Free Motion to Stay - District Court of California - California

Case 3:07-cv-03177-MMC

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Robert G. Krupka, P.C. (Bar No. 196,625) E-mail: [email protected] Marc H. Cohen (Bar No. 168,773) E-mail: [email protected] Philip T. Chen (Bar No. 211,777) E-mail: [email protected] KIRKLAND & ELLIS LLP 777 South Figueroa Street Los Angeles, California 90017 Telephone: (213) 680-8400 Facsimile: (213) 680-8500 Attorneys for RESEARCH IN MOTION LIMITED and RESEARCH IN MOTION CORPORATION

UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA SAN FRANCISCO DIVISION

RESEARCH IN MOTION LIMITED, Plaintiff, v. VISTO CORPORATION, Defendant. AND RELATED COUNTERCLAIMS

Case No. C-07-3177 (MMC) DECLARATION OF PHILIP T. CHEN IN SUPPORT OF RIM'S MOTION TO STAY PROCEEDINGS RELATING TO THE VISTO PATENTS PENDING REEXAMINATION HEARING REQUESTED Date: February 22, 2008 Time: 9:00 a.m. Judge: The Honorable Maxine M. Chesney

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DECLARATION OF PHILIP T. CHEN IN SUPPORT OF MOTION TO STAY

Case 3:07-cv-03177-MMC

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I, Philip T. Chen, declare: 1. I am a partner with Kirkland & Ellis LLP, the law firm representing Research In

Motion Limited and Research In Motion Corporation (collectively "RIM") in the above-captioned matter. 2. Attached hereto as Exhibit A is a true and correct copy of the inter partes

reexamination request (exhibits omitted) for U.S. Patent No. 7,228,383, submitted by RIM to the United States Patent and Trademark Office ("Patent Office") on January 8, 2008. 3. Attached hereto as Exhibit B are true and correct copies of excerpts from the Manual

of Patent Examining Procedure at Sections 2241 and 2641. 4. Attached hereto as Exhibit C is a true and correct copy of the ex parte reexamination

request (exhibits omitted) for U.S. Patent No. 7,225,231, submitted by RIM to the Patent Office on January 9, 2008. 5. Attached hereto as Exhibit D are true and correct copies of excerpts from the most-

recent office action issued by the Patent Office on September 24, 2007 in the reexamination of U.S. Patent No. 6,708,221, rejecting all challenged claims of the patent. The `231 patent issues from an application that purports to be a continuation of the application resulting in the `221 patent. 6. Attached hereto as Exhibit E are true and correct copies of excerpts from the most-

recent office action issued by the Patent Office on September 20, 2007 in the reexamination of U.S. Patent No. 7,039,679, rejecting all challenged claims of the patent. The `679 patent issues from an application that purports to be a continuation of the application resulting in the `221 patent. 7. Attached hereto as Exhibit F are true and correct copies of excerpts from the most-

recent office action issued by the Patent Office on September 5, 2007 in the reexamination of U.S. Patent No. 6,085,192, rejecting all challenged claims of the patent. The `221 patent issues from an application that purports to be a continuation-in-part of the applications resulting in the `192 and `708 patents. 8. Attached hereto as Exhibit G are true and correct copies of excerpts from the most-

recent office action issued by the Patent Office on August 3, 2007 in the reexamination of U.S. Patent No. 6,023,708, rejecting all challenged claims of the patent. The `221 patent issues from an
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application that purports to be a continuation-in-part of the applications resulting in the `192 and `708 patents. 9. Attached hereto as Exhibit H are true and correct copies of excerpts from the most-

recent office action issued by the Patent Office on September 20, 2007 in the reexamination of U.S. Patent No. 6,151,606, rejecting all challenged claims of the patent. The `606 patent issues from an application that claims priority to and incorporates by reference the application resulting in the `708 patent. 10. Attached hereto as Exhibit I are true and correct copies of excerpts from a report

titled "U.S. Patent and Trademark Office ­ Performance and Accountability Report ­ Fiscal Year 2007." Tables 13A and 13B on page 121 of this report show that, in 2007, the Patent Office granted 577 ex parte reexamination requests out of 594 determinations made, and granted 118 inter partes reexamination requests out of 119 determinations made. 11. Attached hereto as Exhibit J is a true and correct copy Visto's Preliminary

Infringement Contentions in this case (exhibits omitted), served on October 19, 2007.

I declare under penalty of perjury that the foregoing is true and correct. Executed this 18th day of January 2008 in Los Angeles, California. /s/ Philip T. Chen Philip T. Chen

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DECLARATION OF PHILIP T. CHEN IN SUPPORT OF MOTION TO STAY

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CERTIFICATE OF SERVICE I am employed in the County of Los Angeles, State of California. I am over the age of 18 and not a party to the within action. My business address is 777 S. Figueroa Street, 37th Floor, Los Angeles, California 90017. On January 18, 2008, I caused a copy of the following document(s) described DECLARATION OF PHILIP T. CHEN IN SUPPORT OF RIM'S MOTION TO STAY PROCEEDINGS RELATING TO THE VISTO PATENTS PENDING REEXAMINATION to be served on the interested parties in this action as follows: [X] [VIA ELECTRONIC MAIL] I caused said document[s] to be sent by electronic mail to the email address(es) indicated for the party(ies) listed below: Robert D. Becker E-mail: [email protected] Eugene L. Hahm E-mail: [email protected] Shawn G. Hansen E-mail: [email protected] [email protected] MANATT, PHELPS & PHILLIPS, LLP 1001 Page Mill Road, Building 2 Palo Alto, CA 94304 Telephone: (650) 812-1300 Facsimile: (650) 213-0260 [X] [FEDERAL] I declare that I am employed in the office of a member of the bar of this court at whose direction this service was made. Executed January 18, 2008, at Los Angeles, California.

/s/ Phillip T. Chen Phillip T. Chen

Certificate of Service Case No. C-07-3177 (MMC)