Cases & Deals

NXP defends multi-jurisdiction patent infringement suits involving RFID technology

Client(s) NXP Semiconductors N.V.

Jones Day represented NXP USA Inc. against a competitor in a global patent infringement dispute involving more than 50 patents. NXP and Impinj are the leading circuit manufacturers in the multibillion-dollar radio frequency identification (RFID) market. Impinj launched a 26-patent complaint in the Northern District of California against NXP in which it sought an injunction and significant damages. Through a series of Jones Day victories in court and before the PTAB, only two of those patents went to trial in California in the summer of 2023. Post-trial, the Court granted NXP's request for a new trial, reduced damages to a small fraction of what Plaintiff initially sought and denied Impinj’s request for injunctive relief. On additional patents asserted by Impinj in the Western District of Texas, a Jones Day team won a significant summary judgment victory dismissing the majority of Impinj’s damages claims. At the first of three trials, NXP won rare directed verdicts on Impinj’s indirect infringement and willfulness allegations, and limited the damages claims to roughly $2 million and the plaintiff abandoning its pursuit of an injunction on those patents. With additional trials scheduled on patents asserted by both parties, these matters—including additional actions in the Western District of Texas, Western District of Washington, and in China—were resolved in early 2024.

Impinj, Inc. v. NXP USA, Inc., No. 4-19-cv-03161 (N.D. Cal.); IPR Nos. 2020-00544, -553, -556, -973, -974 (PTAB); NXP U.S.A. Inc., et al. v. Impinj, Inc., No. 2-20-cv-01503 (W.D. Wash.); Appeal No. 24-1121 (Fed. Cir.); IPR Nos. 2020-01422, -1629, -1630, 2021-00001 to -3 (PTAB); Impinj. Inc. v. NXP USA, Inc., No. 6-21-cv-00530 (W.D. Tex.); IPR No. 2021-01556, PGR No. 2022-00005 (PTAB); Impinj, Inc. v. NXP Semiconductors Netherlands BV, No. 6-23-cv-00586 (W.D. Tex.)