Anascape, Ltd v. Microsoft Corp. et al

Filing 117

NOTICE by Microsoft Corp. DEFENDANT MICROSOFT CORPORATION'S NOTICE OF PTO ORDERS AND PATENT CLAIM REJECTIONS IN MICROSOFT'S REQUESTS FOR RE-EXAMINATION OF ANASCAPE PATENTS (Attachments: # 1 Exhibit A# 2 Exhibit B# 3 Exhibit C# 4 Exhibit D)(Joncus, Stephen)

Anascape, Ltd v. Microsoft Corp. et al

Doc. 117

Case 9:06-cv-00158-RHC

Document 117

Filed 07/17/2007

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IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS LUFKIN DIVISION ANASCAPE, LTD. Plaintiff, v. MICROSOFT CORPORATION, and NINTENDO OF AMERICA, INC., Defendants. § § § § § § § § § § Hon. Ron Clark Civil Action No. 9:06-CV-00158-RC

DEFENDANT MICROSOFT CORPORATION'S NOTICE OF PTO ORDERS AND PATENT CLAIM REJECTIONS IN MICROSOFT'S REQUESTS FOR RE-EXAMINATION OF ANASCAPE PATENTS Please take notice of the following recent actions by the United States Patent and Trademark Office ("PTO") in the requests for re-examination filed by Microsoft against the asserted Anascape patents. On July 12, 2007, the PTO issued an Office Action rejecting all claims of U.S. Patent No. 6,102,802. (The PTO had granted Microsoft's request for re-examination of the `802 patent on March 9, 2007.) Litigation regarding this patent has not been stayed. A true and correct copy of the PTO Office Action is attached as Exhibit A. In the Office Action, the PTO finds that every claim of the `802 patent is not patentable, citing multiple different reasons for each claim. On July 13, 2007, the PTO granted Microsoft's request for the inter partes reexamination of U.S. Patent No. 6,906,700. Litigation regarding this patent has not been stayed. A true and correct copy of the PTO communication ordering re-examination is attached as Exhibit B. In the communication, the PTO agrees with Microsoft that twelve prior art references, including both prior art previously considered by the PTO as well as prior art not previously considered by the PTO, raise over forty substantial new questions of patentability for
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the claims of the patent. See Exh. C, pp. 4, 6-11, 20. Additionally, after a lengthy analysis (see Ex. B, ¶¶ 8-24), the examiner stated that "the `700 Patent is not seen to be entitled to the priority date of the Armstrong `525 patent." (Ex. B, ¶ 24.) All claims of the `700 patent are now under inter partes re-examination. On June 4, 2007, the PTO granted Microsoft's request for the inter partes re-examination of U.S. Patent No. 6,563,415. Litigation regarding this patent is presently stayed. A true and correct copy of the PTO communication ordering re-examination is attached as Exhibit C. In the communication, the PTO agrees with Microsoft that eight prior art references, including both prior art previously considered by the PTO as well as prior art not previously considered by the PTO, raise substantial new questions of patentability for the claims of the patent. See Exh. C, pp. 2, 4-5. All claims of the `415 patent are now under inter partes re-examination. Also on June 4, 2007, the PTO granted Microsoft's request for the inter partes reexamination of U.S. Patent No. 6,351,205. Litigation regarding this patent is presently stayed. A true and correct copy of the PTO communication ordering re-examination is attached as Exhibit D. In the communication, the PTO agrees with Microsoft that seven prior art references, including both prior art previously considered by the PTO as well as prior art not previously considered by the PTO, raise substantial new questions of patentability for all asserted claims of the patent. See Exh. D, pp. 3-4. All asserted claims of the `205 patent are now under inter partes re-examination. The following chart identifies the current status of each of the re-examinations sought by
Microsoft for the twelve asserted patents. The six patents in bolded-underlined font are the ones

for which litigation has not been stayed:

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Patent No. 5,999,084 6,102,802 6,135,886 6,222,525 6,343,991 6,906,700 6,208,271 6,344,791 6,347,997 6,351,205 6,400,303 6,563,415

Status of Re-examination Ex parte re-examination ordered. (2/23/07) All claims rejected. (7/12/07) Request for re-examination pending. Request for re-examination pending. Request for re-examination pending. Inter partes re-examination ordered. (7/13/07) Request for re-examination pending. Request for re-examination pending. Request for re-examination pending. Inter partes re-examination ordered. (6/15/07) Request for re-examination pending. Inter partes re-examination ordered. (6/4/07)

Respectfully submitted, Dated: July 17, 2007 By: /s/ Stephen J. Joncus ___________ J. Christopher Carraway (admitted pro hac vice) [e-mail] Joseph T. Jakubek (admitted pro hac vice) [e-mail] Stephen J. Joncus (admitted pro hac vice) [e-mail] Richard D. Mc Leod (Bar No. 24026836) [e-mail] Derrick W. Toddy (admitted pro hac vice) [e-mail] KLARQUIST SPARKMAN, LLP 121 S.W. Salmon Street, Suite 1600 Portland, Oregon 97204 Telephone: [phone] J. Thad Heartfield (Bar No. 09346800) [e-mail]

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Law Offices of J. Thad Heartfield 2195 Dowlen Road Beaumont, Texas 77706 Telephone: [phone] Facsimile: 409-866-5789 Clayton E Dark Jr. (Bar No. 05384500) [e-mail] Clayton E Dark Jr., Law Office 207 E Frank Ave # 100 Lufkin, TX 75901 Telephone: [phone] Stephen McGrath, Esq. (admitted pro hac vice) MICROSOFT CORPORATION One Microsoft Way, Building 8 Redmond, Washington 98052-6399 Telephone: [phone] Facsimile: 425-706-7329 Attorneys for Defendant Microsoft Corporation

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CERTIFICATE OF SERVICE

I hereby certify that all counsel of record who have consented to electronic service are being served with a copy of this document via the Court's CM/ECF system per Local Rule CV-5(a)(3) on this the 17th day of July, 2007. Any other counsel of record will be served by first-class mail.

/s/ Stephen J. Joncus ___________

CERTIFICATE OF SERVICE