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Court Dismisses ROHM Semiconductor USA's Lawsuit for Declaratory Judgment of Noninfringement of MaxPower Semiconductor's Patents and Compels Arbitration

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On February 15, 2021, MaxPower Semiconductor announced the dismissal of ROHM Semiconductor USA's lawsuit regarding noninfringement of MaxPower's patents. The U.S. District Court ruled that ROHM USA must arbitrate under the Technology License Agreement with ROHM Japan. MaxPower's CEO expressed confidence in prevailing during arbitration, emphasizing their commitment to protect their technology and intellectual property. This court decision underscores the binding nature of the license agreement and paves the way for the resolution of the ongoing technology dispute.

Positive
  • Court dismissal of ROHM USA's lawsuit reinforces MaxPower's patent rights.
  • The ruling compels arbitration, potentially leading to a favorable resolution for MaxPower.
Negative
  • None.

SAN JOSE, Calif., Feb. 15, 2021 /PRNewswire/ -- MaxPower Semiconductor, Inc. (MaxPower), provider of high-performance power semiconductor products, today announced that, following a hearing on February 4, 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 held that MaxPower's Technology License Agreement (TLA) with ROHM Co., Ltd. (ROHM Japan; 6963:JPTokyo) 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."

About the Case
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. The Court's order dismissing the suit and compelling ROHM USA to arbitration can be found at https://www.pacermonitor.com/public/case/36415380/Rohm_Semiconductor_USA,_LLC_v_MaxPower_Semiconductor,_Inc, Case No. 20-cv-06686-VC.

About MaxPower Semiconductor Inc.
MaxPower Semiconductor, Inc. is a fabless, leading-edge power semiconductor company dedicated to delivering innovative and cost-effective field-proven technologies/products that optimize Power Management Solutions. MaxPower is a privately held company with a very strong and expansive IP portfolio founded by an internationally renowned team in the power technology industry. For more information, please visit  https://www.maxpowersemi.com

 

Cision View original content to download multimedia:http://www.prnewswire.com/news-releases/court-dismisses-rohm-semiconductor-usas-lawsuit-for-declaratory-judgment-of-noninfringement-of-maxpower-semiconductors-patents-and-compels-arbitration-301227823.html

SOURCE MaxPower Semiconductor, Inc.

FAQ

What was the outcome of the February 4 hearing regarding ROHM Semiconductor USA's lawsuit?

The U.S. District Court dismissed ROHM Semiconductor USA's lawsuit and ordered arbitration.

What does the court ruling imply for ROHM Semiconductor USA and MaxPower?

The ruling implies that ROHM USA must resolve its claims through arbitration as per the Technology License Agreement.

What are the implications of the Technology License Agreement for ROHM USA?

The Technology License Agreement requires ROHM USA to arbitrate its noninfringement claims regarding MaxPower's patents.

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