M A-COM Technology Solutions Holdings, Inc. et al v. Infineon Technologies AG et al

Filing 398

MINUTES (IN CHAMBERS) - [REDACTED] MACOM'S MOTION FOR CIVIL CONTEMPT AND SANCTIONS FOR INFINEON AMERICAS' VIOLATION OF PRELIMINARY INJUNCTION by Judge Christina A. Snyder: Plaintiffs' motion for contempt and sanctions 341 is DENIED w ithout prejudice until Infineon Americas' appeal to the Federal Circuit has been decided, at which time plaintiffs may re-new their motion. The parties are directed to meet and confer to draft a letter that Infineon Americas shall send, with a c opy of the preliminary injunction as modified on 3/6/2017, to those customers covered by the preliminary injunction's notice provision, including but not limited to Ericsson, Huawei, and Nokia. The parties are directed to submit the proposed letter, form of the preliminary injunction, and a list of recipients to the Court by 9/8/2017. Court Reporter: Not Present. (gk)

UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA

Case No. 
Title 

[REDACTED] CIVIL MINUTES – GENERAL
‘O’
2:16-cv-02859-CAS(PLAx)
Date September 1, 2017
MACOM TECHNOLOGY SOLUTIONS HOLDINGS, INC. ET AL. V.
INFINEON TECHNOLOGIES AG ET AL.

Present: The Honorable 

CHRISTINA A. SNYDER 

Attorneys Present for Plaintiffs: 

N/A 

Tape No.

Attorneys Present for Defendants: 

Not Present 

Not Present 

Catherine Jeang 
Deputy Clerk 

Proceedings:  

I.

Not Present 
Court Reporter / Recorder

(IN CHAMBERS) - [REDACTED] MACOM’S MOTION FOR
CIVIL CONTEMPT AND SANCTIONS FOR INFINEON
AMERICAS’ VIOLATION OF PRELIMINARY INJUNCTION
(Filed July 24, 2017, dkt. 341)

INTRODUCTION

On April 26, 2016, plaintiffs MACOM Technology Solutions Holdings, Inc.
(“MACOM”), and Nitronex, LLC filed the instant action against defendants Infineon
Technologies AG (“Infineon AG”) and Infineon Technologies Americas Corp. (“Infineon
Americas”). Dkt. 1. The gravamen of plaintiffs’ complaint is that defendants breached
an intellectual property (“IP”) purchase agreement and license agreement entered into in
2010 by Nitronex (the predecessor-in-interest to MACOM) and International Rectifier
Corporation (“IR”) (the predecessor-in-interest to Infineon Americas).
On October 31, 2016, the Court granted plaintiffs’ request for a preliminary
injunction against Infineon Americas. Dkt. 140. The Court entered the preliminary
injunction on December 7, 2016. Dkt. 177. On January 3, 2017, Infineon Americas
appealed this Court’s order granting plaintiffs’ motion for a preliminary injunction to the
Federal Circuit Court of Appeals. Dkt. 193. On January 5, 2017, Infineon Americas
filed a motion to stay pending appeal or modify a portion of the Court’s preliminary
injunction. Dkt. 200. On March 6, 2017, the Court denied the stay request but granted
Infineon Americas’ motion to modify the preliminary injunction. Dkt. 277.
On March 17, 2017, the Court granted plaintiffs’ motion for leave to take
expedited discovery concerning potential preliminary injunction violations by Infineon

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UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA

Case No. 
Title 

[REDACTED] CIVIL MINUTES – GENERAL
‘O’
2:16-cv-02859-CAS(PLAx)
Date September 1, 2017
MACOM TECHNOLOGY SOLUTIONS HOLDINGS, INC. ET AL. V.
INFINEON TECHNOLOGIES AG ET AL.

