CERTAIN INFORMATION HAS BEEN EXCLUDED FROM THIS EXHIBIT BECAUSE IT IS BOTH NOT MATERIAL AND WOULD LIKELY CAUSE COMPETITIVE HARM TO THE REGISTRANT IF PUBLICLY DISCLOSED. OMISSIONS ARE DESIGNATED AS [***].
CONFIDENTIAL SETTLEMENT AND CROSS-LICENSE AGREEMENT
THIS CONFIDENTIAL SETTLEMENT AND CROSS-LICENSE AGREEMENT
(hereinafter referred to as the “Agreement”) is entered into as of the date of the last signature set forth on the signature page below (the “Effective Date”) by and between Impinj, Inc., a Delaware corporation having its principal place of business at 400 Fairview Avenue North, Suite 1200, Seattle, Washington 98109 (“Impinj”), on the one hand, and NXP Semiconductors N.V., a Dutch company having a principal place of business in Eindhoven, The Netherlands (“NXP Parent”), and NXP USA, Inc., a Delaware corporation having its principal place of business at 6501 W. William Cannon Dr., Austin, TX 78735 (“NXP USA”), on the other hand. Each of NXP Parent and NXP USA may be referred to individually as a “NXP Party” or collectively as the “NXP Parties”. Each of Impinj and the NXP Parties may be referred to individually as a “Party” and collectively as the “Parties”.
BACKGROUND
WHEREAS, Impinj, and certain NXP Parent’s Subsidiaries (including NXP USA) have been engaged in multiple patent disputes, including patent litigation in Washington, California, Texas and China;
WHEREAS, the Parties have also been engaged in challenging each other’s patents at the United States Patent and Trademark Office (“PTO”), before the United States Patent and Trademark Appeals Board (“PTAB”) and before the Supreme People’s Court of China; and
WHEREAS, the Parties seek to resolve their disputes and enter into a temporary cross- license, all upon the terms specified herein.
NOW, THEREFORE, in consideration of the terms contained herein and other good and valuable consideration, the Parties agree as follows:
AGREEMENT
As used in this Agreement, the following definitions apply:
(b) was known to the receiving Party prior to the date of disclosure from the disclosing Party from a third party without a duty of confidentiality to the disclosing Party, or (c) is developed or ascertained by the receiving Party independently of any confidential information of the disclosing Party.
(1) when no Valid Claim of any of the Impinj Indicator Patents exists and (2) the Agreement being effectively terminated as set forth in Section 7 below.
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to/of a NXP Party or any of its Subsidiaries in connection with such suppliers’, distributors’, resellers’ and customers’ manufacture, import, use, offer for sale or sale of any and all products, services and applications sold by a NXP Party or any of its Subsidiaries before the Effective Date, including those that have been accused by Impinj or any of its Subsidiaries of infringement during the litigation between the Parties ongoing as of or before the Effective Date, and all Liabilities caused by or attributable to any such persons or entities.
A GENERAL RELEASE DOES NOT EXTEND TO CLAIMS WHICH THE CREDITOR DOES NOT KNOW OR SUSPECT TO EXIST IN HIS OR HER FAVOR AT THE TIME OF EXECUTING THE RELEASE, WHICH IF KNOWN TO HIM OR HER MUST HAVE MATERIALLY AFFECTED HIS OR HER SETTLEMENT WITH THE DEBTOR.
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= $[***] is due on April 1, 2025, and if this Agreement is not terminated before April 1, 2026, then the amount of $[***] * [***] = $[***] is due on April 1, 2026.
Wire Instructions:
Swift Code: [***]
Account Name: Impinj Inc. Account #: [***]
(iii) not use such Confidential Information for any purpose except those permitted by this Agreement.
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breach of this Agreement by another Party, or to resolve any dispute under Section 7.2) or as may otherwise be required by law, order, rule or regulation, or in connection with an investigation by a governmental agency; in each case, provided that the receiving Party seeking to make such disclosure promptly provides notice to the disclosing Party of the need for such disclosure and takes all reasonable steps to minimize such disclosure by, for example, obtaining a protective order and/or appropriate confidentiality provisions requiring that such information to be disclosed be used only for the purpose for which such discovery request, subpoena, law, order, rule, regulation or legally binding requirement was issued and only under the highest available level of protection reasonably available (e.g., Attorneys Eyes Only).
