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SiOnyx, LLC v. Hamamatsu Photonics K.K.

United States District Court, D. Massachusetts

July 26, 2016



          F. Dennis Saylor IV United States District Judge.

         This is 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 contract.

         Plaintiffs 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.[1] 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.

         For the 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 prejudice.

         I. Background

         The 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 motion.

         A. Factual Background

         1. The Parties

         Eric 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).[2]

         Hamamatsu 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; 3-111:8-16).[3]

         HC is a New Jersey corporation headquartered in Bridgewater, New Jersey. (Am. Compl. ¶ 4).[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.).

         2.The Mutual Non-Disclosure Agreement

         In late 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).[5]

         The 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).

         Under 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 near-infrared light:

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. 2-13:15-23; 2-87:6-9).

         In 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).

         3.The Disputed Patents

         In 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 relevant part,

[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.


         Unbeknown 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).[6] 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. 1-29:9-20).[7]

         Plaintiffs 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 ...

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