Americas. Dkt. 284. On August 7, 2017, plaintiffs’ filed the instant motion for civil
contempt and sanctions. Dkt. 363 (“Mot.”). On August 11, 2017, Infineon Americas
filed its opposition, dkt. 369 (“Opp’n”), and plaintiffs filed a reply on August 17, 2017,
dkt. 376 (“Reply”). With the Court’s permission, Infineon Americas filed a surreply on
August 21, 2017, dkt. 377, and plaintiffs filed a rebuttal on August 22, 2017, dkt. 379.
The Court held a hearing on August 28, 2017. Having carefully considered the parties’
arguments, the Court finds and concludes as follows.
II.

BACKGROUND

The Court and parties are familiar with the facts alleged by plaintiffs and the
procedural history of this case. Nonetheless, the Court will summarize plaintiffs’
allegations in the operative second amended complaint (“SAC”) and review the
preliminary injunction orders before addressing the instant motion.
A. The Allegations in the SAC
Nitronex Corporation (the predecessor-in-interest to MACOM) developed a
semiconductor (material that conducts electrical current only under certain conditions)
using gallium nitride (“GaN”) to form the epitaxial layer of the semiconductor and silicon
(“Si”) to form the substrate (or wafer) for the semiconductor (“GaN-on-Si” or “GaN/Si”).
Dkt. 170 (“SAC”) ¶¶ 1, 40-41, 52-53. Nitronex used GaN-on-Si semiconductors to
develop radio frequency (“RF”) devices for use in mobile communications. Id. ¶¶ 54-59.
Nitronex obtained more than 35 U.S. patents based on its work with gallium nitride. Id. ¶
63.
In 2010, Nitronex and IR (the predecessor-in-interest to Infineon Americas)
entered into an IP purchase agreement and license agreement. Id. ¶ 78; dkt. 170-1 (“IP
Purchase Agreement”). The IP Purchase Agreement assigns to IR 54 U.S. and
international patents and applications and the right to file related applications and
requires Nitronex and IR to work together to enforce the Nitronex Patents.1 SAC ¶¶ 7983. The 2010 license agreement provides Nitronex a license to the Nitronex Patents, and
a sole right to sublicense them. Id. ¶ 88; dkt. 170-2 (“License Agreement”). The License

1

Thirty-two U.S. patents and applications, along with related applications filed by
IR and any patents that issued from these applications comprise the “Nitronex Patents.”
SAC ¶ 85.

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UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA

Case No. 
Title 

[REDACTED] CIVIL MINUTES – GENERAL
‘O’
2:16-cv-02859-CAS(PLAx)
Date September 1, 2017
MACOM TECHNOLOGY SOLUTIONS HOLDINGS, INC. ET AL. V.
INFINEON TECHNOLOGIES AG ET AL.

Agreement permits only Nitronex and IR to practice in certain parts of the “Field of Use”
for GaN-on-Si RF devices. SAC ¶ 88; License Agreement. The License Agreement also
provides Nitronex with the exclusive right to practice the Nitronex Patents, including as
against IR, within Nitronex’s “Exclusive Field.” SAC ¶ 89; License Agreement.
Nitronex’s Exclusive Field includes most RF applications in the Field of Use, except
those that operate solely below 100MHz in frequency, including cellular telephone base
stations. SAC ¶¶ 89-90; License Agreement. The License Agreement prohibits either
party to the agreement from assigning, selling, or otherwise transferring an interest or
obligation under the License Agreement without the consent of the other party. Any
assignment in violation of that provision is void. License Agreement § 12.12.
The License Agreement also includes a negative covenant with respect to IR: “IR
itself may not directly or indirectly market, sell or service Products in the Exclusive Field
and IR may not grant further licenses or sublicenses to any other party under the Licensed
Patents to design, develop, make, have made, use, market, sell or service Products in the
Field of Use.” License Agreement § 2.1; SAC ¶ 91. The License Agreement does not
include a negative covenant in which Nitronex promises to refrain from practicing the
Nitronex Patents outside its fields of use. SAC ¶ 92. Nitronex and IR may terminate the
License Agreement only for a material breach that is not cured within 30 days of receipt
of written notice of such a breach. Id. ¶ 95; License Agreement § 7.1.
In June 2012, Nitronex was acquired by GaAs Labs, converted into a limited
liability company and renamed Nitronex LLC. SAC ¶ 99. On February 13, 2014,
MACOM announced the purchase of Nitronex, LLC from GaAs Labs and Nitronex LLC
became a wholly-owned subsidiary of MACOM. Id. ¶ 101. MACOM had been selling
gallium nitride-on-silicon carbide (“GaN-on-SiC”) products since 2011, before its
acquisition of Nitronex. Id. ¶ 126. On January 13, 2015, Infineon AG acquired IR. Id. ¶
109. IR changed its name to Infineon Technologies Americas Corp. Id. ¶ 17. Infineon
Americas is a wholly owned subsidiary of Infineon AG. Id.
Plaintiffs allege that after Infineon AG acquired IR, Infineon AG attempted to
disrupt or renegotiate the Nitronex–IR agreements. Id. ¶ 113. During telephone calls
between the parties, plaintiffs allege that Infineon representatives stated that Infineon
believed MACOM was infringing on unidentified Nitronex Patents by selling GaN-onSiC
devices. Id. ¶ 124. In a February 2, 2016 letter to MACOM, Infineon complained of
MACOM’s GaN-on-SiC sales and asserted that such sales were a material breach of the

