MacOm Technology Solutions Holdings, Inc. v. Infineon Technologies AG , 881 F.3d 1323 ( 2018 )

United States Court of Appeals
for the Federal Circuit
______________________
MACOM TECHNOLOGY SOLUTIONS HOLDINGS,
INC., NITRONEX, LLC,
Plaintiffs-Appellees
v.
INFINEON TECHNOLOGIES AG,
Defendant
INFINEON TECHNOLOGIES AMERICAS
CORPORATION,
Defendant-Appellant
______________________
2017-1448
______________________
Appeal from the United States District Court for the
Central District of California in No. 2:16-cv-02859-CAS-
PLA, Judge Christina A. Snyder.
______________________
Decided: January 29, 2018
______________________
AMANDA TESSAR, Perkins Coie, LLP, Denver, CO,
argued for plaintiffs-appellees. Also represented by
ELIZABETH M. BANZHOFF; DAN L. BAGATELL, Hanover, NH;
DANIEL TYLER KEESE, Portland, OR.
2 MACOM TECHNOLOGY SOLUTIONS v. INFINEON TECHNOLOGIES
AMERICAS
DAVID G. WILLE, Baker Botts, LLP, Dallas, TX, argued
for defendant-appellant. Also represented by JEFFERY D.
BAXTER, BRIAN DOUGLAS JOHNSTON.
______________________
Before PROST, Chief Judge, WALLACH and STOLL,
Circuit Judges.
PROST, Chief Judge.
Plaintiffs MACOM Technology Solutions Holdings,
Inc. and Nitronex, LLC (together, “MACOM”) sought and
obtained a preliminary injunction against defendant
Infineon Technologies Americas Corp. (“Infineon”) in the
U.S. District Court for the Central District of California.
The injunction declared that Infineon’s termination of an
agreement was ineffective and ordered Infineon to comply
with that agreement. Infineon appeals the injunction on
several grounds. We affirm in part, vacate in part, and
remand for further proceedings.
BACKGROUND
Nitronex Corporation (“Nitronex”) was formed in 1999
and developed semiconductors using gallium nitride
(“GaN”). Nitronex obtained several patents related to
that technology. In 2010, it sold its GaN patents to Inter-
national Rectifier Corporation (“IR”). As part of the sale,
Nitronex and IR executed a separate license agreement
(the “Agreement”), which licensed back to Nitronex cer-
tain rights under the patents. Both companies were later
acquired and renamed. For present purposes, the rele-
vant parties to the Agreement are MACOM (formerly
Nitronex) and Infineon (formerly IR).
The Agreement defines a “Field of Use” characterized
by GaN-on-silicon (“GaN-on-Si”) technology and licenses
MACOM to practice what are now Infineon’s GaN patents
(the “Licensed Patents”) within the “Field of Use only.”
MACOM and Infineon share rights to practice the Li-
MACOM TECHNOLOGY SOLUTIONS v. INFINEON TECHNOLOGIES 3
AMERICAS
censed Patents in the Agreement’s Field of Use. But the
Agreement further defines an “Exclusive Field” within the
Field of Use in which MACOM has certain exclusive
rights to practice the Licensed Patents—even as against
Infineon.
In February 2016, Infineon notified MACOM that it
believed MACOM had breached the Agreement by making
and selling products using GaN-on-silicon-carbide (“GaN-
on-SiC”) technology, which is distinct from GaN-on-Si
technology and outside the Agreement’s Field of Use. 1
MACOM responded that the GaN-on-SiC sales were
minimal and that any breach had been cured. Neverthe-
less, Infineon terminated the Agreement on March 22,
2016, because it deemed MACOM’s GaN-on-SiC activity
to be a material breach.
MACOM then sued Infineon, asserting various con-
tract claims and a claim for declaratory judgment of non-
infringement of the Licensed Patents. MACOM also
moved for a preliminary injunction based on its third
claim for relief—a declaratory judgment that the Agree-
ment was wrongly terminated and remains in effect (the
“Wrongful Termination claim”).
