`Patent 6,105,013
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE
`
`THE PATENT TRIAL AND APPEAL BOARD
`
`COMPASS BANK, DISCOVER FINANCIAL SERVICES, DISCOVER BANK,
`DISCOVER PRODUCTS INC., AND STATE FARM MUTUAL AUTOMOBILE
`INSURANCE COMPANY
`Petitioner,
`v.
`
`MAXIM INTEGRATED PRODUCTS, INC.
`Petitioners.
`
`Case No. CBM2015-00101
`Patent No. 6,105,013
`
`COMPASS BANK AND MAXIM INTEGRATED PRODUCTS, INC.’S
`JOINT MOTION TO TERMINATE
`COMPASS BANK’S PARTICIPATION IN
`THIS CASE PURSUANT TO 35 U.S.C. § 327
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`
`
`Case CBM2015-00101
`Patent 6,105,013
`
`EXHIBIT LIST
`
`Exhibit 1023
`
`Order of Dismissal With Prejudice, Maxim Integrated
`Prods., Inc. v. Compass Bank d/b/a BBVA Compass,
`Civil Action No. 5:14-cv 01028-XR (W.D. Tex.
`November 23, 2015)
`
`Exhibit 1024
`
`Confidential Settlement and License Agreement
`between Maxim Integrated Products, Inc. and
`Compass Bank d/b/a BBVA Compass
`
`
`
`Case CBM2015-00101
`Patent 6,105,013
`
`Pursuant to 35 U.S.C. § 327(a), Petitioner constituent Compass Bank
`
`(“BBVA Compass”) and Patent Owner Maxim Integrated Products, Inc.
`
`(“Maxim”) jointly request termination of BBVA Compass’s participation in this
`
`case, No. CBM2015-00101.1
`
`BBVA Compass and Maxim have settled their dispute with respect to the
`
`patent at issue. BBVA Compass and Maxim have also submitted a joint stipulated
`
`motion to dismiss the related matter in the District Court (see Petition § I.B.) with
`
`prejudice as to BBVA Compass which was granted on November 23, 2015. A
`
`copy of the order of dismissal is filed concurrently herewith as Exhibit 1023.
`
`The parties’ settlement agreement has been made in writing, and a true and
`
`correct copy is being filed concurrently herewith as Exhibit 1024 pursuant to 35
`
`U.S.C.§ 327(b), along with the parties’ joint request that the settlement agreement
`
`be treated as business confidential information and be kept separate from the file of
`
`the involved patent.
`
`Maxim joins the present Motion solely for purposes of terminating BBVA
`
`Compass’s participation going forward.
`
`1 Compass Bank is one of several petitioner constituents in this case. This motion
`
`is not joined by, and does not affect the continued participation or termination of,
`
`the other petitioner constituents in this case.
`
`1
`
`
`
`Therefore, BBVA Compass and Maxim respectfully request termination of
`
`Case CBM2015-00101
`Patent 6,105,013
`
`this case as to BBVA Compass.
`
`Date: November 24, 2015
`
`Respectfully submitted,
`
`/William F. Long/
`William F. Long, Reg. No. 51,967
`DENTONS US LLP
`303 Peachtree Street, NE
`Suite 5300
`Atlanta, Georgia 30308
`Telephone: (404) 527-4000
`Facsimile: (404) 527-4198
`Email: bill.long@dentons.com
`
`/Kenneth J. Weatherwax/
`Kenneth J. Weatherwax, Reg. No. 54,528
`LOWENSTEIN & WEATHERWAX LLP
`1880 Century Park East
`Suite 815
`Los Angeles, California 90067
`Telephone: (310) 307-4503
`Facsimile: (310) 307-4509
`Email:
`weatherwax@lowensteinweatherwax.com
`
`Counsel for Petitioner Constituent
`Compass Bank, d/b/a BBVA Compass
`
`Counsel for Patent Owner
`Maxim Integrated Products, Inc.
`
`
`
`Case CBM2015-00101
`Patent 6,105,013
`
`CERTIFICATE OF SERVICE
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned, on behalf of the
`Petitioners and Patent Owner, hereby certifies that a copy of the following
`documents are being served by electronic mail on November 24, 2015:
`
`JOINT MOTION TO TERMINATE CASE PURSUANT TO 35 U.S.C. § 327
`
`JOINT REQUEST TO FILE SETTLEMENT AGREEMENT AS BUSINESS
`CONFIDENTIAL INFORMATION UNDER 35 U.S.C. § 327
`
`EX. 1023 ORDER OF DISMISSAL WITH PREJUDICE
`
`The name and address of the party being served is as follows:
`
`Truman Fenton
`Slayden Grubert Beard PLLC
`tfenton@sgbfirm.com
`
`Pursuant to agreement by Petitioner and Patent Owner,
`
`Ex. 1024 SETTLEMENT AGREEMENT
`
`was served by electronic mail today on only the following party in order to
`preserve confidentiality:
`
`Kenneth J. Weatherwax
`LOWENSTEIN & WEATHERWAX LLP
`weatherwax@lowensteinweatherwax.com
`
`Date: November 24, 2015
`
`Respectfully submitted,
`
`/William F. Long/
`William F. Long, Reg. No. 51,967
`DENTONS US LLP