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UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA

Case No. 
Title 

[REDACTED] CIVIL MINUTES – GENERAL
‘O’
2:16-cv-02859-CAS(PLAx)
Date September 1, 2017
MACOM TECHNOLOGY SOLUTIONS HOLDINGS, INC. ET AL. V.
INFINEON TECHNOLOGIES AG ET AL.

License Agreement that would allow Infineon to terminate that agreement. Id. ¶ 143. In
a letter dated March 22, 2016, Infineon purportedly terminated the License Agreement.
Id. ¶ 147. Soon thereafter, plaintiffs initiated this action. Plaintiffs allege that Infineon’s
purported termination was without cause, done in bad faith, and pretextual. Id. ¶ 148.
Plaintiffs further allege that Infineon has been promoting and/or marketing GaN-on-Si
RF products for use in cellular base station applications—activities that are within
MACOM’s Exclusive Field—in violation of the License Agreement. Id. ¶ 163-64.
B. The Preliminary Injunction
On October 31, 2016, the Court issued an order which, inter alia, granted plaintiffs’
request for a preliminary injunction against Infineon Americas. Dkt. 140 (the “October
2016 Order”).2 The Court further ordered that, pending trial, Infineon Americas may not
take “any action inconsistent with existence of a valid License Agreement.” Id.
On November 16, 2016, the Court issued a proposed injunction and requested that
the parties serve any objections. Dkt. 158. On December 7, 2016, after receiving
briefing on the Court’s proposed injunction, the Court issued a preliminary injunction
against Infineon Americas. Dkt. 177 (“Original Preliminary Injunction”). On January 5,
2017, Infineon Americas filed a motion to stay pending appeal or to modify a portion of
the Court’s Original Preliminary Injunction. Dkt. 200. On March 6, 2017, the Court
denied Infineon Americas’ request to stay the injunction. Dkt. 277. However, the Court
granted its motion to modify the injunction and issued a Modified Preliminary Injunction.
Id. The Modified Preliminary Injunction provides, in relevant part:
[T]he 2010 License Agreement shall remain in full force and effect and that
defendant Infineon Technologies Americas Corp.’s purported termination of
that agreement on March 22, 2016 shall have no effect.
...

2

In addition, as relevant here, the Court denied Infineon AG’s motion to dismiss
for lack of personal jurisdiction. However, the Court granted Infineon AG’s motion to
dismiss based on lack of subject matter jurisdiction because Infineon AG was not a
signatory to the IP Purchase and License Agreements and plaintiffs failed to adequately
allege that Infineon AG may be held liable for the actions of its subsidiary, Infineon
Americas, under an alter ego, agency, or ratification theory. See October 2016 Order.

