1 2 3 4 5 UNITED STATES DISTRICT COURT 6 NORTHERN DISTRICT OF CALIFORNIA 7 8 IMPINJ, INC., Case No. 19-cv-03161-YGR

9 Plaintiff,

TRIAL ORDER NO. 1

v. 10 Re: Dkt. Nos. 239, 368, 372 11 NXP USA, INC., Defendant. 12

13 I. TRIAL ISSUES 14 A. Juror Questionnaires 15 On July 5, 2023, trial began on the above referenced action. In advance of jury selection, 16 the Court provided the parties with the results of the survey monkey questionnaires received from 17 all prospective jurors. By no later than August 4, 2023, all counsel shall file a certification that all 18 questionnaires (electronic or hard copy) and all information derived therefrom, have been 19 destroyed. Counsel shall also certify that any person to whom they provided access to the 20 questionnaires (client, consultant, non-lawyer, etc.) have also destroyed the questionnaires and all 21 information derived therefrom. 22 To the extent that either party needs the information for appeal purposes, an administrative 23 request to extend the certification deadline may be filed. 24 B. Deposition Testimony of Franz Amtmann 25 On July 7, 2023, the Court clarified that it will allow testimony by Franz Amtmann 26 regarding the extent of his personal knowledge of any teardown conducted by NXP of the 27 products Impinj is alleging NXP copied.

II. OUTSTANDING MOTIONS

1

A. NXP Motion to Strike Thompson and Kindler

2 Pending before the Court is NXP’s motion to strike certain opinions and testimony of Scott 3 E. Thompson and Lauren Kindler and Impinj’s related administrative motion to supplement the 4 record thereon. 5 The Court has previously articulated the legal standard concerning experts which is not in 6 dispute. 7 The two remaining patents at issue in this suit are directed to the shape of the channel 8 between large pads that minimize turbulence when customers attach the ICs of the products to 9 their antennas (the ’302) and improved rectifier design for enhancing read/write performance (the 10 ’597). NXP previously moved to strike paragraphs 211-217 from the Initial Expert Report of 11 Infringement of Dr. Scott E. Thompson; paragraphs 195-196, 253-256, 298-330, and 340-362 of 12 the Rebuttal Expert Report of Dr. Scott E. Thompson Concerning Validity; and paragraphs 14, 15, 13 19(b), 46-113, 164, 173-175, 180, 182, 183, as well as Tables 3, 6, 13-15, 18, 20, 22, 23, and 24, 14 and footnotes 172, 178, 246, 330, 368, 370, 396, 419, 432, 439, along with Exhibit 6 and the final 15 sentence of Kindler’s report.1 16 1. Thompson 17 NXP’s motion to strike the opinions of Dr. Thompson related solely to the ’631 patent, 18 which the Court has already found NXP does not infringe. As the validity of the patent is no 19 longer at issue, the motion is DENIED AS MOOT. 20 2. Kindler 21 The motion to strike the opinions and testimony of Dr. Kindler is largely duplicative of 22 NXP’s motion in limine, which the Court denied in its Pretrial Order No. 3.2 To the extent that the 23 Court has not considered the arguments made, it considers them below. 24 a. Quantification of Sales Made Outside the United States 25

