Case 4:19-cv-03161-YGR Document 403 Filed 07/08/23 Page 1 of 5
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`UNITED STATES DISTRICT COURT
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`NORTHERN DISTRICT OF CALIFORNIA
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`IMPINJ, INC.,
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`Plaintiff,
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`v.
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`NXP USA, INC.,
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`Defendant.
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`I.
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`TRIAL ISSUES
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`Case No. 19-cv-03161-YGR
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`TRIAL ORDER NO. 1
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`Re: Dkt. Nos. 239, 368, 372
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`A.
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`Juror Questionnaires
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`On July 5, 2023, trial began on the above referenced action. In advance of jury selection,
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`the Court provided the parties with the results of the survey monkey questionnaires received from
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`all prospective jurors. By no later than August 4, 2023, all counsel shall file a certification that all
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`questionnaires (electronic or hard copy) and all information derived therefrom, have been
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`destroyed. Counsel shall also certify that any person to whom they provided access to the
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`questionnaires (client, consultant, non-lawyer, etc.) have also destroyed the questionnaires and all
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`information derived therefrom.
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`To the extent that either party needs the information for appeal purposes, an administrative
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`request to extend the certification deadline may be filed.
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`B.
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`Deposition Testimony of Franz Amtmann
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`On July 7, 2023, the Court clarified that it will allow testimony by Franz Amtmann
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`regarding the extent of his personal knowledge of any teardown conducted by NXP of the
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`products Impinj is alleging NXP copied.
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`Northern District of California
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`Case 4:19-cv-03161-YGR Document 403 Filed 07/08/23 Page 2 of 5
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`II.
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`OUTSTANDING MOTIONS
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`A.
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`NXP Motion to Strike Thompson and Kindler
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`Pending before the Court is NXP’s motion to strike certain opinions and testimony of Scott
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`E. Thompson and Lauren Kindler and Impinj’s related administrative motion to supplement the
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`record thereon.
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`The Court has previously articulated the legal standard concerning experts which is not in
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`dispute.
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`The two remaining patents at issue in this suit are directed to the shape of the channel
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`between large pads that minimize turbulence when customers attach the ICs of the products to
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`their antennas (the ’302) and improved rectifier design for enhancing read/write performance (the
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`’597). NXP previously moved to strike paragraphs 211-217 from the Initial Expert Report of
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`Infringement of Dr. Scott E. Thompson; paragraphs 195-196, 253-256, 298-330, and 340-362 of
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`the Rebuttal Expert Report of Dr. Scott E. Thompson Concerning Validity; and paragraphs 14, 15,
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`19(b), 46-113, 164, 173-175, 180, 182, 183, as well as Tables 3, 6, 13-15, 18, 20, 22, 23, and 24,
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`and footnotes 172, 178, 246, 330, 368, 370, 396, 419, 432, 439, along with Exhibit 6 and the final
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`sentence of Kindler’s report.1
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`1.
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`Thompson
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`NXP’s motion to strike the opinions of Dr. Thompson related solely to the ’631 patent,
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`which the Court has already found NXP does not infringe. As the validity of the patent is no
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`longer at issue, the motion is DENIED AS MOOT.
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`2.
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`Kindler
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`The motion to strike the opinions and testimony of Dr. Kindler is largely duplicative of
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`NXP’s motion in limine, which the Court denied in its Pretrial Order No. 3.2 To the extent that the
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`Court has not considered the arguments made, it considers them below.
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`a.
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`Quantification of Sales Made Outside the United States
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`1 Kindler’s qualifications to opine on damages in this matter are set forth in Pretrial Order
`No. 4. In addition, an overview of her opinions in provided in the Pretrial Order No. 3.
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` The Court has already rejected NXP’s third argument, that Kindler’s reliance on Impinj
`technical fellow Ron Oliver is improper.
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`Case 4:19-cv-03161-YGR Document 403 Filed 07/08/23 Page 3 of 5
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`NXP seeks to exclude Kindler’s opinions that attempt to quantify any sales made outside
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`the United States on the ground that the only theory that would allow recovery for Impinj is
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`indirect infringement, which is not being asserted. In this regard, NXP claims that Kindler
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`admitted in deposition testimony that she considered such extraterritorial sales for only a scenario
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`in which Impinj were successful in seeking leave to add indirect infringement allegations. Impinj
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`disagrees and claims that is has a viable theory for how sales made to one overseas client amount
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`to direct infringement. The parties provided additional information to the Court on July 7, 2023
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`regarding the damages calculation.
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`At this juncture, the request is denied and the Court will allow the testimony on the issue
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`of whether substantial evidence exists to support the claim regarding lost profits.3 Plaintiff shall
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`ensure that the information is bifurcated so that the jury can resolve the factual dispute.
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`b.
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`Failure to Disclose Lost Profits Theory
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`NXP sets forth several other grounds purporting to show that Kindler failed to disclose a
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`lost profits theory, all of which are founded on the premise that Impinj’s damages contentions
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`were not sufficiently detailed. First, NXP argues that Impinj failed to disclose its lost profits
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`theory generally. Second, NXP contends that the “finished goods inventory” basis on which
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`Kindler relies was not sufficiently disclosed. Third, NXP argues that, in any event, Impinj failed
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`to provide factual support for these theories and never provided NXP with the requests it needed
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`to supply permissible contentions.
