Patent Case Summaries December 16, 2020

Patent Case Summaries | Week Ending December 11, 2020

A weekly summary of the precedential patent-related opinions issued by the Court of Appeals for the Federal Circuit and the opinions designated precedential or informative by the Patent Trial and Appeal Board.

SiOnyx LLC, et al. v. Hamamatsu Photonics K.K., et al., Nos. 2019-2359, 2020-1217 (Fed. Cir. (D. Mass.) Dec. 7, 2020). Opinion by Lourie, joined by Reyna and Wallach.

After SiOnyx developed and began commercializing black silicon, SiOnyx met with Hamamatsu under a non-disclosure agreement (NDA) to discuss Hamamatsu’s silicon-based photodetector devices. The companies worked together to produce devices using SiOnyx’s process. After the NDA expired, Hamamatsu introduced a new photodiode and, later, obtained a series of foreign and U.S. patents based on the technologies the parties had discussed.

SiOnyx then sued Hamamatsu for breach of the NDA, unjust enrichment, patent infringement, and change of inventorship. The parties also disputed ownership of the U.S. and foreign patents obtained by Hamamatsu. After a trial, the district court entered judgment upholding a jury verdict that Hamamatsu had breached the NDA and had willfully infringed SiOnyx’s patent, awarding damages and injunctive relief. The district court also awarded sole ownership of the U.S. patents to SiOnyx, but refused to grant SiOnyx sole ownership of the foreign patents. Hamamatsu appealed, and SiOnyx cross-appealed.

The Federal Circuit ruled that the district court erred by not granting SiOnyx sole ownership of the foreign patents. The Federal Circuit declined to address the issue of willfulness and affirmed the district court’s judgment in all other respects.

Regarding Hamamatsu’s appeal, the Federal Circuit upheld the jury’s findings regarding SiOnyx’s claims for breach of the NDA and unjust enrichment. Also, applying Massachusetts law, the Federal Circuit found no error in the award of injunctive relief and pre-judgment interest for unjust enrichment. Next, applying Federal Circuit law, the court upheld the injunctive relief for Hamamatsu’s patent infringement. Sufficient evidence supported the jury’s findings that the parties were competitors, that SiOnyx suffered irreparable harm, and that there was an insufficient remedy at law.

Turning to the disputes over inventorship and ownership of the U.S. and foreign patents, the Federal Circuit reminded that ownership and inventorship are separate issues: “While conception is the touchstone of inventorship, ownership operates based on contract or law—in this case, the NDA.” Under the NDA, ownership was given to the company that disclosed the confidential information giving rise to the patented technology, which in this case was SiOnyx. The district court, however, believed that it lacked authority to assign ownership of the foreign patents to SiOnyx. The Federal Circuit disagreed, explaining that “it is well established that courts have authority to compel parties properly before them to transfer ownership of foreign patents, just as they would any other equitable remedy.”

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