Impinj, Inc. v. NXP USA, Inc.

Background

Impinj sued NXP USA for directly infringing four patents involving integrated circuits. The opinion states that NXP USA is the sole defendant and that its foreign affiliates manufacture the accused circuits overseas. The claims in this case concern only direct infringement by NXP USA.

After fact discovery closed, Impinj filed two motions to compel additional discovery from NXP USA. The first sought documents about foreign sales of the accused circuits, the role of NXP USA’s foreign affiliates in producing, distributing, and selling those circuits, and agreements between NXP USA and its customers concerning the litigation. The second sought additional testimony from NXP USA under Rule 30(b)(6), which allows an organization to designate a witness to testify about information known or reasonably available to it.

Impinj primarily argued that the discovery was relevant to induced infringement. After the motions were submitted, Impinj asked to amend its complaint and infringement contentions to add induced-infringement claims. Judge Gonzalez Rogers denied that request, finding that Impinj had not shown good cause for the late amendment and that amendment would be futile.

Court’s reasoning

The court held that foreign-sales information was not relevant to the direct-infringement claim. U.S. patent law does not treat activity occurring entirely outside the United States as direct infringement under the circumstances described in the opinion, and foreign sales therefore could not be included in a reasonable-royalty damages calculation for this case.

The court also rejected Impinj’s argument that the foreign-sales information could help establish commercial success, which can be evidence responding to an obviousness challenge. NXP USA had shown that the burden of producing granular worldwide sales data outweighed its limited relevance, particularly because Impinj already had other sales and market information.

The requests concerning NXP USA’s foreign affiliates were denied because those affiliates were not parties to the action and Impinj acknowledged that it wanted the discovery to consider adding claims against them. The court stated that discovery could not be used to search for evidence supporting claims that had not been properly pleaded. The request for customer agreements was also denied because Impinj again claimed relevance primarily to induced infringement.

The request for additional Rule 30(b)(6) testimony was independently untimely under Civil Local Rule 37-3, which states that motions to compel fact discovery must be filed within seven days after the fact-discovery cutoff. The court also found that the testimony request largely repeated the document motion and was denied for the same reasons.

Disposition

The court denied Impinj’s motions to compel in their entirety. This was a discovery ruling; the opinion did not decide the ultimate patent-infringement claims.