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Case 5:20-Cv-06686 Document 1 Filed 09/23/20 Page 1 of 8 Case 5:20-cv-06686 Document 1 Filed 09/23/20 Page 1 of 8 1 LISA KOBIALKA (State Bar No. 191404) [email protected] 2 JAMES HANNAH (State Bar No. 237978) [email protected] 3 KRAMER LEVIN NAFTALIS 4 & FRANKEL LLP 990 Marsh Road 5 Menlo Park, CA 94025 Telephone: (650) 752-1700 6 Facsimile: (650) 752-1800 7 AARON M. FRANKEL (pro hac vice to be filed) 8 [email protected] SHANNON H. HEDVAT (pro hac vice to be filed) 9 [email protected] KRAMER LEVIN NAFTALIS 10 & FRANKEL LLP 1177 Avenue of the Americas 11 New York, NY 10036 12 Telephone: (212) 715-7793 13 Attorneys for Plaintiff ROHM Semiconductor USA, LLC 14 15 IN THE UNITED STATES DISTRICT COURT 16 FOR THE NORTHERN DISTRICT OF CALIFORNIA 17 ROHM Semiconductor USA, LLC, Case No.: 18 COMPLAINT FOR DECLARATORY 19 Plaintiff, JUDGEMENT OF NON-INFRINGEMENT 20 v. 21 MaxPower Semiconductor, Inc., JURY TRIAL DEMANDED 22 Defendant. 23 24 25 26 27 28 COMPLAINT FOR DECLARAOTRY JUDGMENT Case No. Case 5:20-cv-06686 Document 1 Filed 09/23/20 Page 2 of 8 1 COMPLAINT FOR DECLARATORY JUDGMENT 2 Plaintiff ROHM Semiconductor USA, LLC (“ROHM USA” or “Plaintiff”) by and through its 3 attorneys, alleges against Defendant MaxPower Semiconductor, Inc. (“MaxPower” or “Defendant”) as 4 follows: 5 NATURE OF ACTION 6 1. This is a declaratory judgment action seeking a declaration that ROHM USA does not 7 infringe the following U.S. Patents: U.S. Patent Nos. 7,843,004 (“the ‘004 patent”), 8,076,719 (“the 8 ‘719 patent”), 8,466,025 (“the ‘025 patent”), and 8,659,076 (“the ‘076 patent”), which MaxPower 9 asserts it owns (collectively, the “MaxPower patents”). True and correct copies of the MaxPower 10 patents are attached hereto as Exhibits 1-4. 11 THE PARTIES 12 2. ROHM USA is a Delaware limited liability company, having a principal place of 13 business at 2323 Owen Street, Santa Clara, California 95054. 14 3. On information and belief, MaxPower is a California corporation having a principal place 15 of business at 181 Metro Drive, Suite 590, San Jose, California 95110. 16 JURISDICTION AND VENUE 17 4. This Complaint arises under the Patent Laws of the United States, 35 U.S.C. § 100 et seq. 18 and the Federal Declaratory Judgments Act, 28 U.S.C. §§ 2201 and 2202, based upon an actual 19 controversy between the parties as to ROHM USA’s non-infringement of the MaxPower patents. 20 5. The Court has jurisdiction over the subject matter of this action pursuant to 28 U.S.C. 21 §§ 1331, 1338(a), 2201, and 2202, and 35 U.S.C. § 100, et seq. 22 6. The Court has personal jurisdiction over MaxPower at least because of MaxPower’s 23 continuous and systematic contacts with the State of California and within this District. On information 24 and belief, MaxPower’s principal place of business is located within this District and, to the extent 25 MaxPower has any bona fide operations or business activity, they take place within this District. 26 MaxPower also is registered to do business in California with the California Secretary of State and has 27 designated Dr. Mohamed N. Darwish as its agent for service of process at an address in this District (181 28 Metro Drive, Suite 590, San Jose, California 95110). MaxPower has established minimum contacts with 1 COMPLAINT FOR DECLARATORY JUDGMENT Case No. Case 5:20-cv-06686 Document 1 Filed 09/23/20 Page 3 of 8 1 this District and the exercise of jurisdiction would not offend traditional notions of fair play and 2 substantial justice. 3 7. Venue is proper in this District under 28 U.S.C. §§ 1391 and 1400(b), at least because (1) 4 MaxPower maintains its principal place of business in this District; (2) a substantial part of the events 5 giving rise to the claims occurred in this District, specifically MaxPower, from within this District, 6 asserted that ROHM USA infringes the MaxPower Patents; and (3) MaxPower purposefully directs its 7 activities into this District, which is where is it located. 8 INTRADISTRICT ASSIGNMENT 9 8. This is an intellectual property action subject to district-wide assignment pursuant to 10 Local Rules 3-2(c) and 3-5(b). 11 FACTUAL BACKGROUND 12 9. Bell Labs’ Mohamed Atalla and Dawon Kahng invented the MOSFET (Metal Oxide 13 Silicon Field Effect Transistor) in 1959. Each MOSFET includes a gate and a channel. When a suitable 14 voltage potential is applied to the gate, current can flow through the channel. Thus, by controlling the 15 amount of applied voltage, a MOSFET can be used to amplify or switch electronic signals. Today, 16 MOSFETs are used in a wide-variety of electronic devices and are a bedrock of the modern electronics 17 industry. 