Case IPR2016-00032
`Patent 6,105,013
`Attorney Docket No. 151118-001USIPR
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNITED SERVICES AUTOMOBILE ASSOCIATION,
`USAA FEDERAL SAVINGS BANK, and
`USAA CAPITAL CORPORATION,
`Petitioner
`
`v.
`
`MAXIM INTEGRATED PRODUCTS, INC.
`Patent Owner
`____________
`
`Case IPR2016-00032
`Patent 6,105,013
`____________
`
`PATENT OWNER MAXIM INTEGRATED PRODUCTS, INC.’S
`MANDATORY NOTICES
`
`
`
`
`
`
`
`
`
`
`Patent 6,105,013
`Attorney Docket No. 151118-001USIPR
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNITED SERVICES AUTOMOBILE ASSOCIATION,
`USAA FEDERAL SAVINGS BANK, and
`USAA CAPITAL CORPORATION,
`Petitioner
`
`v.
`
`MAXIM INTEGRATED PRODUCTS, INC.
`Patent Owner
`____________
`
`Case IPR2016-00032
`Patent 6,105,013
`____________
`
`PATENT OWNER MAXIM INTEGRATED PRODUCTS, INC.’S
`MANDATORY NOTICES
`
`
`
`
`
`
`
`
`
`
`
`Case IPR2016-00032
`Patent 6,105,013
`Attorney Docket No. 151118-001USIPR
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`
`Pursuant to 37 C.F.R. § 42.8, Patent Owner Maxim Integrated Products, Inc.
`
`submits the following Mandatory Notices.
`
`
`
`1. Real Party-In-Interest
`
`In accordance with 37 C.F.R. § 42.8(b)(1), Patent Owner identifies the real
`
`party-in-interest as Maxim Integrated Products, Inc.
`
`
`
`2. Related Matters
`
`In accordance with 37 C.F.R. § 42.8(b)(2), Patent Owner identifies the
`
`following related current and former proceedings.
`
`I. Current Proceedings Involving The Patent-At-Issue.
`
`a. In re Maxim Integrated Prods., Inc., MDL No. 2354, No. 2:12-mc-
`
`00244;
`
`1
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`
`
`Case IPR2016-00032
`Patent 6,105,013
`Attorney Docket No. 151118-001USIPR
`
`b. Branch Banking & Trust Co. v. Maxim Integrated Prods., Inc., No. 2:12-
`
`cv-00945-JFC (as transferred for MDL purposes);
`
`c. Maxim Integrated Prods., Inc. v. USAA Fed. Sav. Bank, 5:14-cv-01031-
`
`XR (W.D. Tex) (filed November 19, 2014);
`
`d. Maxim Integrated Prods., Inc. v. Compass Bank, d/b/a BBVA Compass,
`
`5:14-cv-01028-XR (W.D. Tex) (filed November 19, 2014);
`
`e. Maxim Integrated Prods., Inc. v. State Farm Mutual Auto. Ins. Co., 5:14-
`
`cv-01030 (W.D. Tex) (filed November 19, 2014).
`
`f. Maxim Integrated Prods., Inc. v. M&T Bank Corp., 1:15-cv-02167
`
`(S.D.N.Y) (order to discontinue case due to reported settlement issued on
`
`October 30, 2015, Dkt. 57).
`
`g. Maxim Integrated Prods., Inc. v. HBSC Bank USA, Nat’l Ass’n, 1:15-cv-
`
`02168 (S.D.N.Y) (order to discontinue case due to reported settlement
`
`issued on October 30, 2015, Dkt. 57);
`
`h. Compass Bank v. Maxim Integrated Prods., Inc., Covered Business
`
`Method Patent Review, Case No. CBM2015-00101, of US 6,105,013
`
`(accorded filing date of March 23, 2015);
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`2
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`Case IPR2016-00032
`Patent 6,105,013
`Attorney Docket No. 151118-001USIPR
`
`II. Former Proceedings Involving The Patent-At-Issue.
`
`
`
`a. PNC Bank N.A. v. Maxim Integrated Prods., Inc., Covered Business
`
`Method Patent Review, Case No. CBM2014-00040, of US 6,105,013
`
`(petition for institution of review denied June 3, 2014, paper 19);
`
`b. JPMorgan Chase & Co. v. Maxim Integrated Prods., Inc., Covered
`
`Business Method Patent Review, Case No. CBM2014-00178, of US
`
`6,105,013 (review terminated on February 26, 2015, paper 14).
