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8 December 2020PatentsMuireann Bolger

Fed Circ orders Hamamatsu to transfer 'black silicon' patents to SiOnyx

Japanese manufacturer  Hamamatsu must transfer its foreign patents for “black silicon” technology to its competitor,  SiOnyx, the  US Court of Appeals for the Federal Circuit has ruled.

The decision handed down yesterday, December 7, reversed an earlier decision by the  US District Court for the District of Massachusetts which held that SiOnyx should only get ownership of its disputed US patents.

This dispute arose from research conducted by Eric Mazur, a professor at  Harvard University, and his then-student James Carey. In 1998, Mazur discovered a process for creating “black silicon” by irradiating a silicon surface with ultra-short laser pulses. In addition to turning the silicon black, the process creates a textured surface, and the resulting black silicon has electronic properties different from traditional silicon.

After discovering the process for making the material, Mazur worked with his students, including Carey, to study its properties and potential uses. Based on their work, Mazur and Carey filed US patent applications on May 25, 2001, from which several patents eventually issued, including US patents 9,614,109; 9,293,499; 9,190,551; 8,994,135; 8,916,945; 8,884,226; 8,742,528; 8,629,485; and 8,564,087.

Around 2005, Mazur and Carey founded SiOnyx to further develop and commercialise black silicon. In November 2006, SiOnyx met with Hamamatsu, which produces silicon-based photodetector devices, and SiOnyx and Hamamatsu entered into a non-disclosure agreement (NDA) in 2007 to allow the companies to share confidential information.

After the NDA was terminated in 2008, Hamamatsu continued to develop new photodetector devices. In 2009, Hamamatsu emailed SiOnyx to inform SiOnyx that Hamamatsu intended to introduce a new photodiode at its Photon Fair exhibition that included a “black silicon surface fabricated by laser”. Hamamatsu stated that it did not believe that the new product infringed SiOnyx’s IP or breached Hamamatsu’s confidentiality obligations.

On February 24, 2009, Hamamatsu filed the first of a series of Japanese patent applications relating to photodetector devices. Hamamatsu subsequently filed patent applications in several other countries, including the US. According to the filing, one of SiOnyx’s customers alerted SiOnyx to Hamamatsu’s patents in 2014. SiOnyx met with Hamamatsu to discuss ownership of the disputed patents, but the parties did not reach an agreement. Having failed to reach an agreement with Hamamatsu regarding ownership of the patents, SiOnyx sued Hamamatsu in the district of Massachusetts in 2018. SiOnyx brought four claims: breach of contract; unjust enrichment; infringement of the ’467 patent; and change of inventorship of the US patents.

Hamamatsu ‘breached NDA’

After a two-week trial, the jury returned a verdict in favour of SiOnyx. Specifically, the jury found that: Hamamatsu first breached the NDA on February 1, 2008, when it referred to SiOnyx’s confidential information in an internal report, and awarded $796,469 in damages; and that Hamamatsu was unjustly enriched beginning January 10, 2010, and awarded $580,640 in damages.

It also ruled that SiOnyx’s breach of contract and unjust enrichment claims were not barred by the statute of limitations; and the asserted claims of the ’467 patent were valid and willfully infringed by Hamamatsu beginning December 20, 2011.

Although the district court granted sole ownership of the US patents to SiOnyx, it declined to grant to SiOnyx ownership of the foreign patents—Hamamatsu’s Japanese patents and any non-US patents. Hamamatsu appealed the court’s decisions, and SiOnyx cross-appealed.

SiOnyx argued that the district court erred in denying its request to grant SiOnyx sole ownership of the disputed foreign patents and that the district court erred in denying its motion for attorney fees.

SiOnyx contended that the district court erred because the same evidence that established its right to sole ownership of the US patents established its right to sole ownership of the foreign patents, and the court had the authority to compel the transfer of ownership of the foreign patents because the court had jurisdiction over Hamamatsu.

Hamamatsu argued that it also contributed to the Japanese applications and foreign counterparts, and SiOnyx was entitled at most to joint ownership. The Federal Circuit, however, agreed with SiOnyx that the evidence that established its right to sole ownership of the US patents also applied to the foreign patents.

It stated that the “district court erroneously perceived that it lacked authority to compel the transfer of ownership, and that “it was an abuse of discretion to distinguish between the two groups of patents”.

The Federal Circuit reversed the district court’s denial of SiOnyx’s motion to compel Hamamatsu to transfer ownership of those patents to SiOnyx but declined to address the issue of willfulness and “affirmed the district court’s judgment in all other respects”.

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