18 10. ROHM USA has been doing business since 1997. ROHM USA imports and sells 19 innovative, high-quality electrical components, including semiconductors, integrated circuits, modules, 20 and commercial products. 21 11. ROHM USA operates with the following mission statement: “Quality is our top priority 22 at all times. Our objective is to contribute to the advancement and progress of our culture through a 23 consistent supply, under all circumstances, of high quality products in large volumes to the global 24 market.” 25 12. ROHM Co., Ltd., the corporate parent of ROHM USA, is a leading developer of 26 electronic components and technology. ROHM Co., Ltd. independently developed a line of silicon- 27 carbide MOSFETs (the “SiC MOSFETs”). 28 2 COMPLAINT FOR DECLARATORY JUDGMENT Case No. Case 5:20-cv-06686 Document 1 Filed 09/23/20 Page 4 of 8 1 13. MaxPower, through counsel, demanded that ROHM Co., Ltd. and ROHM USA take a 2 license to the MaxPower patents. During a September 10, 2020 telephone call between counsel, 3 MaxPower specifically alleged that the SiC MOSFETs infringe all four MaxPower patents and 4 demanded a large payment. 5 14. ROHM USA rejects MaxPower’s allegations of patent infringement. 6 15. Therefore, there is an immediate, real, and substantial justiciable controversy between 7 ROHM USA and MaxPower related to MaxPower’s allegations that ROHM USA infringes the 8 MaxPower patents by importing and selling SiC MOSFETs in the United States. This controversy is of 9 such immediacy and reality as to warrant declaratory relief. Therefore, ROHM USA brings this 10 declaratory judgment action seeking a declaration that it and the SiC MOSFETs do not infringe any of 11 the MaxPower patents. 12 THE MAXPOWER PATENTS 13 16. On its face, the ‘004 patent is entitled “Power MOSFET With Recessed Field Plate,” and 14 indicates that it was issued by the United States Patent and Trademark Office on November 30, 2010. 15 17. MaxPower is listed as the assignee of the ’004 patent and, on information and belief, 16 MaxPower has all substantial rights and interest in the ’004 patent. 17 18. On its face, the ‘719 patent is entitled “Semiconductor Device Structures and Related 18 Processes,” and indicates that it was issued by the United States Patent and Trademark Office on 19 December 13, 2011. 20 19. MaxPower is listed as the assignee of the ’719 patent and, on information and belief, 21 MaxPower has all substantial rights and interest in the ’719 patent. 22 20. On its face, the ‘025 patent is entitled “Semiconductor Device Structures and Related 23 Processes,” and indicates that it was issued by the United States Patent and Trademark Office on June 24 18, 2013. 25 21. MaxPower is listed as the assignee of the ’025 patent and, on information and belief, 26 MaxPower has all substantial rights and interest in the ’025 patent. 27 28 3 COMPLAINT FOR DECLARATORY JUDGMENT Case No. Case 5:20-cv-06686 Document 1 Filed 09/23/20 Page 5 of 8 1 22. On its face, the ‘076 patent is entitled “Semiconductor Device Structures and Related 2 Processes,” and indicates that it was issued by the United States Patent and Trademark Office on 3 February 25, 2014. 4 23. MaxPower is listed as the assignee of the ’076 patent and, on information and belief, 5 MaxPower has all substantial rights and interest in the ’076 patent. 6 CAUSES OF ACTION 7 FIRST CAUSE OF ACTION 8 (Declaratory Judgment of Non-Infringement of the ‘004 Patent) 9 24. ROHM USA incorporates herein by reference and re-alleges all preceding paragraphs as 10 though fully set forth herein. 11 25. MaxPower has alleged and continues to assert that ROHM USA’s SiC MOSFETs 12 infringe the ‘004 patent. 13 26. ROHM USA’s SiC MOSFETs do not infringe any claim of the ‘004 patent. 14 27. An actual controversy thus exists between ROHM USA and MaxPower as to whether the 15 SiC MOSFETs infringe the ‘004 patent. 16 28. ROHM USA seeks a declaratory judgement from this Court under Rule 57 of the Federal 17 Rules of Civil Procedure and 28 U.S.C. § 2201 that ROHM USA is not infringing and has not infringed 18 the ‘004 patent and granting ROHM USA all other declaratory relief to which it may be entitled. 19 SECOND CAUSE OF ACTION 20 (Declaratory Judgment of Non-Infringement of the ‘719 Patent) 21 29. ROHM USA incorporates herein by reference and re-alleges all preceding paragraphs as 22 though fully set forth herein. 23 30. MaxPower has alleged and continues to assert that ROHM USA’s SiC MOSFETs 24 infringe the ‘719 patent. 25 31. ROHM USA’s SiC MOSFETs do not infringe any claim of the ‘719 patent.
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