5.1 and 5.2 are redacted when filed to the extent permitted by any such laws or regulations (and again, a Party or its Subsidiary may rely on advice of counsel);
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Subsidiaries shall pay within thirty (30) days after such 60-day period, any payment under Section 5.2 that became due after the Non-infringement Termination Notice together with interest calculated pursuant to Section 5.5 from the original due date for the payment under Section 5.2 through the date of such payment. Without limiting the obligations of Impinj under Section 6, to the extent the NXP Party wants to avoid disclosure of any of such information that is Confidential Information to Impinj personnel, any such disclosure will be limited to outside attorneys and/or independent experts who have a strict obligation of confidentiality directly with the NXP Party.
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agree otherwise. The arbitrator(s) shall be asked to determine the same issue as identified above—whether the Non-infringement Termination Condition was satisfied [***]. The validity of any of then- remaining Valid Claims within the Impinj Indicator Patents shall not be an issue or considered. The arbitration shall be conducted in a manner that, to the extent practicable, minimizes costs, but Impinj shall be allowed discovery, including document discovery and depositions, to the extent reasonably necessary to resolve the dispute under the same conditions as specified in Section 7.2.3. The arbitrator(s) shall also have discretion to allow the Parties to designate one or more experts in connection with the arbitration to the extent they deem it helpful in resolving the dispute subject to strict obligations of confidentiality directly with the relevant NXP Party. The arbitrator(s) may also choose, in addition to or in lieu of the Parties having experts, to select its/their own independent technical expert subject to strict obligations of confidentiality directly with the relevant NXP Party. The Parties and the arbitrator(s)/panel shall conduct the arbitration in an efficient manner and shall work in good faith to conclude the arbitration within [***]. The arbitrator(s) shall explain the basis for its/their decision in writing, and the decision of the arbitrator or a majority of the panel, as applicable, shall be final, binding, non-appealable and enforceable in any court having jurisdiction. The Parties shall share the cost of the arbitration equally and shall be responsible for their own attorneys’ fees and costs, unless the arbitrator(s) determines that one of the Parties took an unreasonable position. Under those circumstances, which shall be explained in writing, the arbitrator(s) may award fees and costs to the prevailing Party.
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7.3, 8, and 9.
As soon as practicable, but no more than ten (10) days of the Effective Date, each Party shall (or shall cause its applicable Subsidiary to) take reasonable steps to terminate by dismissal all pending litigation worldwide, including appeals, and to the extent permitted by applicable rules, withdrawal of any pending patent challenges, such as reexaminations, post-grant review or inter partes reviews before the PTO and PTAB challenging the validity of the Patents of the other Party or any of its Subsidiaries. All dismissals shall be with prejudice, with each Party bearing its own fees and costs. The Parties shall not pursue or engage in any such proceeding challenging the validity of the other Party’s patents unless required to do so and, in that circumstance, only to the extent so required.
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U.S.C. Section 101 et seq., licenses of rights to “intellectual property” as defined under Section l0l(35a) of the U.S. Bankruptcy Code.
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For Impinj: Impinj, Inc.
Attn: [***]
400 Fairview Ave. S., Suite 1200
Seattle, WA 98109
[***]
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To either NXP Party:
NXP USA, Inc.
Attn: [***]
6501 William Cannon Drive West
Austin, TX 78735
[***]
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IN WITNESS WHEREOF, the Parties have executed this Agreement by their duly authorized representatives.
For and on behalf of:
Impinj, Inc.
/s/ Chris Diorio By: Chris Diorio Title: CEO |
Date: March 12, 2024 |
For and on behalf of:
NXP SEMICONDUCTORS N.V.
/s/ Jennifer B. Waumett By: Jennifer B. Waumett Title: EVP, General Counsel |
Date: March 13, 2024 |
For and on behalf of:
NXP USA, Inc.
/s/ Katherine Haight By: Katherine Haight Title: VP, Commercial Legal Support
/s/ Jennifer B. Waumett By: Jennifer B. Waumett Title: EVP, General Counsel |
Date: March 13, 2024
Date: March 13, 2024 |
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EXHIBIT A
Impinj Indicator Patents
[***]
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