SAN FRANCISCO—Technology licensor Tessera Technologies Inc. said Monday (July 10) that the International Chamber of Commerce (ICC) arbitration court sided with Tessera in an ongoing dispute with test and packaging provider Amkor Technology Inc.
Tessera (San Jose, Calif.) said the ICC's arbitration tribunal confirmed that Tessera's had properly terminated a license agreement with Amkor (Chandler, Ariz.). The tribunal issued an interim award in favor of Tessera, the company said.
Tessera said it intends to seek an amount in excess of $125 million from Amkor. Under the rules of the case and of the ICC, the parties have only a limited ability to make public disclosures about the arbitration, Tessera said.
In a separate statement issued last week, Amkor said the ICC tribunal found that no royalties are due to Tessera on seven of 10 asserted U.S. patents. The panel also found that royalties are due on four foreign patents related to U.S. patents that the panel previously found to be royalty bearing, Amkor said. Amkor said the panel indicated it would decide later the amount of royalties and pre-judgment interest Amkore should pay Tessera. The question of whether Tessera intends to pursue its allegations regarding other patents has also not yet been addressed, Amkor said.
Amkor said it estimates that the damages and interest could be around $30 million with respect to the foreign patents.
"Although we are disappointed that the panel did not rule in our favor on all of the claims, we prevailed on the patents for which Tessera made the largest claims for royalties and we expect that the amount of the award will be well below the more than $400 million claimed by Tessera in the arbitration, said Ken Joyce, president and CEO of Amkor, in a statement. Joyce said Amkor does not expect the final judgment amount will have a material impact on the company's liquidity or interfere with its ability to use its technology and conduct business.
"We use litigation in those instances where we are unable to achieve reasonable agreements or where others breach their agreements with us," said Richard Chernicoff, president of Tessera Intellectual Property Corp. “"The current arbitration will bring clarity to the amounts that should have been paid by Amkor under the license."
The tribunal ruling is the latest chapter in a long-running feud between Tessera and Amkor. In January 2009, Tessera announced that the ICC arbitration panel issued an award of $60.6 million to Tessera for Amkor's breach of its license agreement, culminating a long-running dispute between the two parties over a licensing deal. In February 2011, Tessera announced it sent Amkor an official notice of termination of the license agreement between the two companies.
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