Intellectual Property Law

New Matter WINTER 2021, VOLUME 46, EDITION 4


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.


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…."

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