2/27/2004 - Extended Systems (NASDAQ: XTND) received notice that the Examiners of the U.S. Patent and Trademark Office (PTO) have issued final rejections in the pending reexaminations of two key Intellisync Corp. (NASDAQ: SYNC) patents. The PTO has also refused an interview with Intellisync's attorney and requested any further written arguments regarding the prior art to be submitted in connection with the reexamination of a third patent. All three patents are involved in the ongoing litigation between Extended Systems and Intellisync (formerly known as Pumatech, Inc. until name change last week). All three patents are being reexamined based on requests and prior art submitted by Extended Systems.
These two patents that have received final rejections from the PTO are U.S. Patent Nos. 5,392,390 ("the '390 patent") entitled "Method for Mapping, Translating, and Dynamically Reconciling Data Between Disparate Computer Platforms" and 6,141,664 ("the '664 patent") entitled "Synchronization of Databases with Date Range." All claims of the '390 patent have been either rejected by the Examiner in the final Office Action or were previously cancelled during the reexamination. In the Final Office Action for the '664 patent, the Examiner rejected 78 of the 80 claims of the '664 patent.
Additionally, U.S. Patent No. 6,212,529 ("the '529 patent"), entitled "Synchronization of Databases Using Filters," is currently under reexamination with the PTO. In the January 16, 2004 Office Action, the Examiner rejected all claims of the '529 patent. According to the Communication from the Patent Office which Extended Systems received yesterday, Intellisync requested a personal interview with the Examiner after it submitted a declaration to try to establish an invention date before prior art being considered by the Examiner. However, the Examiner declined the interview, and stated that: "The evidence submitted [by Intellisync] is insufficient to establish a conception of invention prior to the effective date." The Examiner also noted that: "The Declaration is not convincing, furthermore, the newly introduced prior art reduces the possible reasons for allowance . . . The Examiner is not convinced at this stage of the prosecution history that claims are allowable and a personal interview would not expedite the case to final action."
Intellisync will have the opportunity to appeal these rulings by the Examiners. Together with Judge Jenson's decision granting summary judgment that Extended Systems does not infringe Intellisync's '676 patent, Extended Systems believes the original eight patents asserted in the litigation have now effectively been reduced to four.
These rulings come on the heels of the rulings in the litigation granting Extended Systems' motion to add a claim of inequitable conduct by Pumatech [now Intellisync] in obtaining the '664 and '529 patents and denying Intellisync's motion for summary judgment on this claim. Extended Systems presented evidence to the court of the materiality and existence of a prior art product sold by Intellisync approximately three years before the patent applications for two of its patents were filed. Patent rules require an applicant for a patent to disclose all material information and prior art during the prosecution of a patent application.
Extended Systems believes that these rulings, along with Extended Systems' other invalidity and non-infringement defenses against Intellisync patents, continue to put significant elements of Intellisync's IP portfolio at considerable risk of loss, and reinforce Extended Systems' belief that it will prevail at the trial scheduled for April 12, 2004.
"The '664 and '529 are two of the broadest patents Intellisync has in its infringement lawsuit against Extended Systems," said Charles Jepson, President and CEO of Extended Systems. "Along with the rejection of the '390 patent and the court ruling back in November removing the '676 patent from the litigation, this deals a serious blow to the breadth and depth of Intellisync's patent portfolio. We can't wait to get to court. Extended Systems has asserted from the beginning of this dispute that we are confident we do not infringe any valid Intellisync patents. The rulings to date by the PTO and Judge Jensen have supported our belief."
About Extended Systems
Extended Systems provides the expertise, strategy and solutions to help enterprise organizations streamline their business processes through mobile technology. The company's OneBridge mobile solutions suite enables companies to mobilize critical enterprise applications such as e-mail, field service, sales force automation, enterprise resource planning and customer relationship management. Extended Systems has more than 3,000 enterprise customers worldwide and key alliance relationships with Avaya, EDS, HP, Microsoft, Motorola, Nokia, palmOne, PalmSource, Sharp, Siemens, Software AG, Sony Ericsson, Symbian and Toshiba. Founded in 1984, Extended Systems has offices and subsidiaries in the United States and worldwide. For more information, call 1-800-235-7576.
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