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`The Court disagrees. Impinj’s theory overall was sufficiently disclosed because it stated in
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`its damages contentions that it would seek to show that it could make sales of ICs and that it
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`would support that with expert testimony. See Dkt. No. 243-18 at 1. The market share allocation
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`approach, moreover, is the other side of the coin from the non-infringing alternatives analysis. See
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`Malibu Boats, LLC v. Skier's Choice, Inc., No. 3:18-CV-00015, 2021 WL 1572477, at *5 (E.D.
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`Tenn. Apr. 21, 2021) (accepting the market share allocation approach as an “alternative[]” to
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`analyzing the impact of non-infringing alternatives on lost profits).
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`3 This includes the opinions and testimony in Kindler’s Supplemental Report, as well as
`the extent to which those sales factor into the reasonable royalty analysis.
`3
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`Northern District of California
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`United States District Court
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`Case 4:19-cv-03161-YGR Document 403 Filed 07/08/23 Page 4 of 5
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`Impinj’s finished goods theory was also sufficiently disclosed. The parties agreed that
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`information disclosed in any of their co-pending cases in Washington or Texas could be used in
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`this case and vice versa. See Dkt. No. 278-1, ¶ 2. The parties have generously used information
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`produced between cases, and NXP does not contest this fact. Said differently, this theory was
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`disclosed. That parties are required to amend their damages contentions in light of “material[]”
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`changes to their theories does not change that the reasoning behind this is to deter gamesmanship.
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`Netfuel, Inc. v. Cisco Sys. Inc., No. 5:18-CV-02352-EJD, 2020 WL 4381768, at *4 (N.D. Cal. July
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`31, 2020). Impinj disclosed this theory, albeit late, in response to late-produced documents and
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`witnesses from NXP. In addition, NXP’s assertions that it “could have” conducted additional
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`discovery into these issues fails to persuade the Court that Impinj harmed NXP by not amending
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`its damages contentions.
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`The Court therefore DENIES NXP’s request to strike Kindler’s opinions regarding market
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`share allocation or its finished goods theory.
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`c.
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`Purportedly Irrelevant Material
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`NXP argues that Kindler opines on irrelevant material in her report, specifically with
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`regard to other patents held by Impinj, not asserted in this case.
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`One court specifically excluded reference to technology as a viable non-infringing
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`alternative where the patent had not issued yet, because characterizing them as alternatives would
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`be “speculative at best.” ViaSat, Inc. v. Space Sys./Loral, Inc., No. 3:12-CV-00260-H (WVG),
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`2014 WL 11813868, at *2 (S.D. Cal. Feb. 21, 2014). Given that the parties position in the
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`marketplace, the issue of whether that feature is a proper consideration, goes more to the weight of
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`the opinion rather than its exclusion given that for Impinj this was a continuation of a patent
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`beginning in 2012. Further, the ’866 and ’801 issued in 2009 and 2011, respectively. The Court
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`finds that the patents would have been relevant to the hypothetical negotiations, and the jury may
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`weigh that information.
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`B. Motion to Supplement the Record
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`At the outset, the Court notes that the instant motion is duplicative of the motion filed at
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`Case 4:19-cv-03161-YGR Document 403 Filed 07/08/23 Page 5 of 5
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`Docket No. 368, which was erroneously not filed as an administrative motion.4 In any event,
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`Impinj seeks to supplement the record on the Motion to Strike Certain Opinions of Scott E.
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`Thompson and Lauren R. Kindler (Dkt. No. 239) on the basis that NXP’s stance in the
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`contemporaneous case between the parties in the Western District of Washington (No. 2:20-cv-
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`01503-JHC) is contradictory to an argument it set forth in its briefing on the motion to strike.
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`Specifically, Impinj contends that NXP’s request to strike paragraphs 173 and 174 of
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`Kindler’s report, which relate to her 25% apportionment to each of the primary features protected
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`by Impinj’s patents. According to Impinj, despite attacking that apportionment on several
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`grounds, including Kindler’s reliance on Impinj technical fellow Ron Oliver and the allegedly
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`arbitrary nature of it, NXP’s expert David Haas adopted the same figure in his apportionment
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`analysis in the Washington case. There, NXP argued that Kindler arrived at this non-arbitrary
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`figure based on her own analysis, and that Haas appropriately adopted it. The Court also took into
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`account NXP’s position on the matter in this case. The Court need not probe further into the
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`merits of this at this stage. The Court denies the motion to strike Kindler and Thompson.
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`III.
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`CONCLUSION
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`For the foregoing reasons, the Court DENIES NXP’s motion to strike Kindler and
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`Thompson. The Court also DENIES Impinj’s motion to supplement the record as moot.
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`This terminates Dkt. Nos. 239, 368, and 372.
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`IT IS SO ORDERED.
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`Dated: 7/8/2023
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`YVONNE GONZALEZ ROGERS
`UNITED STATES DISTRICT JUDGE
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`4 The proper procedure would have been for Impinj to withdraw the motion at Docket No.
`368 under Civil Local Rule 7-7(e). Moreover, NXP correctly notes that an administrative motion
`such as this one requires the filing party to seek a stipulation and in the event that one cannot be
`obtained, provide a supporting declaration explaining as much.
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