Impinj, Inc. v. NXP USA, Inc.

Background

This pretrial order addressed outstanding motions to exclude expert testimony and administrative motions to seal. The opinion states that two patents remained at issue: the ’302 patent, concerning the shape of a channel between large pads designed to minimize turbulence when integrated circuits are attached to antennas, and the ’597 patent, concerning an improved rectifier design intended to enhance read/write performance. The order also notes that the court had previously dismissed infringement claims involving the ’266 patent in a summary-judgment order.

Motion to Exclude Lauren Kindler

NXP moved to exclude paragraphs 114 through 183 of Lauren Kindler’s report. Kindler, a managing principal at Analysis Group, had provided economic and financial consulting services for more than 18 years. She offered opinions that NXP’s sales of UCODE 8 and UCODE 9 products caused Impinj lost profits and calculated reasonable royalty rates for sales for which Impinj was not seeking lost profits.

NXP argued that Kindler’s reasonable-royalty analysis lacked a reliable starting point, failed to separate the value of patented and unpatented features, and improperly relied on Ron Oliver, an Impinj technical fellow. Kindler’s method used a formula based on the percentage of accused-product sales considered at risk, NXP’s profit margin, an allocation among four primary features, and the percentage of each feature attributed to a particular patent.

The court rejected NXP’s argument that Kindler lacked a starting point, explaining that her disclosed ending point showed that a starting point existed. The court also held that Kindler had sufficiently addressed the value of unpatented features by assigning them a value of zero, and that NXP’s challenges went to the weight of her opinions rather than their admissibility. The court further held that Kindler could rely on Oliver for technical information and that this reliance was permissible under the rules governing expert opinions. The court denied NXP’s motion to exclude Kindler.

Motion to Exclude Michael Haas

Impinj sought to exclude specified portions of Michael Haas’s opinions. Impinj argued that Haas failed to consider anticipated lost sales and profits in the parties’ hypothetical patent-license negotiation and improperly assumed that the parties would know the outcome of the lost-profits analysis. Impinj also challenged Haas’s references to “double counting” and his opinion that the appropriate lost-profits amount was zero.

The court granted the motion to the extent Haas assumed that the hypothetical negotiation would include the results of the lost-profits analysis. The court excluded Haas’s opinion that Impinj’s request for lost profits should affect the reasonable-royalty analysis and excluded his related references to “double counting.”

The court denied the request to otherwise exclude Haas’s criticism of Kindler’s analysis, with one exception: because Haas had not performed an affirmative analysis resulting in zero lost profits, he could not testify that an analysis led to zero dollars in lost profits. The court stated that Haas could testify about his view that Kindler had failed to prove lost profits, which was different from claiming that an analysis produced a zero-dollar result.

Sealing Requests and Further Procedures

The court granted the sealing request at Docket No. 242 as to the name of NXP’s customer and NXP’s profit margins, finding that information confidential and immaterial to the motion. The court denied that request as to Haas’s deposition testimony. The court denied the sealing requests at Docket Nos. 269-8 and 297, concluding that damages evidence and the deposition testimony did not warrant sealing.

The court stated that many other pending sealing requests concerned anticipated testimony or information that would become public during trial. It ordered the parties to review all pending requests, meet and confer, withdraw requests that no longer remained appropriate, and file a joint chart identifying any remaining requests. The chart was due July 17, 2023. The court stated that it would later issue an omnibus order addressing the remaining sealing motions and that material covered by a denied request was to be filed publicly within five business days of the denial order.

The order terminated Docket Nos. 238, 242, 263, 269-8, and 297.