1

Filed 11/25/14 Amkor Technology v. Tessera CA1/3 

NOT TO BE PUBLISHED IN OFFICIAL REPORTS 

California Rules of Court, rule 8.1115(a), prohibits courts and parties from citing or relying on opinions not certified for 

publication or ordered published, except as specified by rule 8.1115(b). This opinion has not been certified for publication 

or ordered published for purposes of rule 8.1115. 

IN THE COURT OF APPEAL OF THE STATE OF CALIFORNIA 

FIRST APPELLATE DISTRICT 

DIVISION THREE 

AMKOR TECHNOLOGY, INC., 

 Petitioner and Appellant, 

v. 

TESSERA, INC., 

 Respondent. 

 A139596 

 (City & County of San Francisco 

 Super. Ct. No. CPF-13-512796) 

 Petitioner Amkor Technology, Inc. (Amkor) appeals from an order denying its 

petition to correct an arbitration award that it contends exceeds the arbitrators’ authority. 

We conclude that the trial court correctly held that the petition was untimely and, in all 

events, lacks merit. 

Factual and Procedural History 

 On May 9, 1996, Tessera, Inc. (Tessera) and Amkor entered a license agreement 

with respect to certain patents held by Tessera. In 2006, Tessera initiated arbitration 

proceedings alleging that Amkor owed Tessera royalties under the license agreement. 

The arbitration ended in early 2009 with the arbitrators awarding royalties to Tessera 

through December 1, 2008. 

 In August 2009, Amkor requested a second arbitration before the same panel of 

three arbitrators, seeking a declaration that “it is fully in compliance with the license 

agreement for the period after December 1, 2008.” In response, Tessera filed a 

counterclaim seeking additional royalties from Amkor, as well as, a determination that 
2

the license agreement was terminated. This second arbitration is the subject of the 

present appeal. 

 Following hearings in December 2010 and August 2011, the panel issued “Partial 

Award No. 3.” The panel found that “Tessera effectively exercised its express contractual 

rights to terminate the contract as of February 17, 2011,” and awarded Tessera royalties 

based on Amkor’s pretermination use of the patents. The panel’s termination finding and 

pretermination royalty award are not at issue on appeal. 

 The panel also awarded posttermination royalties based on Amkor’s continued use 

of the patents after the date of termination. Paragraph 314 of the award provides, “We 

also find that because Amkor has continued to manufacture products covered by the 

license, Tessera is entitled to royalties, at the original royalty rate from 17 February 2011, 

through the date of this tribunal’s judgment. Further, in light of the facts that all 

unresolved disputes ‘arising under’ the agreement must be arbitrated, the tribunal has 

continuing jurisdiction for such a finding.” The panel cited Naimie v. Cytozyme Research 

Co. (10th Cir. 1999) 174 F.3d 1104 in support of its award of posttermination royalties. 

Partial Award No. 3 was served on the parties on July 6, 2012. 

 On August 8, 2012, Amkor requested “clarification” of the award of posttermination royalties under paragraph 314. Specifically, Amkor sought “clarification as to 

the basis for the tribunal’s award of posttermination, extra-contractual continuing 

royalties under the terms of reference.” In support of the request, Amkor argued that the 

award conflicted with the plain language of the license agreement, that the panel’s 

reliance on Naimie was misplaced, and that Tessera could recover posttermination 

damages only in a separate patent infringement action. 

 On November 27, 2012, the panel issued an “Addendum to Partial Award No. 3,” 

reconfirming the award. The addendum provides that “Partial Award No. 3” should be 

interpreted in light of the following considerations: “In its 8 August 2012 submission to 

the ICC [International Chamber of Commerce], Amkor further argues that Naimie v. 

Cytozyme Research Co., 174 F.3d 1104 (10th Cir. 1999) is distinguishable from the 

present case, and that Tessera did not cite Naimie until its final reply brief; thus, Amkor 
3

claims that it never had the opportunity to respond to Tessera’s argument in that regard. 

. . . Tessera responds that Amkor mischaracterizes the holding of Naimie and that its 

challenge to that citation is untimely. Amkor has now had full opportunity to respond to 

Naimie, and the tribunal rejects its attempts to distinguish that case.” 

