`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`AMERICAN EXPRESS COMPANY, AMERICAN EXPRESS TRAVEL
`RELATED SERVICES COMPANY, INC., COMPASS BANK, DISCOVER
`FINANCIAL SERVICES, DISCOVER BANK, DISCOVER PRODUCTS INC.,
`AND STATE FARM MUTUAL AUTOMOBILE INSURANCE COMPANY,
`Petitioner,
`
`v.
`
`MAXIM INTEGRATED PRODUCTS, INC.,
`Patent Owner.
`
`Case CBM2015-00102
`Patent No. 6,237,095
`
`AMERICAN EXPRESS COMPANY,
`AMERICAN EXPRESS TRAVEL RELATED SERVICES COMPANY, INC.,
`AND MAXIM INTEGRATED PRODUCTS, INC.’S
`JOINT REQUEST TO FILE SETTLEMENT AGREEMENT AS BUSINESS
`CONFIDENTIAL INFORMATION UNDER 35 U.S.C. § 327(b)
`
`
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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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`CBM2015-00102
`U.S. Patent No. 6,237,095
`Joint Request to File Settlement Agreement
`as Business Confidential Information
`
`I.
`
`Introduction
`
`
`
`American Express Company and American Express Travel Related Services
`
`Company, Inc. (collectively, “American Express”) and Patent Owner Maxim
`
`Integrated Products, Inc. (“Maxim”) (collectively, “the Parties”) have executed a
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`Settlement and Patent Cross-Licensing Agreement (“Agreement”) regarding U.S.
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`Patent No. 6,237,095. Pursuant to 35 U.S.C. § 327(b), the Parties jointly request
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`to file the Agreement between American Express and Maxim (Ex.1022), as
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`referenced in their Joint Motion to Terminate as to American Express filed
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`concurrently herewith,1 as business confidential information, which shall be kept
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`separate from the file of the involved patent and be made available only to Federal
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`Government agencies on written request or to any other person on a showing of
`
`good cause.
`
`II.
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`Statement of Precise Relief Requested
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`
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`The Parties jointly request that the Board treat the Agreement (Ex. 1022) as
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`business confidential information and keep it separate from the file of the involved
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`patent. The Parties further request that the Board to not make the Agreement
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`available to any third-party, except as provided for in 35 U.S.C. § 327(b) and 37
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`C.F.R. § 42.74(c).
`
`1 Petitioner constituents have consented to waive the requirement of service of a
`copy of the settlement agreement in this case.
`
`
`
`
`
`
`CBM2015-00102
`U.S. Patent No. 6,237,095
`Joint Request to File Settlement Agreement
`as Business Confidential Information
`III. Statement of Reasons for the Relief Requested
`
`
`
`The Parties have settled their dispute involving U.S. Patent No. 6,237,095.
`
`The Agreement provides that its terms are confidential and the Parties have treated
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`them as such. The Parties have filed, concurrently herewith, a true and correct copy
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`of the Agreement (Ex.1022), as required by 35 U.S.C. § 327(b).
`
`
`/Kenneth J. Weatherwax/
`
`Kenneth J. Weatherwax, Reg. 54,528
`Parham Hendifar, Reg. 71,470
`
`LOWENSTEIN & WEATHERWAX LLP
`1880 Century Park East, Suite 815
`Los Angeles, CA 90067
`(310) 307-4503
`(310) 307-4509 (fax)
`weatherwax@lowensteinweatherwax.com
`
`Counsel for Patent Owner
`Maxim Integrated Products, Inc
`
`Respectfully submitted,
`
`
`
`
`/David M. Tennant/
`David M. Tennant, Reg. No. 48362
`
`WHITE & CASE, LLP
`701 13th St. NW, #600
`Washington, DC 20005
`(202) 626-3684
`(202) 639-9355 (fax)
`dtennant@whitecase.com
`
`Counsel for Petitioner American
`Express Company and American
`Express Travel Related Services
`Company, Inc.
`
`Date: October 14, 2015
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