United States District Court, D. Massachusetts
SIONYX, LLC and PRESIDENT AND FELLOWS OF HARVARD COLLEGE, Plaintiffs,
HAMAMATSU PHOTONICS K.K.; HAMAMATSU CORPORATION; OCEAN OPTICS, INC.; and DOES 1 THROUGH 10, Defendants.
MEMORANDUM AND ORDER ON PLAINTIFFS’ MOTION TO
DEEM SERVICE OF PROCESS COMPLETE AND MOTION FOR A PRELIMINARY
Dennis Saylor IV United States District Judge.
a patent-ownership dispute between a Massachusetts technology
company and a Japanese optical-device manufacturer.
Plaintiffs SiOnyx, LLC and the President and Fellows of
Harvard College have brought suit against Hamamatsu Photonics
K.K. (“HPK”), a Japanese corporation; HPK’s
North American subsidiary Hamamatsu Corporation
(“HC”), a New Jersey corporation; Ocean Optics,
Inc., and ten unnamed inventors. The amended complaint
asserts claims for correction of patent inventorship pursuant
to 35 U.S.C. § 256 for seven patents, patent
infringement pursuant to 35 U.S.C. § 271, and breach of
have not completed service on HPK in compliance with
Fed.R.Civ.P. 4(f)(1) and the Hague Service Convention. They
have, however, served HC, which has apprised HPK of the
litigation, and which appeared before the Court during the
preliminary-injunction hearing. Plaintiffs contend that HC is
HPK’s “managing or general agent” under
Mass. R. Civ. P. 4(d)(2) and that service on HC is sufficient
to effect service on HPK. Accordingly, plaintiffs have moved for
an order finding that they have completed valid service of
process on HPK (the “service motion”). Plaintiffs
have also moved for a preliminary injunction seeking to
enjoin HPK and HC from enforcing the seven disputed patents
during the pendency of this litigation.
following reasons, plaintiffs’ service motion will be
denied, and they will be directed to serve HPK in accordance
with Fed.R.Civ.P. 4(f)(1) and the Hague Service Convention.
Pending completion of service, the Court does not have
personal jurisdiction over HPK, and plaintiffs’ motion
for a preliminary injunction as to HPK will be denied without
following factual summary is drawn from exhibits attached to
the amended complaint and plaintiffs’ motion for a
preliminary injunction, as well as from exhibits and
testimony admitted during the four-day hearing on that
Mazur, a professor at Harvard University, and James Carey,
who was then a Ph.D. candidate at Harvard, together invented
several improvements to optoelectronic devices. (Saylor Decl.
¶ 2; Am. Compl. ¶¶ 9, 11, 18). Those
improvements involve laser-processing techniques to create a
black-silicon texture in semiconductor-imaging devices, as
well as the positioning of that texture opposite to the
light-incident side. (Saylor Decl. ¶ 2). The
improvements increase a photodetector’s sensitivity to
light having longer wavelengths (near-infrared light).
(Compare Am. Compl. Ex. 17, with Id. Ex.
18). Carey and Mazur co-founded SiOnyx in 2006 to further
develop and commercialize their technology. (Saylor Decl.
¶ 3). They hired Stephen Saylor to be the President and
CEO of SiOnyx. (Id. ¶ 1).
Photonics K.K. (“HPK”) is a Japanese corporation
and a developer and manufacturer of optical devices,
including photodetectors. (Am. Compl. ¶ 54). HPK owns
Photonics Management Corporation (“PMC”), a
holding company, which owns all of the stock of Hamamatsu
Corporation (“HC”). (Tr. 3-110:19-22;
HC is a
New Jersey corporation headquartered in Bridgewater, New
Jersey. (Am. Compl. ¶ 4). No HC employees sit on the board
of HPK. (Tr. 3-113:4-7). HC is the marketer and sales
distributor of HPK products in North America. (Tr.
3-111:10-12). Although HC occasionally customizes HPK
products in its American offices, it “does not develop,
design, or engage in large-scale manufacturing in the United
States.” (Tr. 3-114:22-115:5). HC purchases products
from HPK, at prices set by HPK, and then has the authority to
set its own resale price. (Kaufman Decl. ¶ 6). HC uses
HPK’s marketing materials and website, which are
created and maintained in Japan. (Tr. 3-115:5-118:18;
3-130:10-22; 3-135:15-24; 3-138:24-139:3). The marketing
materials and website direct United States customers to
purchase HPK products from HC. (Id.).
Mutual Non-Disclosure Agreement
2006, SiOnyx and HPK entered into a joint-development project
to test the application of SiOnyx’s technology to
HPK’s devices. As part of that project, the parties
signed a mutual non-disclosure agreement. (Saylor Decl.
¶ 4; Am. Compl. Ex. 10) (stating that the limited
purpose of agreement was to “evaluat[e] applications
and joint development opportunities of pulsed laser process
doped photonic devices”). The agreement was signed by
Saylor, on behalf of SiOnyx, and David Leinwand as
“General Counsel, PMC, ” on behalf of HPK. (Am.
Compl. Ex. 10 at ¶ 10).
agreement stated in part as follows:
The receiving party receiving confidential information from
the disclosing party agrees that it shall: (a) maintain all
confidential information in strict confidence, except that
the receiving party may disclose or permit the disclosure of
any confidential information to its directors, officers,
employees, consultants, and advisors who are obligated to
maintain the confidential information and who need to know
such confidential information solely for the purposes set
forth in this agreement.