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UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA

Case No. 
Title 

[REDACTED] CIVIL MINUTES – GENERAL
‘O’
2:16-cv-02859-CAS(PLAx)
Date September 1, 2017
MACOM TECHNOLOGY SOLUTIONS HOLDINGS, INC. ET AL. V.
INFINEON TECHNOLOGIES AG ET AL.

Consistent with existence of a valid License Agreement, Infineon Americas
may not offer to sell, sell, or service products in MACOM’s Exclusive Field
(as defined by the under-seal 2010 License Agreement) that practice the
Nitronex Patents, nor may Infineon Americas directly or indirectly market,
sell, or service products in the Exclusive Field that practice the Nitronex
Patents. In addition, Infineon Americas may not grant licenses or
sublicenses to the Licensed Patents (identified in Schedule A to the 2010
License Agreement) to design, develop, make, have made, use, market, sell
or service products in the Exclusive Field or Field of Use (as defined by the
2010 License Agreement) that practice the Nitronex Patents, including but
not limited to the grant of such licenses to its corporate affiliates. Nothing in
this order shall prevent Infineon Americas from designing, making, having
made, using, offering to sell, selling, or servicing gallium nitride-on-silicon
carbide (GaN-on-SiC) products, or from directly or indirectly marketing,
selling, or servicing such products.
Infineon shall, within ten days from the date of issuance of this Preliminary
Injunction, provide notice and a copy of this Preliminary Injunction to all
subsidiaries, affiliates, officers, directors, employees, principals, agents,
customers, and attorneys that may have any involvement whatsoever in
designing, developing, making, having made, using, marketing, selling,
servicing, or licensing products in the Exclusive Field or Field of Use that
use the Nitronex Patents, as well as any other person or entity acting in
active concert or participation with Infineon Americas with respect to any of
the activities enjoined here.
Dkt. 277 (emphasis added). Before the preliminary injunction was modified on March 6,
2017, Infineon Americas was also prohibited from designing or developing products in
the Exclusive Field that practice the Nitronex Patents. See Original Preliminary
Injunction.
C. Expedited Discovery
On March 17, 2017, the Court granted plaintiffs’ motion for leave to take
expedited discovery concerning potential preliminary injunction violations by Infineon
Americas. Dkt. 284. Plaintiffs offer the following evidence in support of the instant
motion to hold Infineon Americas in contempt.

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UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA

Case No. 
Title 

[REDACTED] CIVIL MINUTES – GENERAL
‘O’
2:16-cv-02859-CAS(PLAx)
Date September 1, 2017
MACOM TECHNOLOGY SOLUTIONS HOLDINGS, INC. ET AL. V.
INFINEON TECHNOLOGIES AG ET AL.

*** [REDACTED] ***
III.

LEGAL STANDARDS

“[C]ourts have inherent power to enforce compliance with their lawful orders
through civil contempt.” California Dep’t of Soc. Servs. v. Leavitt, 523 F.3d 1025, 1033
(9th Cir. 2008) (quoting Shillitani v. United States, 384 U.S. 364, 370 (1966)). A party
requesting an adjudication of civil contempt must establish “by clear and convincing
evidence that the contemnors violated a specific and definite order of the court.” Stone v.
City and County of San Francisco, 968 F.2d 850, 856 n.9 (9th Cir. 1992). “The burden
then shifts to the contemnors to demonstrate why they were unable to comply.” Id. The
respondent’s conduct “need not be willful” to violate a court order, and there is “no good
faith exception to the requirement of obedience.” In re Dual–Deck Video Cassette
Recorder Antitrust Litigation, 10 F.3d 693, 695 (9th Cir. 1993) (Dual–Deck). However,
a respondent may avoid being found in contempt by demonstrating that their failure to
comply with a court order was “based on a good faith and reasonable interpretation of the
order.” Id. Substantial compliance also is a defense; “[i]f a violating party has taken all
reasonable steps to comply with the court order, technical or inadvertent violations of the
order will not support a finding of civil contempt.” Gen. Signal Corp. v. Donallco, Inc.,
787 F.2d 1376, 1379 (9th Cir. 1986) (internal quotation marks and citation omitted).
Federal Rule of Civil Procedure 65(d)(2) provides that an injunction or restraining
order “binds only the following who receive actual notice of it by personal service or
otherwise: (A) the parties; (B) the parties’ officers, agents, servants, employees, and
attorneys; and (C) other persons who are in active concert or participation with anyone
described” in paragraphs (A) or (B). “A party may also be held liable for knowingly
aiding and abetting another to violate a court order.” Inst. of Cetacean Research v. Sea
Shepherd Conservation Soc’y (Sea Shepherd), 774 F.3d 935, 945 (9th Cir. 2014) (citing
Regal Knitwear Co. v. NLRB, 324 U.S. 9, 14 (1945). “As a result, a party to an
injunction who assists others in performing forbidden conduct may be held in contempt,
even if the court’s order did not explicitly forbid his specific acts of assistance.” Id. at
948.
IV.

