United States District Court, D. Massachusetts
SIONYX, LLC and PRESIDENT AND FELLOWS OF HARVARD COLLEGE, Plaintiffs,
HAMAMATSU PHOTONICS K.K., HAMAMATSU CORP., OCEAN OPTICS, INC., and JOHN DOES 1-10, Defendants.
MEMORANDUM AND ORDER ON PLAINTIFFS' MOTION TO
AMEND AND CROSS-MOTIONS FOR SUMMARY JUDGMENT
Dennis Saylor, IV United States District Judge
an action for patent infringement, breach of contract, and
correction of inventorship. The technology at issue involves
a device that improves the detection of near-infrared light,
which has a variety of potential commercial and scientific
applications. Plaintiff SiOnyx, LLC alleges that it
approached defendant Hamamatsu Photonics K.K.
(“HPK”) concerning a potential business
partnership involving the technology. The parties entered
into a nondisclosure agreement and SiOnyx provided HPK with
certain technical information.
alleges that after the approach proved unsuccessful, HPK
violated the nondisclosure agreement, obtained patents on
SiOnyx's technology without naming SiOnyx personnel as
inventors, and infringed other patents held by SiOnyx. HPK
contends that its engineers independently developed the
technology contained in its patents and practiced by its
products, and that it does not infringe SiOnyx's patents.
have filed six separate motions for partial summary judgment.
Plaintiffs have moved to amend the complaint and for partial
• HPK and HC's motion for partial summary judgment
that SiOnyx's and Harvard's claims for breach of
contract and unjust enrichment are barred by the statute of
limitations will be denied;
• SiOnyx and Harvard's motion for leave to amend the
second amended complaint will be denied as moot;
• SiOnyx's motion for partial summary judgment that
HPK breached the nondisclosure agreement will be denied;
• HPK's motion for partial summary judgment on
SiOnyx's unjust enrichment claim will be granted;
• HPK's motion for partial summary judgment on
Harvard's unjust enrichment claim will be granted;
• HC's motion for partial summary judgment on
SiOnyx's and Harvard's unjust enrichment claims will
be granted as to the claim of Harvard and otherwise denied;
• HPK's motion for partial summary judgment on
SiOnyx's claim for consequential damages will be denied;
• HPK's motion for partial summary judgment that
Mazur is not a co-inventor will be granted.
following facts appear to be undisputed.
LLC was founded in 2006 by Eric Mazur, a physics professor at
Harvard University, and James Carey, his former doctoral
student. (ECF 337-40 at 7:5-6, 8:3-9:7). Their goal was to
commercialize laser-textured black silicon photodetectors,
which had been the topic of Carey's Ph.D. dissertation
and postdoctoral work in Mazur's laboratory. (ECF 337-40
at 9:15-11:11). Stephen Saylor joined SiOnyx in the fall of
2006 as President and CEO. (ECF 337-40 at
9:8-14). SiOnyx owns U.S. Patent No. 8, 680, 591,
which it asserts in this lawsuit. (ECF 163-2 ¶¶
President and Fellows of Harvard College
(“Harvard”) are the assignees of the other patent
asserted in this lawsuit, U.S. Patent No. 8, 080, 467, which
covers Mazur and Carey's work. SiOnyx is the exclusive
licensee of that patent. (ECF 342 Ex. G).
Photonics K.K. is a Japanese integrated photonics company
that researches, develops, and manufactures optical devices
and image sensors. (ECF 163-2 ¶¶ 54-55; ECF 178
¶¶ 54-55; ECF 337-41 at 114:5-18). It is the
assignee of U.S. Patent Nos. 8, 564, 087; 8, 629, 485; 8,
742, 528; 8, 884, 226; 8, 916, 945; 8, 994, 135; 9, 190, 551;
9, 293, 499; and 9, 614, 109, in addition to several Japanese
patents covering similar inventions. (ECFs 337-22 through
Corporation (“HC”) is the marketing and sales
company responsible for distributing HPK's products in
North America. (ECF 97 at 3). It is a New Jersey corporation
with its principal place of business in New Jersey. (ECF 97
at 3). HC is a wholly owned subsidiary of Photonics
Management Corp., which is a holding company owned by HPK.
