The US Court of Appeals for the Federal Circuit found a
licensor's termination of a license agreement ineffective,
concluding that a licensee's activity outside of a "field
of use" provision was not a material breach of that agreement.
MACOM Technology Solutions Holdings, Inc., Nitronex, LLC v.
Infineon Technologies, et al., Case No. 17-1448 (Fed. Cir.,
Jan. 29, 2018) (Prost, CJ).
Nitronex developed semiconductors using gallium-nitride and
obtained several patents related to this technology. Nitronex sold
its gallium-nitride patents to International Rectifier in 2010. At
the same time, both companies executed a separate license agreement
that licensed back to Nitronex certain rights under the patents.
Both companies were later acquired and renamed, where MACOM was
formerly Nitronex and Infineon was formerly International
Rectifier. The license agreement included an Exclusive Field of Use
provision for the gallium-nitride-on-silicon technology under which
MACOM had