DISCUSSION

Plaintiffs contend Infineon Americas should be held in contempt for violating the
preliminary injunction on several grounds. First, plaintiffs argue that Infineon Americas

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UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA

Case No. 
Title 

[REDACTED] CIVIL MINUTES – GENERAL
‘O’
2:16-cv-02859-CAS(PLAx)
Date September 1, 2017
MACOM TECHNOLOGY SOLUTIONS HOLDINGS, INC. ET AL. V.
INFINEON TECHNOLOGIES AG ET AL.

has attempted to sidestep the injunction by shifting prohibited marketing and
development of GaN-on-Si RF products overseas and by aiding and abetting its foreign
affiliates. Mot. at 3-10, 17-20. Second, plaintiffs allege Infineon Americas and its
affiliates have engaged in “false negative marketing” in violation of the preliminary
injunction by making misleading statements to the public and its customers. Id. at 13-15.
Third, plaintiffs argue that Infineon Americas failed to provide adequate notice of the
preliminary injunction to any of its customers. Id. at 12-13. Plaintiffs allege that these
violations harmed MACOM and warrant severe corrective, financial, and evidentiary
sanctions. Id. at 24-25. The Court addresses plaintiffs’ allegations in turn.
A. Aiding and Abetting Corporate Affiliates’ Allegedly Prohibited
Marketing and Development Activities
Plaintiffs argue that Infineon Americas cannot circumvent the preliminary
injunction by shifting prohibited GaN-on-Si RF development and marketing activities to
its foreign corporate affiliates, which plaintiffs contend acted with Infineon Americas’
knowledge, approval, and cooperation. Plaintiffs argue clear and convincing evidence
demonstrates that Infineon Americas knowingly aided and abetted prohibited activities by
its affiliates. Mot. at 17-18; see also Sea Shepherd, 774 F.3d at 940-52 (holding
conservation organization in contempt for aiding and abetting violation of injunction
prohibiting it and any party acting in concert with it from physically attacking or
approaching whalers’ vessels; the organization provided material support to its foreign
affiliates including vessels and funds with the intent to cause a violation of the injunction,
and its assistance proximately caused those violations).
Infineon Americas contends that plaintiffs fail to prove any violation of the
preliminary injunction by clear and convincing evidence because none of the allegedly
prohibited activities involved GaN-on-Si RF “products” within the Exclusive Field that
practice the Nitronex Patents. Opp’n at 11-18. *** [REDACTED] *** Second,
Infineon Americas argues that the GaN-on-Si wafer design analyzed by plaintiffs’ expert
does not qualify as a “product” with the Exclusive Field, which is limited to “RF devices
that . . . have the primary functions of transmission, reception, generation, and/or
detection of RF signals.” License Agreement §§ 1.2, 1.3; Opp’n 12-13. Third, Infineon
Americas argues that plaintiffs’ infringement analysis of the wafer design is flawed, and
accordingly plaintiffs fail to prove that any potential future GaN-on-Si RF product would
practice the Nitronex Patents. Opp’n 13-18.

