Anascape, Ltd v. Microsoft Corp. et al

Filing 64

REPLY to Response to Motion re 56 MOTION to Stay Litigation Pending Reexamination of the Patents-in-Suit by the Patent Office filed by Microsoft Corp.. (Attachments: # 1 Exhibit A - Declaration of Joseph T. Jakubek# 2 Exhibit B# 3 Exhibit C# 4 Exhibit D# 5 Exhibit E# 6 Exhibit F# 7 Exhibit G)(Carraway, J)

Anascape, Ltd v. Microsoft Corp. et al

Doc. 64 Att. 1

Case 9:06-cv-00158-RHC

Document 64

Filed 02/05/2007

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EXHIBIT A
to Microsoft's Reply in Support of its Motion to Stay Litigation Pending Reexaminations

Dockets.Justia.com

Case 9:06-cv-00158-RHC

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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

DECLARATION OF JOSEPH T. JAKUBEK IN SUPPORT OF DEFENDANT MICROSOFT'S REPLY BRIEF ON ITS MOTION TO STAY PROCEEDINGS PENDING COMPLETION OF THE REEXAMINATION OF THE PATENTS-IN-SUIT 1. I, Joseph T. Jakubek, am an attorney with the firm of Klarquist Sparkman, LLP,

counsel for defendant Microsoft Corporation, and I have been admitted pro hac vice to practice in this Court for this case. I have personal knowledge of the facts herein and, if called as a witness, could testify competently thereto. 2. Pursuant to E.D. Tex. Civil L.R. 7(b), certain of the exhibits attached hereto "have

the cited portions highlighted[.]" Thus, where this declaration states that a "true and correct copy" of a document is attached as an exhibit, that statement does not reflect that certain of such exhibits contain highlighting or bracketing of the portions pertinent to this motion. 3. On January 31, 2007, Microsoft filed the last of the reexamination requests for all

twelve patents-in-suit with the United States Patent and Trademark Office ("PTO"). These twelve requests ask the PTO to reexamine all claims that Anascape has asserted against Defendants in this litigation. Every patent-in-suit that was eligible for inter partes reexamination pursuant to 37 C.F.R. § 1.913 was filed as an inter partes request.

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JAKUBEK DECLARATION IN SUPPORT OF MICROSOFT'S REPLY FOR ITS MOTION TO STAY PROCEEDINGS

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4.

Set forth below is a chart listing the patents-in-suit, whether the request for

reexamination was filed as an inter partes or ex parte proceeding, and the date the request was filed: Patent-in-Suit 5,999,084 6,102,802 6,135,886 6,208,271 6,222,525 6,343,991 6,344,791 6,347,997 6,351,205 6,400,303 6,563,415 6,906,700 5. Procedure Ex Parte Ex Parte Ex Parte Ex Parte Ex Parte Inter Partes Inter Partes Inter Partes Inter Partes Inter Partes Inter Partes Inter Partes Date Filed 12/15/06 12/13/06 1/29/07 1/31/07 1/31/07 1/29/07 1/31/07 1/12/07 1/31/07 1/31/07 1/31/07 1/31/07

Attached hereto as Exhibit B is a chart that identifies, for each patent-in-suit, the

"new" prior art at issue in the reexaminations, that is, the prior art that was not before the PTO for the original examination of the patent but is cited to the PTO in Microsoft's request for reexamination as rendering claims of the patent invalid. 6. Attached hereto as Exhibit C is a true and correct copy of pertinent pages from

Defendant Wacoal America, Inc.'s Motion for Stay Pending Reexamination of the Patent-in-Suit, filed by Wacoal America's attorneys McKool Smith on December 16, 2004 in the case Amanda May v. Wacoal America, Inc. et al., Case No. 4:03-cv-160-DF (E.D. Tex.). The Court granted the Motion. See Exhibit 15 to Carraway Declaration filed January 16, 2007. 7. Attached hereto as Exhibit D is a true and correct copy of a letter dated December

14, 2006 from Luke McLeroy at McKool Smith (attorney for Anascape) to J. Christopher Carraway at Klarquist Sparkman (attorney for Microsoft) identifying the "categories of

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JAKUBEK DECLARATION IN SUPPORT OF MICROSOFT'S REPLY FOR ITS MOTION TO STAY PROCEEDINGS

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