The district court held a hearing and issued an opin-
ion and order granting a preliminary injunction. The
district court’s December 7, 2016 injunction (the “Injunc-
tion”) states:
The Court hereby GRANTS [MACOM’s] Mo-
tion for Preliminary Injunction. The Court
ORDERS that until further order of the Court,
the [Agreement] shall remain in full force and ef-
1 For purposes of these proceedings, MACOM does
not dispute that its GaN-on-SiC activity infringed at least
one claim of the Licensed Patents.
4 MACOM TECHNOLOGY SOLUTIONS v. INFINEON TECHNOLOGIES
AMERICAS
fect and that defendant [Infineon’s] purported
termination of that agreement on March 22, 2016
shall have no effect.
In the event that [Infineon] asserts that there
is a new breach of the [Agreement] by plaintiffs,
[Infineon] shall advise the Court in writing of its
intention to declare a breach, stating the action it
intends to take and the claimed basis for that ac-
tion. [Infineon] shall provide the Court with such
notice 30 days before declaring a breach.
Consistent with existence of a valid License
Agreement, [Infineon] may not design, develop,
make, have made, use, offer to sell, sell, or service
products in MACOM’s Exclusive Field (as defined
by the under-seal [Agreement]) that practice the
[Licensed Patents], nor may [Infineon] directly or
indirectly market, sell, or service products in the
Exclusive Field that practice the [Licensed Pa-
tents]. In addition, [Infineon] may not grant li-
censes or sublicenses to the Licensed Patents
(identified in Schedule A to the [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 [Agreement]) that
practice the [Licensed Patents], including but not
limited to the grant of such licenses to its corpo-
rate affiliates. Nothing in this order shall prevent
[Infineon] 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, em-
MACOM TECHNOLOGY SOLUTIONS v. INFINEON TECHNOLOGIES 5
AMERICAS
ployees, principals, agents, customers, and attor-
neys 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 [Licensed Patents], as well as any
other person or entity acting in active concert or
participation with [Infineon] with respect to any
of the activities enjoined here.
J.A. 50–52.
Infineon appeals the district court’s order granting
the Injunction. We have subject-matter jurisdiction under
28 U.S.C. §§ 1292(a) and (c)(1).
DISCUSSION
Because the grant, denial, or modification of a prelim-
inary injunction is not unique to patent law, we apply
regional circuit law when reviewing and interpreting such
decisions. E.g., Aevoe Corp. v. AE Tech Co., 727 F.3d
1375, 1381 (Fed. Cir. 2013). The Ninth Circuit reviews a
district court’s decision granting a preliminary injunction
for abuse of discretion. Disney Enters., Inc. v. VidAngel,
Inc., 869 F.3d 848, 856 (9th Cir. 2017). A district court
abuses its discretion by basing its decision on an errone-
ous legal standard or clearly erroneous findings of fact.
All. for the Wild Rockies v. Cottrell, 632 F.3d 1127, 1131
(9th Cir. 2011).
In the Ninth Circuit, a party may obtain a prelimi-
nary injunction by showing that (1) it is “likely to succeed
on the merits,” (2) it is “likely to suffer irreparable harm
in the absence of preliminary relief,” (3) the “balance of
equities tips in [its] favor,” and (4) “an injunction is in the
public interest.” Disney, 869 F.3d at 856 (alteration in
original) (quoting Winter v. Nat. Res. Def. Council, Inc.,
555 U.S. 7, 20 (2008)). Additionally, this court “has itself
built a body of precedent applying these general consider-
6 MACOM TECHNOLOGY SOLUTIONS v. INFINEON TECHNOLOGIES
AMERICAS
ations to a large number of factually variant patent cases,
and we give dominant effect to Federal Circuit precedent
insofar as it reflects considerations specific to patent
issues.” Mikohn Gaming Corp. v. Acres Gaming, Inc., 165
F.3d 891, 894 (Fed. Cir. 1998).
Infineon challenges the Injunction on several grounds.
First, Infineon argues that the district court erred in
finding that MACOM showed a likelihood of success on its
Wrongful Termination claim. Second, Infineon argues
that the district court erred in finding that MACOM
showed irreparable harm. Finally, Infineon challenges
the content of the Injunction. We address these argu-
ments in turn.
