`Case IPR2016-00033
` Patent 6,237,095
`
`
` 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 No. IPR2065-00033
`Patent No. 6,237,095
`
`
`
`JOINT MOTION TO TERMINATE PROCEEDING
`PURSUANT TO 35 U.S.C. § 317(a)
`
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`
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`Joint Motion to Terminate Proceeding
`Case IPR2016-00033
` Patent 6,237,095
`
`
`Order of Dismissal With Prejudice, Maxim Integrated
`Prods., Inc. v. USAA Federal Savings Bank, Civil
`Action No. 5:14-cv 01031-XR (W.D. Tex. Jan. 6,
`2016
`
`Confidential Patent Settlement and License
`Agreement between Maxim Integrated Products, Inc.
`and USAA Federal Savings Bank
`
`EXHIBIT LIST
`
`Exhibit 2001
`
`Exhibit 2002
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`Joint Motion to Terminate Proceeding
`Case IPR2016-00033
` Patent 6,237,095
`
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`Pursuant to 35 U.S.C. § 317(a), Petitioner United Services Automobile
`
`Association, USAA Federal Savings Bank, and USAA Capital Corporation
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`(“USAA”) and Patent Owner Maxim Integrated Products, Inc. (“Maxim”) jointly
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`request termination, pursuant to settlement, of IPR2016-00033, which is directed to
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`U.S. Patent No. 6,237,095.1
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`USAA and Maxim have settled their dispute with respect to the patent at
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`issue. USAA and Maxim have also submitted a joint stipulated motion to dismiss
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`the related matter in the District Court, which was granted on January 6, 2016. A
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`copy of the order of dismissal is filed 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.§ 317, along with the parties’ joint request that the settlement agreement be
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`treated as business confidential information and be kept separate from the file of
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`the involved patent.
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`In light of the settlement, no POPR was filed in this Case or IPR2016-
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`00032. No decisions on institution have issued in this case or IPR2016-00032.
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`1 Substantially similar joint motions to terminate, pursuant to the same settlement
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`agreement, are being filed concurrently in this case and IPR2016-00032.
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`1
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`Joint Motion to Terminate Proceeding
`Case IPR2016-00033
` Patent 6,237,095
`
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`For at least the foregoing reasons, USAA and Maxim respectfully request
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`termination of this case pursuant to 35 U.S.C. § 317(a).
`
`
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`
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`Date: January 15, 2016
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`Respectfully submitted,
`
`/Nathan Rees /
`Nathan Rees, Reg. No. 63,820
`NORTON ROSE FULBRIGHT US LLP
`2200 Ross Avenue, Suite 3600
`Dallas, Texas 75201-7932
`Telephone: (214) 855-7164
`Facsimile: (214) 855-8200
`Email:
`nate.rees@nortonrosefulbright.com
`
`Counsel for Petitioner
`United Services Automobile Association
`
`
`
`
`
` /Kenneth J. Weatherwax/
`Kenneth J. Weatherwax, Reg. No. 54,528
`LOWENSTEIN & WEATHERWAX LLP
`1880 Century Park East, Suite 815
`
`Los Angeles, California 90067
`Telephone: (310) 307-4503
`Facsimile: (310) 307-4509
`Email:
`weatherwax@lowensteinweatherwax.com
`
`Counsel for Patent Owner
`Maxim Integrated Products, Inc.
`
`
`
`
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`
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`Joint Motion to Terminate Proceeding
`Case IPR2016-00033
` Patent 6,237,095
`
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`CERTIFICATE OF SERVICE
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned hereby certifies that a
`copy of the following documents are being served by electronic mail, pursuant
`to mutual agreement of the parties to electronic service, on January 15, 2016:
`
`JOINT MOTION TO TERMINATE CASE PURSUANT TO 35 U.S.C. § 317(a)
`
`JOINT REQUEST TO FILE SETTLEMENT AGREEMENT AS BUSINESS
`CONFIDENTIAL INFORMATION UNDER 35 U.S.C. § 317(b)
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`EX. 2001 ORDER OF DISMISSAL WITH PREJUDICE
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`EX. 2002 CONFIDENTIAL PATENT SETTLEMENT AND LICENSE
`AGREEMENT
`
`
`
`
`
`
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`Respectfully submitted,
`
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`The name and address of the party being served is as follows:
`
`Nathan Rees
`NORTON ROSE FULBRIGHT US LLP
`nate.rees@nortonrosefulbright.com
`USAA013IPR@nortonrosefulbright.com
`
`Date: January 15, 2016
`
`
`
`
`/Kenneth J. Weatherwax/
`Kenneth J. Weatherwax
`Reg. No. 54,528
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