Rohm fails to convince Fed Circ to reverse arbitration ruling
Rohm Semiconductor has failed to convince the US Court of Appeals for the Federal Circuit to reverse a California court's dismissal of its patent case against licensor, MaxPower Semiconductor.
The three-judge panel affirmed the earlier US District Court for the Northern District of California decision to dismiss Japan-based Rohm’s complaint for declaratory judgment of non-infringement of four MaxPower patents, as an agreement between the two companies said the parties would arbitrate the dispute out of court.
Rohm’s US subsidiary argued that the company’s technology license agreement (TLA) with MaxPower lacked “clear and unmistakable evidence” of an agreement to “arbitrate arbitrability”.
But the circuit said in an opinion handed down on Friday, November 12, that “none” of Rohm’s arguments are convincing, claiming that some “border on the frivolous”.
Rohm’s arguments
According to the opinion, the TLA stated that arbitration is to be conducted “in accordance with the provisions of the California Code of Civil Procedure (CCCP)”.
Rohm argued that the CCCP provisions were “ambiguous” because one claimed that an arbitrator “may rule on its own jurisdiction”, and another claimed that “the court shall order the petitioner and the respondent to arbitrate the controversy”.
The Federal Circuit held that only one of these provisions could be applicable to the dispute and was contingent on whether the dispute at issue was intentional or domestic.
Next, Rohm argued that the dispute was “purely domestic” so the CCCP provisions did not apply. But the Federal Circuit ruled that the TLA applied to all subsidiaries of Rohm Japan, including Rohm USA.
Background
Rohm entered into a technology license agreement with MaxPower, which allowed Rohm to use certain metal oxide semiconductor field-effect transistors (MOSFET) technologies developed by MaxPower.
The agreement was later amended in 2011, including an agreement to arbitrate any dispute related to the deal.
In 2019, a dispute arose between Rohm and Maxpower concerning whether the TLA covered Rohm’s silicon carbide MOSFET products. In September 2020, MaxPower notified Rohm that it intended to initiate arbitration.
Shortly thereafter, Rohm filed a complaint for declaratory judgment claiming it did not infringe four MaxPower patents with the California court, and four inter partes review petitions concerning the patents.
MaxPower filed a motion to compel arbitration, which the district court granted, dismissing the case. This led Rohm to appeal the decision with the Federal Circuit.
In September, the circuit denied a bid from MaxPower to challenge a US Patent Trial and Appeal Board decision to go ahead with the inter partes review..
The appeal was denied in a two to one vote by circuit judges, which gave the go-ahead to review the four patents’ validity.
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