`
`c. Maxim Integrated Prods., Inc. v. Branch Banking & Trust Co., No. 2013-
`
`1495 (Fed. Cir.) (judgment affirmed March 10, 2014, Dkt. 51);
`
`d. Maxim Integrated Prods., Inc. v. Branch Banking & Trust Co., 4:12-cv-
`
`00369-RAS (E.D. Tex) (judgment affirmed March 10, 2014, Dkt. 33);
`
`e. Maxim Integrated Prods., Inc. v. Navy Fed. Credit Union , 5:14-cv-
`
`01032-XR (W.D. Tex) (dismissed May 18, 2015, Dkt. 49);
`
`i. Maxim Integrated Prods., Inc. v. Discover Fin. Servs., 5:14-cv-01029-
`
`XR (W.D. Tex) (dismissed and terminated November 12, 2015, Dkt. 63);
`
`j. Maxim Integrated Prods., Inc. v. Santander Bank, NA, 1:15-cv-02169
`
`(S.D.N.Y) (dismissed and terminated November 5, 2015, Dkt. 44);
`
`f. Maxim Integrated Prods., Inc. v. Am. Express Co., 5:14-cv-01027-XR
`
`(W.D. Tex) (dismissed October 2, 2015, Dkt. 50);
`
`3
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`
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`Case IPR2016-00032
`Patent 6,105,013
`Attorney Docket No. 151118-001USIPR
`
`g. As transferred for MDL purposes:
`
`
`
`− Maxim Integrated Prods., Inc. v. JP Morgan Chase & Co., No. 2:12-
`
`cv- 01641-JFC (dismissed & terminated February 26, 2015, Dkt. 986)
`
`− PNC Fin. Servs. Grp., Inc. v. Maxim Integrated Prods., Inc., No. 2:12-
`
`cv-00089-JFC (dismissed & terminated May 29, 2014, Dkt. 844)
`
`− KeyCorp v. Maxim Integrated Prods., Inc., No. 2:12-cv-00860-JFC
`
`(dismissed & terminated August 20, 2013, Dkt. 648)
`
`− Vanguard Grp., Inc. v. Maxim Integrated Prods., Inc., No. 2:12-cv-
`
`00862-JFC (dismissed & terminated February 19, 2014, Dkt. 773)
`
`− Jack Henry & Assocs., Inc. v. Maxim Integrated Prods., Inc., No.
`
`2:12-cv-00863-JFC (dismissed & terminated February 20, 2014, Dkt.
`
`775)
`
`− Maxim Integrated Prods., Inc. v. Comerica Inc., No. 2:12-cv-00869-
`
`JFC (dismissed & terminated August 20, 2014, Dkt. 887)
`
`− Fidelity Brokerage Servs. LLC v. Maxim Integrated Prods., Inc., No.
`
`2:12-cv-00871-JFC (dismissed & terminated May 16, 2014, Dkt. 840)
`
`− Maxim Integrated Prods., Inc. v. First United Bank & Trust Co., No.
`
`2:12-cv-00876-JFC (dismissed & terminated February 19, 2014, Dkt.
`
`774)
`
`4
`
`
`
`
`
`Case IPR2016-00032
`Patent 6,105,013
`Attorney Docket No. 151118-001USIPR
`
`− Maxim Integrated Prods., Inc. v. Starbucks Corp., No. 2:12-cv-00877-
`
`JFC (dismissed & terminated April 7, 2014, Dkt. 798)
`
`− Maxim Integrated Prods., Inc. v. Expedia, Inc., No. 2:12-cv-00878-
`
`JFC (dismissed & terminated July 10, 2014, Dkt. 873)
`
`− Maxim Integrated Prods., Inc. v. Capital One Fin. Corp., No. 2:12-cv-
`
`00879-JFC (dismissed & terminated September 12, 2013, Dkt. 738)
`
`− Maxim Integrated Prods., Inc. v. Bank of the West, No. 2:12-cv-
`
`00880-JFC (dismissed and fee motion denied; see Dkt. 116, 130)
`
`− Maxim Integrated Prods., Inc. v. Groupon, Inc., No. 2:12-cv-00881-
`
`JFC (dismissed & terminated August 20, 2014, Dkt. 886)
`
`− Maxim Integrated Prods., Inc. v. Union Bank, N.A., No. 2:12-cv-
`
`00882-JFC (dismissed & terminated February 6, 2014, Dkt. 763)
`
`− Maxim Integrated Prods., Inc. v. Southwest Airlines, Co., No. 2:12-
`
`cv-00883-JFC (dismissed & terminated May 5, 2014, Dkt. 836)
`
`− Chipotle Mexican Grill, Inc. v. Maxim Integrated Prods., Inc., No.
