Intellectual Property Law
New Matter WINTER 2021, VOLUME 46, EDITION 4
Content
- 2022 New Matter Author Submission Guidelines
- A Look At the Trademark Modernization Act - Part 2
- CONFIDENTIAL INFORMATION, "RETURN OR DESTROY" CLAUSES AND THE PERNICIOUS PERSISTENCE OF ELECTRONIC RECORDS
- INTELLECTUAL PROPERTY SECTION Executive Committee 2021-2022
- INTELLECTUAL PROPERTY SECTION Interest Group Representatives 2021-2022
- Intellectual Property Section New Matter Editorial Board
- Ip and Art: An International Perspective
- Letter From the Chair
- Letter From the Editor-in-chief
- My Holiday Wish List From the Uspto
- Ninth Circuit Report
- Online Cle For Participatory Credit
- Quarterly International Ip Law Update
- Table of Contents
- The American Rule
- The California Lawyers Association Intellectual Property Alumni
- The Doj's China Initiative and the Controversy of Prosecuting Professors and Researchers In the U.S. For Trade Secrets Theft
- The Nascent Showdown Between the Ninth Circuit's Server Test and Its Detractors
- Trade Secret Report
- Ttab Decisions and Developments
- Federal Circuit Report
FEDERAL CIRCUIT REPORT
Rex Hwang
Skiermont Derby LLP
This article explores the Federal Circuit’s recent order from In Re: Maxpower Semiconductor Inc.1 In this matter, a Federal Circuit panel declined to stay or terminate IPR proceedings despite a prior agreement between the parties to arbitrate disputes involving patent validity. The Federal Circuit concluded that the Board was not required to enforce or comply with private arbitration agreements, and therefore did not exceed its authority in allowing IPR proceedings to proceed. In her dissent, Judge Kathleen O’Malley argued that the majority got it wrong because allowing the IPRs to proceed despite the parties’ agreement to arbitrate was inconsistent with 35 U.S.C. § 294 and the Supreme Court’s repeated statements in favor of strong enforcement of arbitration agreements.
GENERAL BACKGROUND FACTS2
In 2007, ROHM Japan and MaxPower entered a technology license agreement ("TLA"). The TLA included an agreement to arbitrate "[a]ny dispute, controversy, or claim arising out of or in relation to this Agreement or at law, or the breach, termination, or validity thereof…."