Tessera shares up on re-exam action
Thomson Financial reported:
Shares of Tessera Technologies Inc. rallied Monday after the San Jose, Calif.-based company said the U.S. Patent and Trade Office (PTO) extended the reexamination of the company's patent related to semiconductor packaging technologies used in the wireless industry.
Tessera said the examiners' decision is known as an action closing prosecution, and gives Tessera the opportunity to respond within one month to questions raised by the PTO examiners. Tessera said it plans to respond.
Shares of Tessera rose 11% to $19.18 on heavy volume of 1.4 million. The issue's 30-day average volume is about 1 million.
Barron's covered the same event in the following way:
Chip industry miniaturization specialist Tessera Technologies (TSRA) said the U.S. Patent and Trademark Office late Friday [June 13] issued an “office action” which rejects certain claims of the company’s patent No. 6,433,419. Tessera said it will respond to the decision, which it said is known as an “Action Closing Prosecution.” The examiners may then reopen prosection [sic: prosecution], issue another ACP, or issue a notice that Tessera may appeal to the Board of Patent Appeals and Interferences.
Here’s the really interesting part: in its release, Tessera contends that the average patent re-examination takes 5-8 years. Tessera figures this case is not going to finish before the patent expires in September 2010. They are going to drag this out as long as possible, is what they are basically saying. And until the process is concluded, the patent remains in force. The patent is at the heart of two pending U.S. International Trade Commission cases in which Tessera makes claims against a number of companies.
So despite what is on the surface a negative ruling, the Street seems happy to have this drag on as long as possible: TSRA today is up $1.82, or 10.5%, at $19.16.
Here's the Tessera press release:
Tessera Technologies, Inc., a leading provider of miniaturization technologies for the electronics industry, today announced the U.S. Patent and Trade Office (PTO) late on Friday, June 13, 2008, issued an office action in the ongoing inter partes reexamination of Tessera's U.S. Patent No. 6,433,419 (the '419 patent), which relates to semiconductor packaging technologies used in the wireless industry, among other applications. The examiners’ decision, which rejects certain claims of the '419 patent, is known as an Action Closing Prosecution (ACP), and gives Tessera the opportunity to respond within one month to questions raised by the PTO examiners.
Tessera plans to respond to the ACP. The examiners may then reopen prosecution, issue another ACP, or issue a notice that Tessera may appeal the examiners’ decision to the Board of Patent Appeals and Interferences. There is no deadline for further action by the examiners. Tessera anticipates it ultimately will be required to appeal the examiners’ decision.
According to a recent study of inter partes reexamination statistics by the Institute for Progress, the average pendency of inter partes reexaminations where appeals are involved is five to eight years, which means that the reexamination of the ‘419 patent likely will not be completed before the ‘419 patent expires in September 2010. The claims of a patent undergoing reexamination are not invalidated until a reexamination certificate cancelling the claims is issued. A certificate can only be issued after all actions closing prosecution are concluded, and all appeals have been exhausted.
A first ACP was issued by the examiners on February 19, 2008. Following review of submissions in response to that ACP, the examiners issued the second ACP on June 13, 2008.
The press release announcing the "Action Closing Prosecution" is titled PTO Extends Reexamination of Tessera Patent.
On the surface, strictly Alice-in-Wonderland, but this process could drag on until patent expiry.
**UPDATE
The third party challenging US 6,433,419 was SiliconWare, who wrote on 9 June 2008 that claim terms must be assigned their meaning to one of ordinary skill AT THE TIME OF THE INVENTION, citing Phillips v. AWH, 415 F.3d 1303. The challenger also noted the PTO must give claims their broadest possible meaning (MPEP 2111) and that limitations from the specification must not be read into the claims, citing Superguide, 358 F.3d 870.
The action closing prosecution in re-exam 95/000,227 on 13 June 2008 is 379 pages long. Claims 1-19, 22-24, and 27 were rejected in re-exam. Pages 8-9 mention six (6) pieces of prior art brought up by the requestor. Pages 12-13 note how the USPTO utilized the references supplied by the requestor. Most arguments of the requestor were adopted with modification, or NOT adopted at all. The requestor had the most success with the Freyman reference US 4,700,473, for which arguments were accepted as to claims 1-15. Arguments involving Freyman and Otsuka were accepted as to 16, 24, and 27. Arguments supplied by the requestor as to other claims (and other references) failed.
