 2014);
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`1
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`Case CBM2015-00101
`Patent 6,105,013
`Attorney Docket No. 150326-002USCBM
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`d. Maxim Integrated Prods., Inc. v. Am. Express Co., 5:14-cv-01027-XR
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`(W.D. Tex) (filed November 19, 2014);
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`e. Maxim Integrated Prods., Inc. v. Navy Fed. Credit Union , 5:14-cv-
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`01032-XR (W.D. Tex) (filed November 19, 2014);
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`f. Maxim Integrated Prods., Inc. v. Discover Fin. Servs., 5:14-cv-01029-
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`XR (W.D. Tex) (filed November 19, 2014);
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`g. Maxim Integrated Prods., Inc. v. Compass Bank, d/b/a BBVA Compass,
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`5:14-cv-01028-XR (W.D. Tex) (filed November 19, 2014);
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`h. Maxim Integrated Prods., Inc. v. State Farm Mutual Auto. Ins. Co., 5:14-
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`cv-01030 (W.D. Tex) (filed November 19, 2014).
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`i. Maxim Integrated Prods., Inc. v. Santander Bank, NA, 1:15-cv-02169
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`(S.D.N.Y) (filed March 23, 2015).
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`j. Maxim Integrated Prods., Inc. v. M&T Bank Corp., 1:15-cv-02167
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`(S.D.N.Y) (filed March 23, 2015).
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`k. Maxim Integrated Prods., Inc. v. HBSC Bank USA, Nat’l Ass’n, 1:15-cv-
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`02168 (S.D.N.Y) (filed March 23, 2015).
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`//
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`//
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`//
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`2
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`Case CBM2015-00101
`Patent 6,105,013
`Attorney Docket No. 150326-002USCBM
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`II. Former Proceedings Involving The Patent-At-Issue.
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`
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`a. PNC Bank N.A. v. Maxim Integrated Prods., Inc., Covered Business
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`Method Patent Review, Case No. CBM2014-00040, of US 6,105,013
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`(petition for institution of review denied June 3, 2014, paper 19);
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`b. JPMorgan Chase & Co. v. Maxim Integrated Prods., Inc., Covered
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`Business Method Patent Review, Case No. CBM2014-00178, of US
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`6,105,013 (review terminated on February 26, 2015, paper 14);
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`c. Maxim Integrated Prods., Inc. v. Branch Banking & Trust Co., No. 2013-
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`1495 (Fed. Cir.) (judgment affirmed March 10, 2014, Dkt. 51);
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`d. Maxim Integrated Prods., Inc. v. Branch Banking & Trust Co., 4:12-cv-
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`00369-RAS (E.D. Tex) (judgment affirmed March 10, 2014, Dkt. 33);
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`e. As transferred for MDL purposes:
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` Maxim Integrated Prods., Inc. v. JP Morgan Chase & Co., No. 2:12-
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`cv- 01641-JFC (dismissed and terminated February 26, 2015, Dkt.
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`986)
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` PNC Fin. Servs. Grp., Inc. v. Maxim Integrated Prods., Inc., No. 2:12-
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`cv-00089-JFC (dismissed and terminated May 29, 2014, Dkt. 844)
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` KeyCorp v. Maxim Integrated Prods., Inc., No. 2:12-cv-00860-JFC
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`(dismissed and terminated August 20, 2013, Dkt. 648)
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`3
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`Case CBM2015-00101
`Patent 6,105,013
`Attorney Docket No. 150326-002USCBM
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` Vanguard Grp., Inc. v. Maxim Integrated Prods., Inc., No. 2:12-cv-
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`00862-JFC (dismissed and terminated February 19, 2014, Dkt. 773)
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` Jack Henry & Assocs., Inc. v. Maxim Integrated Prods., Inc., No.
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`2:12-cv-00863-JFC (dismissed and terminated February 20, 2014,
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`Dkt. 775)
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` Maxim Integrated Prods., Inc. v. Comerica Inc., No. 2:12-cv-00869-
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`JFC (dismissed and terminated August 20, 2014, Dkt. 887)
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` Fidelity Brokerage Servs. LLC v. Maxim Integrated Prods., Inc., No.
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`2:12-cv-00871-JFC (dismissed and terminated May 16, 2014, Dkt.
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`840)
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` Maxim Integrated Prods., Inc. v. First United Bank & Trust Co., No.