(Id. ¶ 2). However, the non-disclosure
agreement did not apply to the extent that
the receiving party can demonstrate that certain confidential
information: (a) was in the public domain prior to the time
of its disclosure under this agreement; (b) entered the
public domain after the time of its disclosure under this
agreement through means other than an unauthorized disclosure
resulting from an act or omission by the receiving party;
[or] (c) was independently developed or discovered by the
receiving party without use of the confidential information .
. . .
(Id. ¶ 3). The agreement provided that the
“disclosing party” would maintain ownership of
“all patent, copyright, trademark, trade secret, and
other intellectual property rights in, or arising from, such
confidential information.” (Id. ¶ 5). It
is also provided that “[t]he receiving party agrees
that any breach of its obligations under this agreement will
cause irreparable harm to the disclosing party; therefore,
the disclosing party shall have, in addition to any remedies
available at law, the right to obtain equitable relief to
enforce this agreement.” (Id. ¶ 9).
the non-disclosure agreement, the parties worked together for
more than a year to test SiOnyx’s laser-processing
technology with HPK’s devices. (Saylor Decl. ¶ 8).
SiOnyx suggested experimental conditions and device
architectures, conducted laser processing on wafers sent by
HPK from Japan, and then returned the wafers to HPK for
testing. (Am. Compl. Exs. 11, 13, 14-16). As demonstrated by
an e-mail sent by an HPK employee to Saylor on March 1, 2007,
HPK was particularly interested in SiOnyx’s technology
that involved increasing a device’s sensitivity to
The main reason why I [am] interested in your technology was
how to improve our [backside-thinned charged coupled device].
But I feel we need a lot of tests to understand the
feasibility. Our [backside-thinned charged coupled devices]
were designed for mainly to improve UV sensitivity, but poor
[near-infrared sensitivity]. It’s good if possible to
increase [near-infrared] sensitivity with your technology.
(Am. Compl. Ex. 16). Saylor, who was excited about
HPK’s interest and the possibility to commercialize
SiOnyx’s technology, forwarded the e-mail to Carey with
the message “check this out!” (Id.; Tr.
November 2007, after HPK tested the devices that utilized
SiOnyx’s laser-etching and suggested architectures
(placing the irregular asperity on the surface of the
photodiode opposite to the surface upon which light is
incident); the results showed significantly improved
sensitivity to near-infrared light. (Tr. 2-19:7-20:21; Am.
Compl. Ex. 18 at 15). Nevertheless, in January 2008, HPK
terminated its relationship with SiOnyx, stating that it
wanted to develop its own technology because it doubted that
SiOnyx’s “black silicon technology will greatly
contribute.” (Am. Compl. Ex. 11).
February 2009, HPK notified SiOnyx that it would be
introducing a “silicon photodiode with higher
[near-infrared light] sensitivity” at the Hamamatsu
Photon Fair. (Am. Compl. Ex. 21). HPK attached a diagram of
the device and stated, “we do not think we are
infringing any of your [intellectual property] or
originality, or breaching any obligation of
confidentiality.” (Id.). Saylor responded, in
[b]oth Harvard and SiOnyx expect [HPK] will respect the IP
rights covering SiOnyx and Harvard’s own work. . . .
While the diagram provided in your e-mail is insufficient for
our understanding, it looks very similar to the work product
of our collaboration. Should [HPK] wish to provide SiOnyx
detailed specifications and English translation versions of
the presentation materials planned for the Photon Fair, we
may be able to comment on your conclusion that your laser
processed [near-infrared light] enhanced silicon photodiode
does not utilize SiOnyx [intellectual property] or violate
any provisions of our prior agreement.
to plaintiffs, HPK began filing patent applications for a
“photodiode manufacturing method” and various
photodiode components in February 2010. (Saylor Decl. ¶
9; See, e.g., Pl. Mot. Ex. 1 (’087 patent)).
From October 2013 through November 2015, HPK was granted
seven patents. According to plaintiffs, all of those patents
derive, at least in part, from SiOnyx’s confidential
information. (See Pl. Mot. Exs. 1-7). The named
inventors of the patents are HPK employees, some of whom
worked with SiOnyx under the mutual nondisclosure agreement.
(Id.; Saylor Decl. ¶ 9). HPK owns the seven
patents as a result of assignment from the named inventors.
HC has a non-exclusive license to those patents without
enforcement rights. (Pl. Mot. Exs. 1-7; See Tr.
may have become aware of HPK’s patent applications in
2013, as demonstrated by citations to those patents in
unrelated applications made by plaintiffs to the PTO. (Def.
Exs. 4, 6). However, Saylor and Carey testified that they did
not personally learn of the disputed patents until a SiOnyx
customer alerted them in 2015. (Tr. 1-55:12-56:15;
1-89:15-21; 3-89:24-90:10). After learning of HPK’s
patents, the customer terminated its joint-development
agreement with SiOnyx for custom-image sensors. (Saylor Decl.
¶ 10). The customer had concerns that HPK might assert
the disputed patents against products that incorporate
SiOnyx’s technology. (Id.). In addition to
losing the value of ...