Microchip Technology v. Philips

Microchip Technology v. U.S. Philips and Philips Electronics N.A. (Fed. Cir. May 13, 2004)

Philips owns patents relating to a two-wire bus for communicating between integrated circuits (I2C). Microchip asserted that it did not infringe and that it was a licensee (by succession). The question before the Court was who determines whether there is an obligation to arbitrate.

Although the Federal Circuit generally follows local circuit law regarding non-patent issues, in this case the Court disagreed with prior 9th Circuit holdings. Instead, the Court held that under Supreme Court case law obligation to arbitrate is a threshold matter for the district court to determine. Thus, the Federal Circuit remanded for the District Court to determine whether Microchip was a successor party to the 1983 agreement before any issues may be referred to arbitration.

The appellate panel also found that the arbitration clause was not expired:

It is clear on the face of the 1983 agreement’s arbitration clause that the obligation to arbitrate survives expiration of the agreement’s other provisions. The arbitration clause specifically provides that “[a]ll disputes arising out of or in connection with the interpretation or execution of this Agreement during its life or thereafter” are subject to arbitration.

Appellate Jurisdiction: The Court also held that an order compelling arbitration is appealable:

An order compelling arbitration is in effect a mandatory injunction. Denial of a mandatory injunction is ordinarily appealable under section 1292(a)(1). (Citations omitted)

More info about the I2C technology is here:

Philips was the inventor of the Inter-IC or I²C-bus nearly 20 years ago, and it is now firmly established as the worldwide de-facto solution for embedded applications. It is used extensively in a variety of microcontroller-based professional, consumer and telecommunications applications as a control, diagnostic and power management bus. As a two-wire serial bus, its inherently simple operation was crucial to its emergence as the worldwide de-facto standard.