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`2:12-cv-00876-JFC (dismissed and terminated February 19, 2014,
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`Dkt. 774)
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` Maxim Integrated Prods., Inc. v. Starbucks Corp., No. 2:12-cv-00877-
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`JFC (dismissed and terminated April 7, 2014, Dkt. 798)
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` Maxim Integrated Prods., Inc. v. Expedia, Inc., No. 2:12-cv-00878-
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`JFC (dismissed and terminated July 10, 2014, Dkt. 873)
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` Maxim Integrated Prods., Inc. v. Capital One Fin. Corp., No. 2:12-cv-
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`00879-JFC (dismissed and terminated September 12, 2013, Dkt. 738)
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`Case CBM2015-00101
`Patent 6,105,013
`Attorney Docket No. 150326-002USCBM
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` Maxim Integrated Prods., Inc. v. Bank of the West, No. 2:12-cv-
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`00880-JFC (dismissed as to all pleaded claims; one motion may still
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`be pending, September 24, 2014, Minute Entry)
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` Maxim Integrated Prods., Inc. v. Groupon, Inc., No. 2:12-cv-00881-
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`JFC (dismissed and terminated August 20, 2014, Dkt. 886)
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` Maxim Integrated Prods., Inc. v. Union Bank, N.A., No. 2:12-cv-
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`00882-JFC (dismissed and terminated February 6, 2014, Dkt. 763)
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` Maxim Integrated Prods., Inc. v. Southwest Airlines, Co., No. 2:12-
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`cv-00883-JFC (dismissed and terminated May 5, 2014, Dkt. 836)
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` Chipotle Mexican Grill, Inc. v. Maxim Integrated Prods., Inc., No.
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`2:12-cv-00887-JFC (dismissed and terminated August 5, 2014, Dkt.
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`882)
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` Maxim Integrated Prods., Inc. v. QVC, Inc., No. 2:12-cv-00891-JFC
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`(dismissed and terminated March 14, 2014, Dkt. 789)
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` Clairmail Inc. v. Maxim Integrated Prods., Inc., No. 2:12-cv-00923-
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`NBF (dismissed and terminated August 31, 2012, Dkt. 146)
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` BMO Harris Bank Nat’l Ass’n v. Maxim Integrated Prods., Inc., No.
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`2:12-cv-01538-JFC (dismissed and terminated October 8, 2014, Dkt.
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`914)
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`Case CBM2015-00101
`Patent 6,105,013
`Attorney Docket No. 150326-002USCBM
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` Deutsche Bank AG v. Maxim Integrated Prods., Inc., No. 2:12-cv-
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`01604-JFC (dismissed and terminated September 25, 2014, Dkt. 901)
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` Maxim Integrated Prods., Inc. v. Citigroup, Inc., No. 2:12-cv-01628-
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`JFC (dismissed and terminated May 22, 2014, Dkt. 800)
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` Maxim Integrated Prods., Inc. v. Target Corp., No. 2:12-cv-01629-
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`JFC (dismissed and terminated April 23, 2014, Dkt. 821)
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` Maxim Integrated Prods., Inc. v. Wells Fargo & Co., No. 2:12-cv-
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`01639-JFC (dismissed and terminated May 1, 2014, Dkt. 831)
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` Maxim Integrated Prods., Inc. v. Bank of Am. Corp., No. 2:12-cv-
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`01640-JFC (dismissed and terminated June 19, 2014, Dkt. 861)
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` Maxim Integrated Prods., Inc. v. U.S. Bancorp, No. 2:12-cv-01642-
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`JFC (dismissed and terminated August 20, 2014, Dkt. 888)
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` Maxim Integrated Prods., Inc. v. Walmart Stores, Inc., No. 2:12-cv-
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`01643-JFC (dismissed and terminated February 6, 2014, Dkt. 764).
`
`//
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`//
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`//
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`//
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`//
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`Case CBM2015-00101
`Patent 6,105,013
`Attorney Docket No. 150326-002USCBM
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`III. Proceedings Involving Other U.S. Patents.
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`
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`The patent-at-issue, US Patent No. 6,105,013, is a continuation of application
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`No. 08/594,983, which claims priority to provisional application No. 60/004,510,
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`to which US Patent No. 6,237,095 also claims priority. US 6,237,095 is a
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`divisional from application No. 08/595,014, from which the US Patent No.
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`5,805,702 issued. US Patent No. 5,940,510 contains related subject matter to and
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`incorporates by reference application No. 08/595,014, from which the application
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`issuing as US 6,237,095 was a divisional. US Patent No. 5,949,880 is a divisional
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`from application no. 08/594,975, from which US 5,940,510 issued. Numerous
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`related proceedings identified above involving the ’013 Patent also involve one or
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`all of these patents.
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`In an excess of caution, Patent Owner identifies below the following
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`additional current and former proceedings not directly involving the ’013 Patent
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`but relating to one or more of US 5,805,702, US 5,940,510, US 5,949,880, and US
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`6,237,095. As noted in connection with the individual proceedings, several of the
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`identified proceedings have been dismissed.
