Anascape, Ltd v. Microsoft Corp. et al

Filing 121

NOTICE by Microsoft Corp. of PTO Orders and Patent Claim Rejections in Microsoft's Requests for Re-Examination of Anascape Patents (Attachments: # 1 Exhibit A# 2 Exhibit B)(Joncus, Stephen)

Anascape, Ltd v. Microsoft Corp. et al

Doc. 121

Case 9:06-cv-00158-RHC

Document 121

Filed 07/23/2007

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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. In the last week, two additional Anascape patents have been placed into re-examination by the PTO, and the PTO has also rejected the asserted claims in those two patents. On July 18, 2007, the PTO granted Microsoft's request for the inter partes reexamination of U.S. Patent No. 6,343,991 and, on the same day, issued an Office Action rejecting all of the claims of the patent. In its Office Action, the PTO agreed with and adopted thirty (30) grounds for rejecting the claims that had been proposed by Microsoft in its request. Litigation regarding this patent has not been stayed. A true and correct copy of the PTO Office Action rejecting all of the asserted claims of the `991 patent is attached as Exhibit A. On July 17, 2007, the PTO granted Microsoft's request for the inter partes reexamination of U.S. Patent No. 6,347,997 and, on the same day, issued an Office Action rejecting all of the asserted claims (claims 32-37) at issue in this lawsuit. In its Office Action,
MICROSOFT'S NOTICE OF PTO ORDERS AND PATENT CLAIM REJECTIONS IN MICROSOFT'S REQUESTS FOR RE-EXAMINATION OF ANASCAPE PATENTS

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the PTO agreed with and adopted all forty-four (44) separate grounds for rejecting the claims that had been proposed by Microsoft in its request. Litigation regarding this patent is presently stayed. A true and correct copy of the PTO Office Action rejecting all of the asserted claims of the `997 patent is attached as Exhibit B. The following charts identify the current status of each of the re-examinations sought by
Microsoft for the twelve asserted patents, the first chart showing the patents for which litigation

has not been stayed. Patent No. (Not Stayed) 5,999,084 6,102,802 6,135,886 6,222,525 6,343,991 6,906,700 Patent No. (Stayed) 6,208,271 6,344,791 6,347,997 6,351,205 6,400,303 6,563,415 Status of Re-examination (as of 7/23/07) Ex parte re-examination ordered. (2/23/07) All claims rejected. (7/12/07) Request for re-examination pending. Request for re-examination pending. All claims rejected. (7/18/07) Inter partes re-examination ordered. (7/13/07) Status of Re-examination (as of 7/23/07) Request for re-examination pending. Request for re-examination pending. All asserted claims rejected. (7/17/07) Inter partes re-examination ordered. (6/15/07) Request for re-examination pending. Inter partes re-examination ordered. (6/4/07)

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Respectfully submitted, Dated: July 23, 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] 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 23rd day of July, 2007. Any other counsel of record will be served by first-class mail.

/s/ Stephen J. Joncus ___________

CERTIFICATE OF SERVICE