U.S. Patent Office Upholds Validity of Tessera Patent
SAN JOSE, Calif. — (BUSINESS WIRE) — October 10, 2014 — Tessera Technologies, Inc. (NASDAQ: TSRA) ("Tessera" or the "Company") announced today that a California state court confirmed Tessera, Inc.'s arbitration award and entered judgment of $128,335,504 plus post-judgment interest against Amkor Technology, Inc. ("Amkor"), and that the U.S. Patent Office confirmed the patentability of key claims in a Tessera patent that Amkor had challenged in an inter partes review ("IPR") proceeding. The patent was one of several at issue in the arbitration.
Earlier this year, a tribunal convened by the International Court of Arbitration of the International Chamber of Commerce issued a damages award in Tessera's favor after finding that Amkor had breached its 1996 license agreement with Tessera, Inc.
Tessera, Inc. filed a petition to confirm the award in the Superior Court of California, County of San Francisco a first step towards enforcement of the award. Amkor opposed confirmation and filed a petition to vacate, modify, or correct the award, arguing that the arbitrators exceeded their authority. Amkor also filed a motion to stay. The Superior Court issued an order granting Tessera's petition and denying Amkor's petition and motion, and entered judgment in Tessera's favor. The Court ordered that Amkor must pay Tessera $112,851,731 in damages and $15,483,773 in pre-judgment interest. The Court also ordered that post-judgment interest will continue to accrue on the unpaid principal. Based on the current amount of unpaid principal, the post-judgment interest will accrue at $30,918 per day.
Tessera's General Counsel Paul Davis praised the rulings. "Now that a court has confirmed the final and binding arbitration award and rejected Amkor's arguments for refusing to satisfy the award, and now that the Patent Office has upheld the validity of our patent, we hope that Amkor will finally live up to its agreement and pay on the award rather than continue to delay and challenge it through endless procedural maneuvers and appeals." Davis indicated that if Amkor does not pay voluntarily, Tessera will seek to enforce the award and the Court's judgment.
Tessera also announced today that the U.S. Patent Office's Patent Trial and Appeals Board ("PTAB") issued a favorable IPR decision confirming the patentability of 14 out of 16 challenged claims in Tessera, Inc.'s U.S. Patent 6,046,076 ("'076 patent"). The '076 patent was one of several patents at issue in the arbitration between Tessera, Inc. and Amkor.
"We are thrilled with both results," Davis said. "Despite Amkors repeated attempts to delay and challenge the arbitration award, both the Court and the Patent Office have ruled in our favor and against Amkor. Tessera, Inc. and Amkor agreed to an arbitration process that was intended to be final and binding. The parties' dispute arose nearly a decade ago, and the parties have invested substantial time and resources in the arbitration process."
Davis continued, "We remain open to building a collaborative relationship with Amkor as we have done with numerous other companies, where technical collaboration is a key part of our focus. Unfortunately, Amkor has elected to ignore its previous agreement and we will continue to take the necessary steps to enforce and collect on the award."
Safe Harbor Statement
This document contains forward-looking statements, which are made pursuant to the safe harbor provisions of the Private Securities Litigation Reform Act of 1995. Forward-looking statements involve risks and uncertainties that could cause actual results to differ significantly from those projected, particularly with respect to the effect of the IPR decision and the confirmation and judgment relating to the arbitration award. Material factors that may cause results to differ from the statements made include the plans or operations relating to the businesses of the Company; market or industry conditions; changes in patent laws, regulation or enforcement, or other factors that might affect the Company's ability to protect or realize the value of its intellectual property; the expiration of license agreements and the cessation of related royalty income; the failure, inability or refusal of licensees to pay royalties; initiation, delays, setbacks or losses relating to the Company's intellectual property or intellectual property litigations, or invalidation or limitation of key patents; fluctuations in operating results due to the timing of new license agreements and royalties, or due to legal costs; the risk of a decline in demand for semiconductors and products utilizing FotoNation technologies; failure by the industry to use technologies covered by the Company's patents; the expiration of the Company's patents; the Company's ability to successfully complete and integrate acquisitions of businesses; the risk of loss of, or decreases in production orders from, customers of acquired businesses; financial and regulatory risks associated with the international nature of the Company's businesses; failure of the Company's products to achieve technological feasibility or profitability; failure to successfully commercialize the Company's products; changes in demand for the products of the Company's customers; limited opportunities to license technologies due to high concentration in the markets for semiconductors and related products and smartphone imaging; and the impact of competing technologies on the demand for the Company's technologies. You are cautioned not to place undue reliance on the forward-looking statements, which speak only as of the date of this release. The Company's filings with the Securities and Exchange Commission, including its Annual Report on Form 10-K for the year ended Dec. 31, 2013, and its Quarterly Report on Form 10-Q for the quarter ended Jun. 30, 2014, include more information about factors that could affect the Company's financial results. The Company assumes no obligation to update information contained in this press release. Although this release may remain available on the Company's website or elsewhere, its continued availability does not indicate that the Company is reaffirming or confirming any of the information contained herein.
About Tessera Technologies, Inc.
Tessera Technologies, Inc. and its subsidiaries generate revenue from licensing to manufacturers and other implementers that use the Company's technology in areas such as mobile computing and communications, memory and data storage, and 3-D Integrated Circuit technologies. For more information call 1.408.321.6000 or visit www.tessera.com.
Tessera, the Tessera logo, FotoNation, the FotoNation logo and Invensas Corporation are trademarks or registered trademarks of affiliated companies of Tessera Technologies, Inc. in the United States and other countries. All other company, brand and product names may be trademarks or registered trademarks of their respective companies.
Tessera Technologies, Inc.
Robert Andersen, 408-321-6779
Executive Vice President and Chief Financial Officer
The Piacente Group | Investor Relations
Don Markley or Glenn Garmont, 212-481-2050