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`a. Ex Parte Reexamination, Control No. 90/013,063, of USP 5,940,510
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`(Patent Owner responded to First Office Action on September 3, 2014);
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`7
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`Case CBM2015-00101
`Patent 6,105,013
`Attorney Docket No. 150326-002USCBM
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`b. Am. Express Co. v. Maxim Integrated Prods., Inc., Covered Business
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`Method Patent Review, Case No. CBM2015-00098, of US 5,940,510
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`(accorded filing date of March 6, 2015);
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`c. Compass Bank v. Maxim Integrated Prods., Inc., Covered Business
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`Method Patent Review, Case No. CBM2015-00102, of US 6,237,095
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`(petition dated March 30, 2015);
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`d. JPMorgan Chase & Co. v. Maxim Integrated Prods., Inc., Covered
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`Business Method Patent Review, Case No. CBM2014-00177, of US
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`6,237,095 (review terminated on February 26, 2015, paper 14);JP
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`Morgan Chase & Co. v. Maxim Integrated Prods., Inc., Covered
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`Business Method Patent Review, Case No. CBM2014-00179, of US
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`5,940,510 (review terminated on February 27, 2015, paper 15);
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`e. JP Morgan Chase & Co. v. Maxim Integrated Prods., Inc., Covered
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`Business Method Patent Review, Case No. CBM2014-00180, of US
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`5,949,880 (review terminated on February 27, 2015, paper 18); PNC
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`Bank N.A. v. Maxim Integrated Prods., Inc., Covered Business Method
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`Patent Review, Case No. CBM2014-00038, of US 5,940,510 (petition for
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`institution of review denied June 3, 2014, paper 19);
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`8
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`Case CBM2015-00101
`Patent 6,105,013
`Attorney Docket No. 150326-002USCBM
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`f. PNC Bank N.A. et al. v. Maxim Integrated Prods., Inc., Covered Business
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`Method Patent Review, Case No. CBM2014-00039, of US 5,949,880
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`(petition for institution of review denied June 3, 2014, paper 20);
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`g. PNC Bank N.A. v. Maxim Integrated Prods., Inc., Covered Business
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`Method Patent Review, Case No. CBM2014-00041, of US 6,237,095
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`(petition for institution of review denied June 3, 2014, paper 19);
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`h. Branch Banking & Trust Co. v. Maxim Integrated Prods., Inc., Covered
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`Business Method Patent Review, Case No. CBM2013-00059, of US
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`5,949,880 (petition for institution of review denied March 20, 2014,
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`paper 12);
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`i. Groupon Inc. v. Maxim Integrated Products, Inc., Covered Business
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`Method Patent Review, Case No. CBM2014-00090, of US 5,805,702
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`(terminated August 20, 2014, paper 12).
`
`//
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`//
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`//
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`Case CBM2015-00101
`Patent 6,105,013
`Attorney Docket No. 150326-002USCBM
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`3. Lead and Back-Up Counsel
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`In accordance with 37 C.F.R. § 42.8(b)(3), Patent Owner identifies Kenneth
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`J. Weatherwax as lead counsel and Parham Hendifar as back-up counsel:
`
`Kenneth J. Weatherwax, Lead Counsel
`USPTO Reg. No. 54,528
`GOLDBERG, LOWENSTEIN & WEATHERWAX LLP
`11400 West Olympic Boulevard, Suite 400
`Los Angeles, California 90064
`Telephone: (310) 307-4503
`Facsimile: (310) 307-4509
`Email: weatherwax@glwllp.com
`
`Parham Hendifar, Back-Up Counsel
`USPTO Reg. No. 71,470
`GOLDBERG, LOWENSTEIN & WEATHERWAX LLP
`11400 West Olympic Boulevard, Suite 400
`Los Angeles, California 90064
`Telephone: (310) 307-4510
`Facsimile: (310) 307-4509
`Email: hendifar@glwllp.com
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`Case CBM2015-00101
`Patent 6,105,013
`Attorney Docket No. 150326-002USCBM
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`
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`4. Service Information
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`In accordance with 37 C.F.R. § 42.8(b)(4), Patent Owner identifies the
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`following service information:
`
`Kenneth J. Weatherwax
`GOLDBERG, LOWENSTEIN & WEATHERWAX LLP
`11400 West Olympic Boulevard, Suite 400
`Los Angeles, California 90064
`
`Respectfully submitted,
`
`____/ Kenneth J. Weatherwax /_________
`Kenneth J. Weatherwax, Reg. No. 54,528
`Goldberg, Lowenstein & Weatherwax LLP
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`Date: April 13, 2015
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`Case CBM2015-00101
`Patent 6,105,013
`Attorney Docket No. 150326-002USCBM
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`
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`CERTIFICATE OF SERVICE
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned, on behalf of the Patent
`Owner, hereby certifies that a copy of the following document is being served on
`the Petitioner by Priority Mail Express® or by means at least as fast as Priority
`Mail Express® on April 13, 2015:
`PATENT OWNER MAXIM INTEGRATED PRODUCTS, INC.’S
`MANDATORY NOTICES
`POWER OF ATTORNEY
`The names and address of the parties being served are as follows:
`
`
`
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`Lead Counsel
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`
` William F. Long
` McKenna Long & Aldridge LLP
` 303 Peachtree St. NE, Ste. 5300
`Atlanta, Georgia 30308
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`Back-up Counsel
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`
`
`David M. Tennant
`White & Case LLP
`701 13th St., NW
`Washington, DC 20005
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`
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`Respectfully submitted,
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`____/ Kenneth J. Weatherwax /______
`
`Kenneth J. Weatherwax
`Registration No. 54,528
`Attorney for Patent Owner
`
`Date: April 13, 2015
`
`
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