`
`2:12-cv-00887-JFC (dismissed & terminated August 5, 2014, Dkt.
`
`882)
`
`− Maxim Integrated Prods., Inc. v. QVC, Inc., No. 2:12-cv-00891-JFC
`
`(dismissed & terminated March 14, 2014, Dkt. 789)
`
`5
`
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`
`
`
`Case IPR2016-00032
`Patent 6,105,013
`Attorney Docket No. 151118-001USIPR
`
`− Clairmail Inc. v. Maxim Integrated Prods., Inc., No. 2:12-cv-00923-
`
`NBF (dismissed & terminated August 31, 2012, Dkt. 146)
`
`− BMO Harris Bank Nat’l Ass’n v. Maxim Integrated Prods., Inc., No.
`
`2:12-cv-01538-JFC (dismissed & terminated October 8, 2014, Dkt.
`
`914)
`
`− Deutsche Bank AG v. Maxim Integrated Prods., Inc., No. 2:12-cv-
`
`01604-JFC (dismissed & terminated September 25, 2014, Dkt. 901)
`
`− Maxim Integrated Prods., Inc. v. Citigroup, Inc., No. 2:12-cv-01628-
`
`JFC (dismissed & terminated May 22, 2014, Dkt. 800)
`
`− Maxim Integrated Prods., Inc. v. Target Corp., No. 2:12-cv-01629-
`
`JFC (dismissed & terminated April 23, 2014, Dkt. 821)
`
`− Maxim Integrated Prods., Inc. v. Wells Fargo & Co., No. 2:12-cv-
`
`01639-JFC (dismissed & terminated May 1, 2014, Dkt. 831)
`
`− Maxim Integrated Prods., Inc. v. Bank of Am. Corp., No. 2:12-cv-
`
`01640-JFC (dismissed & terminated June 19, 2014, Dkt. 861)
`
`− Maxim Integrated Prods., Inc. v. U.S. Bancorp, No. 2:12-cv-01642-
`
`JFC (dismissed & terminated August 20, 2014, Dkt. 888)
`
`− Maxim Integrated Prods., Inc. v. Walmart Stores, Inc., No. 2:12-cv-
`
`01643-JFC (dismissed & terminated February 6, 2014, Dkt. 764).
`
`6
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`
`
`Case IPR2016-00032
`Patent 6,105,013
`Attorney Docket No. 151118-001USIPR
`
`III. Proceedings Involving Other U.S. Patents.
`
`
`
`The patent-at-issue, US Patent No. 6,105,013, is a continuation of application
`
`No. 08/594,983, which claims priority to provisional application No. 60/004,510,
`
`to which US Patent No. 6,237,095 also claims priority. US 6,237,095 is a
`
`divisional from application No. 08/595,014, from which the US Patent No.
`
`5,805,702 issued. US Patent No. 5,940,510 contains related subject matter to and
`
`incorporates by reference application No. 08/595,014, from which the application
`
`issuing as US 6,237,095 was a divisional. US Patent No. 5,949,880 is a divisional
`
`from application no. 08/594,975, from which US 5,940,510 issued. Numerous
`
`related proceedings identified above involving the ’013 Patent also involve one or
`
`all of these patents.
`
`In an excess of caution, Patent Owner identifies below the following
`
`additional current and former proceedings not directly involving the ’013 Patent
`
`but relating to one or more of US 5,805,702, US 5,940,510, US 5,949,880, and US
`
`6,237,095. As noted in connection with the individual proceedings, several of the
`
`identified proceedings have been dismissed.
