Impinj and NXP Semiconductors have been locked in multifront patent litigation since Impinj filed a June 2019 case in the Northern District of California alleging that NXP USA infringes patents generally related to RAIN RFID technology. In mid-July 2023, a jury returned a verdict in that case, awarding Impinj $17.79M in lost profits and an additional $1.36M in reasonable royalties, with Impinj subsequently moving both to reconvene the jury to address an apparent inconsistency in the verdict and to impose a permanent injunction against NXP's infringing sales. This past week, Impinj filed a new complaint, this one in the Western District of Texas against NXP Semiconductors Netherlands ( 6:23-cv-00586), pleading that once District Judge Yvonne Gonzalez Rogers enters judgment in its favor, that judgment will bind the defendant as to additional sales that the court kept out of the Northern California suit. Meanwhile, an earlier Western District of Texas case is fast approaching a late October trial before District Judge Alan D. Albright, all of this after a Western District of Washington jury returned a verdict in Impinj's favor in a case filed by NXP back in 2019.
Impinj's Northern District of California Case Against NXP USA
This past May, Judge Gonzalez Rogers granted NXP's motion for noninfringement of two Impinj patents as well as Impinj's motion for infringement of claims 1, 3-4, and 7 of a third patent (9,633,302), leaving for the jury the questions of whether NXP infringed claims 1 and 15 of a fourth patent (8,115,597), whether either of those claims would be proven invalid at trial, whether the asserted claims of the '302 patent are proven obvious, what any damages might be, and whether any infringement of a valid claim had been willful. On July 14, the jury answered those questions: Impinj proved infringement of claims 1 and 15 of the '597 patent, neither of which was proven anticipated or obvious; claims 1 and 3 were not proven obvious but claims 4 and 7 were proven obvious; Impinj proved that it lost profits on certain sales and that it deserves a reasonable royalty on others, resulting in the damages noted above; and infringement of only the '302 patent was proven willful.
Impinj quickly filed a rare motion, to reconvene the jury, arguing that because claims 3-4 and 17 of the '302 patent depend from claim 1, if claim 1 was not proven obvious, then none of its dependents could have been proven obvious. Impinj pointed to two jury notes sent out during deliberations that it contends reflect confusion on the jury's part as to how to handle an obviousness determination of an independent claims, together with its dependents. Impinj notes that instructions to the jury on the relationship between independent claims and their dependents were removed when assertion of a dependent claim was dropped on the eve of trial. However, Judge Gonzalez Rogers dispensed with this motion in a July 24 minute order: "The parties may brief what remedies, if any, exist based upon the record in this case to resolve the issue. However, the Court will not reconvene the jury".
More traditional posttrial motions have followed. NXP seeks a new trial, while Impinj asks the court to hand down a permanent injunction against NXP's infringing sales. In the latter, Impinj represents that the two parties "are direct competitors in the design and sale of RAIN RFID ICs, and collectively account for roughly 95% of the market" and that absent an injunction, Impinj will continue to lose sales to NXP, characterized as "a subsidiary of a large multinational semiconductor manufacturer, NXP Semiconductors N.V., which operates in four large end-markets: Automotive, Industrial & Internet of Things ("IoT"), Mobile, and Communication Infrastructure & Other" (citations omitted), only the last of which covers the RAIN RFID technology at issue. Per Impinj, "NXP's business model in RAIN RFID is that of a 'fast follower,' generally copying (even if sometimes improving) features introduced by Impinj. Tellingly, NXP has few (if any) patents directed to RAIN RFID technology". In the alternative, Impinj asks the court to impose a reasonable royalty on ongoing sales not enjoined.
Judge Gonzalez Rogers has yet to rule on these posttrial motions or to enter judgment based on the jury verdict.
Impinj's New Western District of Texas Case, Against NXP Netherlands
In its latest complaint, Impinj has sued NXP Netherlands in the Western District of Texas. There, Impinj represents that by the time that it understood that certain sales of the products accused of infringement in the Northern District of California were made, not by NXP USA, but by NXP Netherlands, their inclusion in the case was ruled untimely. Therefore, it filed the new complaint, again asserting the '597 and '302 patents, but as to those excluded sales. Impinj argues that collateral estoppel will bind NXP Netherlands once Judge Gonzalez Rogers enters judgment because NXP Netherlands operates in privity with NXP USA.
The case has been assigned to District Judge Robert L. Pitman, at least initially.
Impinj's Older Western District of Texas Case, Against NXP USA (and Eventually Other NXP Entities)
In May 2021, Impinj filed a second complaint against NXP USA, this one before Western District of Texas Alan D. Albright. In it, Impinj asserts infringement of multiple additional patents, some broadly related to RFID tags (7,246,751; 7,388,468; 7,472,835; 7,733,227; 8,665,074; 10,776,198; 10,929,734) and others, to RFID transponders (7,116,240; 7,215,251). With its answer, NXP pleaded counterclaims of infringement of RFID integrated circuit patents of its own (7,586,385; 8,081,043; 8,970,285; 9,825,608; 9,830,548; 9,991,596; 10,210,358; 10,637,443; 10,780,433).
NXP filed two petitions of inter partes review (IPR), neither of which resulted in the institution of trial. Impinj filed ex parte reexamination requests of the '608, '596, '433, '443, and '358 patents, which later resulted in the nonfinal rejection of all claims of the '443 patent. Impinj sought a stay of the district court case to await a final status for those claims, which request Judge Albright denied, the court noting that at the claim construction hearing in the case it "directed that 'everything will be done as though [all 18 patents] were going to trial at the same time.' Thus, both Plaintiff's and Defendants' Asserted Patents are proceeding on the same track and will be ready for trial at the same time to avoid subsequent disputes. If this Court stays the case with respect to the '443 patent, it would bifurcate the case into two separate tracks, which is contrary to this Court's prior guidance. This would needlessly complicate the case and result in decreased efficiency" (citations omitted).
Thus, trial is set for October 30, 2023. The parties spent the late spring and summer barraging the court with dispositive motions, motions to amend infringement contentions, motions challenging planned expert testimony, etc.
NXP's Western District of Washington Case Against Impinj
Four months after Impinj's first suit against NXP, in October 2019, NXP accused Impinj in a District of Delaware complaint of infringing eight patents, directed at wafer fabrication or circuit configuration, developed at Freescale, NXP, or Philips, through the provision of certain RFID products. Impinj filed an early motion for summary judgment, asking the court to dismiss infringement claims related to the fabrication patents based on a license from NXP to TSMC (from which Impinj allegedly buys accused silicon wafers). The case was transferred to the Western District of Washington in October 2020.
There, on June 22, 2023, a jury returned a verdict in Impinj's favor, finding that Impinj was not proven to have infringed either claim 1 or claim 4 of the only patent tried (7,347,097), either directly or indirectly, those claims also not proven invalid. Putting that finding together with earlier grants of summary judgment of noninfringement as to the other five asserted patents (7,257,092; 7,456,489; 7,538,444; 7,795,951; 8,415,769) ends the case—except for posttrial motions. Among other things, NXP seeks a new trial, while Impinj has asked the court to declare the case exceptional and award it attorney fees. Briefs are going in, with no rulings yet from District Judge John H. Chun.
August 20, 2023
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