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UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA

Case No. 
Title 

[REDACTED] CIVIL MINUTES – GENERAL
‘O’
2:16-cv-02859-CAS(PLAx)
Date September 1, 2017
MACOM TECHNOLOGY SOLUTIONS HOLDINGS, INC. ET AL. V.
INFINEON TECHNOLOGIES AG ET AL.

Infineon Americas notes that to resolve plaintiffs’ contempt motion, “this Court
must engage in a claim construction analysis.” Opp’n at 13 fn. 15. Plaintiffs do not
dispute this contention, and the parties accordingly submitted expert declarations and
have briefed the claim construction issues at length. See Schubert Decl. ¶¶ 99-216;
Shealy Decl. ¶ 86, 112-135; Opp’n at 13-16; Reply at 14-21; Surreply at 5-10; Rebuttal at
2-7. At oral argument, Infineon Americas argued that the Court could deny the motion,
without reference to the patent claims, on the ground that plaintiffs failed to prove any
marketing or development of a “product” within the Exclusive Field. However, at this
juncture, the Court finds that it must construe the relevant Nitronex patent claims before
it can determine whether Infineon Americas or its corporate parent and affiliates violated
the preliminary injunction by engaging in allegedly prohibited GaN-on-Si RF product
development and marketing. The Court declines to do so until it receives guidance from
the Federal Circuit regarding the preliminary injunction at issue. Accordingly, the Court
denies plaintiffs’ motion for contempt on these grounds without prejudice, to being
renewed after the Federal Circuit has issued its decision.
B. “False Negative Marketing” and Conduct Inconsistent with the
Existence of a Valid License Agreement
Plaintiffs also argue that Infineon Americas should be held in contempt for making
“false and misleading” statements to customers by way of its December 20, 2016 press
release *** [REDACTED] *** However, the preliminary injunction does not include any
language prohibiting Infineon Americas from issuing press releases or discussing this
case with customers. Nevertheless, plaintiffs allege that Infineon Americas’ actions
constitute “false, negative marketing” in violation of the injunction. Id. at 12-13. The
Court finds no such prohibition in the injunction. Plaintiffs also indicate that the Court––
in granting plaintiffs’ motion for a preliminary injunction on October 31, 2016–– ordered
that, “pending trial, Infineon Americas not take any action inconsistent with existence of
a valid License Agreement.” October 2016 Order; Reply at 12. The Court’s October
2016 Order was intended to preserve the status quo until the Court could finalize the
preliminary injunction on December 7, 2016. The Court therefore declines to consider
holding Infineon Americas in contempt for actions that postdated issuance of the
preliminary injunction and were not specifically prohibited under its terms.

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UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA

Case No. 
Title 

[REDACTED] CIVIL MINUTES – GENERAL
‘O’
2:16-cv-02859-CAS(PLAx)
Date September 1, 2017
MACOM TECHNOLOGY SOLUTIONS HOLDINGS, INC. ET AL. V.
INFINEON TECHNOLOGIES AG ET AL.

C. Failure to Give Notice of the Preliminary Injunction to Customers
*** [REDACTED] *** Infineon Americas failed to produce any other documents
demonstrating that it provided notice of the injunction to other customers at any time.
Infineon Americas effectively concedes this point, and instead asserts that it “had no duty
to provide the injunction to any customers.” Opp’n at 23. The preliminary injunction
requires notice “to all . . . customers . . . that may have any involvement whatsoever in
designing, developing, making, having made, using, marketing, selling, servicing, or
licensing products in the Exclusive Field or Field of Use that use the Nitronex Patents.”
Modified Preliminary Injunction.
*** [REDACTED] ***
Infineon America’s contention that it never “marketed” GaN-on-Si RF “products”
to any customers is inconsistent with the plain meaning of the preliminary injunction.3 It
is also inconsistent with the Infineon website’s own description of its “marketing”
activities: “Our colleagues in Product Marketing are involved in many things: from price
settings to product developments, and always close to the customer.” Ex. 73. In
addition, the License Agreement broadly defines “products” as “devices, components,
modules, systems, semiconductor dies, packaged semiconductor devices, system-on-chip
devices or parts that are made for applications with the Field of Use.” License
Agreement § 1.7. *** [REDACTED] *** This type of interaction constitutes
“marketing” of a “product” under any reasonable interpretation of the preliminary
injunction.
The Court also disagrees that it must construe the patent claims to resolve whether
Infineon Americas violated the preliminary injunction’s notice requirement. This
provision was drafted in the broadest possible terms consistent with the License
Agreement. It applies to all customers that “may have any involvement whatsoever in
designing, developing, making, having made, using, marketing, selling, servicing, or

