Tessera receives right of appeal notice in '419 patent re-exam

SAN JOSE, USA: Tessera Technologies Inc. announced that it has received a Right of Appeal Notice, dated June 19, 2009, from the US Patent and Trademark Office (PTO) addressing the ongoing inter partes reexamination of Tessera's US Patent No. 6,433,419 (the '419 patent).

On September 17, 2008, the PTO had issued, but then later withdrew, a Right of Appeal Notice relating to the '419 patent. The new Notice withdraws one prior rejection of the claims under reexamination, but maintains the other prior rejections of the claims under reexamination. Tessera is currently reviewing its options related to this new Notice.

Unless the Right of Appeal Notice is again withdrawn by the PTO, the reexamination proceedings may now move on to the Board of Patent Appeals and Interferences, after which they may go back to the Examiner, or proceed to further appeal in the U.S. Court of Appeals for the Federal Circuit.

Typically, these appellate procedures can take many years to be resolved. The claims of a patent undergoing reexamination remain valid. A reexamination certificate canceling, changing or confirming existing claims can only be issued after all appeals in a reexamination proceeding have been exhausted.

The '419 patent's validity has been upheld in litigation, including in the recently-concluded International Trade Commission (ITC) action, ITC Inv. No. 337-605 (Wireless ITC action) against Motorola, Qualcomm, Freescale and others.

This Right of Appeal Notice does not address the other Tessera patent that was found valid and infringed in the Wireless ITC action, US Patent No. 5,852,326 (the '326 patent). The '326 patent is subject to separate, ex parte reexamination proceedings, which remain pending in the PTO.