I
Infineon argues that MACOM’s Wrongful Termina-
tion claim is not likely to succeed on the merits because
Infineon’s termination of the Agreement was not wrong-
ful. Specifically, Infineon argues that MACOM’s GaN-on-
SiC activity outside the licensed Field of Use materially
breached the Agreement’s implied covenant of good faith
and fair dealing, justifying the Agreement’s termination. 2
The district court disagreed. It found that MACOM could
likely establish that its activity outside the Agreement’s
licensed Field of Use did not breach the Agreement’s
implied covenant of good faith and fair dealing—and that,
therefore, Infineon was not entitled to the breach remedy
of termination. Accordingly, the district court found that
MACOM showed a likelihood of success on its Wrongful
2 Section 7.1 of the Agreement allows either party
to terminate the Agreement if the other party “materially
breaches its obligations [t]hereunder” and fails to cure
after receiving written notice of the alleged breach.
MACOM TECHNOLOGY SOLUTIONS v. INFINEON TECHNOLOGIES 7
AMERICAS
Termination claim. We conclude that the district court
did not err in this finding.
The parties agree that the Agreement is governed by
California law, which implies a covenant of good faith and
fair dealing in every contract. E.g., Foley v. Interactive
Data Corp., 47 Cal. 3d 654, 683–84 (1988). The covenant
of good faith and fair dealing “is read into contracts in
order to protect the express covenants or promises of the
contract.” Id. at 690. But it “cannot impose substantive
duties or limits on the contracting parties beyond those
incorporated in the specific terms” of the contract. Guz v.
Bechtel Nat’l, Inc., 24 Cal. 4th 317, 349–50 (2000); see
Berger v. Home Depot U.S.A., Inc., 476 F. Supp. 2d 1174,
1177 (C.D. Cal. 2007) (observing that the “implied cove-
nant will not apply where no express term exists on which
to hinge an implied duty”); Love v. Fire Ins. Exch., 221
Cal. App. 3d 1136, 1153 (1990) (noting that, absent an
express and effective contractual right, the implied cove-
nant “has nothing upon which to act”).
We review this question of contract interpretation
without deference. See Tex. Instruments Inc. v. Tessera,
Inc., 231 F.3d 1325, 1329 (Fed. Cir. 2000) (citing Plaza
Freeway Ltd. P’ship v. First Mountain Bank, 81 Cal. App.
4th 616, 621 (2000)).
The Agreement’s relevant provision states:
[Infineon] hereby grants to [MACOM] the follow-
ing: a) a worldwide, royalty-free, fully paid exclu-
sive license in the Field of Use only, with right to
sublicense in the Field of Use only, to use the Li-
censed Patents to design, develop, make, have
made, use, offer to sell, sell and service Products
....
J.A. 438 § 2.1 (emphasis added).
This language conveys a patent license to MACOM,
which is “in essence nothing more than a promise by the
8 MACOM TECHNOLOGY SOLUTIONS v. INFINEON TECHNOLOGIES
AMERICAS
licensor not to sue the licensee.” Spindelfabrik Suessen-
Schurr, Stahlecker & Grill GmbH v. Schubert & Salzer
Maschinenfabrik Aktiengesellschaft, 829 F.2d 1075, 1081
(Fed. Cir. 1987). Aside from this promise not to sue, the
quoted contractual language suggests no additional
promise by (or obligation of) MACOM not to exceed the
Field of Use on which we may “hinge an implied duty,”
Berger, 476 F. Supp. 2d at 1177.
Infineon nevertheless argues that this particular li-
cense suggests such a promise or obligation, because it is
limited to the “Field of Use only.” Infineon asks too much
of the word “only.” We do not read that word, alone, to
supplement Infineon’s mere promise not to sue with a
contractual obligation of MACOM.
