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SiOnyx, LLC v. Hamamatsu Photonics K.K.

United States District Court, D. Massachusetts

August 20, 2018

SIONYX, LLC, and PRESIDENT AND FELLOWS OF HARVARD COLLEGE, Plaintiffs,
v.
HAMAMATSU PHOTONICS K.K., HAMAMATSU CORP., and OCEAN OPTICS, INC., Defendants.

          ORDER ON PLAINTIFFS' RENEWED MOTION TO COMPEL DISCOVERY

          F. DENNIS SAYLOR, IV UNITED STATES DISTRICT JUDGE

         This is a case for correction of inventorship, patent infringement, and breach of a nondisclosure agreement. Plaintiffs SiOnyx, LLC and President and Fellows of Harvard College have moved to compel certain discovery responses from defendants Hamamatsu Photonics K.K (“HPK”) and Hamamatsu Corporation (“HC”). For the following reasons, that motion will be granted in part and denied in part.

         I. Background

         The factual background for this case is extensively documented in the Court's summary judgment orders.

         Briefly, SiOnyx and Harvard assert (1) claims for breach of contract and unjust enrichment related to certain confidential information they allegedly provided to HPK; (2) claims for patent infringement; and (3) claims for correction of inventorship on certain of HPK's patents (the “Disputed Patents”).

         SiOnyx and HPK entered into a mutual nondisclosure agreement in 2007 in order to explore a possible business relationship related to laser-textured, infrared-sensing silicon photonic devices. (Pl. 1st Mot. to Compel Ex. 1). That agreement required that any confidential information disclosed was to be used “solely for the limited purpose of EVALUATING APPLICATIONS AND JOINTS [sic] DEVELOPMENT OPPORTUNITIES OF PULSED LASER PROCESS DOPED PHOTONIC DEVICES and for no other purposes whatsoever.” (Id. Ex. 1). SiOnyx used its proprietary laser technology to texture the surfaces of some HPK test devices and returned those devices to HPK for further processing. (Pl. 1st Mot. to Compel Ex. 4). The parties worked together to test the infrared absorption properties of those devices, which showed that the laser-textured devices worked at least somewhat better than the control devices. (Id. Ex. 5 at HPK001411). HPK terminated its relationship with SiOnyx, but kept the test devices. (Id. Ex. 6 at 84:5-10). HPK continued to develop textured silicon photonic devices. An HPK slide presentation shows that at some point in 2008, HPK was visually comparing the texture on silicon wafers it was able to create with the texture on the devices it retained from SiOnyx. (Id. Ex. 6 at 131:13-142:7; Pl. Mot. for Summ. J. Ex. M at 145:4-9).

         Starting in 2009, HPK began to apply for patents directed to similar technology. It was ultimately awarded nine U.S. patents relating to silicon photodetectors with a textured surface that improves absorption of near-infrared light.

         In March 2014, SiOnyx was issued U.S. Patent No. 8, 680, 591. The '591 patent claims a “photosensitive imager device” including a “textured region, ” among other things. See U.S. Patent No. 8, 680, 591 col. 18 ll. 33-45 (filed Sept. 17, 2010).

         SiOnyx and Harvard propounded their first set of interrogatories and requests for documents on November 23, 2016. (Pl. 1st Mot. to Compel Exs. 8-11). Among other things, they requested documents (1) “sufficient to identify each HPK Product and/or Other Infrared/Near-Infrared Enhanced Device”; (2) “sufficient to show process flow, traveler, recipe, or routing specifications for the manufacture of HPK Products, Other Infrared/Near-Infrared Enhanced Devices, and/or creation of texture, black silicon, roughness, surface features, surface irregularity, surface asperity, or similar”; (3) “sufficient to show methods of fabrication, including processing specifications, doping profiles, silicon and metal layers, annealing procedures and specifics, electrical transfer components, and infrared/near-infrared enhancement, laser or otherwise, including, but not limited to, the creation of texture, black silicon, roughness, surface features, surface irregularity, surface asperity, or similar for all HPK Products and/or Other Infrared/Near-Infrared Enhanced Devices”; and (4) “sufficient to describe testing and validation reports associated with the process design and manufacture of any infrared/near-infrared enhancement, including, but not limited to, texture, black silicon, MEMS structures, roughness, surface features, surface irregularity, surface asperity, or similar, as well as operating characteristics for all HPK Products and/or Other Infrared/Near-Infrared Enhanced Devices.” (Id. Ex. 11).

         The request for documents defined “HPK Products” in part as “all image sensors and/or photoelectric devices manufactured or developed by HPK that include infrared/near-infrared enhancement and/or textured silicon, black silicon, MEMS structures, roughness, surface features, surface irregularity, surface asperity, or similar.” (Id.). It defined “Other Infrared/Near-Infrared Devices” as “any and all image sensors and/or photoelectric devices, whether being designed, developed, or manufactured, that include infrared or near-infrared enhancement including, but not limited to textured silicon, black silicon, MEMS structures, roughness, surface features, surface irregularity, surface asperity, or similar.” (Id.; see also id. Ex. 10 (similar request to HC), Exs. 8, 9 (interrogatories to HC and HPK)).

         HC and HPK took the position that only products infrared-enhanced by laser processing were relevant. (Pl. 1st Mot. to Compel Exs. 12, 14). Despite SiOnyx and Harvard's insistence that they were entitled to discovery on non-laser-textured devices falling within the definitions they had specified, HPK continued to refuse to provide such discovery until plaintiffs “properly accuse[d] specific non-laser products in their initial Infringement Contentions” or in any timely supplements to those contentions. (Id. Exs. 16-19).

         With regard to the '591 patent, plaintiffs' initial infringement contentions accused “sensors, and end products that use sensors, that include infrared/near-infrared enhancement and/or textured silicon, black silicon, MEMS structures, roughness, surface features, surface irregularity, surface asperity, or similar, whether created by laser processing or another means, including, but not limited to, chemical etching.” (Pl. 1st Mot. to Compel Ex. 20 at 5). Plaintiffs provided a list of “non-limiting example” products including photodiodes, avalanche photodiodes, and charge-coupled devices, and provided a representative claim chart comparing claims 1-5, 7-9, 11, 13-21, and 23-26 of the '591 patent to HPK product no. S11510-1106, a charge-coupled device product. (Id. Ex. 20 at 12-59).

         Following these initial infringement contentions, the parties continued to dispute the relevance of non-laser-textured, infrared-enhancing devices. On March 16, 2017, counsel for HPK represented that “HPK (and as a result, HC) has never sold any products that include infrared/near-infrared enhancement via texture created by means other than laser processing. We therefore believe there is no discovery to conduct on any such products.” (Pl. 1st Mot. to Compel Ex. 23).

         On October 18, 2017, after this Court construed the term “photosensitive imager device” as a “device that converts incident radiation into a digital image, ” SiOnyx and Harvard withdrew their contention that individual photodiode and avalanche-photodiode products infringed the '591 patent. (Mem. & Order on Claim Construction at 29; Def. 1st Opp. Ex. K). Their amended contentions continued to accuse charge-coupled devices and additionally accused “an array of ...


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