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."
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effect of the IPR decision and the confirmation and judgment relating to
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