(ECF 97 at 3, 13). HC purchases products from HPK at a price
set by HPK. (ECF 97 at 3; ECF 382-1 at 62:21-65:7). HC has
the authority to set its own resale prices, and it separately
profits from its sales to end users. (ECF 97 at 3; ECF 382-1
Technology at Issue
technology at issue involves silicon photodetectors where one
surface has been irradiated by a pulsed laser beam.
photodetectors use p-n photodiodes, which work by
transforming light into electrical current. The photodiode is
formed from a silicon semiconductor substrate that has two
types of charge-neutral impurities: (1) those that donate
electrons (n-type impurities) and (2) those that accept
electrons (p-type impurities), which can be said to have
electron “holes.” (ECF 377-1 at 87). When n-doped
silicon is placed next to p-doped silicon, it creates a p-n
junction, around which the electrons and holes rearrange
themselves until they reach an equilibrium. (ECF 377-1 at
88-89). At equilibrium, there is a thin insulating layer at
the juncture where the electrons and holes (charge carriers)
have recombined (depletion region), and an electric
field-created by the ions left behind when the electrons and
holes diffused away-preventing further diffusion. (ECF 377-1
at 89; see ECF 201 at 13:10-14:20).
outermost electrons associated with the silicon substrate are
said to be in the “valence band, ” and have a
certain energy. The next-highest energy state available is in
the “conduction band.” The difference in energy
between the valence band and the conduction band is a
physical property of the semiconductor material; for silicon,
the band-gap energy is about 1.07 eV, which corresponds to
light with a wavelength around 1100 nm. (ECF 377-1 at 1,
photon of sufficient energy (that is, for silicon, one with a
wavelength of less than 1100 nm) interacts with the silicon
substrate, it may transfer its energy to an electron in the
valence band and promote it to the conduction band; in other
words, the photon is absorbed. (ECF 377-1 at 63; see
ECF 201 at 10:21-11:21). Higher-energy photons will be
absorbed closer to the light-incident surface, while
lower-energy photons are absorbed deeper in the substrate.
(ECF 386 Ex E at HPK0022535; see ECF 201 at
photon is absorbed, it creates an electron-hole pair (by
promoting an electron to the conduction band). (ECF 377-1 at
93). If the photon is absorbed in the depletion region of the
photodiode, the electron and the hole are immediately
separated because of the electric field, which creates a
current. (ECF 377-1 at 93-94). Photons absorbed too far away
from the depletion region are much less likely to produce a
current. (ECF 201 at 15:11-16:16).
in an ordinary p-n photodiode, light enters through one
surface of the photodiode and, to some extent, is absorbed in
the depletion region, resulting in electric current. (ECF
377-1 at 63). Light that is not absorbed will either go right
through the photodiode (in which case it does not contribute
to the sensitivity of the photodiode) or reflect off the back
surface of the photodiode back into the photodiode, in which
case it has another opportunity to be absorbed and turned
into current. ('109 patent, col. 7 ll. 24-34). Whatever
portion of that light is still unabsorbed after a second trip
through the photodiode will either pass through the
light-incident surface (again without contributing to the
sensitivity of the photodiode) or be reflected by that
surface, and so on. ('109 patent, col. 7 ll. 34-37).
Infrared light is more likely to go through the photodiode
without being absorbed than visible light, because its longer
wavelength (and correspondingly lower energy) is absorbed
deeper in the substrate and its energy may be insufficient to
bridge the band gap of the silicon semiconductor. (ECF 377-1
at 6-7, 63-64; see ECF 201 at 9:3-13; 12:1-7).
technology at issue seeks to improve the sensitivity of the
photodiode to near-infrared light by irradiating a surface of
the silicon substrate with a laser. That irradiation creates
an irregular texture on the surface, so that, instead of
being smooth, it has micro- or nanometer-scale features that
cause the surface to look black to the human eye. (ECF 377-1
at 6-7). Changing the parameters of the irradiation protocol
can change the size and shape of those features. (ECF 377-1
at 55 tbl.3.2).
applied to the back surface of a photodiode, the irregular
asperity has the effect of improving the sensitivity of the
photodiode to infrared light. In that case, the light enters
the photodiode from one surface, and, as before, some is
absorbed by the substrate. But instead of meeting a smooth
surface on the backside of the photodetector, the unabsorbed
light meets the irregular asperity. Light components that hit
the asperity an angles greater than or equal to 16.6°
will be totally reflected, and because the asperity is
irregular, they will be reflected back toward the first
surface and the side surfaces in many different directions.
