WASHINGTON--(Business Wire)--
Orrick, Herrington & Sutcliffe LLP announced today that the United
States Patent and Trademark Office issued an office action confirming
the rejections of all claims of Tessera's 5,852,326 patent in ex parte
reexamination. The Patent Office previously rejected these claims in
an earlier office action.
Tessera is asserting the '326 patent in two investigations in the
International Trade Commission - Investigation Nos. 337-TA-605 and
337-TA-649. The Patent Office has rejected all claims of the '326 that
Tessera is asserting in the ITC.
For example, in response to Tessera's attempt to amend the '326
patent's specification to avoid invalidation, the Patent Office
stated:
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If Patentee (Tessera) wished the meaning to be specifically
narrowed to that meaning proposed by Patentee above, then it
should have been originally submitted in the original
specification. If Patentee (Tessera) had wished the claims to
reflect the above meaning then the claims should have explicitly
recited the extent and purpose of the movement. Examiner
respectfully submits that it is improper for Patentee (Tessera)
to change the scope of the claims by attempting to amend the
claims by adding new matter to the specification rather than by
amending the claims themselves to include the additional features
of the extent and the purpose of the movement.
'326 Office Action, p. 13 (August 1, 2008).
*T
Regarding a prior art referenced to Okinaga, the Patent Office
stated, "Patentee's arguments (Tessera's arguments) directed to
Okinaga have been considered but are not found persuasive." ('326
Office Action, p. 57 (August 1, 2008).)
The Patent Office also stated regarding Tessera's attempts to
distinguish Okinaga:
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Patentee's comment (Tessera's comment) regarding concrete bridges
and railroad tracks being taken as flexible is quite accurate;
they are flexible. If Patentee (Tessera) were to bother
investigating the matter, which apparently he (it) has not, he
(it) would find that bridges are intentionally engineered to be
flexible in order to avoid cracking due to forces resulting from,
inter alia, shifting earth, earthquakes, and vibrations from
traffic passing over the bridge. The same holds for railroad
tracks. Accordingly, Patentee's argument (Tessera's argument)
only reinforces Examiner's indication that the plastic backing
element (base 1) in Okinaga is flexible.
'326 Office Action, p. 58 (August 1, 2008).
*T
Led by its patent litigation counsel, Michael Heafey of Orrick and
its general counsel Juliette Chan, Siliconware Precision Industries
Company, Ltd. and its U.S. subsidiary requested reexamination of the
asserted claims of Tessera's '326 patent as part of Siliconware's
defenses against Tessera's accusations of patent infringement. Also
representing Siliconware is Greg Novak and James Murphy of Novak Druce
+ Quigg LLP.
About Orrick
Orrick, Herrington & Sutcliffe LLP is a global law firm with more
than 1,000 lawyers in North America, Europe and Asia. The firm focuses
on litigation, complex and novel finance and innovative corporate
transactions. The firm's 18 offices are located in Beijing, Hong Kong,
London, Los Angeles, Milan, Moscow, New York, Orange County, Pacific
Northwest, Paris, Rome, Sacramento, San Francisco, Shanghai, Silicon
Valley, Taipei, Tokyo and Washington, D.C.
About Novak, Druce + Quigg
Novak, Druce + Quigg (NDQ) LLP is national firm focusing
exclusively on complex intellectual property matters with more than 45
attorneys, agents, and scientific/technical advisors and analysts with
offices in Houston, Texas; Washington, D.C.; and San Francisco, CA.
NDQ attorneys help its clients navigate the complexities of U.S.
intellectual property law by securing, enforcing, and defending their
intellectual property rights. With the leadership of Gregory V. Novak
and Tracy W. Druce, the firm has built a national reexamination
practice including the successful involvement in the NTP cases on
behalf of client Research in Motion (RIM) with 2,185 total claims
rejected.
Orrick, Herrington & Sutcliffe LLP
Adi Weisman, + 1-212-506-5122
aweisman@orrick.com
Copyright Business Wire 2008