 On March 7, 2013, Amkor filed its “Petition to Correct An Arbitration Award” in 

San Francisco Superior Court. Following a hearing on June 14, 2013, the court denied 

Amkor’s petition. The court found both that the petition was untimely under Code of 

Civil Procedure1

 section 1288 and that the arbitrators did not exceed their powers so as to 

justify correction of the award under section 1286.6. Amkor filed a timely notice of 

appeal. 

Discussion

1. The petition to correct is untimely.

 The trial court concluded that Amkor’s petition was time barred under 

section 1288 which provides that “[a] petition to . . . correct an award shall be served and 

filed not later than 100 days after the date of the service of a signed copy of the award on 

the petitioner.” The court explained, “The portion of the arbitration for which Amkor 

seeks correction (i.e., paragraph 314 of the July 2012 award) existed as of July 2012; and 

existed in a format that was clear and not tentative. That is, it was ripe for review as of 

July 2012. [¶] . . . [¶] The clock under [section 1288] started ticking at the point when the 

moving party was served with the award, and not later when and if the arbitral panel 

responded to the request for interpretation. Therefore, in this instance, the July 2012 

award was ripe for review in July 2012. Because Amkor waited 236 days after being 

served with the July 2012 award, its petition to correct an arbitral award on February 27, 

2013, was untimely and the statute of limitations had run.” 

 On appeal, Amkor argues that a new 100-day period began running when the 

panel issued its addendum to the partial award. It argues that the trial court improperly 

“rejected Amkor’s challenge as untimely because it believed that only Partial Award 

 

1

 All statutory references are to the Code of Civil Procedure unless otherwise noted. 
4

No. 3 and not the panel’s subsequent addendum, can properly constitute ‘the award’ for 

purposes of section 1288’s limitation period.” Amkor’s petition, however, did not seek to 

correct the November addendum. The petition sought “an order and judgment . . . 

correcting the tribunal’s partial award, dated July 5, 2012, by striking paragraph 314 from 

the partial award.” The addendum is not even attached to the petition. Rather it is one of 

numerous exhibits to a declaration submitted in support of the petition. 

 Moreover, the suggestion that the addendum is a separate partial judgment subject 

to petition for correction under section 1288 lacks merit. Amkor argues, “Under the rules 

of the relevant arbitral forum, the ICC, the panel’s response in the form of the addendum 

unquestionably is a formal partial arbitration award. The addendum itself resolved issues 

not considered by the panel in the prior Partial Award No. 3, specifically Amkor’s posttermination and Naimie arguments, which had not even been presented to the panel at the 

time of issuance of Partial Award No. 3.” We disagree. 

 Article 29 of the ICC rules provides in relevant part as follows: “1. On its own 

initiative, the arbitral tribunal may correct a clerical, computational or typographical 

error, or any errors of similar nature contained in an award, provided such correction is 

submitted for approval to the court within 30 days of the date of such award. [¶] . . . [¶] 3. 

A decision to correct or to interpret the award shall take the form of an addendum and 

shall constitute part of the award.” Article 29 does not expressly or implicitly toll the time 

for filing a petition for correction under section 1288. An order correcting a “a clerical, 

computational or typographical error or any errors of similar nature” is, as the rule states, 

an addendum to an existing award and “constitute[s] part of the award.” It is not a 

separate award. 

 The addendum in this case is consistent with article 29. Contrary to Amkor’s 

argument, the panel did not consider any new issues in the addendum. The question of 

the panel’s jurisdiction to award post-termination royalties and the applicability of 

Naimie were squarely before the panel at the time “Partial Award No. 3” was issued. 

Although the panel may not have had the benefit of Amkor’s interpretation of Naimie

before it at that time, the court clearly relied on Naimie and the issue was decided. The 
5

panel’s addendum merely confirms the award, having fully considered Amkor’s 

arguments. 

 Amkor also asserts for the first time on appeal that its petition is timely because, 

under Hightower v. Superior Court (2001) 86 Cal.App.4th 1415, 1440-1441, it is allowed 

to move for correction as late as 100 days after the panel’s final award is issued. Amkor 

argues that an “aggrieved party” is not required to challenge a partial final award and 

retains the right to move for correction within 100 days after entry of the “ultimate final 

award.” Amkor, however, has not moved to correct the final award. As Amkor notes, at 

the time it filed its motion to correct, a third phase of the arbitration was still pending. 

Section 1288 cannot be understood to allow the filing of a petition to correct a partial 

final award at anytime that the arbitration proceedings remain pending to consider other 

outstanding issues. Accordingly, we agree with the trial court that Amkor’s petition is 

untimely. 