('109 patent, col. 7 ll. 39-50). Because they are
arriving from all different directions, they “are
extremely highly likely to be totally reflected” on the
first and side surfaces, and therefore to be
“repeatedly totally reflected on different faces to
further increase their travel distance” inside the
photodiode. ('109 patent col. 7 ll. 51-59). By increasing
the travel distance of light inside the photodiode, the
asperity makes a thinner piece of silicon act “thicker,
” and infrared light that otherwise would pass through
can be absorbed “deeper” than the photodiode
actually is. (See ECF 201 at 16:12-18:3). The longer
the light is trapped within the photodiode, the more likely
it is to be absorbed and generate current, and the more
sensitive the photodiode will be. ('109 patent, col. 7 l.
59-col.8 l. 2; see ECF 201 at 12:8-13:9; 17:20-18:3;
The 2007 Nondisclosure Agreement
2006, SiOnyx, through Mazur, reached out to HPK about a
possible business relationship. (ECF 337-40 at 14:3-15:15;
ECF 353 Ex. B at 119:4-24). Mazur, Carey, and Saylor went to
Japan in November 2006 to meet with representatives of HPK,
where Mazur gave a presentation introducing the technology.
(ECF 386 Ex. F at 22:4-25:8; see Id. Ex. E).
and HPK entered into a mutual nondisclosure agreement on
January 11, 2007, to facilitate a possible business
relationship. (ECF 337-2). The parties agree that this is a
valid and enforceable contact. (ECF 400 at 1).
nondisclosure agreement provides:
Each of the parties has developed certain products,
technology and methodologies, including information that each
party regards as confidential, proprietary, trade secret
information. Each party proposes to disclose certain of such
information to the other party, to be used by the other party
solely for the limited purpose of EVALUATING APPLICATIONS
AND JOINTS [sic] DEVELOPMENT OPPORTUNITES OF PULSED LASER
PROCESS DOPED PHOTONIC DEVICES and for no other purposes
whatsoever (the “Permitted Purpose.”).
(ECF 337-2 at 1). The agreement defines “Confidential
any proprietary business, financial and technical
information, whether oral, written, electronic, magnetic,
visual or otherwise, of a party, disclosed by such party (the
“Disclosing Party”) to the other party to this
Agreement (the “Receiving Party”), including
without limitation, information acquired by the Receiving
Party from any business plan or similar document or from the
Disclosing Party's employees or agents relating to the
Disclosing Party's business, products, services, trade
secrets, all forms of intellectual property, designs,
methods, subscribers, customers, partners, suppliers,
strategy, plans, opportunities, finances, research,
development, know-how or personnel, and confidential
information disclosed to the Disclosing Party by third
(ECF 337-2 at 1). Although the nondisclosure agreement
prohibits the use of confidential information for any purpose
outside the “Permitted Purpose, ” it also
provides that the prohibition
shall 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; (c) was independently
developed or discovered by the Receiving Party without use of
the Confidential Information; or (d) is or was disclosed to
the Receiving Party at any time, whether prior to or after
the time of its disclosure under this Agreement, by a third
party having no fiduciary relationship with the Disclosing
Party and having no obligation of confidentiality with
respect to such Confidential Information.
(ECF 337-2 at 1).
and HPK agreed that any breach of the nondisclosure agreement
would constitute irreparable harm, so that the
“Disclosing Party” would be entitled to equitable
relief to enforce the agreement. (ECF 337-2 at 2). And they
agreed that all ownership rights in any intellectual property
arising from “Confidential Information” would
remain with the “Disclosing Party” in the absence
of a separate written instrument expressly granting those
rights. (ECF 337-2 at 2).