`
`a. United Services Automobile Association v. Maxim Integrated Prods.,
`
`Inc., Inter Partes Review, Case No. IPR2016-00033, of US 6,237,095
`
`(accorded filing date of October 29, 2015);
`
`7
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`
`
`Case IPR2016-00032
`Patent 6,105,013
`Attorney Docket No. 151118-001USIPR
`
`b. Ex Parte Reexamination, Control No. 90/013,063, of USP 5,940,510;
`
`c. Compass Bank v. Maxim Integrated Prods., Inc., Covered Business
`
`Method Patent Review, Case No. CBM2015-00098, of US 5,940,510
`
`(accorded filing date of March 6, 2015);
`
`d. Compass Bank et al. v. Maxim Integrated Prods., Inc., Covered Business
`
`Method Patent Review, Case No. CBM2015-00102, of US6,237,095
`
`(accorded filing date of Mar. 30, 2015);
`
`e. PNC Bank N.A. v. Maxim Integrated Prods., Inc., Covered Business
`
`Method Patent Review, Case No. CBM2014-00038, of US 5,940,510
`
`(petition for institution of review denied June 3, 2014, paper 19);
`
`f. JP Morgan Chase & Co. v. Maxim Integrated Prods., Inc., Covered
`
`Business Method Patent Review, Case No. CBM2014-00179, of US
`
`5,940,510 (review terminated on February 27, 2015, paper 15);
`
`g. PNC Bank N.A. v. Maxim Integrated Prods., Inc., Covered Business
`
`Method Patent Review, Case No. CBM2014-00041, of US 6,237,095
`
`(petition for institution of review denied June 3, 2014, paper 19);
`
`h. JPMorgan Chase & Co. v. Maxim Integrated Prods., Inc., Covered
`
`Business Method Patent Review, Case No. CBM2014-00177, of US
`
`6,237,095 (review terminated February 26, 2015, paper 14).
`
`8
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`
`
`
`3. Lead and Back-Up Counsel
`
`Case IPR2016-00032
`Patent 6,105,013
`Attorney Docket No. 151118-001USIPR
`
`In accordance with 37 C.F.R. § 42.8(b)(3), Patent Owner identifies Kenneth
`
`J. Weatherwax as lead counsel and Nathan Lowenstein as back-up counsel:
`
`Kenneth J. Weatherwax, Lead Counsel
`USPTO Reg. No. 54,528
`LOWENSTEIN & WEATHERWAX LLP
`1880 Century Park East, Suite 815, Los Angeles, Ca 90067
`Telephone: (310) 307-4503
`Facsimile: (310) 307-4509
`Email: weatherwax@lowensteinweatherwax.com
`
`Nathan Lowenstein, Back-Up Counsel
`pro hac vice admission pending
`LOWENSTEIN & WEATHERWAX LLP
`1880 Century Park East, Suite 815, Los Angeles, Ca 90067
`Telephone: (310) 307-4502
`Facsimile: (310) 307-4509
`Email: lowenstein@lowensteinweatherwax.com
`
`4. Service Information
`
`
`
`In accordance with 37 C.F.R. § 42.8(b)(4), Patent Owner identifies the
`
`following service information. Patent Owner consents to electronic service.
`
`Kenneth J. Weatherwax
`LOWENSTEIN & WEATHERWAX LLP
`1880 Century Park East, Suite 815, Los Angeles, Ca 90067
`weatherwax@lowensteinweatherwax.com
`
`
`
`
`
`Respectfully submitted,
`____/ Kenneth J. Weatherwax /_________
`Kenneth J. Weatherwax, Reg. No. 54,528
`Date: November 24, 2015 Lowenstein & Weatherwax LLP
`
`9
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`
`
`Case IPR2016-00032
`Patent 6,105,013
`Attorney Docket No. 151118-001USIPR
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that the following documents were served
`
`on November 24, 2015 by electronic service in accordance with the consent to
`electronic service on page 2 of the Petition for Review in this proceeding:
`
`
`PATENT OWNER MAXIM INTEGRATED PRODUCTS, INC.’S
`MANDATORY NOTICES
`
`
`
`The names and address of the parties being served are as follows:
`
`Nathan Rees
`Norton Rose Fulbright US LLP
`USAA013IPR@nortonrosefulbright.com
`
`
`
`Respectfully submitted,
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`____/Kenneth J. Weatherwax/_________
`Kenneth J. Weatherwax, Reg. No. 54,528
`Lowenstein & Weatherwax LLP
`
`Date: November 24, 2015
`
`
`
`
`
`
`
`
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