3

“Marketing” is defined as the “process or technique of promoting, selling, and
distributing a product or service.” Marketing, Merriam-Webster Online Dictionary,
https://www.merriam-webster.com/dictionary/marketing (last accessed August 28, 2017).
A “product” is defined as “something produced by physical or intellectual effort.”
Product, Merriam-Webster Online Dictionary, https://www.merriamwebster.com/dictionary/product (last accessed August 28, 2017).

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UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA

Case No. 
Title 

[REDACTED] CIVIL MINUTES – GENERAL
‘O’
2:16-cv-02859-CAS(PLAx)
Date September 1, 2017
MACOM TECHNOLOGY SOLUTIONS HOLDINGS, INC. ET AL. V.
INFINEON TECHNOLOGIES AG ET AL.

licensing products in the Exclusive Field or Field of Use that use the Nitronex Patents.”
Modified Preliminary Injunction (emphasis added). This phrase is broad enough to
include any current or prospective customers of GaN-on-Si RF products that may operate
within Exclusive Field and that the Court may later determine practice the Nitronex
Patents after the claims are construed. Infineon Americas did not seek clarification from
the Court regarding its notice obligations. See Dkt. 200. Instead, Infineon Americas
chose noncompliance and now attempts to avoid the plain meaning of the injunction by
determining for itself who should have received notice based on its own claim
constructions and restrictive definitions of “product” and “marketing.”
The Court finds clear and convincing evidence that Infineon Americas failed to
comply with the preliminary injunction’s notice requirements. However, Court declines
to hold Infineon Americas in contempt at this time. The Court nonetheless orders
Infineon Americas to provide notice and a copy of the preliminary injunction as modified
on March 6, 2017 to all customers “that may have any involvement whatsoever in
designing, developing, making, having made, using, marketing, selling, servicing, or
licensing products in the Exclusive Field or Field of Use that use the Nitronex Patents.”
This includes all current and prospective customers of GaN-on-Si RF products that may
operate within the Exclusive Field, including but not limited to Ericsson, Huawei, and
Nokia. The letter proposed by plaintiffs is overly broad. Accordingly, the parties are
directed to meet and confer to draft a letter that complies with the preliminary
injunction’s notice provision.
V.

CONCLUSION

For the reasons discussed herein, plaintiffs’ motion for contempt and sanctions is
DENIED without prejudice until Infineon Americas’ appeal to the Federal Circuit has
been decided, at which time plaintiffs may re-new their motion.
The parties are directed to meet and confer to draft a letter that Infineon Americas
shall send, with a copy of the preliminary injunction as modified on March 6, 2017, to
those customers covered by the preliminary injunction’s notice provision, including but
not limited to Ericsson, Huawei, and Nokia. The parties are directed to submit the

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UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA

Case No. 
Title 

[REDACTED] CIVIL MINUTES – GENERAL
‘O’
2:16-cv-02859-CAS(PLAx)
Date September 1, 2017
MACOM TECHNOLOGY SOLUTIONS HOLDINGS, INC. ET AL. V.
INFINEON TECHNOLOGIES AG ET AL.

proposed letter, form of the preliminary injunction, and a list of recipients to the Court by
September 8, 2017.
IT IS SO ORDERED.
Initials of Preparer

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CIVIL MINUTES - GENERAL

: 
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                        CMJ

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