Tessera Files Legal Proceedings Against Samsung for Patent Infringement

SAN JOSE, Calif.--()--Tessera Technologies, Inc. (“Tessera”) and certain of its subsidiaries filed legal proceedings today against Samsung Electronics, Co., Ltd. (“Samsung”) and certain of its affiliates, alleging infringement of 24 patents that cover a wide range of semiconductor processing, bonding, and packaging technologies, as well as imaging technologies. Tessera is a subsidiary of Xperi Corporation (Nasdaq: XPER) (the “Company” or “we”). The legal proceedings were filed in the U.S. International Trade Commission, three U.S. federal district courts, and certain international jurisdictions, alleging infringement by Samsung’s semiconductor products, its Galaxy S6, S7, S8, and Note 8 smartphones, and other products.

Samsung has benefitted from its use of our semiconductor technologies for 20 years, having entered into its first license with Tessera, Inc. in 1997. Samsung has also been a customer of our FotoNation imaging technologies, and has expressed interest in certain of our other solutions. Samsung’s most recent semiconductor patent license expired in December 2016, but we believe it is continuing to use our patented technologies without authorization, and without paying us fair compensation,” said Jon Kirchner, the Company’s CEO. “We diligently tried to work through our differences with Samsung over an extended period of time, and while we remain in dialogue, unfortunately at this point the parties have not been able to come to an agreement.”

Although we always prefer to reach negotiated license agreements, Samsung has left us with no choice but to defend our intellectual property rights through these legal actions,” Kirchner added. “We are confident in the breadth and quality of the proceedings we initiated today and we strongly believe these actions are in the best interests of the Company, our other licensees, and our shareholders.”

The Company’s affiliates filed a total of 10 legal proceedings:

Tessera Advanced Technologies, Inc. (“TATI”) filed a complaint against Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., and Samsung Semiconductor, Inc. with the U.S. International Trade Commission, and a corresponding complaint in the U.S. District Court for the District of New Jersey, alleging infringement of two patents relating to “wafer level packaging” semiconductor technologies. The patents at issue are U.S. Patent Nos. 6,954,001 and 6,784,557.

Invensas Bonding Technologies, Inc. (formerly Ziptronix, Inc.) filed an action against Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc. in the U.S. District Court for the 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.

Invensas Corporation (“Invensas”) filed an action against Samsung Electronics Co., Ltd. and Samsung Austin Semiconductor, LLC in the U.S. District Court for the 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.

FotoNation Limited and DigitalOptics Corporation MEMS filed an action against Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc. in the U.S. District Court for the Eastern District of Texas, alleging infringement of eight patents relating to imaging technologies. The patents at issue are 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 filed an action against Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc. in the U.S. District Court for the Eastern District of Texas, alleging infringement of five patents relating to semiconductor processing and ball grid array packaging technologies. The patents at issue are 6,849,946; 6,232,231; 6,054,336; 6,566,167; and 6,825,554.

TATI filed an action against Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc. in the U.S. District Court for the 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.

Invensas filed two actions in the Regional Court of Mannheim, Germany, one against Samsung Electronics Co., Ltd. and another against Samsung Electronics GmbH, alleging infringement of the German designation of European Patent No. EP 1 186 034 B1 (“EP ‘034 patent”). The EP ‘034 patent relates to a patented semiconductor interconnect technology.

Invensas also filed an action in the District Court of The Hague, Netherlands, against Samsung Electronics Co., Ltd., Samsung Electronics Benelux B.V., Samsung Electronics Europe Logistics B.V., and two of Samsung’s European distributors, Bol.com B.V. and Wehkamp B.V., alleging infringement of the same EP ‘034 patent.

About Xperi Corporation

Xperi Corporation (Nasdaq: XPER) and its brands, DTS, FotoNation, HD Radio, Invensas and Tessera, are dedicated to creating innovative technology solutions that enable extraordinary experiences for people around the world. Xperi’s solutions are licensed by hundreds of leading global partners and have shipped in billions of products in areas including premium audio, broadcast, automotive, computational imaging, computer vision, mobile computing and communications, memory, data storage, and 3D semiconductor interconnect and packaging. For more information, please call 408-321-6000 or visit www.xperi.com.

Xperi, DTS, Invensas, FotoNation, Tessera and their respective logos are trademarks or registered trademarks of affiliated companies of Xperi Corporation in the United States and other countries. All other company, brand and product names may be trademarks or registered trademarks of their respective companies.

Safe Harbor Statement

This press release contains forward-looking statements, which are made pursuant to the safe harbor provisions of the Private Securities Litigation Reform Act of 1995. Forward-looking statements involve risks and uncertainties that could cause actual results to differ significantly from those projected, particularly with respect to the Samsung legal proceedings. Material factors that may cause results to differ from the statements made include the plans or operations relating to the businesses of the Company; market or industry conditions; changes in patent laws, regulation or enforcement, or other factors that might affect the Company's ability to protect or realize the value of its intellectual property; the expiration of license agreements and the cessation of related royalty income; the failure, inability or refusal of licensees to pay royalties; initiation, delays, setbacks or losses relating to the Company's intellectual property or intellectual property litigations, or invalidation or limitation of key patents; fluctuations in operating results due to the timing of new license agreements and royalties, or due to legal costs; the risk of a decline in demand for semiconductors and products utilizing our audio and imaging technologies; failure by the industry to use technologies covered by the Company's patents; the expiration of the Company's patents; the Company's ability to successfully complete and integrate acquisitions of businesses; the risk of loss of, or decreases in production orders from, customers of acquired businesses; financial and regulatory risks associated with the international nature of the Company's businesses; failure of the Company's products to achieve technological feasibility or profitability; failure to successfully commercialize the Company's products; changes in demand for the products of the Company's customers; limited opportunities to license technologies due to high concentration in applicable markets for such technologies; the impact of competing technologies on the demand for the Company's technologies; failure to realize the anticipated benefits of the Company's recent acquisition of DTS, Inc., including as a result of integrating the business of DTS; pricing trends, including the Company's ability to achieve economies of scale; the expected amount and timing of cost savings and operating synergies; and other developments in the markets in which the Company operates, as well as management's response to any of the aforementioned factors. You are cautioned not to place undue reliance on the forward-looking statements, which speak only as of the date of this release.

The foregoing review of important factors should not be construed as exhaustive and should be read in conjunction with the other cautionary statements that are included herein and elsewhere, including the Risk Factors included in the Company's recent reports on Form 10-K and Form 10-Q and other documents of the Company on file with the Securities and Exchange Commission (the "SEC"). The Company's SEC filings are available publicly on the SEC's website at www.sec.gov. Any forward-looking statements made or incorporated by reference herein are qualified in their entirety by these cautionary statements, and there can be no assurance that the actual results or developments anticipated by the Company will be realized or, even if substantially realized, that they will have the expected consequences to, or effects on, the Company or its business or operations. Except to the extent required by applicable law, the Company undertakes no obligation to update publicly or revise any forward-looking statement, whether as a result of new information, future developments or otherwise.

XPER-L

Contacts

Xperi IR Contact:
Geri Weinfeld +1 818-436-1231
geri.weinfeld@xperi.com
or
Xperi PR Contact:
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jordan.miller@xperi.com

Release Summary

Tessera files legal proceedings against Samsung for patent infringement

Contacts

Xperi IR Contact:
Geri Weinfeld +1 818-436-1231
geri.weinfeld@xperi.com
or
Xperi PR Contact:
Jordan Miller, +1 818-436-1082
jordan.miller@xperi.com