ITC Case Against Tessera Stayed Due to Patent Reexamination led by Novak Druce + Quigg LLP

Business Wire, Feb 26, 2008

WASHINGTON -- The PTO's Central Reexamination Unit ("CRU") has maintained its rejections of the patents being asserted by Tessera in the International Trade Commission ("ITC"). In a ruling issued today by Judge Essex, the ITC has stayed the ITC hearing pending the final outcome of the reexaminations. The ITC case had been brought by Tessera against Motorola, Qualcomm, Freescale and others.

Many of the patents Tessera is asserting in either the ITC and US District Court litigation comprise members of Tessera's "Compliant Chip" license, a portfolio of patents that had been previously asserted in numerous aggressive litigations and which, according to Tessera, has generated over 250 million dollars in licensing profits.

Last week, the CRU upheld earlier preliminary rejections of patent claims being asserted against an array of chip manufacturers in US District Court lawsuits, ITC actions, and arbitration proceedings. Involved patents include U.S. 6,433,419 and 6,465,893, both of which have now had rejections issued by the CRU in inter partes reexaminations and U.S. 5,852,326 and 5,861,666 which both have rejections in ex parte reexaminations.

The reexaminations were requested by Siliconware Precision Industries Co. Ltd. taking advantage of the Patent Office's new inter partes reexamination procedures for addressing validity issues.

Gregory Novak is leading the reexaminations with James Murphy at Novak Druce Quigg LLP, in conjunction with attorneys from Orrick, Herrington & Sutcliffe LLP led by Michael Heafey and Sanjeet Dutta.

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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 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.