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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`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,
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`v.
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`MAXIM INTEGRATED PRODUCTS, INC.,
`Patent Owner.
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`Case CBM2015-00102
`Patent No. 6,237,095
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`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
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`Mail Stop: Patent Board
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`EXHIBIT LIST
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`Exhibit 2001
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`Exhibit 2002
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`Order of Dismissal With Prejudice, Maxim Integrated
`Prods., Inc. v. Navy Fed. Credit Union, Civil Action
`No. 5:14-cv 01032-XR (W.D. Tex. May. 18, 2015)
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`Confidential Settlement and License Agreement
`between Maxim Integrated Products and Navy Federal
`Credit Union
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`Pursuant to 35 U.S.C. § 327(a), Petitioner constituent Navy Federal Credit
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`Union (“NFCU”) and Patent Owner Maxim Integrated Products, Inc. (“Maxim”)
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`jointly request termination of NFCU’s participation in this case, No. CBM2015-
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`00102.1
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`This case is in the preliminary proceeding stage; no institution of a trial has
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`been made. NFCU and Maxim have settled their dispute with respect to the patent
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`at issue. NFCU and Maxim have submitted a joint stipulated motion to dismiss the
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`related matter in the District Court (see Petition § I.B) with prejudice as to NFCU
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`which was granted on May 18, 2015. A copy of the order of dismissal is filed
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`concurrently herewith as Exhibit 2001.
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`The parties’ settlement agreement has been made in writing, and a true and
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`correct copy is being filed concurrently herewith as Exhibit 2002 pursuant to 35
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`U.S.C. § 327(b), along with the parties’ joint request that the settlement agreement
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`be treated as business confidential information and be kept separate from the file of
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`the involved patent.
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`1NFCU is one of several petitioner constituents in this case. This motion is not
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`joined by, and does not affect the continued participation of, the other petitioner
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`constituents in the case.
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`1
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`Maxim joins the present Motion solely for purposes of terminating NFCU’s
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`participation going forward.
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`Therefore, NFCU and Maxim respectfully request termination of this case as
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`to NFCU.
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`Respectfully submitted,
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`/ Ozzie A. Farres /_____
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`Ozzie A. Farres
`Registration No. 43,606
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`HUNTON & WILLIAMS LLP
`2200 Pennsylvania Avenue, NW
`Washington, DC 20037
`(202) 955-1500
`(202) 778-2201 (fax)
`ofarres@hunton.com
`Counsel for Petitioner
`Navy Federal Credit Union
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`/Kenneth J. Weatherwax/ ____
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`Kenneth J. Weatherwax, Reg. 54,528
`Parham Hendifar, Reg. 71,470
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`LOWENSTEIN & WEATHERWAX LLP
`11400 W. Olympic Blvd., Suite 400
`Los Angeles, CA 90064
`(310) 307-4503
`(310) 307-4509 (fax)
`weatherwax@lowensteinweatherwax.com
`Counsel for Patent Owner
`Maxim Integrated Products, Inc.
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`Date: June 1, 2015
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`2
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that pursuant to agreement by
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`Petitioner and Patent Owner the following documents were served by electronic mail
`on June 1, 2015,
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`JOINT MOTION TO TERMINATE PROCEEDING WITH
`PURSUANT TO 35 U.S.C. § 327
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`JOINT REQUEST TO FILE SETTLEMENT AGREEMENT AS
`BUSINESS CONFIDENTIAL INFORMATION UNDER
`35 U.S.C. § 327(b)
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`Ex. 2001 ORDER OF DISMISSAL WITH PREJUDICE
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`The names and addresses of the parties being served are as follows:
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`William F. Long
`McKenna Long & Aldridge LLP
`blong@mckennalong.com
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`David M. Tennant
`White & Case LLP
`dtennant@whitecase.com
`WCAXPMaximCBMTeam@whitecase.com.
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`Pursuant to agreement by Petitioner and Patent Owner, Ex. 2002
`SETTLEMENT AGREEMENT was served on only the following party in order to
`preserve confidentiality.
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`Ozzie A. Farres
`Hunton & Williams LLP
`ofarres@hunton.com
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`Respectfully submitted,
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`/Kenneth J. Weatherwax/
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`Kenneth J. Weatherwax
`Registration No. 54,528
`Attorney for Patent Owner
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`Date: June 1, 2015
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