Telephone: +1-202-682-7000 Telefax: +1-202-857-0940
Respondent Tessera, Inc., filed its Answer on 2 November 2009. Tessera is a company incorporated under the laws of the State of Delaware, USA, with its principal place of business at 3025 Orchard Parkway, San Jose, CA 95134, USA. Tessera is assisted and represented in this arbitration by Morgan Chu, Esq., Jonathan Steinberg, Esq., Christine Byrd, Esq., Benjamin W. Hattenbach, Esq., Ellisen Turner, Esq., Jason Sheasby, Esq., and Anthony E. Falcone, Esq., Irell & Manella LLP, 1800 Avenue of the Stars, Suite 900, Los Angeles, CA 90067-4276, USA.
Chair of the Arbitral Tribunal:
Hon. Fern M. Smith (Ret.)
JAMS Resolution Center
Two Embarcadero Center, Suite 1500
San Francisco, CA 94111, USA
whose nomination as Chair of the Arbitral Tribunal has been confirmed by the Secretary General of the ICC International Court of Arbitration, in accordance with Article 9(2) of the Rules, on October 22, 2009.
The Honorable Abraham D. Sofaer
The Hoover Institution
434 Galvez Mall
Stanford, CA 94305-6010, USA
Telefax: +1-650-723-2103 or 650-723-8583
Email: sofaer@hoover. Stanford.edu
whose nomination as co-arbitrator has been confirmed by the Secretary General of the ICC International Court of Arbitration, in accordance with Article 9(2) of the Rules, on October 22, 2009.
Don Martens, Esq.
KNOBBE MARTENS OLSON AND BEAR, LLP
2040 Main Street, 14th Floor
Irvine, California 92614-3614, USA
whose nomination as co-arbitrator has been confirmed by the Secretary General of the ICC International Court of Arbitration, in accordance with Article 9(2) of the Rules, on 22 October 2009. All three members of the Arbitral Tribunal were confirmed by the ICC Secretary General on 22 October 2009, pursuant to Article 9(2) of the Rules, the parties having agreed jointly to nominate the Chair of the Arbitral Tribunal. On 22 October 2009 the Secretariat forwarded the file to the members of the Arbitral Tribunal.
• Is Claimant in compliance with the License Agreement and a Licensee in good standing?
• Has Respondent interfered with Claimants contractual relations with third parties?
• If the Agreement was materially breached by either party, what monetary damages, if any, should be awarded?
• Does Respondent have the right to terminate the License Agreement?
• Has Claimant used any of Respondent’s patents that are at issue in this case?
• If so, are those patents valid?
• Is either party entitled to any equitable relief?
• Has Claimant interfered with Respondent’s prospective economic relationships with third parties?
The issue leading to the present Partial Award stems from Claimant Amkor’s motion made on 14 May 2010 to bar Tessera's counterclaims insofar as they are based on the alleged use by Amkor prior to 1 December 2008 of Tessera patents covered by the License Agreement. (This motion, called by the parties and hereinafter as one for "summary judgment", seeks a decision that is final as to the issues addressed.) On 11 June 2010, Respondent Tessera filed its Opposition to Amkor’s motion. On 18 June 2010, Claimant Amkor filed a Reply to Tessera’s Opposition. On 25 June 2010, Tessera moved for leave from the Tribunal to file a Surreply to Amkor’s Reply. Amkor opposed this motion in an email on 28 June 2010, on the ground that it failed to present new material sufficient to justify an additional filing. The Tribunal denied Tessera's motion to file a Surreply, as its filing was not provided for by the Tribunal’s briefing schedule of the motion and the proposed Surreply did not add any significant, new material that required the Tribunal’s consideration. On 25 August 2010, the Arbitral Tribunal heard oral argument on this Amkor Motion to bar certain Tessera counterclaims. A transcript has been prepared of that oral hearing. The issue to be decided herein is whether any of Tessera’s counter-claims are barred, under California law, by the doctrine of res judicata.
"An injury is defined in part by reference to the set of facts, or transaction, from which the injury arose. [Monsanto] held that a breach of contract gives rise to a single cause of action, all of the remedies for which must be sought in a single action, even if a particular item of damage has not yet been sustained. The court held that the plaintiffs primary right was the right to be free from all of the injuries arising from a particular breach of contract, and distinguished cases where separate and distinct contract covenants were breached at different times."
126 Cal. App. 4th at 1203 (emphasis added). Where the claim advanced is based on a distinct breach of the same contract alleged to have been breached in the prior action, and where it relates to different conduct and a distinct injury, the new claim is not part of the same primary right under this view of the Monsanto decision. Monsanto holds that "a judgment in an action for breach of contract bars subsequent action for additional relief based on the same breach," not any subsequent action based on other breaches of the same contract. 28 Cal. 4th at 905 (emphasis added).
(1) Tessera’s counterclaims seeking damages for the use in Amkor products advanced in the prior arbitration of foreign counterpart patents to those advanced in the original arbitration are dismissed;
(2) any Tessera counterclaims seeking damages for the use in Amkor products advanced in the prior arbitration of different patents from those advanced in the original arbitration are dismissed;
(3) Amkor’s motion for summary judgment is denied to the extent it is addressed to Tessera counterclaims seeking damages for the use in Amkor products different from those advanced in the prior arbitration, whether or not based on patents known or unknown to Tessera at the time the first arbitration was commenced or concluded; and
(4) the Tribunal hereby reserves decision on all remaining issues in the arbitration, including that of costs and/or fees, to a future Award or Awards.