Responding to MACOM’s repeated and strong public statements about its lawsuit against Infineon Technologies over rights to GaN on Si technology, Infineon has publicly responded with its view of the case in a statement released on December 20, 2016.
Infineon states that the court has made no decision on the merits of the case:
"To the extent Macom has given the impression through press releases, analyst calls, and customer communication, that it has won the case or settlement is imminent, such impressions are false."
Infineon claims that MACOM was violating a license agreement for use of Infineon’s GaN on Si patents, which led Infineon to terminate the license in March 2016. In April, MACOM filed suit, claiming Infineon was violating the license agreement. On October 31, a U.S. District Court issued a preliminary injunction that preserves MACOM’s rights to use the IP and prohibits Infineon from doing anything to violate the agreement until the case is finally decided by the court. The court filed the order on December 7.
The original license agreement was established in 2010 between Nitronex, developer of the GaN on Si IP, and International Rectifier (IR). While IR was principally interested in GaN on Si for power electronics, apparently it also acquired IP rights for RF applications, reportedly in exchange for cash needed by start-up Nitronex. However, Nitronex retained the exclusive license to use the IP for RF applications. Infineon subsequently acquired IR, and MACOM acquired Nitronex.
Here’s the full statement by Infineon:
The lawsuit between Infineon Technologies AG, its subsidiary Infineon Technologies Americas Corp., and Macom Technology Solutions Holdings, Inc., is still in its early stages. The court has made no decision on the merits. Macom has neither won the case nor is settlement imminent.
Macom’s dispute with Infineon originates from irreconcilable business philosophies. While Infineon generally welcomes competition and has entered into license agreements with many of its competitors allowing broad freedom to operate, Macom prefers exclusion. However, whether Macom or Infineon ultimately prevails in this lawsuit, the outcome should determine whether Macom continues to be licensed to certain Infineon Americas patents. Infineon Americas owns the patents at issue and has the rights it needs for its own operations.
Origins of the lawsuit
Macom had been willfully infringing patents owned by Infineon Americas by operating outside the scope of a license agreement. Macom admitted to the infringement but rejected Infineon America’s offer to broaden the license agreement to cover the infringement. Infineon Americas therefore terminated Macom's license in March 2016. Macom then filed a complaint in the United States District Court for the Central District of California in Los Angeles. While no decision has been made on the merits, the court dismissed claims in Macom's second attempt at a complaint in October 2016 (Macom had voluntarily amended its first one). Macom has recently filed a third version. Infineon believes that the third complaint is still flawed and will move to dismiss this week. Once the lawsuit eventually proceeds, Infineon expects a decision within 1-2 years.
Injunction aims at preserving status quo until judgement is made
To preserve the status quo until the court reaches a decision, the court issued a preliminary injunction in the meantime. The preliminary injunction serves to shield Macom from irreparable harm should Macom ultimately succeed on its theory, while Infineon can seek to recover damages from Macom later if Infineon prevails. The preliminary injunction is not a threat to Infineon's business plans.
Specifically, and contrary to press releases by Macom, the court has made no decision that Infineon has “acted improperly in trying to operate in Macom's exclusive field.” To the extent Macom has given the impression through press releases, analyst calls, and customer communication, that it has won the case or settlement is imminent, such impressions are false.
Read the court’s preliminary injunction:
2016-12-07 Preliminary Injunction Order by speedybits on Scribd