Case 4:19-cv-03161-YGR Document 519 Filed 02/05/24 Page 1 of 3
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`UNITED STATES DISTRICT COURT
`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.,
`Defendant.
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`Case No. 19-cv-3161-YGR
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`PRETRIAL ORDER NO. 3A RE: RETRIAL
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`Having conducted a trial readiness conference on February 2, 2024, and for good cause
`shown, the Court enters the following orders:
`1. Stipulations: The parties’ joint stipulations regarding trial conduct (Dkt No. 358-2) remain in
`effect and will apply to the March 18, 2024 trial.
`2. Exhibit List: The parties were instructed to provide the Court with an editable copy of the
`joint exhibit list (Dkt. No. 504-1), in portrait orientation, by February 5, 2024.
`3. Deposition Designations: The Court expects the parties to resolve the bulk of their disputes
`regarding deposition designations before or during the course of the trial. The current
`submissions failed to comply with the Court’s Standing Order RE: Pretrial Instructions in Civil
`Cases. To the extent there are any issues, they will need to be resolved at trial.
`4. Final Jury Instructions: The Court will give the parties’ proposed final jury instructions, and
`will not include NXP’s proposed modification to Instruction B.4.3b of the U.S.D.C. N.D. Cal.
`Model Patent Jury Instructions. If NXP feels that testimony at trial warrants a clarifying
`instruction regarding motivation to combine, NXP may request such an instruction at that time.
`5. Preliminary Jury Instructions: The Court took argument on the few issues of disagreement.
`These will be considered and are taken under submission.
`6. Preliminary Statement of the Case: Having considered the arguments regarding burden of
`proof, the Court finds it is best suited to present this case as a declaratory judgment action for
`invalidity (see Section 13, infra.) The parties are directed to submit revised proposed
`statements of the case by February 26, 2024.
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`Case 4:19-cv-03161-YGR Document 519 Filed 02/05/24 Page 2 of 3
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`7. Jurors: The parties are advised that prospective jurors will be sent an electronic questionnaire,
`and the Court will share results with the parties hopefully by Wednesday, March 13, 2024.
`The Court has included the additional questions discussed at the conference. The parties shall
`meet and confer on whether to stipulate to excuse any jurors and shall advise the Court of the
`same by noon on Friday, March 15, 2024. The Court will make its own independent
`determinations to excuse on hardship grounds.
`8. Jury Selection: The Court expects jury selection to conclude on Monday March 18, 2024, and
`the parties are expected to be ready to begin opening statements that afternoon.
`9. Verdict Form: The Court will adopt Impinj’s verdict form, with the following modification:
`The language “If you answered ‘YES,’ answer the following question. Otherwise, skip to the
`end and sign the form” shall be removed.
`10. Injunctive Relief: The Court expects the parties to present evidence of injunctive relief while
`the jury is deliberating, beginning with NXP. The Court expects this evidence to take no more
`than five (5) hours in total. The parties shall file, by March 11, 2024, briefs of no more than
`ten (10) pages outlining their respective positions with regards to injunctive relief as to the
`’302 patent.
`11. Scope of Prior Art: NXP may introduce any evidence it could have presented at the previous
`trial, and will be precluded from presenting any evidence that it could not have presented at the
`previous trial. To be clear, NXP will not be permitted to assert any prior art other than the
`combination of Eberhardt and Ching-San.
`12. Order of Presentation: The Court finds that, for purposes of clarity of presentation, the trial
`be presented as a declaratory judgment action for invalidity, with NXP as the counterclaimant
`and Impinj as the counterclaim-defendant. Accordingly, NXP, as the party bearing the overall
`burden of proof, will begin by presenting its case-in-chief for invalidity, after which Impinj
`will present its case-in-chief for validity. NXP will then be given the opportunity to present a
`rebuttal case, and Impinj will be permitted limited rebuttal on any issues for which it bears the
`burden of proof (e.g., secondary considerations of nonobviousness).
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`Case 4:19-cv-03161-YGR Document 519 Filed 02/05/24 Page 3 of 3
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`13. Other Orders:
`a. The parties will each be allotted eight (8) hours total, inclusive of opening statements
`and closing arguments. This will not include time spent on jury selection, or evidence
`relating to injunctive relief presented to the Court during jury deliberations.
`b. The parties are instructed to provide the court reporter with a glossary of technical
`terms in advance of trial.
`c. Impinj’s administrative motion to seal its position statement regarding damages is
`GRANTED. This order terminates Dkt. No. 512.
`IT IS SO ORDERED.
`Dated: February 5, 2024
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`______________________________________
`YVONNE GONZALEZ ROGERS
`UNITED STATES DISTRICT COURT JUDGE
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