2. The panel did not exceed its authority in issuing Partial Award No. 3. 

 Under section 1286.6, subdivision (b), the court may correct an arbitration award 

if “[t]he arbitrators exceeded their powers but the award may be corrected without 

affecting the merits of the decision upon the controversy submitted.” “For example, an 

award may be vacated when an arbitrator exceeds his or her powers ‘by acting without 

subject matter jurisdiction, deciding an issue that was not submitted to arbitration, 

arbitrarily remaking the contract, upholding an illegal contract, issuing an award that 

violates a well-defined public policy or a statutory right, fashioning a remedy that is not 

rationally related to the contract, or selecting a remedy not authorized by law.’ ” (Kelly 

Sutherlin McLeod Architecture, Inc. v. Schneickert (2011) 194 Cal.App.4th 519, 531, 

citing Jordan v. Department of Motor Vehicles (2002) 100 Cal.App.4th 431, 443 

(Jordan).) Arbitrators do not exceed their powers, however, “merely by erroneously 

deciding a contested issue of law or fact.” (Advanced Micro Devices, Inc. v. Intel Corp. 

(1994) 9 Cal.4th 362, 366 (AMD); Moncharsh v. Heily & Blase (1992) 3 Cal.4th 1, 28.) 
6

 Amkor contends that the panel exceeded its powers by (1) acting without 

jurisdiction and deciding an issue that was not submitted to arbitration and (2) awarding a 

remedy (post-termination royalties) that is prohibited by the License Agreement and 

contrary to California law. In determining whether an arbitrator exceeded his powers, we 

review the trial court’s decision de novo, but we must give substantial deference to the 

arbitrators assessment of their contractual authority and their selection of a remedy. 

(AMD, supra, 9 Cal.4th at pp. 374-375, 376, fn. 9; Jordan, supra, 100 Cal.App.4th at 

pp. 443-444.) 

 An arbitrator’s powers “derive from, and are limited by, the agreement to 

arbitrate.” (Jordan, supra, 100 Cal.App.4th at p. 444.) The arbitrator’s powers also may 

be expanded or restricted by the scope of the issues submitted to arbitration. (Greenspan 

v. LADT, LLC (2010) 185 Cal.App.4th 1413, 1437–1438.) ‘ “ ‘ “Arbitration submissions 

are usually construed as broadly as possible in order that differences between the parties 

may be resolved quickly and economically. Under the [principle] of broad construction 

an arbitrator is authorized to determine all questions which he needs to determine in order 

to resolve the controversy submitted to him, and the arbitrator himself decides which 

questions need to be determined.” . . .’ . . . ‘If participants in the arbitral process begin to 

assert all possible legal or procedural defenses in court proceedings before the arbitration 

itself can go forward, the arbitral wheels would very soon grind to a halt.’ ” ’ ” (Id. at 

pp. 1437-1438.) 

 In this case, the arbitration provision in the License Agreement requires arbitration 

of “any disputes, controversies, claims or differences which may arise from, under, out of 

or in connection with this Agreement.” The panel, recognizing that the phrase “ ‘in 

connection with’ has been interpreted broadly to encompass all disputes having a 

significant relationship to the contract,” concluded that it had jurisdiction to award 

Tessera royalties based on Amkor’s continued manufacture of products covered by the 

license after termination of the agreement. Amkor argues that despite the breadth of the 

arbitration provision, the “Terms of Reference” to which the parties agreed limited the 

issues submitted to arbitration. 
7

 Section 6.1 of the terms of reference provides, “Subject to any new claims (article 

19, ICC rules), the arbitral tribunal may have to consider in particular the following 

issues (but not necessarily all of them or any of them and not in the following order): 

[¶] (a) Is claimant [Amkor] in compliance with the license agreement and a licensee in 

good standing? [¶] (b) Has respondent [Tessera] interfered with claimants contractual 

relations with third parties?[¶] (c) 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? [¶] (e) Has claimant infringed any of 

respondent’s patents that are at issue in this case? [¶] (f) If so, are those patents valid? 

[¶] (g) Is either party entitled to any equitable relief? [¶] (h) Has claimant interfered with 

respondent’s prospective economic relationships with third parties?” 

