Litigation Update

Latest Legal Analysis
By Kilopass Attorney, Shailendra K. Maheshwari, SNR Denton

US District Court Case Update: Kilopass v. Sidense

“The U.S. District Court has delivered a Markman Order favorable to Kilopass on all of the ten most disputed patent terms in its patent litigation against Sidense.  This favorable result will help the jury understand more clearly Kilopass’ infringement case against Sidense in the upcoming trial in the summer of 2012.  We believe the U.S. District Court’s decision supporting Kilopass’ definition of key terms used in the three key Kilopass patents will greatly facilitate proving a case against Sidense for infringement of our intellectual property.  This case has always been about Sidense supplying their designs that incorporates Kilopass intellectual property to their customers who have built products that infringe our patents.  The lawsuit will not be resolved by the Patent and Trademark Office but by a jury next year.”

On September 9, 2011 a case management meeting was held before U.S. District Court Judge Susan Illston that set the remaining milestones in the case including the trial date as shown below:
1    Complete fact discovery December 19, 2011
2    Complete expert discovery June 30, 2012
3    Summary Judgment filed by July 13 2012
4    Pretrial conference – September 11, 2012
5    Trial date September 30, 2012

On October 11, 2011, Kilopass Filed Three Motions with the U.S. District Court:  (1) a motion to Dismiss the Business Tort Suit Brought by Sidense Corp., (2) a motion to oppose Sidense’s request to change its Invalidity Contentions (legal arguments for why Sidense does not infringe Kilopass’ patents), and (3) a motion to file under seal the evidence supporting Kilopass’s opposition to Sidense’s request to change its Invalidity Contentions.

On November 2, 2011, the US District Court denied Sidense’s latest attempted defense in the patent infringement case. The USPTO confirmation of Kilopass’ ‘751 patent and the latest court ruling will limit Sidense’s defense options with respect to the ‘751 patent at the jury trial in September 2012.

USPTO Update:

Four patents are currently before the U.S. Patent & Trademark Office (USPTO) for reexamination: Kilopass patents no. 6,856,540; no. 6,777,757 and no. 6,940,751 and Sidense patent no. 7,402,855. Below is a listing of recent USPTO activity.

1. On January 10th and 18th this year, respectively, the USPTO accepted a request to reexamine Kilopass patents No. 6,777,757 and No. 6,856,540. Both are awaiting examiner review.

2. On February 2nd this year, the USPTO validated all claims in the key Kilopass 6,940,751 patent on the 1T anti-fuse memory bit cell.

3. On August 22, 2011, Sidense appealed the USPTO validation of Kilopass ‘751 patent. The USPTO Board of Patent Appeals and Interferences will announce its decision in the first half of 2012.

4. On January 26, 2011, the USPTO validated the claims of Sidense’s 7,402,855 patent.

5. On June 22, 2011 Kilopass appealed the USPTO validation of Sidense ‘855 Patent. The USPTO Board of Patent Appeals and Interferences will announce its decision in the first half of 2012.

6. On September 22, 2011, Kilopass Filed a Rebuttal Brief for Inter Partes Reexamination of U.S. Patent No. 7,402,855, requesting that the U.S. Patent & Trademark Office Board of Patent Appeals and Interferences direct a reexamination of Sidense U.S. Patent No. 7,402,855.

7. Though the most recent U.S. Patent and Trademark Office (USPTO) ruling has no bearing on the U.S. District Court case, the USPTO again rejected the claims in 6,856,540 (‘540) and newly proposed claims to ‘540. While the District Court case proceeds based on the USPTO confirming all claims in Kilopass key patent 6,940,751, Kilopass will respond to the USPTO’s latest ruling in approximately a month; a month or so later Sidense can file a rebuttal and the USPTO reexamination process will continue.

Since we were founded in 2001, Kilopass has made a pledge to make our customers –– who happen to be leading design teams worldwide in the analog/mixed signal, automotive, consumer, industrial and mobile markets –– successful.  That pledge, which is part of our corporate culture, has rewarded us with many loyal customers and partners who have repeatedly asked us over the last several years whether Sidense’s products were infringing on our patents…  Read letter