On February 29, 2008, the Patent Office issued an Official Action rejecting Tessera's 6,133,627 patent in ex parte reexamination. The Patent Office rejected every claim of the ˜627 patent that is in reexamination.
Siliconware is represented by its General Counsel Juliette Chan and by Michael Heafey of Orrick, Herrington & Sutcliffe, who is leading the reexamination and litigation teams. Siliconware sought reexamination of five heavily licensed Tessera patents taking advantage of the Patent Office's new inter partes reexamination procedures. The latest rejections follow Patent Office actions previously rejecting related Tessera patents over the last two weeks. Since February 15, the Patent Office has acted on Siliconware's reexaminations and has rejected the claims being asserted by Tessera against an array of chip manufacturers in US District Court lawsuits, ITC actions, and arbitration proceedings. The patents subject to Siliconware's reexaminations include Tessera's 6,433,419 and 6,465,893, both of which have rejections in inter partes reexaminations, and Tessera's 5,852,326 which has been similarly rejected in ex parte reexamination.
On February 26, the International Trade Commission took the rarely employed step of staying a hearing based on Siliconware's reexaminations. The ITC stayed Tessera's investigation against Spansion, Qualcom, ATI Technologies, Motorola, STMicroelectronics, and Freescale.
The patents Tessera is asserting against Siliconware are part of Tessera's"Compliant Chip license, a portfolio that had been previously asserted in numerous litigations and which, according to Tessera, has generated over $250 million dollars in licensing profits.
Also representing Siliconware is Greg Novak and James Murphy of Novak Druce + Quigg LLP.
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. Orrick clients include Fortune 100 companies, major industrial and financial corporations, commercial and investment banks, high-growth companies, governmental entities, start-ups and individuals. 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.
NOVAK DRUCE + QUIGG 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.