 Amkor argues that “[t]he only determination of damages before the panel was 

Tessera’s counterclaim for damages under the terms of the license agreement. No patent 

infringement claims under 35 U.S.C. § 271 et seq. were presented to the panel.” 

However, subdivision (c) of section 6.1 authorizes the panel to determine appropriate 

damages if it finds that a party materially breached the license agreement, as it found 

Amkor to have done when it continued making use of Tessera’s patents after termination 

of the license agreement. Moreover, subdivision (g) authorizes the arbitrators to consider 

whether either party is entitled to equitable relief. “ ‘Equitable relief is by its nature 

flexible, and the maxim allowing a remedy for every wrong (Civ.Code, § 3523) has been 

invoked to justify the invention of new methods of relief for new types of wrongs.’ ” 

(Kelly Sutherlin McLeod Architecture, Inc. v. Schneickert, supra, 194 Cal.App.4th at p. 

531 [“In light of the inherently flexible nature of equitable remedies, the principle of 

arbitral finality which forbids judicial inquiry into the legal correctness of the arbitrator's 

decisions on submitted issues, and the related principle that remedies available to a court 

are only the minimum available to an arbitrator (unless restricted by agreement) . . . we 

conclude that the order did not exceed the arbitrator's powers simply because the same 

relief is not or might not be available in a judicial action.”].) Given the scope of the terms 

of reference as well as of the arbitration provision itself, especially in light of the general 
8

principle that an arbitrator is authorized to determine all questions necessary to resolve 

the controversy submitted to arbitration (Greenspan v. LADT, LLC, supra, 185 

Cal.App.4th at p. 1438), Amkor’s contention that the determination of posttermination 

royalties was beyond the scope of the panel’s jurisdiction cannot be sustained. 

 Amkor argues next that even if the panel had jurisdiction to decide this issue, the 

panel exceeded its powers by making an award that is expressly forbidden by the license 

agreement. Amkor relies on section X.H of the license agreement which provides in 

relevant part, “Any termination of this agreement pursuant to this paragraph X . . . shall 

be deemed a termination of the agreement in accordance with its terms (including 

termination of any payments of royalties to Tessera and any rights of licensee to use any 

technology or Tessera patent licensed hereunder).”2

 Contrary to Amkor’s characterization, these provisions do not expressly forbid the 

panel from awarding posttermination royalties. Section X.H clearly contemplates that 

upon termination of the agreement Amkor will cease making use of Tessera’s patents and 

therefore that Tessera will be entitled to no further royalties. The section does not specify 

what remedies will be available if Amkor wrongfully continues to make use of the 

patents after termination. “Arbitrators are not obliged to read contracts literally, and an 

award may not be vacated merely because the court is unable to find the relief granted 

was authorized by a specific term of the contract. [Citation.] The remedy awarded, 

however, must bear some rational relationship to the contract and the breach. The 

required link may be to the contractual terms as actually interpreted by the arbitrator (if 

the arbitrator has made that interpretation known), to an interpretation implied in the 

award itself, or to a plausible theory of the contract's general subject matter, framework 

or intent. [Citation.] The award must be related in a rational manner to the breach (as 

expressly or impliedly found by the arbitrator). Where the damage is difficult to 

 

2

 Amkor also relies on section X.I.1 of the license agreement which provides in relevant 

part that “licensee’s obligation to make payment to Tessera accrued under this agreement 

on or prior to expiration or termination” “shall survive the termination or expiration of 

this agreement.” 
9

determine or measure, the arbitrator enjoys correspondingly broader discretion to fashion 

a remedy.” (AMD, supra, 9 Cal.4th at p. 381, fn. omitted.) As noted by the trial court, the 

panel’s reasons “for granting a remedy through the date of judgment bore a rational 

relationship to the contract and the effects of Amkor’s conduct under the contract.” 3 

 Finally, Amkor argues that the panel exceeded its authority by awarding a remedy 

that is not authorized by California law. Amkor relies on language in Jordan, supra, 100 

Cal.App.4th at page 443 that a panel exceeds its authority when it “selects a remedy not 

authorized by law.” However, the facts in Jordan bear no similarity to those in the 

present case, and the cases cited in Jordan in support of the broad proposition that 

arbitrators may not “select[] a remedy not authorized by law” demonstrate the 

inapplicability of this broad statement. 

