`
`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.
`
`Patent Owner
`
`____________________________
`
`Case No. CBM2015-00102
`
`Patent No. 6,237,095 B1
`
`
`
`DISCOVER FINANCIAL SERVICES’, DISCOVER BANK’S, DISCOVER
`PRODUCTS INC.’S, AND MAXIM INTEGRATED PRODUCTS, INC.’S
`JOINT MOTION TO TERMINATE THE DISCOVER ENTITIES’
`PARTICIPATION IN THIS CASE PURSUANT TO 35 U.S.C. § 327
`
`US.103402341.01
`
`
`
`
`
`EXHIBIT LIST
`
`Exhibit 2001
`
`Exhibit 2002
`
`Exhibit 2003
`
`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)
`
`Confidential Settlement Agreement between Maxim
`Integrated Products and Navy Federal Credit Union
`
`Disclaimer in Patent Under 37 CFR 1.321(a), U.S. Pat.
`No. 6,237,095, cl. 7 (09/003,541 Jul. 8, 2015)
`
`Exhibit 2004
`
`U.S. Patent No. 5,805,702 to Curry et al.
`
`Disclaimer in Patent Under 37 CFR 1.321(a), U.S. Pat.
`No. 5,940,510, cl. 2 (08/594,975 Jun. 19, 2015)
`
`Restriction Requirement, U.S. Patent No. 5,805,702
`(08/595,014 Jul. 21, 1997)
`
`Originally-filed claims, U.S. Patent No. 5,805,702
`(08/595,014 Jan. 31, 1996)
`
`Hearing Transcript, In re Maxim Integrated Products,
`Inc., Misc. No. 12-244 (MDL No. 2354) (W.D. Pa.
`Mar. 20, 2013) (excerpt)
`
`Declaration of Nathan Lowenstein in support of Patent
`Owner Maxim Integrated Products, Inc.’s Motion For
`Pro Hac Vice Admission Of Nathan Lowenstein Under
`37 C.F.R. § 42.10(c)
`
`Order of Dismissal With Prejudice, No. 5:14-cv-
`01029-XR (W.D. Tex. Nov. 12, 2015)
`
`Confidential Settlement Agreement between Maxim
`Integrated Products and Discover Financial Services
`
`Exhibit 2005
`
`Exhibit 2006
`
`Exhibit 2007
`
`Exhibit 2008
`
`Exhibit 2009
`
`Exhibit 2010
`
`Exhibit 2011
`
`
`
`US.103402341.01
`
`
`
`
`
`Pursuant to 35 U.S.C. § 327(a), Petitioner constituents Discover Financial
`
`Services, Discover Bank, and Discover Products Inc. (collectively, “Discover”)
`
`and Patent Owner Maxim Integrated Products, Inc. (“Maxim”) jointly request
`
`termination of Discover’s participation in this case, No. CBM2015-00102.1
`
`Discover and Maxim (collectively, the “Parties”) have settled their dispute
`
`with respect to the patent at issue. The Parties have submitted a joint stipulated
`
`motion to dismiss the related matter in the District Court (see Petition § I.B) with
`
`prejudice as to Discover, which was granted on November 12, 2015. A copy of the
`
`order of dismissal is filed concurrently herewith as Exhibit 2010.
`
`The Parties’ settlement agreement has been made in writing, and a true and
`
`correct copy is being filed concurrently herewith as Exhibit 2011 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 the purposes of terminating
`
`Discover’s participation going forward.
`
`
`1 Discover is one of several Petitioner constituents in this case. This motion is not
`joined by, and does not affect the continued participation of, the other Petitioner
`constituents in the case.
`
`US.103402341.01
`
`
`
`
`
`Therefore, Discover and Maxim respectfully request termination of this case
`
`as to Discover.
`
`Respectfully submitted,
`
`____/Daniel M. Lechleiter/_____
`Daniel M. Lechleiter
`Reg. No. 58,254
`
`Trevor Carter
`Reg. No. 40,549
`
`FAEGRE BAKER DANIELS LLP
`300 N. Meridian St., Suite 2700
`Indianapolis, IN 46204
`(317) 237-0300
`Daniel.Lechleiter@FaegreBD.com
`Trevor. Carter@FaegreBD.com
`
`Counsel for Petitioner, constituents
`Discover Financial Services, Discover
`Bank, Discover Products Inc.
`
`Dated: November 24, 2015
`
`
`____/Kenneth J. Weatherwax/____
`Kenneth J. Weatherwax
`Reg. No. 54,528
`
`Nathan Lowenstein
`admitted pro hac vice
`
`LOWENSTEIN & WEATHERWAX
`LLP
`1880 Century Park East, Suite 815
`Los Angeles, CA 90067
` (310) 307-4503
`Weatherwax@lowensteinweatherwax.com
`Lowenstein@lowensteinweatherwax.com
`
`Counsel for Patent Owner,
`Maxim Integrated Products, Inc.
`
`
`
`US.103402341.01
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned hereby certifies that
`
`pursuant to agreement by Petitioner and Patent Owner, the foregoing Joint Motion
`to Terminate Proceeding Pursuant to 35 U.S.C. § 327 and Exhibit 2010 was served
`on the following by electronic mail, as a PDF attachment, on November 24, 2015:
`
`
`William F. Long
`DENTONS US LLP
`bill.long@dentons.com
`
`Truman H. Fenton
`SLAYDEN GRUBERT BEARD PLLC
`tfenton@sgbfirm.com
`
`Pursuant to agreement by Petitioner and Patent Owner, Exhibit 2011 was
`served on that same day on only the following in order to preserve
`confidentiality:
`
`
`Daniel M. Lechleiter
`FAEGRE BAKER DANIELS LLP
`Daniel.Lechleiter@FaegreBD.com
`
`Trevor Carter
`FAEGRE BAKER DANIELS LLP
`Trevor.Carter@FaegreBD.com
`
`___/Kenneth J. Weatherwax/___
` Reg. No. 54,528
`
`
`
`
`
`
`US.103402341.01
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