US Patent and Trademark Office (USPTO) Rejects All Claims of Sidense's Key Patent ('855) and Orders Reexamination

USPTO Adopts and Supports Kilopass’ Position in Patent Reexamination   

Santa Clara, Calif. – August 12, 2010 – Kilopass Technology Inc., a leading provider of embedded non-volatile memory (NVM) IP, announced today that it has achieved the first major milestone at the United States Patent and Trademark Office (USPTO) by being granted the request for an inter partes reexamination of Sidense's U.S. Patent No. 7,402,855.  Furthermore, the USPTO has rejected all four claims in this patent.  Sidense has 60 days to respond to the rejection, followed by Kilopass’ answer within 30 days, upon which USPTO will deliver its final ruling (if different).

USPTO’s Inter partes reexamination process enables a three-party dialogue to clarify the disposition of a patent.  Typically, the USPTO must first decide whether or not the petition to reexamine will be granted.  Occasionally, the USPTO will reject some of the broadest claims in the disputed patent as over-reaching.  However, it is rare, as is in this case, for all claims of the patent to be rejected in the initial ruling.

“We are pleased with the decision from the USPTO,” said Kilopass Vice President of Engineering, Lee Cleveland. “The ruling has overwhelmingly validated our belief that Sidense’s product is based on Kilopass’ 1T patent and that Sidense does not have the rights to offer its product for license. We are fully committed to the legal process at both the USPTO and federal district court, and believe that the ruling can only help accelerate the ruling in the district court.”

“Sidense’s ‘855 patent purports to claim memory read circuits with Kilopass’ patented variable oxide 1T transistor,” said Harry Luan, Kilopass’ CTO. “The additional research Kilopass provided clearly shows prior art of the circuits dating back to 1994, which facilitated the USPTO’s rejection of Sidense’s claims.  We are therefore confident in supporting the USPTO’s process to reach a satisfactory conclusion.”

For More Information

The USPTO action and initial ruling is available from the US Patent and Trademark office website, as well as Kilopass’ web site.

About Kilopass

Kilopass Technology, Inc., a leading supplier of embedded NVM intellectual property, leverages standard logic CMOS processes to deliver one-time programmable (OTP) memory. With 54 patents granted or pending and more than 500,000 wafers shipped from a dozen foundries and Integrated  Device Manufacturers (IDM), Kilopass has more than 80 customers in applications ranging from storage of firmware and security codes to calibration data and other application-critical information.  The company is headquartered in Santa Clara, California. For more information, please visit www.kilopass.com or email info@kilopass.com.

Chronology of Kilopass’ IP Protection Actions

May 14, 2010

– Kilopass filed patent infringement lawsuit against Sidense in United States District Court for the Northern District of California (District Court

May 21, 2010

– Kilopass filed a request at the United States Patent and Trademark Office (USPTO) to reexamine Sidense's U.S. Patent No. 7,402,855, and rule the patent invalid·        

June 4, 2010

– Kilopass filed an amendment to the district court filing to include infringement of two additional US patents granted to Kilopass. The complaint now includes three patents: US 6,940,751, US 6,856,540 and US 6,777,757.  In addition, the complaint also alleges that Sidense violated multiple Federal, California and Common Law statutes concerning gross negligence, unfair business practices, false advertising, and defamation. ·        

July 29, 2010

– Sidense applied for dismissal of Kilopass’ complaint on procedural grounds, pushing the court action back an additional month.        

August 10, 2010

– Kilopass notified that USPTO has granted its request for reexamination of Sidense’s patent.