 First, Jordan cited Marsch v. Williams (1994) 23 Cal.App.4th 238, in which the 

court held that the arbitrators exceeded their authority by appointing a receiver. The court 

in Marsch v. Williams emphasized “the importance of the trial court’s role in supervising 

a receiver cannot be understated. ‘The receiver is but the hand of the court, to aid it in 

preserving and managing the property involved in the suit for the benefit of those to 

whom it may ultimately be determined to belong.’ [Citations.] ‘[A] receiver is an agent of 

the court, not of the parties, and the receivership estate consisting of property which is 

properly in his hands is under the control and continuous supervision of the court.’ 

[Citation.] Given the continuing nature of a receiver’s duties and the court’s supervision, 

any addition to the type of tribunals empowered to appoint and supervise receivers would 

represent a fairly profound change in our receivership law.” (Id. at p. 248.) The court 

concluded that “the power to appoint receivers is unique and cannot be extended to 

arbitrators in the absence of legislative action” even where the parties have agreed to the 

appointment of one. (Id. at pp. 246, 248.) 

 

3

 For this reason, we similarly reject Amkor’s argument that the panel exceeded its 

powers by rewriting the terms of the license agreement. 
10

Jordan also cited Luster v. Collins (1993) 15 Cal.App.4th 1338, 1349, in which 

the court held that the arbitrator exceeded its authority by imposing economic sanctions 

to enforce the award. The court reasoned that there was no statutory authority for 

arbitrators to enforce an award because sections 1285 and 1287.4 authorize a party to an 

arbitration “to petition the court to confirm an award which, if confirmed, results in the 

entry of judgment” and that “[o]nce entered the judgment ‘has the same force and effect 

as, and is subject to all the provisions of law relating to, a judgment in a civil action; . . . 

and it may be enforced like any other judgment of the court in which it is entered.’ ” (Id. 

at pp. 1348-1348.) The court explained, “The means through which a judgment may 

lawfully be enforced is a discrete subject involving many considerations. In enacting 

enforcement mechanisms, the Legislature must balance the due process rights of the 

judgment debtor against the right of the judgment creditor to receive the benefits of the 

judgment, resolving these conflicting positions so that the public's confidence and respect 

for the judicial system will be enhanced. [¶] . . . [¶] In light of . . . the Legislature’s 

prodigious efforts in enacting a comprehensive statute dealing with the various methods 

to enforce judgments, the Legislature had no need to furnish an arbitrator additional 

authority for enforcement purposes postjudgment. Such authority would not only conflict 

with judicial power, but absent carefully prescribed procedures potentially interfere with 

the respective rights of the parties.” (Id. at p. 1349.) 

 These cases make clear that an arbitrator exceeds its authority not when it makes 

an error of law in selecting a remedy under a particular legal theory, but when it selects a 

remedy that it does not have authority to impose under any circumstances. Here, Amkor’s 

argument is simply that the arbitrators’ remedy is inconsistent with California contract 

law. Amkor relies on Susteen, Inc. v. Sourcenext Corp. (9th Cir. 2008) 266 Fed.Appx. 

690, 691, in which the court observed that “[u]nder California law . . . if a licensor elects 

to terminate a license agreement upon the licensee's breach, the obligation to pay future 

royalties ceases as well.” It argues, “Having chosen to terminate the agreement, as a 

matter of California law, Tessera gave up any entitlement to receive further royalties 

under that agreement.” There is no dispute, however, that an arbitrator has the authority 
11

to award royalties for the improper use of patented technology. The court did not select a 

remedy not authorized by California law. Whether the court made an error of law in 

awarding royalties in this particular case is precisely the type of analysis prohibited under 

section 1286.6. (AMD, supra, 9 Cal.4th at p. 366; Moncharsh v. Heily & Blasé, supra, 3 

Cal.4that p. 28.) 

 In short, the panel did not exceed its authority in issuing “Partial Award No. 3.”4

Disposition

 The order denying Amkor’s petition is affirmed. Tessera shall recover its costs on 

appeal. 

 _________________________ 

 Pollak, Acting P. J. 

We concur: 

_________________________ 

Siggins, J. 

_________________________ 

Jenkins, J. 

 

4

 Because we need not address Tessera’s judicial estoppel and waiver arguments, 

Amkor’s requests for judicial notice filed January 23 and June 12, 2014 in support of its 

opposition to those arguments are denied. The exhibits to Amkor’s requests shall remain 

sealed.