981 F.3d 1339
Fed. Cir.2020Background:
- SiOnyx (founded by Prof. Mazur and James Carey) shared confidential black‑silicon technology with Hamamatsu under a 2007 NDA that: (a) imposed a 7‑year confidentiality period, (b) required return of materials on termination, and (c) acknowledged the disclosing party’s claim to ownership of patents "in, or arising from" the confidential information (Paragraph 5).
- The parties cooperated on prototype photodetectors in 2007; the NDA expired January 12, 2008, and Hamamatsu did not return materials.
- Hamamatsu developed and commercialized laser‑textured photodetectors, filed Japanese patent applications (Feb. 2009) and later foreign/U.S. applications (the Disputed U.S. Patents and Disputed Foreign Patents), and began selling accused products starting in 2010.
- SiOnyx sued in D. Mass. (2015) for breach of contract, unjust enrichment, infringement of U.S. Patent 8,080,467, and correction of inventorship; after a jury trial the jury found breach, unjust enrichment, that Carey is a co‑inventor of the Disputed U.S. Patents, and willful infringement of the ’467 patent (but awarded $0 patent damages).
- The district court awarded damages and pre‑judgment interest, granted injunctions (for the Disputed U.S. Patents and the ’467 patent), ordered transfer of sole ownership of the Disputed U.S. Patents to SiOnyx, but denied transfer of the Disputed Foreign Patents and denied §285 fees.
- On appeal the Federal Circuit affirmed most rulings, reversed the denial of transfer of the Disputed Foreign Patents (ordering Hamamatsu to assign the Japanese applications and foreign priority filings), and declined to address willfulness as an advisory matter.
Issues:
| Issue | SiOnyx's Argument | Hamamatsu's Argument | Held |
|---|---|---|---|
| Statute of limitations for breach/unjust enrichment | Jury reasonably could find accrual occurred later due to immateriality of early breaches and Hamamatsu’s assurances | Claims accrued >6 years before suit and are time‑barred | Affirmed jury: limitations was a factual question for jury; verdict sustainable |
| Pre‑judgment interest on unjust enrichment | §6C applies to contract‑based unjust enrichment/disgorgement; interest from date of first breach | Disgorged profits are not "damages" under statute; interest improperly awarded from breach date for contract damages | §6C applies to contract‑based unjust enrichment; pre‑judgment interest from breach date affirmed |
| Pre‑judgment interest on contract damages (timing) | Interest should run from jury’s breach date; damages timing uncertain so general rule applies | Interest should run only from when plaintiff actually suffered monetary loss | Court upheld interest from jury’s breach date given multiple damages theories and uncertainty of timing |
| Permanent injunctions (patent and contract) | Injunction necessary: irreparable harm, inadequate legal remedy, Hamamatsu gained improper head start and competes with SiOnyx | No irreparable harm; products do not directly compete; money damages adequate | Affirmed: district court did not abuse discretion in finding irreparable harm and inadequacy of money damages |
| Ownership of Disputed U.S. Patents (inventorship → ownership under NDA) | Paragraph 5 of NDA assigns ownership of patents arising from disclosed confidential information; jury found patents arose from SiOnyx info and Carey is co‑inventor → sole ownership to SiOnyx | Co‑inventorship implies Hamamatsu also contributed and so is entitled to ownership/share under NDA | Affirmed transfer of sole ownership to SiOnyx: inventorship and ownership distinct; no evidence Hamamatsu contributed confidential info under NDA |
| Ownership of Disputed Foreign Patents (Japanese priority apps and foreign counterparts) | Same rationale as for U.S. patents; district court had authority to compel assignment of foreign patents | Court lacked authority or SiOnyx failed to identify foreign patents | Reversed district court: Fed. Cir. held court could compel assignment and SiOnyx entitled to sole ownership of Japanese apps and foreign priority filings |
| Fees under 35 U.S.C. § 285 | Case exceptional based on willful copying and litigation conduct (delay, discovery tactics) | Willfulness alone not dispositive; defenses were not exceptionally weak and conduct not shown to be improper purpose | Affirmed denial of fees: district court did not abuse discretion in finding case not exceptional |
| Willfulness of infringement | Jury found willful infringement of ’467 patent | Hamamatsu contests sufficiency of evidence | Federal Circuit declined to address willfulness on appeal as advisory (no enhanced damages awarded) |
Key Cases Cited
- Finjan, Inc. v. Secure Computing Corp., 626 F.3d 1197 (Fed. Cir. 2010) (standard of review for JMOL in patent appeals)
- eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006) (four‑factor test for permanent patent injunctions)
- Bushkin Assocs., Inc. v. Raytheon Co., 906 F.2d 11 (1st Cir. 1990) (pre‑judgment interest statute applies to quantum meruit/restitutionary claims)
- Octane Fitness, LLC v. ICON Health & Fitness, Inc., 572 U.S. 545 (2014) (standard for exceptional case under 35 U.S.C. § 285)
- Therasense, Inc. v. Becton, Dickinson & Co., 745 F.3d 513 (Fed. Cir. 2014) (willfulness is a factor bearing on exceptionality under § 285)
- Reeves v. Sanderson Plumbing Prods., Inc., 530 U.S. 133 (2000) (deference to jury on credibility and fact‑finding)
- Anderson v. Liberty Lobby, Inc., 477 U.S. 242 (1986) (standards for weighing evidence and inference drawing)
- Richardson v. Suzuki Motor Co., Ltd., 868 F.2d 1226 (Fed. Cir. 1989) (equitable remedies to address harms from modified claims)
- Highmark Inc. v. Allcare Health Mgmt. Sys., Inc., 572 U.S. 559 (2014) (abuse‑of‑discretion review for fee determinations under § 285)
- Bayer CropScience AG v. Dow AgroSciences LLC, 851 F.3d 1302 (Fed. Cir. 2017) (deference and abuse‑of‑discretion standard on § 285 issues)