Over a thorough dissent by Judge O'Malley, the Federal
Circuit determined it lacked jurisdiction to review the
Board's decision to institute IPR despite an arbitration
agreement between the parties. In re Maxpower
Semiconductor, Inc., 2021-146, 2021-1950, 2021-1951,
2021-1952, 2021-1953, 2021 WL 4130639 (Fed. Cir. Sept. 8,
2021).
ROHM Japan and Maxpower are parties to a technology license
agreement that includes an agreement to arbitrate disputes. In
September, 2020, Maxpower notified ROHM Japan of its intent to
initiate arbitration. Shortly after, ROHM USA filed a complaint for
declaratory judgment of non-infringement and four IPRs challenging
the patents at issue. Id. at *2. The district
court dismissed the complaint and compelled the parties to
arbitrate. But the Board instituted each of the IPRs, determining
that the contractual interpretation is beyond the Board's
mandate. Id. at *3 (concurring/dissenting
op.).