Infineon further argues that, because the Agreement
was part of a larger transaction under which the Licensed
Patents were purchased from Nitronex (i.e., MACOM’s
predecessor), it “makes no sense that [Infineon] would
have purchased those patent rights and granted Nitronex
a license to a subset of those rights, if Nitronex [were] free
to operate in violation of the remainder of the rights that
[Infineon] had just purchased.” Infineon’s Reply Br. 4.
But we do not suggest that MACOM is free to operate
outside the Field of Use. After all, Infineon’s ownership of
the Licensed Patents gives it a right to exclude. 35 U.S.C.
§ 154(a)(1); Prism Techs. LLC v. Sprint Spectrum L.P.,
849 F.3d 1360, 1370 (Fed. Cir. 2017) (“A patent gives
nothing but the right to exclude, which in our system
generally means a right to call on the courts.”). Infineon
may seek to vindicate that right under the patent laws for
activity outside the licensed Field of Use. See Gen. Talk-
ing Pictures Corp. v. W. Elec. Co., 305 U.S. 124, 126 (1938)
(“Any use beyond the valid terms of a license is, of course,
an infringement of a patent.”).
Other facts and circumstances may give rise to an
implied covenant not to practice outside a licensed field of
MACOM TECHNOLOGY SOLUTIONS v. INFINEON TECHNOLOGIES 9
AMERICAS
use. 3 We need not decide those issues today. We hold
only that, on the record before it, the district court did not
err in finding that MACOM could likely establish that its
activity outside the Agreement’s licensed Field of Use did
not breach the Agreement’s implied covenant of good faith
and fair dealing. The district court therefore did not err
in finding that MACOM showed a likelihood of success on
the merits of its Wrongful Termination claim.
II
The district court also found that MACOM was likely
to suffer irreparable harm in the absence of a preliminary
injunction. In so finding, the court relied in part on
evidence that MACOM was being harmed by Infineon’s
marketing of GaN-on-Si base-station products in
MACOM’s Exclusive Field. Infineon notes that MACOM
did not show that the marketing was wrongful under the
Agreement, because MACOM never showed that any of
the allegedly marketed products practices any of the
Licensed Patents. In other words, these marketed prod-
ucts might have been non-infringing design-arounds, free
from the Agreement’s restrictions. Thus, Infineon argues
that the district court erred in concluding that MACOM
would suffer irreparable harm absent an injunction,
because there was no “causal nexus” between the Agree-
ment’s termination and Infineon’s (presumably lawful)
marketing.
3 While we acknowledge Infineon’s argument that
the implied covenant of good faith and fair dealing al-
ready exists in the Agreement under California law and
need not be “creat[ed],” Infineon’s Br. 40–41, the relevant
inquiry remains: whether that implied covenant forbids,
as a matter of contract, practicing outside the Field of Use
in this Agreement.
10 MACOM TECHNOLOGY SOLUTIONS v. INFINEON TECHNOLOGIES
AMERICAS
Infineon is correct that, to satisfy the irreparable-
harm requirement, there must be a causal nexus between
conduct shown to be wrongful and the alleged harm. This
requirement “ensures that an injunction is only entered
against a defendant on account of a harm resulting from
the defendant’s wrongful conduct, not some other reason.”
Apple Inc. v. Samsung Elecs. Co., 809 F.3d 633, 640 (Fed.
Cir. 2015); see Fox Broad. Co. v. Dish Network L.L.C., 747
F.3d 1060, 1072 (9th Cir. 2014) (affirming district court’s
finding of no irreparable harm because the harms result-
ed from the accused program as a whole, rather than
“flow[ing] from” the only copies shown likely to infringe);
Apple Inc. v. Samsung Elecs. Co., 735 F.3d 1352, 1361
(Fed. Cir. 2013) (in a patent-infringement case, observing
that “the causal nexus requirement is simply a way of
distinguishing between irreparable harm caused by
patent infringement and irreparable harm caused by
otherwise lawful competition”).
But the district court did not rely only on Infineon’s
marketing in finding irreparable harm. The district court
also observed that MACOM would lose its exclusive
license to practice the Licensed Patents in the Exclusive
Field if the Agreement’s termination were effective.
