Impinj files patent lawsuit against NXP in the US

The US-based company sees 26 patents infringed

Chris Diorio, Impinj Founder & CEO, announced the filing of the lawsuit on June 6, 2019 in an open letter to partners of the company and all stakeholders of the global RAIN RFID community.

According to Chris Diorio, Impinj has spent two years trying to reach an out-of-court settlement with its competitor NXP. As there was no settlement, Impinj was forced, according to Chris Diorio, to file a patent infringement lawsuit in the US.

RFID & Wireless IoT Global asked Jeff Dossett, Executive Vice President, Sales & Marketing at Impinj, what the consequences of the outcome of the patent litigation could be for partners, markets and the further development of RAIN RFID adoption worldwide.

Anja Van Bocxlaer
Anja Van Bocxlaer
Chief Editor & Publishing Director
Lüneburg, near Hamburg, Germany
Jan Phillip Denkers
Jan Phillip Denkers
Deputy Editor in Chief
Lüneburg near Hamburg, Germany

Chris Diorio's official statement on Impinj's filing of the lawsuit in the wording

"For the past 15 years, Impinj has pioneered key advancements in RAIN RFID, earning more than 250 issued and allowed patents by virtue of our investment, dedication and sheer hard work. As CEO, I take my responsibility to protect Impinj’s inventions seriously. Consequently, we cannot remain silent while NXP, many times our size and with many times our resources, copies our patented inventions. Nor can we remain silent after they rebuff, for two years, our attempts to meet with them to resolve the issue outside the courts. The patent-infringement lawsuit we filed today, citing 26 patents that NXP's UCODE products infringe, reaffirms the importance of fair and lawful competition in our market."

What could be the consequences for Impinj, but also for the entire industry?

Mr. Dossett, following the lawsuit, how will the procedure continue for Impinj?

Impinj is focused on bringing the highest-performing, highest-quality RAIN RFID products to market. We take our responsibility to protect Impinj’s inventions seriously. And at the same time, we want to set a standard for mutual respect across all players in our industry. An innovative industry like ours will flourish when inventors gain the rewards of their inventions.

As Chris said in his letter, it is disheartening to see a large company copy the patented inventions of a small, creative company like ours.

Chris Diorio is talking about 26 patents. Can you give us an overview over the products in question?

NXP’s UCODE endpoint ICs infringe 26 US patents. The infringed patents listed in our lawsuit cover key Impinj technologies such as AutoTune, Integra, Enduro, and FastID, as well as Impinj circuit designs and implementations. You can see the full list of patent claims in our complaint, which is available through the Northern District of California’s court website.

Which consequences does the ruling have on Impinj and it's partners? How about the users of the NXP Semiconductor's products?

We are at the very beginning of this case and so we can’t forecast the potential outcome. We have requested damages for the infringement, increased damages for willfulness, attorneys’ fees and an injunction on UCODE 8.

As far as the impact on users, or end-customers – we do not want this lawsuit to deter RAIN adoption and it should not. Impinj is making every effort to avoid disrupting end customer supply chains, for example by not seeking an injunction on NXP’s highest-volume endpoint IC. There remain plenty of non-infringing endpoint ICs on the market.

It’s important to know that for two years we have tried to resolve this matter out of court. Disappointingly, NXP repeatedly refused to meet with us to address the issue. Consequently, we were left with no choice but to file this lawsuit.

What is the deadline for the unfolding consequences? Does this apply retroactively?

Patent lawsuits can take a long time to resolve and we’re prepared to see it through. But the majority of patent lawsuits are settled between the two companies. A ruling in our favor could include damages for products sold in the US in the past.

The ruling took place in a US court, NXP is headquarterd in the Netherlands. Will there be differences in international application of the ruling vs. the US?

I’d like to clarify that the court has not ruled on this case. We have filed the lawsuit, which is the first step in the legal process. United States patent law applies to products used or sold in the US. A US court could keep products that infringe on US patents out of the US market.

How does NXP react to Impinj's actions?

RFID & Wireless IoT Global has also requested a statement from NXP.

With the reference to the pending case, the company did not want to comment in detail on the individual points of the lawsuit. The only statement issued in this case is that the company has taken note of the filing of the lawsuit. However, Impinj's allegations are contradicted. NXP's statement in wording:

"NXP acknowledges that Impinj filed suit against NXP on June 6th in U.S. District Court. NXP disputes the allegations made by Impinj and intends to vigorously defend its products. As a matter of policy, NXP cannot comment further on any specific aspects of the litigation.”

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