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Impinj and NXP Semiconductors reach settlement agreement

EditorRachael Rajan
Published 03/13/2024, 04:39 PM
Updated 03/13/2024, 04:39 PM
© Reuters.

Impinj, Inc. (NASDAQ: PI) and NXP Semiconductors N.V. (NASDAQ: NASDAQ:NXPI), along with its subsidiary NXP USA, Inc., have announced a comprehensive Settlement and Patent Cross-License Agreement, effectively ending all ongoing litigation between the two tech companies.

This agreement, established today, includes a mutual release of patent infringement claims up to March 31, 2024, and the exchange of non-exclusive, worldwide patent licenses.

The terms of the agreement stipulate that NXP will make a one-time payment of $45 million to Impinj within five business days following the execution of the agreement. Additionally, NXP has agreed to annual license fee payments to Impinj starting April 1, 2024, with the initial payment amounting to $15 million. These payments are set to increase each year by a predetermined percentage. Impinj is not required to make any payments to NXP under the terms of this settlement.

This cross-licensing arrangement will remain in effect for approximately ten years, coinciding with the expiration of a specific set of Impinj patents, referred to as the Indicator Patents. The agreement allows for termination by either party in the event of a material breach. Moreover, NXP holds the right to terminate the agreement if it successfully eliminates the use of all valid claims of the Indicator Patents in its products.

The resolution of these disputes and the initiation of cross-licensing between Impinj and NXP mark a significant development for both companies. The agreement fosters a framework for future collaboration, allowing each company to utilize the other's patented technology, potentially spurring innovation and product development.

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