`Tel: 571-272-7822
`
`Paper 10
`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 CBM2015-00102
`Patent 6,237,095
`
`
`
`
`
`
`
`
`
`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
`
`
`
`CBM2015-00102
`Patent 6,237,095
`
`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
`
`
`
`CBM2015-00102
`Patent 6,237,095
`
`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
`
`
`
`CBM2015-00102
`Patent 6,237,095
`
`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