January 16, 2007, Saylor and Carey met with Keith Kobayashi
(of HPK's International Division) and Koei Yamamoto
(Senior Executive Managing Director and General Manager of
HPK's Solid State Division) by telephone to plan possible
experimental prototypes. (ECF 337-3; ECF 337-40 at 17:13-19,
following day, on January 17, 2007, Carey emailed Kobayashi
“the first draft of a device architecture we would like
to pursue.” (ECF 337-3 at 2). He explained that
“[t]he suggested device architecture was selected based
on our past experiments and what we believe is compatible
with current Hamamatsu photodetectors, ” and he
“also included two possible alternatives if the
preferred architecture is difficult.” (ECF 337-3 at
2-3). The first of those alternatives-“Alternative
#1”-showed a p-n photodiode where the laser-textured
layer was positioned on the back of the device, opposite the
side where light would enter the device. (ECF 337-3 at 5; ECF
337-40 at 19:13-20:21).
marked these architectures “confidential, ” and
Kobayashi responded that he “forwarded the device
diagram to Mr. Yamamoto and other related people who were
notified of the confidentiality.” (ECF 337-5).
testified that he had discussed the architectures with Mazur
prior to disclosing them to HPK and that the discussion was
“collaborative.” (ECF 353 Ex. A at 334:20-335:9).
He said, “We discussed architectures together . . .
specifically that architecture that I feel like we taught to
Hamamatsu was not one we had publicly disclosed and would
benefit shortwave response, like it said in the description
of architecture Alternative Number 1. How to take advantage
of different properties ranging from the shortwave infrared
response, the gain, and the photovoltaic near-infrared
response.” (ECF 353 Ex. A at 336:14-22). But he also
testified that he could not recall any writing or email
between him and Mazur that would demonstrate that Mazur had
collaborated on the architectures. (ECF 353 Ex. A at
also testified that he discussed the architectures with
Carey. Looking at claim 1 of the '945 patent, he
Q. Based upon that, what, if anything, do you believe you
contributed to this claim?
. . . .
A. Certainly part of the second paragraph was the irregular
asperity in the region opposed to the pn junction and the
irregular asperity constituting the light incident surface.
. . . .
Q. Sure. So let me ask you this: Based upon what you just
told me, when did you conceive of that idea?
A. Beginning during the year that [Carey] was a postdoc. And
then the structuring on the back side, as shown also in the
diagram on the front page, during the time that SiOnyx was
collaborating with [HPK].
Q. Did you actually conceive of that while SiOnyx was
collaborating with [HPK]?
A. It was [Carey] and I, and at some point [Saylor] discussed
Q. Was that in the time that [HPK] and SiOnyx were
A. I believe so, yes.
Q. Did you tell it to Jim Carey and Steve Saylor, or did Jim
Carey tell it to you?
A. It sort of emerged in a conversation.
Q. Was there anybody else there?
A. No. Because the only two people I really dealt with on a
regular basis were [Carey], who was my former student, and
Q. Did you write it down?
A. I did not.
Q. So all there was was a conversation with you and Dr.
A. But he didn't write it out.
(ECF 353 Ex. B at 176:8-177:23).
testified that prior to his January 17, 2007 email, neither
he nor anyone else at SiOnyx had ever discussed the idea of
locating the laser-textured layer as depicted in Alternative
#1 with anyone outside SiOnyx. (ECF 337-4 at 345:20-346:2;
ECF 337-40 at 20:10-21:1).
produced a slide presentation created by Terumasa Nagano (of
HPK's Microelectrical Mechanical Systems Manufacturing
Development Group) in November 2006, prior to receiving the
architectures from Carey. That presentation includes a device
architecture that has a laser-textured surface on one side,
and p-type region on the other side, like Carey's
Alternative #1. (ECF 377-14 at HPK0068533). The diagram does
not indicate the surface through which the light enters the
device, and it needs to be flipped upside-down to match up
with Alternative #1.
April 4, 2007, Saylor traveled to Japan to meet with
representatives of HPK. At the meeting, HPK representatives
showed a presentation created by Akira Sakamoto (of HPK's
Solid-State Production Development Group) at the direction of
Yamamoto. The presentation outlined a plan for HPK to make
four types of silicon test wafers, each created by up to
three different processes. (ECF 337-8 at 55:5-57:17; ECF
337-7). The wafers would be laser textured by SiOnyx, sent
back to HPK for final processing, and tested for their
optical-response characteristics. (ECF 337-8 at 14:6-15:3).
