Impinj Sues NXP for Patent Infringement

The maker of passive UHF RFID transponder chips and reader chips claims NXP has improperly used its patented innovations in NXP's UCODE integrated circuits.
Published: June 6, 2019

Impinj today filed a patent-infringement lawsuit against rival RFID transponder chip maker NXP Semiconductors. The suit, filed in the Northern District of California, claims that NXP has improperly used 26 of Impinj’s patented innovations in its own products.

In an interview with RFID Journal, Jeff Dossett, Impinj’s executive VP of sales and marketing, said the infringement includes NXP’s UCODE products, and that Impinj has tried unsuccessfully to settle the issue out of court. “We have reached out repeatedly to engage directly with NXP, and they have repeatedly refused to meet with us,” he said. “We felt we had no recourse other than to file this lawsuit.”

Gahan Richardson, Impinj’s senior VP of platform product management and silicon sales, added that Impinj has provided specifics related to Impinj’s patent-infringement claims to NXP in an attempt to get them to address the issue out of court. “All of the patents that we put in our complaint today have been communicated to them,” he said.

A day after the lawsuit was filed, an NXP spokesperson sent RFID Journal this comment via email: “NXP acknowledges that Impinj filed suit against NXP on June 6 in U.S. District Court. NXP disputes the allegations made by Impinj and intends to vigorously defend its products. As a matter of policy, NXP cannot comment further on any specific aspects of the litigation.”

In a blog post on Impinj’s website, CEO Chris Diorio wrote: “Our more-than 250 issued and allowed patents are the hard-earned fruits of that passion and our significant investment, dedication and sheer hard work. They also are the foundation of our market leadership. As CEO, I take my responsibility to protect Impinj’s inventions seriously. We simply cannot acquiesce to the misappropriation of so much of our intellectual property.”

Diorio stressed that Impinj does not wish for the lawsuit to negatively impact the adoption of passive UHF RFID technology. Impinj is not seeking an injunction from the court to stop NXP from selling its UCODE 7 integrated circuits. It is merely asking the court to block NXP from selling its UCODE 8 chips, which were introduced at RFID Journal LIVE! 2017 (NXP to Release More Sensitive UHF Chip With New Functionality).

“We’ve made every effort to avoid disruption to the supply chains of our partners and our customers,” Dossett said. “We’ve been very thoughtful in how we structured this lawsuit. We are seeking damages for NXP’s infringement, and injunctive relief only for UCODE 8 products.”

Among the U.S. patents Diorio claimed in his post that NXP’s UCODE chips infringe are the following:

AutoTune: A feature introduced in Impinj’s Monza R6 tag chips that tunes the chip’s radio on every power-up, in order to maximize tag sensitivity for the current environment.

Integra: A suite of diagnostics designed to ensure consistently accurate data capture from RFID tags.

Enduro: A chip-attach technology used to connect a Monza IC to an inlay antenna using large, flat metal pads rather than the conventional bump.

FastID: A system for reading the serial number and tag ID more quickly, for applications in which the integrity of the RFID tag must be confirmed (primarily anticounterfeiting).

Dossett said that the 26 patents cited in the lawsuit involve innovations, including features that make Impinj tag chips perform better and more reliably. They are not subject to the GS1 IP policy that provides royalty-free access to the intellectual property necessary to practice the GS1 Gen 2 air-interface protocol.

“None of the patent claims we asserted are necessary to practice the GS1 protocol,” he said. “We are unwavering in our commitment to the GS1 protocol.”