Analysis Group Supports Impinj in a Series of Patent Infringement Litigation Victories

April 17, 2024

Analysis Group was retained on behalf of Impinj in a successfully settled patent infringement dispute involving its competitor, NXP. Both Impinj and NXP sell radio-frequency identification (RFID) chips, which are used in RFID tags and labels. Impinj filed suit against NXP, claiming that certain NXP UCODE products infringed several Impinj patents. NXP countersued, alleging that Impinj’s Monza 6 and Speedway families of RFID chips infringed several of its patents.

An Analysis Group team led by Vice President Leah Kitashima supported Managing Principal Lauren Kindler, who filed reports and testified on damages in three separate matters resulting from the dispute.

The first matter, heard in the US District Court for the Western District of Washington, pertained to Impinj’s alleged infringement of one of NXP’s patents. Ms. Kindler filed a rebuttal expert report and testified at deposition and trial, in which she identified key flaws in the opposing expert’s damages methodology. The jury determined that Impinj did not infringe NXP’s patent.

The second matter, heard in the US District Court for the Northern District of California, pertained to NXP’s alleged infringement of two Impinj patents. Ms. Kindler filed two expert reports and testified at both deposition and trial, opining on Impinj’s lost profits and reasonable royalty damages as a result of NXP’s infringement. The jury found that NXP had infringed Impinj’s patents and awarded the exact damages figures to which Ms. Kindler testified for both lost profits and reasonable royalties – more than $18 million in total.

The third matter pertained to nine allegedly infringed patents on each side and was originally slated to take place over three separate trials, during each of which both parties would present three patents. In the first trial, heard in the US District Court for the Western District of Texas, Ms. Kindler filed multiple expert reports and testified at deposition and trial. She provided affirmative testimony regarding Impinj’s reasonable royalty damages, as well as rebuttal testimony regarding key flaws in the opposing expert’s damages methodology. The jury again awarded the exact reasonable royalty damages that Ms. Kindler estimated ($1.16 million) and found that Impinj did not infringe NXP’s patents.

After the first verdict in the third matter, Impinj reached a favorable settlement with NXP. As part of the agreement, the companies resolved all outstanding litigation between them and granted each other non-exclusive patent licenses. NXP will pay Impinj a one-time $45 million fee to use its patented technology and will also make annual license payments to Impinj that could total more than $150 million.