`Tel: 571-272-7822
`
`Paper 12
`Entered: June 26, 2015
`
`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
`
`
`
`
`
`
`
`
`
`Before TREVOR M. JEFFERSON, MITCHELL G. WEATHERLY, and
`KERRY BEGLEY, Administrative Patent Judges.
`
`WEATHERLY, Administrative Patent Judge.
`
`ORDER
`Dismissing Navy Federal Credit Union from the Case
`37 C.F.R. §§ 42.5(a), 42.71(a)
`
`On June 1, 2015, Navy Federal Credit Union (“NFCU”) and Maxim
`
`Integrated Products, Inc. (“Maxim”) filed a joint motion to terminate this
`
`
`
`CBM2015-00101
`Patent 6,105,013
`
`preliminary proceeding with respect to NFCU pursuant to 35 U.S.C.
`
`§ 327(a).1 Paper 9 (the “Joint Motion”). With the Joint Motion, NFCU and
`
`Maxim also filed a request to maintain as business confidential information a
`
`written settlement agreement reflecting the resolution of their dispute over
`
`the patent at issue. Paper 10, 1; see also Ex. 2002 (a copy of the settlement
`
`agreement).
`
`The Joint Motion was filed without prior authorization from the Board
`
`and thus violates 37 C.F.R. § 42.20(b). Nevertheless, in the interests of
`
`justice and pursuant to 37 C.F.R. § 42.5(b), we waive the authorization
`
`requirement of 37 C.F.R. § 42.20(b) and consider the Joint Motion on its
`
`merits.
`
`The time period for Maxim to file a preliminary patent owner’s
`
`response has not yet expired, and we, therefore, have not instituted trial.
`
`Thus, this preliminary proceeding is in its initial stages. Maxim and NFCU
`
`indicate that they have agreed to resolve all disputes between them related to
`
`the challenged patent. Joint Motion at 1. Under these circumstances, we
`
`determine that it is appropriate to dismiss NFCU as a party from the petition.
`
`See 37 C.F.R. §§ 42.5(a), 42.71(a). This paper does not constitute a final
`
`written decision pursuant to 35 U.S.C. § 328(a).
`
`
`1 We note that 35 U.S.C. § 327(a) does not authorize us to terminate a
`proceeding with respect to a petitioner until after a review is instituted. See
`35 U.S.C. § 327(a) (stating a “post-grant review instituted under this chapter
`shall be terminated”) (emphasis added). Nevertheless, we consider the Joint
`Motion as seeking termination of the preliminary proceeding between NFCU
`and Maxim and dismissal of NFCU as a party, and we determine that we
`have authority to grant such relief pursuant to 37 C.F.R. §§ 42.5(a) and
`42.71(a).
`
`2
`
`
`
`CBM2015-00101
`Patent 6,105,013
`
`Accordingly, it is
`
`ORDERED that Navy Federal Credit Union and Maxim Integrated
`
`Products, Inc.’s Joint Motion to Terminate Navy Federal Credit Union’s
`
`Participation in this Case Pursuant to 35 U.S.C. § 327 is granted;
`
`FURTHER ORDERED that Navy Federal Credit Union is dismissed
`
`as a party from this case; and
`
`FURTHER ORDERED that Navy Federal Credit Union and Maxim
`
`Integrated Products, Inc.’s Joint Request to File Settlement Agreement as
`
`Business Confidential Information under 35 U.S.C. § 327(b) is granted.
`
`3
`
`
`
`CBM2015-00101
`Patent 6,105,013
`
`PETITIONER:
`
`William F. Long
`MCKENNA LONG & ALDRIDGE LLP
`blong@mckennalong.com
`
`David M. Tennant
`WHITE & CASE LLP
`dtennant@whitecase.com
`
`PATENT OWNER:
`
`Kenneth J. Weatherwax
`Parham Hendifar
`LOWENSTEIN & WEATHERWAX LLP
`weatherwax@lowensteinweatherwax.com
`hendifar@lowensteinweatherwax.com
`
`4
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
