MACOM TECHNOLOGY SOLUTIONS HOLDINGS, INC., NITRONEX, LLC, Plaintiffs-Appellees
INFINEON TECHNOLOGIES AG, Defendant INFINEON TECHNOLOGIES AMERICAS CORPORATION, Defendant-Appellant
from the United States District Court for the Central
District of California in No. 2:16-cv-02859-CAS-PLA, Judge
Christina A. Snyder.
Tessar, Perkins Coie, LLP, Denver, CO, argued for
plaintiffs-appellees. Also represented by Elizabeth M.
Banzhoff; Dan L. Bagatell, Hanover, NH; Daniel Tyler Keese,
G. Wille, Baker Botts, LLP, Dallas, TX, argued for
defendant-appellant. Also represented by Jeffery D. Baxter,
Brian Douglas Johnston.
Prost, Chief Judge, Wallach and Stoll, Circuit Judges.
MACOM Technology Solutions Holdings, Inc. and Nitronex, LLC
(together, "MACOM") sought and obtained a
preliminary injunction against defendant Infineon
Technologies Americas Corp. ("Infineon") in the
U.S. District Court for the Central District of California.
The injunction declared that Infineon's termination of an
agreement was ineffective and ordered Infineon to comply with
that agreement. Infineon appeals the injunction on several
grounds. We affirm in part, vacate in part, and remand for
Corporation ("Nitronex") was formed in 1999 and
developed semiconductors using gallium nitride
("GaN"). Nitronex obtained several patents related
to that technology. In 2010, it sold its GaN patents to
International Rectifier Corporation ("IR"). As part
of the sale, Nitronex and IR executed a separate license
agreement (the "Agreement"), which licensed back to
Nitronex certain rights under the patents. Both companies
were later acquired and renamed. For present purposes, the
relevant parties to the Agreement are MACOM (formerly
Nitronex) and Infineon (formerly IR).
Agreement defines a "Field of Use" characterized by
GaN-on-silicon ("GaN-on-Si") technology and
licenses MACOM to practice what are now Infineon's GaN
patents (the "Licensed Patents") within the
"Field of Use only." MACOM and Infineon share
rights to practice the Licensed Patents in the
Agreement's Field of Use. But the Agreement further
defines an "Exclusive Field" within the Field of
Use in which MACOM has certain exclusive rights to practice
the Licensed Patents-even as against Infineon.
February 2016, Infineon notified MACOM that it believed MACOM
had breached the Agreement by making and selling products
("GaN-on-SiC") technology, which is distinct from
GaN-on-Si technology and outside the Agreement's Field of
Use.MACOM responded that the GaN-on-SiC sales
were minimal and that any breach had been cured.
Nevertheless, Infineon terminated the Agreement on March 22,
2016, because it deemed MACOM's GaN-on-SiC activity to be
a material breach.
then sued Infineon, asserting various contract claims and a
claim for declaratory judgment of non-infringement of the
Licensed Patents. MACOM also moved for a preliminary
injunction based on its third claim for relief-a declaratory
judgment that the Agreement was wrongly terminated and
remains in effect (the "Wrongful Termination
district court held a hearing and issued an opinion and order
granting a preliminary injunction. The district court's
December 7, 2016 injunction (the "Injunction")
The Court hereby GRANTS [MACOM's] Motion
for Preliminary Injunction. The Court ORDERS
that until further order of the Court, the [Agreement] shall
remain in full force and effect and that defendant
[Infineon's] purported termination of that agreement on
March 22, 2016 shall have no effect.
In the event that [Infineon] asserts that there is a new
breach of the [Agreement] by plaintiffs, [Infineon] shall
advise the Court in writing of its intention to declare a
breach, stating the action it intends to take and the claimed
basis for that action. [Infineon] shall provide the Court
with such notice 30 days before declaring a breach.
Consistent with existence of a valid License Agreement,
[Infineon] may not design, develop, make, have made, use,
offer to sell, sell, or service products in MACOM's
Exclusive Field (as defined by the under-seal [Agreement])
that practice the [Licensed Patents], nor may [Infineon]
directly or indirectly market, sell, or service products in
the Exclusive Field that practice the [Licensed Patents]. In
addition, [Infineon] may not grant licenses or sublicenses to
the Licensed Patents (identified in Schedule A to the
[Agreement]) to design, develop, make, have made, use,
market, sell or service products in the Exclusive Field or
Field of Use (as defined by the [Agreement]) that practice
the [Licensed Patents], including but not limited to the
grant of such licenses to its corporate affiliates. Nothing
in this order shall prevent [Infineon] from designing,
making, having made, using, offering to sell, selling, or
servicing gallium nitride-on-silicon carbide (GaN-on-SiC)
products, or from directly or indirectly marketing, selling,
or servicing such products.
Infineon shall, within ten days from the date of issuance of
this Preliminary Injunction, provide notice and a copy of
this Preliminary Injunction to all subsidiaries, affiliates,
officers, directors, employees, principals, agents,
customers, and attorneys that may have any involvement
whatsoever in designing, developing, making, having made,
using, marketing, selling, servicing, or licensing products
in the Exclusive Field or Field of Use that use the [Licensed
Patents], as well as any other person or entity acting in
active concert or participation with [Infineon] with respect
to any of the activities enjoined here.
appeals the district court's order granting the
Injunction. We have subject-matter jurisdiction under 28
U.S.C. §§ 1292(a) and (c)(1).
the grant, denial, or modification of a preliminary
injunction is not unique to patent law, we apply regional
circuit law when reviewing and interpreting such decisions.
E.g., Aevoe Corp. v. AE Tech Co., 727 F.3d
1375, 1381 (Fed. Cir. 2013). The Ninth Circuit reviews a
district court's decision granting a preliminary
injunction for abuse of discretion. Disney Enters., Inc.
v. VidAngel, Inc., 869 F.3d 848, 856 (9th Cir. 2017). A
district court abuses its discretion by basing its decision