PNC Bank, N.A., JP Morgan Chase & Co et alv.Maxim Integrated Products, Inc.

Patent Trial and Appeal Board

Jun 3, 2014

09041190 (P.T.A.B. Jun. 3, 2014)

Trials@uspto.gov Paper 19
Tel: 571-272-7822 Entered: June 3, 2014
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

PNC BANK, N.A., JP MORGAN CHASE & CO. AND
JP MORGAN CHASE BANK, N.A.
Petitioner
v.
MAXIM INTEGRATED PRODUCTS, INC.
Patent Owner

Case CBM2014-00040
Patent 6,105,013

Before SALLY C. MEDLEY, MITCHELL G. WEATHERLY, and
MIRIAM L. QUINN, Administrative Patent Judges.
WEATHERLY, Administrative Patent Judge.
DECISION
Denying Institution of Covered Business Method Patent Review
37 C.F.R. § 42.208
Case CBM2014-00040
Patent 6,105,013
2
I. INTRODUCTION
PNC Bank, N.A. (a subsidiary of The PNC Financial Services Group,
Inc.) (“PNC”), JP Morgan Chase & Co., and JP Morgan Chase Bank, N.A.
(collectively “JP Morgan” and collectively with PNC “Petitioner”) filed a
petition, Paper 3 (“Pet.” or “Petition”), to institute a covered business
method patent review (a “CBM review”) of claims 1–6, 8–12, and 15 (the
“challenged claims”) of U.S. Patent 6,105,013, Exhibit 1001 (“the
’013 patent”). 35 U.S.C. § 321. Maxim Integrated Products, Inc. (“Maxim”
or “Patent Owner”) timely filed a Preliminary Response. Paper 7 (“Prelim.
Resp.”). Petitioner subsequently filed, with our prior authorization,
“Petitioners’ Motion Requesting Adverse Judgment Against PNC Pursuant
to 37 C.F.R. § 42.73(b)(4).” Paper 11 (the “Motion for Judgment”). In that
Motion, PNC sought entry of adverse judgment against it and contended that
JP Morgan could proceed with the Petition without further involvement by
PNC. Id. at 3. Maxim opposed the Motion for Judgment. Paper 12.
Petitioner filed a reply in support of the Motion for Judgment. Paper 13.
For the reasons expressed below, we deny the Petition and decline to
institute a CBM review. We also dismiss as moot the Motion for Judgment.
II. BACKGROUND
JP Morgan and PNC jointly filed their Petition on
November 22, 2013. Pet. 1. JP Morgan and PNC are represented by the
same lead and back up counsel. Id. at 4. JP Morgan and PNC identify
themselves collectively as “Petitioner,” id. at i, and in every respect advance
the same argument against the patentability of the challenged claims. Id. at
1–74.
Case CBM2014-00040
Patent 6,105,013
3
When PNC filed the Petition, it was a plaintiff identified in the civil
action captioned PNC Financial Services Group, Inc. and PNC Bank,
National Association v. Maxim Integrated Products, Inc., No. 2:12-cv-
00089-JFC (W.D. Pa.) (“the PNC Action”). Ex. 2001, 1. PNC filed its
complaint in the PNC Action on January 25, 2012, and sought a declaration
that the claims of the ’510 patent are invalid. Id. at 6.
III. ANALYSIS
Maxim contends that the Board cannot institute a covered business
method review because Petitioner has filed a civil action challenging the
validity of at least one claim of the ’013 patent. Prelim. Resp. 1–3. “A post-
grant review may not be instituted under this chapter if, before the date on
which the petition for such a review is filed, the petitioner or real party in
interest filed a civil action challenging the validity of a claim of the patent.”
35 U.S.C. § 325(a)(1).
1
PNC is both a petitioner, Pet. i, and a real party in
interest, id. at 2. Before filing the Petition, PNC filed a civil action
challenging the validity of claims of the ’013 patent. Ex. 2001, 5.
Therefore, § 325(a)(1) precludes institution of a review in this proceeding.
Accordingly, we deny the Petition in all respects. We express no opinion
regarding the likelihood that any party other than PNC would prevail in
establishing that any of the challenged claims are unpatentable for the
reasons set forth in the Petition.

1
Section 18(a)(1) of the Leahy-Smith America Invents Act provides that a
CBM review proceeding shall employ all the standards and procedures of a
post-grant review under Chapter 32 of title 35 of the United States Code
(i.e., 35 U.S.C. §§ 321–29) except for those expressly carved out (i.e.,
35 U.S.C. §§ 321(c) and 325(b), (e)(2), and (f)). Therefore, this CBM
review is governed by the requirements of 35 U.S.C. § 325(a)(1).
Case CBM2014-00040
Patent 6,105,013
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Maxim also contends that § 325(a)(1) would continue to bar
institution of review even if PNC were to “forswear all further control and
participation in this case.” Prelim. Resp. 31. On May 23, Petitioner notified
the Board that Maxim and PNC had settled the district court litigation
entitled PNC Financial Services Group, Inc. v. Maxim Integrated Products.,
Inc., No. 2:12-cv-00089-JFC (W.D. Pa.). Paper 16 at 2. Nevertheless, as
Maxim has pointed out “PNC has already exerted substantial control over
the case.” Prelim. Resp. 31–32. Moreover, granting PNC’s request for
adverse judgment would not obviate the control that PNC has already
exerted in this proceeding by its filing of the Petition. Therefore, ruling
upon the Motion for Judgment would not alter our conclusion that
§ 325(a)(1) precludes institution of a CBM review as requested in the
Petition. Accordingly, we dismiss PNC’s Motion for Judgment as moot and
deny the Petition in all respects.
IV. ORDER
For the reasons given, it is:
ORDERED that the Petition is DENIED; and
FURTHER ORDERED that the Motion for Judgment is DISMISSED
as moot.
Case CBM2014-00040
Patent 6,105,013
5
PETITIONER:
Lionel M. Lavenue
Timothy J. May
Joshua Goldberg
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
lionel.lavenue@finnegan.com
timothy.may@finnegan.com
Joshua.goldberg@finnegan.com
PATENT OWNER:
Kenneth J. Weatherwax
Parham Hendifar
GOLDBERG, LOWENSTEIN & WEATHERWAX LLP
weatherwax@glwllp.com
parham@glwllp.com