See also Afloat
Shares of Tessera Technologies Inc. rallied Monday after the San Jose, Calif.-based company said the U.S. Patent and Trade Office (PTO) extended the reexamination of the company's patent related to semiconductor packaging technologies used in the wireless industry.
Tessera said the examiners' decision is known as an action closing prosecution, and gives Tessera the opportunity to respond within one month to questions raised by the PTO examiners. Tessera said it plans to respond.
Shares of Tessera rose 11% to $19.18 on heavy volume of 1.4 million. The issue's 30-day average volume is about 1 million.
Barron's covered the same event in the following way:
Chip industry miniaturization specialist Tessera Technologies (TSRA) said the U.S. Patent and Trademark Office late Friday [June 13] issued an “office action” which rejects certain claims of the company’s patent No. 6,433,419. Tessera said it will respond to the decision, which it said is known as an “Action Closing Prosecution.” The examiners may then reopen prosection [sic: prosecution], issue another ACP, or issue a notice that Tessera may appeal to the Board of Patent Appeals and Interferences.
Here’s the really interesting part: in its release, Tessera contends that the average patent re-examination takes 5-8 years. Tessera figures this case is not going to finish before the patent expires in September 2010. They are going to drag this out as long as possible, is what they are basically saying. And until the process is concluded, the patent remains in force. The patent is at the heart of two pending U.S. International Trade Commission cases in which Tessera makes claims against a number of companies.
So despite what is on the surface a negative ruling, the Street seems happy to have this drag on as long as possible: TSRA today is up $1.82, or 10.5%, at $19.16.
Here's the Tessera press release:
Tessera Technologies, Inc., a leading provider of miniaturization technologies for the electronics industry, today announced the U.S. Patent and Trade Office (PTO) late on Friday, June 13, 2008, issued an office action in the ongoing inter partes reexamination of Tessera's U.S. Patent No. 6,433,419 (the '419 patent), which relates to semiconductor packaging technologies used in the wireless industry, among other applications. The examiners’ decision, which rejects certain claims of the '419 patent, is known as an Action Closing Prosecution (ACP), and gives Tessera the opportunity to respond within one month to questions raised by the PTO examiners.
Tessera plans to respond to the ACP. The examiners may then reopen prosecution, issue another ACP, or issue a notice that Tessera may appeal the examiners’ decision to the Board of Patent Appeals and Interferences. There is no deadline for further action by the examiners. Tessera anticipates it ultimately will be required to appeal the examiners’ decision.
According to a recent study of inter partes reexamination statistics by the Institute for Progress, the average pendency of inter partes reexaminations where appeals are involved is five to eight years, which means that the reexamination of the ‘419 patent likely will not be completed before the ‘419 patent expires in September 2010. The claims of a patent undergoing reexamination are not invalidated until a reexamination certificate cancelling the claims is issued. A certificate can only be issued after all actions closing prosecution are concluded, and all appeals have been exhausted.
A first ACP was issued by the examiners on February 19, 2008. Following review of submissions in response to that ACP, the examiners issued the second ACP on June 13, 2008.
The press release announcing the "Action Closing Prosecution" is titled PTO Extends Reexamination of Tessera Patent.
On the surface, strictly Alice-in-Wonderland, but this process could drag on until patent expiry.
**UPDATE
The third party challenging US 6,433,419 was SiliconWare, who wrote on 9 June 2008 that claim terms must be assigned their meaning to one of ordinary skill AT THE TIME OF THE INVENTION, citing Phillips v. AWH, 415 F.3d 1303. The challenger also noted the PTO must give claims their broadest possible meaning (MPEP 2111) and that limitations from the specification must not be read into the claims, citing Superguide, 358 F.3d 870.
The action closing prosecution in re-exam 95/000,227 on 13 June 2008 is 379 pages long. Claims 1-19, 22-24, and 27 were rejected in re-exam. Pages 8-9 mention six (6) pieces of prior art brought up by the requestor. Pages 12-13 note how the USPTO utilized the references supplied by the requestor. Most arguments of the requestor were adopted with modification, or NOT adopted at all. The requestor had the most success with the Freyman reference US 4,700,473, for which arguments were accepted as to claims 1-15. Arguments involving Freyman and Otsuka were accepted as to 16, 24, and 27. Arguments supplied by the requestor as to other claims (and other references) failed.
See also Afloat
posted by Lawrence B. Ebert at 4:57 AM
0 Comments:
Post a Comment
<< Home