Xperi Announces Procedural Ruling in Samsung ITC Investigation

Xperi Corporation ("Xperi" or the "Company") announced today that an Administrative Law Judge ("ALJ") at the U.S. International Trade Commission ("ITC") issued a procedural ruling in the ITC Investigation against Samsung Electronics, Co., Ltd. and certain of its affiliates ("Samsung") appearing to terminate the ITC investigation, subject to a reversal by the full Commission. The ITC investigation involves two of the twenty-four patents at issue in the Company's legal proceedings against Samsung for patent infringement.

Samsung claims it is licensed to the two patents at issue in the ITC investigation through an agreement that it had previously entered into with the original owner of the patents, Matsushita Electric Industrial Co., Ltd. ("Matsushita"). Samsung moved to terminate the investigation on the basis that, due to the existence of an arbitration clause in that agreement, its license defense first has to be decided in arbitration rather than in the ITC. The ALJ granted Samsung's motion, and the Company plans to appeal the ruling to the full Commission. The Company believes it should not be subject to the arbitration clause because, among other things, it is not a party to the Samsung-Matsushita agreement.

"This appears to be a procedural ruling on venue, and not a decision on the merits of Samsung's license defense," said Jon Kirchner, the Company's CEO. "While this may put off our ITC trial unless it is reversed, our other cases against Samsung are proceeding on schedule and will be heard beginning in the first quarter of 2019. Importantly, this decision has no impact on our 2018 billings guidance as our current guidance assumed no resolution of the outstanding Samsung legal matters."

The ITC docket entry includes only a brief summary of the ALJ's Initial Determination ("ID"). The parties and their counsel have not yet received the ID, which is subject to confidentiality restrictions. Thus, no further details on the substance of the decision, including details about the scope of the ALJ's ruling, are available at this time. After the Company's counsel receives the ID, the Company will determine whether further comment on the decision is appropriate.

The ITC investigation is one of multiple legal proceedings that remain pending between the Company and Samsung. In addition to the ITC investigation and a parallel civil action in the U.S. District Court for the District of New Jersey, the Company's other outstanding proceedings include:

Invensas Corporation v. Samsung Electronics Co., Ltd., et al., Civil Action No. 2:17-cv-00670 (U.S. District Court, Eastern District of Texas), alleging infringement of five patents relating to semiconductor processing and ball grid array packaging technologies. The patents at issue are U.S. Patent Nos. 6,849,946; 6,232,231; 6,054,336; 6,566,167; and 6,825,554.

FotoNation Limited, et al v. Samsung Electronics Co., Ltd., et al., Civil Action No. 2:17-cv-00669 (U.S. District Court, Eastern District of Texas), alleging infringement of eight patents relating to imaging technologies. The patents at issue are U.S. Patent Nos. 8,254,674; 8,331,715; 7,860,274; 7,697,829; 7,574,016; 7,620,218; 7,916,897; and 8,908,932.

Invensas Corporation v. Samsung Electronics Co., Ltd., et al., Civil Action No. 1:17-cv-01363 (U.S. District Court, District of Delaware), alleging infringement of two patents relating to semiconductor processing technologies. The patents at issue are U.S. Patent Nos. 6,849,946 and 6,232,231.

Invensas Bonding Technologies, Inc. v. Samsung Electronics America, Inc., et al., Civil Action No. 1:17-cv-07609 (U.S. District Court, District of New Jersey), alleging infringement of six patents relating to the Company's semiconductor bonding technologies. The patents at issue are U.S. Patent Nos. 7,553,744; 7,807,549; 7,871,898; 8,153,505; 9,391,143; and 9,431,368.

Tessera Advanced Technologies, Inc. v. Samsung Electronics Co., Ltd., et al., Civil Action No. 2:17-cv-00671 (U.S. District Court, Eastern District of Texas), alleging infringement of two patents relating to wafer level packaging: U.S. Patent Nos. 6,512,298 and 6,852,616. Samsung filed a similar motion to stay this action, based on the same arbitration clause in the Samsung-Matsushita agreement.

Tessera Advanced Technologies Inc. vs. Samsung (China) Investment Co., Ltd. et al., Case No. unset (Beijing High Court, People's Republic of China), alleging infringmenent of Chinese Patent No. 02155954.6 relating to the Company's wafer level packaging technology.