NXP USA Inc v. Impinj Inc

• Court: District Court, W.D. Washington
• Decided: February 12, 2021
• Docket: 2:20-cv-01503
• Status: Unknown

Opinion

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4 5 6 UNITED STATES DISTRICT COURT WESTERN DISTRICT OF WASHINGTON 7 AT SEATTLE 8 NXP USA, INC., and NXP B.V., 9 Plaintiffs, CASE NO. C20-1503-RSM-MAT 10 v. ORDER RE: PENDING MOTIONS 11 IMPINJ, INC., 12 Defendant. 13 14 Defendant Impinj, Inc. (“Impinj”) filed a Motion for Stay (Partial) and Motion for Leave 15 to File Amended Answer in this patent infringement matter. (Dkts. 60 & 63.) Plaintiffs NXP 16 USA, Inc. and NXP B.V. (“NXP”) oppose the motions. (Dkts. 65 & 70.) The Court, having 17 considered the motions, responses, and the remainder of the record, finds and ORDERS as follows: 18 (1) Impinj seeks a stay of plaintiffs’ claims on six of the eight patents asserted pending 19 final resolution of petitions for inter partes review with the U.S. Patent and Trademark Office 20 (PTO). (Dkt. 60.) The Court finds this request both reasonable and warranted given: (a) the 21 significant chance it will substantially simplify the issues in this matter and streamline proceedings 22 by reducing the claims at issue; (b) the still early stage of these proceedings, prior to the issuance 23 of a scheduling order; and (c) an absence of undue prejudice or clear tactical disadvantage to NXP. 1 See Pac. Bioscience Labs., Inc. v. Pretika Corp., 760 F. Supp. 2d 1061, 1063 (W.D. Wash. Jan. 2 10, 2011). Accordingly, Impinj’s motion for a partial stay (Dkt. 60) is GRANTED, and NXP’s 3 claims relating to U.S. Patent Nos. 6,680,523; 6,819,092; 7,257,092; 7,374,097; 7,538,444; and

4 7,795,951 are stayed pending resolution of Impinj’s petitions for inter partes review before the 5 Patent Trial and Appeal Board (“PTAB”). 6 (2) Impinj also seeks leave to file an amended answer pleading a license as a defense 7 to four of NXP’s allegedly infringed patents and adding counterclaims that NXP has infringed 8 eight of Impinj’s patents. (Dkt. 63.) The request to add the defense is appropriate in light of 9 Impinj’s contention that, if found a beneficiary to a licence agreement, Impinj could not be found 10 to have infringed on four patents. See 35 U.S.C. § 271(a) (“whoever without authority makes, 11 uses, offers to sell, or sells any patented invention, within the United States or imports into the 12 United States any patented invention during the term of the patent therefor, infringes the patent”) 13 (emphasis added). The Court is otherwise not persuaded by the request for leave to amend. It is

14 true that, pursuant to Federal Rule of Civil Procedure 15(a)(2), “[t]he court should freely give leave 15 [to amend] when justice so requires.” However, like the judge overseeing Impinj’s suit against 16 NXP currently pending in the Northern District of California, see Impinj, Inc. v. NXP USA, Inc., 17 C19-3161-YGR (N.D. Cal.) (Dkt. 33), this Court has a strong interest in keeping the number of 18 patents at issue to a manageable level. Depending on the outcome of PTO proceedings, this matter 19 may require the Court’s adjudication of claims associated with eight patents. There is no question 20 a doubling of the number of allegedly infringed patents would substantially increase the 21 complexity and difficulty of litigation and the Court’s ability to manage this matter and resolve 22 the parties’ disputes expeditiously. The Court, as such, GRANTS in part and DENIES in part 23 Impinj’s Motion for Leave to File Amended Answer. (Dkt. 63.) Impinj shall file a modified 1 amended answer, consistent with the Court’s rulings, within ten (10) days of the date of this Order. 2 (3) As previously arranged, counsel for the parties shall appear by telephone for the 3 status conference scheduled for February 24, 2021 at 10:00 a.m. The parties shall further, in light

4 of the Court’s rulings above and no later than February 22, 2021, either submit a joint scheduling 5 order/discovery plan or separately submit specific proposals for the Court’s consideration at the 6 status conference. 7 (4) The Clerk is directed to send a copy of this Order to the parties and to the Honorable 8 Ricardo S. Martinez. 9 DATED this 12th day of February, 2021.

10 A 11 Mary Alice Theiler 12 United States Magistrate Judge

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