License Practitioners Beware the Macom Imbroglio!
Business and legal professionals beware of your Field of Use restrictions. Practitioners involved in constructing and drafting license agreements should pay particular attention to a U.S. Court of Appeals case decided in the Central District of California, Macom Technology Solutions Holdings, Inc. v. Infineon Technologies AG (January 29, 2018). In the Macom case, the licensor Infineon sought to terminate a license agreement with its licensee, Macom, because Macom was alleged to have been commercially exploiting the licensed patents and technology outside the Field of Use. The license agreement defined a Field of Use as gallium nitride (GaN) patents and technology, and Infineon licensed to Macom GaN-on-silicon technology and the right to practice the GaN patents. However, it should be noted that Macom and Infineon shared the rights to practice the licensed patents in the Field of Use. The licensor Infineon sought to terminate the license agreement with Macom on the principle that the violation of the Field of Use restriction by the licensee Macom was a material breach of the license agreement.
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