That presentation showed architectures very similar to those
proposed by Carey. (Compare ECF 337-3 with
April and November 2007, SiOnyx and HPK jointly tested 38
wafers. HPK fabricated the test devices up until the
laser-texturing step, and mailed them to SiOnyx for
texturing. SiOnyx then returned them to HPK for final
processing and testing. (ECF 337-8 at 14:3-15:3; ECF 337-40
at 44:21-45:20). The results of the testing showed that at
least some of the devices that were laser-textured by SiOnyx
had improved infrared photosensitivity as compared to one of
HPK's standard devices. (ECF 337-9 at HPK0010411). The
testing also showed that the photosensitivity of devices
having the laser-textured surface on the side of the device
opposite from the direction of incident light (front
illuminated, in this case where the textured surface is on
the back) had stronger performance than devices having the
laser-textured surface on the same side as the incident light
(back illuminated), which performed significantly worse than
the reference device. (ECF 337-11 at 14).
knowledge about laser-texturing devices was in the public
domain-due, in part, to Mazur's many academic
publications on the topic. Carey testified, however, that
SiOnyx had discovered that there was a preferred target size
for the structures making up the texture, which balanced
optical response against certain disadvantageous properties.
That texture, and the process for making it, was confidential
information of commercial value to SiOnyx. (ECF 337-40 at
21:2-22:1). SiOnyx, when it textured the test devices from
HPK, used its confidential process to produce its preferred
texture. (ECF 337-40 at 49:21-50:14). But SiOnyx shared very
limited information as to the process parameters for
achieving that texture with HPK-nothing except the identity
of the ambient gas in the laser-processing chamber. (ECF
337-10; ECF 45-2 at 69:4-15, 94:3-7). As part of the testing
procedure, HPK took scanning-electron-microscope
(“SEM”) images of the textures, which showed
detailed images of textures achieved and allowed structural
features of the textures to be measured. (ECF 337-9 at
HPK0010405-08, HPK0010415). Carey testified that the size of
the features shown in these SEM images were within the target
range identified by SiOnyx, which he considered to be
confidential. (ECF 337-40 at 49:5-50:14).
joint-testing program primarily took place between SiOnyx and
HPK. Mazur was present at the initial meeting in November
2006 and discussed the confidential architectures with Carey.
However, he was “kept out of the details” of the
SiOnyx-HPK talks; “[o]ther than knowing that something
was going on, [he] didn't know” what was being
discussed. (ECF 382-17 at 149:18-152:8; see also ECF
353 Ex. A at 334:9-336:6 (Carey testifying that he does not
recall Mazur being involved)). Mazur testified that he had
“technical input into what SiOnyx was doing, but [he]
was not informed of any-and [he] knew that [HPK] was making
devices that were being structured at SiOnyx and then sent
back. And [he] knew about plans to modify the architecture,
but that's about the extent to which [his] exchanges . .
. with [Carey] went, ” and that he had not reviewed any
technical documents during this time. (ECF 382-17 at
had no confidentiality agreement with HPK, and had no
involvement in the collaboration apart from the activities of
Mazur. (ECF 342 Ex. F at 57:22-24). Harvard's Rule
30(b)(6) deposition witness testified that Harvard did not
have any authority to approve or deny any terms within the
nondisclosure agreement between SiOnyx and HPK. (ECF 342 Ex.
F at 58:10-13).
employee of HC was at the initial November 2006 meeting, and
another employee of HC actually signed the nondisclosure
agreement on behalf of HPK, but following that there were no
communications between SiOnyx and HC. (ECF 97 at 13; ECF 345
Ex. Q at 172:10-19, Ex. S at 255:3-256:21, Ex. U at
End of the Collaboration and HPK's Further
the testing was finished, Saylor and Kobayashi exchanged a
few emails concerning the possibility of further tests. (ECF
337-12). But on January 15, 2008, Kobayashi responded as
After discussing with related people mainly from technical
aspects, we reached to the ...