J.A. 140. MACOM submitted a declaration from one of its
senior employees who testified that MACOM’s exclusive
rights have been a “significant contributor” to certain
base-station companies’ willingness to consider MACOM’s
base-station products. J.A. 509 ¶¶ 1–2; J.A. 520 ¶ 37.
This employee also testified that it would be difficult for
MACOM, as a new entrant in the base-station market, to
compete with incumbent Infineon for the business of these
very few, “highly risk-averse” base-station companies
without a unique value proposition—namely, the exclusiv-
ity that the Agreement provides. J.A. 518 ¶ 26; J.A. 520–
21 ¶ 38. The district court considered this employee’s
testimony, J.A. 140, and ultimately agreed that MACOM
would “suffer harm merely by virtue of [its] customers’
MACOM TECHNOLOGY SOLUTIONS v. INFINEON TECHNOLOGIES 11
AMERICAS
perception that [it] no longer hold[s] an exclusive . . .
license,” J.A. 143. The court found that “[s]uch harm will
occur even if [Infineon] is not practicing a patent within
[MACOM’s] exclusive use.” Id. (emphasis added). The
district court’s findings in this regard are not clearly
erroneous. And we conclude that a sufficient causal
nexus exists between Infineon’s termination of the
Agreement and this harm to MACOM that the district
court identified.
Our review of preliminary-injunction appeals is
“limited and deferential.” Fox Broad., 747 F.3d at 1073
(quoting Sw. Voter Registration Educ. Project v. Shelley,
344 F.3d 914, 918 (9th Cir. 2003) (en banc)). Given the
district court’s findings, we are satisfied that it did not
abuse its discretion in concluding that MACOM would
suffer irreparable harm in the absence of a preliminary
injunction.
III
Infineon lastly challenges the content of the Injunc-
tion. In particular, Infineon argues that the Injunction’s
third and fourth paragraphs (1) improperly order specific
performance of provisions of the Agreement, because
MACOM did not show that Infineon breached or was
likely to breach those provisions; (2) incorporate an erro-
neous interpretation of the Agreement; and (3) violate
Federal Rule of Civil Procedure 65(d) by “fail[ing] to
provide reasonable notice of the specific conduct it prohib-
its.”
The Injunction’s third paragraph states:
[1] Consistent with existence of a valid Li-
cense Agreement, [Infineon] may not design, de-
velop, make, have made, use, offer to sell, sell, or
service products in MACOM’s Exclusive Field (as
defined by the under-seal [Agreement]) that prac-
tice the [Licensed Patents], nor may [Infineon] di-
12 MACOM TECHNOLOGY SOLUTIONS v. INFINEON TECHNOLOGIES
AMERICAS
rectly or indirectly market, sell, or service prod-
ucts in the Exclusive Field that practice the [Li-
censed Patents]. [2] In addition, [Infineon] may
not grant licenses or sublicenses to the Licensed
Patents (identified in Schedule A to the [Agree-
ment]) to design, develop, make, have made, use,
market, sell or service products in the Exclusive
Field or Field of Use (as defined by the [Agree-
ment]) that practice the [Licensed Patents], in-
cluding but not limited to the grant of such
licenses to its corporate affiliates. [3] Nothing in
this order shall prevent [Infineon] from designing,
making, having made, using, offering to sell, sell-
ing, or servicing gallium nitride-on-silicon carbide
(GaN-on-SiC) products, or from directly or indi-
rectly marketing, selling, or servicing such prod-
ucts.
J.A. 51 (numbers added for clarity). This paragraph
contains three sentences, each with different import. The
first sentence enjoins Infineon from undertaking certain
activities concerning products in the Exclusive Field “that
practice the [Licensed Patents].” The second sentence
enjoins Infineon from granting particular licenses or
sublicenses to the Licensed Patents. The third sentence
clarifies that the Injunction does not prohibit Infineon
from undertaking certain activities concerning GaN-on-
SiC products.
