ROHM USA had filed a lawsuit against MaxPower seeking a declaratory judgment that ROHM’s silicon carbide (SiC) MOSFETs do not infringe four MaxPower U.S. patents
MaxPower Semiconductor, Inc. (MaxPower) has announced that, following a hearing on fourth February 2021, the U. S. District Court for the Northern District of California dismissed ROHM Semiconductor USA LLC (ROHM USA)’s complaint for declaratory judgment of noninfringement of MaxPower’s patents.
The court, as per MaxPower, held that MaxPower’s Technology License Agreement (TLA) with ROHM Co., Ltd. binds ROHM Japan’s subsidiaries, including ROHM USA, and that the same agreement requires ROHM USA to arbitrate its noninfringement claims.
“We are pleased that the Court granted our motion to compel arbitration. We look forward to resolving the dispute over ROHM’s breach of our longstanding non-exclusive trench MOSFET technology and patent license. We are confident that we will prevail in the arbitration, and we intend to continue to aggressively protect our technology assets and other intellectual property rights,” said Dr Mohamed Darwish, MaxPower’s President and CEO.
Roger Cook, MaxPower’s lead counsel commented, “ROHM has been using this improper declaratory judgment proceeding to avoid arbitrated resolution of the technology license dispute involving ROHM’s sales of silicon carbide trench MOSFETs. Thankfully, resolution of this dispute should now go forward.”
Facing MaxPower’s claim that ROHM Japan was in breach of its obligations under the Technology License Agreement, on September 23, 2020, ROHM USA filed a lawsuit against MaxPower seeking a declaratory judgment that ROHM’s silicon carbide (SiC) MOSFETs do not infringe four MaxPower U.S. patents.