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MACOM Technology Solutions Holdings, Inc. v. Infineon Technologies AG

“Field of Use” License Not Automatically Terminable Due to Licensee’s Entry into Non-Licensed Field

MACOM Technology Solutions Holdings, Inc. v. Infineon Technologies AG, 2018 WL 740298 (Fed. Cir. Feb. 7, 2018) (PROST, Wallach, Stoll) (C.D. Cal.: Snyder) (3 of 5 stars)

Fed Cir part-affirms, part-vacates preliminary injunction. Applying Ninth Circuit law, the district court did not err in determining that MACOM’s claim (which was for wrongful termination of its license from Infineon) had a reasonable likelihood of success. The Infineon license was limited to a specified field of use. The opinion rejects Infineon’ argument that such restriction contractually obliged MACOM not to exceed that field of use. The opinion reasons that, if MACOM exceeded the field of use, then it would no longer be covered by the license—but the license would still remain in effect within the field of use. See Op. at 8. The district court also did not abuse its discretion in determining that MACOM would suffer irreparable harm absent an injunction. There was evidence that the loss of MACOM’s exclusive license within the field of use would affect customers’ perception of MACOM and would harm its business; the opinion finds a sufficient causal nexus between such harm and Infineon’s termination of the contract. The district court erred by enjoining Infineon from making/selling products practicing the patents. Such instruction was insufficiently specific to comply with Rule 65(d). Per International Rectifier, 383 F.3d 1312 (Fed. Cir. 2004), “the enjoined acts must relate to particular, adjudicated infringing products.” Id. at 12. That the injunction related to contract enforcement did not alter this requirement. The injunction against granting particular licenses/sublicenses relating to the patents at issue was sufficiently specific under Rule 65. The opinion also rejects Infineon’s argument that the injunction’s requirement that Infineon notify others of the injunction was defective in some way; the injunction was sufficiently clear under Rule 65.

KEYWORDS: PRELIMINARY INJUNCTION (YES); CONTRACT; LICENSE