We vacate the first sentence because it lacks the
specificity that Rule 65(d) requires. Rule 65(d) mandates
that every order granting an injunction must “state the
reasons why it issued,” “state its terms specifically,” and
“describe in reasonable detail—and not by referring to the
complaint or other document—the act or acts restrained
or required.” Fed. R. Civ. P. 65(d)(1). We review an
injunction’s compliance with Rule 65(d) de novo. Int’l
Rectifier Corp. v. IXYS Corp., 383 F.3d 1312, 1315–16
MACOM TECHNOLOGY SOLUTIONS v. INFINEON TECHNOLOGIES 13
AMERICAS
(Fed. Cir. 2004); Premier Commc’ns Network, Inc. v.
Fuentes, 880 F.2d 1096, 1100 (9th Cir. 1989).
We have held that injunctions simply prohibiting
future infringement of a patent do not meet the specificity
requirements of Rule 65(d). Int’l Rectifier, 383 F.3d at
1316 (citing Additive Controls & Measurement Sys., Inc. v.
Flowdata, Inc., 986 F.2d 476 (Fed. Cir. 1993)). Rather, to
comply with Rule 65(d) the enjoined acts must relate to
particular, adjudicated infringing products. Id. (“[T]he
only acts the injunction may prohibit are infringement of
the patent by the adjudicated devices and infringement by
devices not more than colorably different from the adjudi-
cated devices. In order to comply with Rule 65(d), the
injunction should explicitly proscribe only those specific
acts.”). Requiring such specificity “protects enjoined
parties from unwarranted contempt proceedings.” Id. at
1317 (citing Additive Controls, 986 F.2d at 480).
The third paragraph’s first sentence enjoins Infineon
from, among other activities, designing, developing,
making, using, marketing, selling, and offering to sell
products in the Exclusive Field “that practice the [Li-
censed Patents].” This is, in essence, an injunction pro-
hibiting infringing acts—but without reference to any
particular, adjudicated infringing product. 4 Indeed, no
product has yet been adjudicated.
MACOM argues that we should treat this injunction
differently because it arises from a contractual claim, as
opposed to a patent-infringement claim. MACOM’s Br.
58. But this is a distinction without a difference. Wheth-
4 That “design,” “develop,” and “market” are not
among the acts that 35 U.S.C. § 271 lists as infringing
does not affect our conclusion regarding the Injunction’s
compliance with Rule 65(d).
14 MACOM TECHNOLOGY SOLUTIONS v. INFINEON TECHNOLOGIES
AMERICAS
er this injunction derives its force from the patents them-
selves or a contract referencing the patents, it prohibits
the same conduct in the same manner as injunctions we
have held violated Rule 65(d). Routing the prohibited
conduct through a contract does not improve the Injunc-
tion’s specificity. We therefore vacate the third para-
graph’s first sentence because it fails to meet the
specificity requirements of Rule 65(d) as a matter of law.
The third paragraph’s second sentence enjoins In-
fineon from granting particular licenses or sublicenses to
the Licensed Patents. We do not believe—and Infineon
does not argue—that this sentence raises the same Rule
65(d) specificity concerns as the first sentence. But we do
agree with Infineon that the second sentence improperly
orders specific performance of a contractual provision
absent any showing of breach of that provision.
“To enjoin the breach of a contract is, in effect, to
decree its specific performance, and the principles appli-
cable to the two remedies are the same.” Ariz. Edison Co.
v. S. Sierras Power Co., 17 F.2d 739, 740 (9th Cir. 1927);
see Vasquez v. Rackauckas, 734 F.3d 1025, 1040 (9th Cir.
2013) (observing that specific performance of a contract
“is, essentially, an injunction”). And “specific performance
is a remedy for breach of contract, a cause of action which
requires proof the contract was breached.” Golden W.
