Court Maintains License Pending Coverage Dispute

Posted on | March 24, 2009 | No Comments

2009-1168 Fairchild Semiconductor v. Third Dimension (3D)
D/ME 08-158
Judge D. Brock Hornby

Patentee/declaratory-judgment defendant 3D appeals from the grant by Judge D. Brock Hornby of a preliminary injunction prohibiting it from terminating a patent license to Fairchild.  The license relates to patent 5,216,275 and a related Chinese patent directed to superMOSFET technology for silicon semiconductors.

The parties dispute whether Fairchild's SuperFET™ products are covered by either patent, and thus whether royalties are owed under the license agreement.  3D threatened or attempted to terminate the license for failure to pay/agree.

The court employed the usual factors for a preliminary injunction (likelihood of success, etc.), and a prior claim construction from Power Mosfet Techs., LLC v. Siemans AG, 378 F.3d 1396 (Fed. Cir. 2004) and collateral estoppel factored heavily into claim construction and the infringement analysis.

For licensees there is some nice language from the court regarding irreparable harm and balance of hardships regarding terminated licenses, as well relating to the public interest prong.  Fairchild did have to post a bond of $330,000 (in place from the TRO).

More reading:

Counsel:

Fairchild: Pierce Atwood (Portland, Maine)
Third Dimension: Shore Cahn Bragalone (Dallas); Richardson Whitman Large & Badger (Portland, Maine)

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