332 F. Supp. 3d 446
D.D.C.2018Background
- SiOnyx (exclusive licensee of a Harvard patent) shared confidential technical information and prototype wafers for laser‑textured "black silicon" photodiodes with Hamamatsu Photonics K.K. (HPK) under a 2007 mutual nondisclosure agreement (NDA) to evaluate joint development.
- Joint testing (Apr–Nov 2007) involved SiOnyx laser‑texturing HPK wafers; HPK retained SEM images and some test wafers and later pursued in‑house development of enhanced NIR photodiodes.
- HPK filed and later obtained multiple U.S. patents (issued 2013–2017) on textured silicon photodiodes; six patents contain device architectures closely resembling SiOnyx’s disclosed "Alternative #1." HPK engineers are named as inventors; SiOnyx/Harvard are not.
- SiOnyx and Harvard sued (2015) asserting (inter alia) correction of inventorship under 35 U.S.C. §256, breach of the NDA, unjust enrichment, and patent infringement; parties cross‑moved for multiple partial summary judgments.
- Key contested legal questions included whether plaintiffs’ contract/unjust‑enrichment claims were time‑barred (statute of limitations and tolling), whether HPK breached the NDA by using or patenting confidential information, unjust enrichment claims against HPK and its U.S. subsidiary HC, consequential damages (lost Godzilla deal), and whether Eric Mazur is a co‑inventor of HPK’s patents.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Statute of limitations for breach/unjust enrichment | The trigger was HPK’s patent filings (or later discovery); HPK fraudulently concealed misuse and thus tolling applies | Plaintiffs were on notice by Feb–Mar 2009 emails about HPK’s Photon Fair product, so claims accrued earlier and are time‑barred | Denied summary judgment for defendants; factual dispute whether HPK’s assurances concealed a breach so tolling/estoppel issues remain for trial |
| Breach of the 2007 NDA (SiOnyx v. HPK) | HPK reverse‑engineered SiOnyx textures, used wafers/SEM images, and claimed IP in patents—breach as matter of law | HPK says architectures/textures pre‑existed or are public/prior art and its in‑house work was independent | Denied SiOnyx’s summary judgment motion; genuine factual disputes about what was confidential, what was copied, and scope of any breach |
| Unjust enrichment (SiOnyx & Harvard v. HPK; v. HC) | Plaintiffs: HPK unjustly benefited from proprietary info; Harvard shares interest via Mazur/assigned patent; HC benefited via U.S. sales | HPK/HC: valid NDA and contractual remedies exist (and Harvard lacks direct contractual interest); HC did not directly receive benefit from plaintiffs | Grants: HPK entitled to partial summary judgment—SiOnyx’s unjust enrichment claim dismissed; Harvard’s unjust enrichment claim dismissed as moot/contract covers rights. HC: granted as to Harvard, denied as to SiOnyx (factual dispute whether HC is equitably bound as HPK’s U.S. sales arm) |
| Consequential damages (lost Godzilla deal) | SiOnyx: lost multimillion‑dollar deal caused by HPK patents; seeks consequential damages | HPK: plaintiff cannot prove causation; key evidence (Saylor’s recital of Godzilla statement) is hearsay/inadmissible | Denied HPK’s motion; court found Saylor’s testimony admissible under Rule 803(3) as evidence of declarant’s state of mind and other corroborating facts create triable issue on causation |
| Inventorship (Mazur as co‑inventor of HPK patents) | Mazur (with Carey) allegedly conceived architectures disclosed to HPK and thus should be named as co‑inventor | HPK: No clear, corroborated evidence that Mazur conceived the claimed inventions; inventorship presumed correct on issued patents | Granted HPK’s motion: Mazur is not a co‑inventor as a matter of law because plaintiffs failed to provide clear and convincing corroboration of Mazur’s conception |
Key Cases Cited
- Mesnick v. Gen. Elec. Co., 950 F.2d 816 (1st Cir. 1991) (purpose of summary judgment is to assess whether trial is needed)
- Celotex Corp. v. Catrett, 477 U.S. 317 (U.S. 1986) (summary judgment burden principles)
- Anderson v. Liberty Lobby, Inc., 477 U.S. 242 (U.S. 1986) (standard for genuine dispute at summary judgment)
- Puritan Medical Ctr., Inc. v. Cashman, 413 Mass. 167 (Mass. 1992) (fraudulent concealment tolling of limitations)
- Kelley v. Nat'l Labor Relations Bd., 79 F.3d 1238 (1st Cir. 1996) (equitable tolling factors)
- Eli Lilly & Co. v. Aradigm Corp., 376 F.3d 1352 (Fed. Cir. 2004) (clear‑and‑convincing standard and conception/corroboration for joint inventorship)