Baseball Co. v. City of Anaheim, 25 Cal. App. 4th 11, 49
(1994); see id. at 49 n.43 (finding a lack of authority for
ordering specific performance in the absence of a breach
or anticipatory breach). 5
5 Although MACOM argues on appeal (in a foot-
note) that Infineon’s termination of the Agreement was
itself a repudiation amounting to an anticipatory breach,
MACOM’s Br. 45 n.9, MACOM did not raise this argu-
MACOM TECHNOLOGY SOLUTIONS v. INFINEON TECHNOLOGIES 15
AMERICAS
Unlike the first sentence, where MACOM at least
offered some evidence and argument suggesting a possible
breach or threatened breach from Infineon’s marketing of
GaN-on-Si products in the Exclusive Field, 6 we see no
evidence or argument suggesting that Infineon breached
or threatened to breach the Agreement by granting li-
censes or sub-licenses to the Licensed Patents in the
Exclusive Field. Under these circumstances, we find that
the district court abused its discretion in ordering the
specific performance set forth in the third paragraph’s
second sentence.
The third paragraph’s third sentence merely clarifies
what the Injunction does not prohibit—namely, Infineon’s
activities concerning GaN-on-SiC products. None of
Infineon’s arguments for vacating the third paragraph
applies to this sentence. This is perhaps unsurprising,
considering it was Infineon who wanted this sentence
added in the first place. J.A. 1092. Although the third
sentence may be less necessary now in light of our vacat-
ing the third paragraph’s first and second sentences, we
ment in its preliminary-injunction motion and the district
court’s opinion did not address this issue. See Singleton v.
Wulff, 428 U.S. 106, 120 (1976) (“It is the general rule, of
course, that a federal appellate court does not consider an
issue not passed upon below.”).
6 MACOM’s Br. 46 (“Infineon clearly threatened to
[breach] by announcing plans to enter the GaN-on-Si
basestation market.”); id. (MACOM arguing that, aside
from practicing the Licensed Patents, “there is no other
commercially-feasible way to design, manufacture, mar-
ket, and sell GaN-on-Si RF [i.e., radio frequency] prod-
ucts”); see J.A. 140–43 (district court’s findings regarding
Infineon’s marketing of GaN-on-Si RF products).
16 MACOM TECHNOLOGY SOLUTIONS v. INFINEON TECHNOLOGIES
AMERICAS
see no abuse of discretion in the district court’s incorpo-
rating this clarifying third sentence into the Injunction.
Finally, Infineon asks that we vacate the Injunction’s
fourth paragraph, which states:
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, em-
ployees, principals, agents, customers, and attor-
neys 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 [Licensed Patents], as well as any
other person or entity acting in active concert or
participation with [Infineon] with respect to any
of the activities enjoined here.
J.A. 51–52. This paragraph concerns the notice of the
Injunction that Infineon must provide to other persons or
entities. Infineon lumps the fourth paragraph in with its
third-paragraph arguments (i.e., Rule 65(d) and specific
performance), but it does not explain how or why those
same arguments apply to the fourth paragraph’s notice
provisions. For example, Infineon does not explain how
Rule 65(d) renders these notice provisions defective, 7 or
7 When pressed at oral argument, Infineon failed to
articulate how the fourth paragraph’s notice provisions
implicate its Rule 65(d) specificity concerns. See Oral
Argument at 10:39–11:53, MACOM Tech. Solutions
Holdings, Inc. v. Infineon Techs. AG (No. 2017-1448),
http://www.cafc.uscourts.gov/oral-argument-recordings
(Infineon’s counsel conceding that “the [Rule] 65(d) chal-
lenge focuses on paragraph three”).
MACOM TECHNOLOGY SOLUTIONS v. INFINEON TECHNOLOGIES 17
AMERICAS
how having to give notice of the Injunction is an improper
order of specific performance of the Agreement. We find
Infineon’s argument undeveloped and insufficient to show
that the fourth paragraph was improperly entered. See
SmithKline Beecham Corp. v. Apotex Corp., 439 F.3d
1312, 1320 (Fed. Cir. 2006).
CONCLUSION
We affirm the entry of the Injunction but vacate the
first and second sentences of the Injunction’s third para-
graph. Although we leave the third paragraph’s third
sentence in place, we leave it to the district court on
remand to consider whether that sentence remains neces-
sary in light of our decision today.
AFFIRMED-IN-PART, VACATED-IN-PART, AND
REMANDED
COSTS
The parties shall bear their own costs.