JPMorgan Chase & Co.v.Maxim Integrated Products, Inc.

Patent Trial and Appeal Board

Feb 27, 2015

08978798 (P.T.A.B. Feb. 27, 2015)

Trials@uspto.gov Paper No. 18
571-272-7822 Entered: February 27, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

JP MORGAN CHASE & CO., and
JP MORGAN CHASE BANK, N.A.,
Petitioner,

v.

MAXIM INTEGRATED PRODUCTS, INC.,
Patent Owner.
____________

Case CBM2014-00180
Patent 5,949,880
____________

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) and 37 C.F.R. § 42.72

CBM2014-00180
Patent 5,949,880

2
On February 25, 2015, Petitioners JP Morgan Chase & Co. and
JP Morgan Chase Bank, N.A (collectively, “Chase”) and Patent Owner
Maxim Integrated Products, Inc. (“Maxim”) filed a Joint Motion to
Terminate this proceeding pursuant to 35 U.S.C. § 327. Paper 16. Along
with the motion, the parties filed a copy of their Settlement Agreement,
made in connection with the termination of the proceeding, in accordance
with 35 U.S.C. § 327(b) and 37 C.F.R. § 42.74(b). Ex. 2002. The parties
also submitted a Joint Request to have the Settlement Agreement treated as
business confidential information under 35 U.S.C. § 327(b) and 37 C.F.R.
§ 42.74(c). Paper 17. For the reasons set forth below, the Joint Motion to
Terminate and the Joint Request are granted.
In their Joint Motion to Terminate, the parties indicate that they have
settled all disputes between them involving the patent-at-issue in this
proceeding, U.S. Patent No. 5,949,880. Paper 16. In particular, the parties
represent that the Settlement Agreement resolves their dispute in this
proceeding and the related district court case. Id.; see Ex. 2001.
This trial is in its initial stages. We instituted trial in this proceeding
on February 20, 2015—just five days before the parties filed the present
motion to terminate. Paper 14. Therefore, Maxim has not filed a Patent
Owner Response, Chase has not filed a Reply, and the Board has not held an
oral hearing in this proceeding.
Generally, the Board expects that “a proceeding will terminate after
the filing of a settlement agreement, unless the Board has already decided
the merits of the proceeding.” Office Patent Trial Practice Guide, 77 Fed.
Reg. 48,756, 48,768 (Aug. 14, 2012); see 37 C.F.R. § 42.72. Upon
CBM2014-00180
Patent 5,949,880

3
consideration of the facts before us, we determine that it is appropriate to
terminate this trial without rendering a final written decision, and to enter
judgment. See 37 C.F.R. § 42.72.
ORDER
For the foregoing reasons, it is:
ORDERED that the Joint Motion to Terminate Proceeding Pursuant to
35 U.S.C. § 327 is granted; and
FURTHER ORDERED that the Joint Request to File Settlement
Agreement as Business Confidential Information Under 35 U.S.C. § 327(b)
is granted.
CBM2014-00180
Patent 5,949,880

4
PETITIONER:
Andrea G. Reister
Jay I. Alexander
Gregory S. Discher
COVINGTON & BURLING LLP
One CityCenter
850 Tenth Street, NW
Washington, DC 20001-4956
areister@cov.com
jalexander@cov.com
gdischer@cov.com

PATENT OWNER:
Kenneth J. Weatherwax
Parham Hendifar
GOLDBERG, LOWENSTEIN & WEATHERWAX LLP
11400 West Olympic Boulevard, Suite 400
Los Angeles, California 90064
weatherwax@glwllp.com
hendifar@glwllp.com