Round Rock License Summary and FAQ

Summary:

Impinj, Inc. (“Impinj”) has signed a license agreement with Round Rock Research, LLC (“Round Rock”). Under the terms of the agreement, Impinj’s FCC UHF RFID Speedway Revolution readers (“Readers”) purchased after October 1, 2013 may be licensed under RFID patents and applications owned by Round Rock as of October 1, 2013 (“Round Rock Patents”). This license extends to Impinj’s xPortal and xArray Portals (“Portals”) which include Readers (collectively, “Readers or Portals”).

To obtain a license under the Round Rock Patents for Readers or Portals:

(1) U.S. Retail Between October 1, 2013 and April 1, 2015: If you purchased a Reader or Portal after October 1, 2013 but before April 1, 2015, and the Reader or Portal is used at a retail or brand-owner site in the U.S., then those specific Readers and Portals are already licensed under Round Rock Patents. You will need to provide Impinj with the serial numbers of the Readers and Portals to complete registration.

(2) U.S. Retail After April 1, 2015: If you purchased a Reader or Portal after April 1, 2015, and the Reader or Portal is used at a retail or brand-owner site in the U.S., then you are required to purchase from Impinj a license under Round Rock Patents for that specific Reader or Portal. Contact Impinj for details.

(3) U.S. but outside U.S. Retail, after October 1, 2013: If you purchased a Reader or Portal after October 1, 2013 and the Reader or Portal is used within the U.S. but outside U.S. Retail then you may (but are not required to) purchase, from Impinj, a license under Round Rock Patents for that specific Reader or Portal. Contact Impinj for details.

(4) Outside U.S.: Round Rock’s license agreement with Impinj neither specifically addresses nor requires licenses for Readers or Portals used outside the U.S. Consequently, Impinj does not offer licenses under the Round Rock Patents for Readers or Portals used outside the U.S.

(5) Prior to October 1, 2013: Round Rock’s license agreement with Impinj neither specifically addresses nor requires licenses for Readers or Portals purchased prior to October 1, 2013. Consequently, Impinj does not offer licenses under the Round Rock Patents for Readers or Portals purchased prior to October 1, 2013.

The Round Rock license agreement additionally requires the end user (U.S. retailer, U.S. brand owner, or other user) to use at least 80% licensed UHF RFID readers and at least 80% licensed UHF RFID tags. Inlay manufacturers may obtain a license from Round Rock for the Round Rock Patents.

 

Frequently Asked Questions:

Does the license purchase requirement or opportunity apply equally to Readers and Portals?

Yes. For the purpose of licensing, you should treat Readers and Portals identically.

 

Am I required to purchase a license for Readers or Portals purchased after April 1, 2015 for use in U.S. Retail?

Yes. In addition, failure to purchase a license is a breach of your reseller agreement with Impinj and cause for termination. Impinj is not responsible for any Round Rock infringement claims relating to unlicensed Readers or Portals purchased after April 1, 2015.

 

Am I required to purchase a license for Readers or Portals purchased after October 1, 2013 but before April 1, 2015 for use in U.S. Retail?

No.  Your Reader or Portal is already licensed under Round Rock Patents.  However, you are required to provide Impinj with the serial numbers of the applicable Readers and Portals to complete registration.

 

Am I required to purchase a license for Readers or Portals purchased after October 1, 2013 for use in the U.S. but outside U.S. Retail?

No. Impinj’s agreement with Round Rock does not require that Readers or Portals used within the U.S. but outside U.S. retail be licensed. However, if you want a license then you may purchase one as described above. Unlicensed usage is at your organization’s and the end user’s sole risk.

 

Can I purchase a license for Readers or Portals purchased prior to October 1, 2013?

No. Round Rock’s license agreement with Impinj neither specifically addresses nor requires licenses for Readers or Portals purchased prior to October 1, 2013.

 

Can I purchase a license for Readers or Portals used outside the U.S.?

No. Round Rock’s license agreement with Impinj neither specifically addresses nor requires licenses for Readers or Portals used outside the U.S.

 

Can I use unlicensed UHF RFID tags with licensed Readers or Portals?

Yes, but you are responsible for ensuring that tags, systems, and methods do not infringe the Round Rock Patents. If your use of unlicensed UHF RFID tags in systems or methods infringe the Round Rock Patents then your use of licensed Readers or Portals with the tags is unlicensed by Round Rock. Impinj advises using licensed tags with license Readers or Portals in U.S. retail applications.

 

Do I need to obtain a separate license from Round Rock?

You should obtain advice from legal counsel and may contact Round Rock directly. As of the date of this FAQ, Round Rock was offering licenses to reader and inlay manufacturers.

 

How will I know whether my UHF RFID tags are licensed under the Round Rock Patents?

You will need to contact your tag or inlay supplier.

 

How can I check whether my Impinj Reader or Portal is licensed under the Round Rock Patents?

Contact Impinj Support to check the license status of your Reader or Portal.

 

How long are U.S. retail applications expected or required to use licensed readers and licensed tags under the Round Rock patents?

Until the last of the licensed Round Rock patent expires, anticipated some time in 2019.

 

Do I have to sign a new reseller agreement with Impinj?

If you are an existing North American partner as of 01-April-2015 then our Channel Team will assist you with signing an updated reseller agreement. For new partners signing after 01-April-2015, the reseller agreement will address Round Rock licensing directly.

 

Disclaimer:

The foregoing information is provided by Impinj in good faith and is not legal advice. Other than identifying which individual Impinj Readers or Portals have been licensed under Round Rock Patents, nothing in the foregoing shall be construed as any representation, warranty, liability or obligation of Impinj.