330 F. Supp. 3d 574
D.D.C.2018Background
- SiOnyx (exclusive licensee of Harvard's black-silicon work) collaborated with Hamamatsu Photonics K.K. (HPK) in 2007 under an NDA to laser-texture silicon photodiode test wafers; HPK later developed and commercialized sensors its presentations described as having improved NIR sensitivity.
- Plaintiffs (SiOnyx and Harvard) assert two patents (including U.S. Patent No. 8,080,467 and SiOnyx's U.S. Patent No. 8,680,591) and allege HPK (and affiliates HC and Ocean Optics) misused confidential information, committed inventorship defects, and infringed the patents.
- HPK/HC petitioned the PTAB for IPR of the '591 patent; the PTAB found many claims unpatentable in its final decision (SiOnyx appealed). The parties dispute estoppel scope from that IPR.
- Defendants move for partial summary judgment on multiple fronts: noninfringement of the '591 patent (argument that CCDs transfer charge not "signal"), lack of willfulness and indirect infringement, and that Carey cannot be sole inventor of HPK patents. Ocean Optics moved to be dismissed for lack of damages/remedy.
- The court denied summary judgment on noninfringement of the '591 patent (concluding "charge" can be a form of "signal" and jury must decide), denied Ocean Optics' dismissal, granted partial IPR-estoppel for grounds raised or that reasonably could have been raised in the IPR, denied summary judgment on sole-inventorship, struck certain late expert metadata declarations, granted HC and Ocean Optics summary judgment on willfulness but denied it as to HPK, and denied HPK's motion for summary judgment on induced infringement (limited to HPK).
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Noninfringement of '591 ("electrical transfer element" must transfer a signal) | "Signal" can include transferred charge in CCDs; claims cover CCDs | CCD pixels only transfer charge, not an "electrical signal," so they fall outside claim scope | Denied for defendants; court held charge is encompassed as a type of signal; jury issue remains |
| IPR estoppel (what grounds/claims estopped) | All grounds actually or reasonably raisable in the IPR (including non-instituted grounds) should estop defendants | Partial-institution precluded estoppel for non-instituted grounds; others argued limits apply | Granted in part: defendants estopped as to grounds raised or that reasonably could have been raised in the petition; certain later-added references (e.g., Adkisson; S9840 manufacturing spec) raise disputed factual issues so not fully estopped |
| Willful infringement (HPK, HC, Ocean Optics) | HPK knew of plaintiffs' patents/applications and misused confidential information; conduct supports willfulness; HC and Ocean could be willful/inducing | Defendants lacked pre-suit knowledge or culpable intent; HC and Ocean lack sufficient connection or knowledge | HPK: summary judgment denied (factual disputes on knowledge/culpability). HC and Ocean: summary judgment granted (insufficient evidence of knowledge/willfulness) |
| Indirect infringement (inducement, contributory) | Defendants induced customers to use infringing sensors; evidence of marketing and promotion supports intent | No proof of specific intent to induce; lack of knowledge (HC/Ocean) | Inducement claim survives as to HPK (genuine dispute on intent/encouragement); contributory infringement and inducement as to HC and Ocean resolved for defendants (summary judgment for HC and Ocean) |
Key Cases Cited
- Mesnick v. Gen. Elec. Co., 950 F.2d 816 (1st Cir. 1991) (summary judgment standard overview)
- Celotex Corp. v. Catrett, 477 U.S. 317 (U.S. 1986) (party opposing summary judgment must present affirmative evidence)
- Anderson v. Liberty Lobby, 477 U.S. 242 (U.S. 1986) (credibility and burden rules on summary judgment)
- In re Seagate Tech., 497 F.3d 1360 (Fed. Cir. 2007) (pre-Halo willfulness/Seagate standard discussed)
- Halo Elecs., Inc. v. Pulse Elecs., Inc., 136 S. Ct. 1923 (U.S. 2016) (rejected Seagate objective-recklessness prong; willfulness standard clarified)
- SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348 (U.S. 2018) (PTAB must address all challenged claims in institution decision)
- Dow Chem. Co. v. Mee Indus., Inc., 341 F.3d 1370 (Fed. Cir. 2003) (district court must award some reasonable royalty even if expert excluded)