26 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. 27 1 NXP seeks to exclude Kindler’s opinions that attempt to quantify any sales made outside 2 the United States on the ground that the only theory that would allow recovery for Impinj is 3 indirect infringement, which is not being asserted. In this regard, NXP claims that Kindler 4 admitted in deposition testimony that she considered such extraterritorial sales for only a scenario 5 in which Impinj were successful in seeking leave to add indirect infringement allegations. Impinj 6 disagrees and claims that is has a viable theory for how sales made to one overseas client amount 7 to direct infringement. The parties provided additional information to the Court on July 7, 2023 8 regarding the damages calculation. 9 At this juncture, the request is denied and the Court will allow the testimony on the issue 10 of whether substantial evidence exists to support the claim regarding lost profits.3 Plaintiff shall 11 ensure that the information is bifurcated so that the jury can resolve the factual dispute. 12 b. Failure to Disclose Lost Profits Theory 13 NXP sets forth several other grounds purporting to show that Kindler failed to disclose a 14 lost profits theory, all of which are founded on the premise that Impinj’s damages contentions 15 were not sufficiently detailed. First, NXP argues that Impinj failed to disclose its lost profits 16 theory generally. Second, NXP contends that the “finished goods inventory” basis on which 17 Kindler relies was not sufficiently disclosed. Third, NXP argues that, in any event, Impinj failed 18 to provide factual support for these theories and never provided NXP with the requests it needed 19 to supply permissible contentions. 20 The Court disagrees. Impinj’s theory overall was sufficiently disclosed because it stated in 21 its damages contentions that it would seek to show that it could make sales of ICs and that it 22 would support that with expert testimony. See Dkt. No. 243-18 at 1. The market share allocation 23 approach, moreover, is the other side of the coin from the non-infringing alternatives analysis. See 24 Malibu Boats, LLC v. Skier's Choice, Inc., No. 3:18-CV-00015, 2021 WL 1572477, at *5 (E.D. 25 Tenn. Apr. 21, 2021) (accepting the market share allocation approach as an “alternative[]” to 26 analyzing the impact of non-infringing alternatives on lost profits). 27 1 Impinj’s finished goods theory was also sufficiently disclosed. The parties agreed that 2 information disclosed in any of their co-pending cases in Washington or Texas could be used in 3 this case and vice versa. See Dkt. No. 278-1, ¶ 2. The parties have generously used information 4 produced between cases, and NXP does not contest this fact. Said differently, this theory was 5 disclosed. That parties are required to amend their damages contentions in light of “material[]” 6 changes to their theories does not change that the reasoning behind this is to deter gamesmanship. 7 Netfuel, Inc. v. Cisco Sys. Inc., No. 5:18-CV-02352-EJD, 2020 WL 4381768, at *4 (N.D. Cal. July 8 31, 2020). Impinj disclosed this theory, albeit late, in response to late-produced documents and 9 witnesses from NXP. In addition, NXP’s assertions that it “could have” conducted additional 10 discovery into these issues fails to persuade the Court that Impinj harmed NXP by not amending 11 its damages contentions. 12 The Court therefore DENIES NXP’s request to strike Kindler’s opinions regarding market 13 share allocation or its finished goods theory. 14 c. Purportedly Irrelevant Material 15 NXP argues that Kindler opines on irrelevant material in her report, specifically with 16 regard to other patents held by Impinj, not asserted in this case. 17 One court specifically excluded reference to technology as a viable non-infringing 18 alternative where the patent had not issued yet, because characterizing them as alternatives would 19 be “speculative at best.” ViaSat, Inc. v. Space Sys./Loral, Inc., No. 3:12-CV-00260-H (WVG), 20 2014 WL 11813868, at *2 (S.D. Cal. Feb. 21, 2014). Given that the parties position in the 21 marketplace, the issue of whether that feature is a proper consideration, goes more to the weight of 22 the opinion rather than its exclusion given that for Impinj this was a continuation of a patent 23 beginning in 2012. Further, the ’866 and ’801 issued in 2009 and 2011, respectively. The Court 24 finds that the patents would have been relevant to the hypothetical negotiations, and the jury may 25 weigh that information. 26 B. Motion to Supplement the Record 27 At the outset, the Court notes that the instant motion is duplicative of the motion filed at 1 Docket No. 368, which was erroneously not filed as an administrative motion.* In any event, 2 || Impinj seeks to supplement the record on the Motion to Strike Certain Opinions of Scott E. 3 || Thompson and Lauren R. Kindler (Dkt. No. 239) on the basis that NXP’s stance in the 4 || contemporaneous case between the parties in the Western District of Washington (No. 2:20-cv- 5 01503-JHC) is contradictory to an argument it set forth in its briefing on the motion to strike. 6 Specifically, Impinj contends that NXP’s request to strike paragraphs 173 and 174 of 7 || Kindler’s report, which relate to her 25% apportionment to each of the primary features protected 8 || by Impinj’s patents. According to Impinj, despite attacking that apportionment on several 9 || grounds, including Kindler’s reliance on Impinj technical fellow Ron Oliver and the allegedly 10 || arbitrary nature of it, NXP’s expert David Haas adopted the same figure in his apportionment 11 analysis in the Washington case. There, NXP argued that Kindler arrived at this non-arbitrary 12 || figure based on her own analysis, and that Haas appropriately adopted it. The Court also took into 5 13 account NXP’s position on the matter in this case. The Court need not probe further into the 14 || merits of this at this stage. The Court denies the motion to strike Kindler and Thompson. 2 15 || IL CONCLUSION 16 For the foregoing reasons, the Court DENIES NXP’s motion to strike Kindler and 3 17 || Thompson. The Court also DENIES Impinj’s motion to supplement the record as moot. 18 This terminates Dkt. Nos. 239, 368, and 372. 19 IT Is SO ORDERED. 20 || Dated: 7/8/2023 21 22 ee Lage bal □□□ rthpbbtec 33 (y ONNE GonzAPEz Rocrrs ©

UNITED STATES DISTRICT JUDGE

24 25 26 07 “ 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 28 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.