American Express Companyv.Maxim Integrated Products, Inc.

Patent Trial and Appeal Board

Feb 10, 2016

08594975 (P.T.A.B. Feb. 10, 2016)

Trials@uspto.gov Paper No. 40
571.272.7822 Filed: February 10, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

STATE FARM MUTUAL AUTOMOBILE INSURANCE COMPANY,
Petitioner,

v.

MAXIM INTEGRATED PRODUCTS, INC.,
Patent Owner.
____________

Case CBM2015-00098
Patent 5,940,510
____________

Before TREVOR M. JEFFERSON, MITCHELL G. WEATHERLY, and
KERRY BEGLEY, Administrative Patent Judges.

BEGLEY, Administrative Patent Judge.

JUDGMENT
Termination of the Proceeding
35 U.S.C. § 327(a), 37 C.F.R. § 42.72
Petitioner State Farm Mutual Automobile Insurance Company
(“Petitioner”), the only remaining petitioner in this proceeding, and Patent
Owner Maxim Integrated Products, Inc. (“Maxim”) filed a Joint Motion to
Terminate this proceeding with respect to Petitioner, pursuant to 35 U.S.C.
§ 327. Paper 39. Along with the motion, the parties filed what they
CBM2015-00098
Patent 5,940,510

2
represent to be a “true and correct” copy of their settlement agreement, in
accordance with 35 U.S.C. § 327(b) and 37 C.F.R. § 42.74(b). Id. at 3;
Ex. 1024. The parties request that the settlement agreement be treated as
business confidential information under 35 U.S.C. § 327(b) and 37 C.F.R.
§ 42.74(c). Paper 39, 3.
The 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 motion on its merits. For the
reasons set forth below, the joint motion to terminate as well as the request
to treat the settlement agreement as business confidential information are
granted.
Under 35 U.S.C. § 327(a), an instituted covered business method
patent review “shall be terminated with respect to any petitioner upon the
joint request of the petitioner and the patent owner, unless the Office has
decided the merits of the proceeding before the request for termination is
filed.” 35 U.S.C. § 327(a); see Leahy-Smith America Invents Act (“AIA”),
Pub. L. No. 112-29, § 18(a)(1), 125 Stat. 284, 329 (2011) (stating that
chapter 32 of title 35, United States Code, which governs post-grant reviews,
is applicable to covered business method patent reviews with the exception
of 35 U.S.C. § 321(c), 35 U.S.C. § 325(b), (e)(2), (f)). Since institution of
this proceeding, Patent Owner has not filed a Response, Petitioner has not
filed a Reply, and no oral hearing has been held. As a result, the Board has
not yet decided the merits of the proceeding. Upon consideration of the
facts before us, we determine that it is appropriate to terminate this trial and
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Patent 5,940,510

3
enter judgment without rendering a final written decision. See 35 U.S.C.
§ 327(a); 37 C.F.R. § 42.72.
Turning to the joint request to file the Settlement Agreement as
business confidential information, we determine that Petitioner and Patent
Owner have complied with the requirements of 37 C.F.R. § 42.74(c) to have
their settlement agreement treated as business confidential information that
is kept separate from the files of the patent-at-issue. Accordingly, the
agreement shall be made available only to a government agency on written
request to the Board or to any other person upon a showing of good cause
and compliance with the other requirements of 37 C.F.R. § 42.74(c)(2).
ORDER
For the foregoing reasons, it is:
ORDERED that the Corrected Joint Motion to Terminate Proceeding
with Respect to State Farm Mutual Automobile Insurance Company
Pursuant to 35 U.S.C. § 327 (Paper 39) is granted;
FURTHER ORDERED that the parties’ joint request that the Board
treat their settlement agreement as business confidential information under
35 U.S.C. § 327(b) and 37 C.F.R. § 42.74(c) is granted; and
FURTHER ORDERED that this proceeding is terminated pursuant to
35 U.S.C. § 327.

CBM2015-00098
Patent 5,940,510

4
PETITIONER:

William F. Long
DENTONS US LLP
bill.long@dentons.com

Truman Fenton
SLAYDEN GRUBERT BEARD PLLC
tfenton@sgbfirm.com

PATENT OWNER:

Kenneth J. Weatherwax
Nathan Lowenstein
LOWENSTEIN & WEATHERWAX LLP
weatherwax@lowensteinweatherwax.com
lowenstein@lowensteinweatherwax.com