Last week, the U.S Court of Appeals for the Federal Circuit issued an opinion in SiOnyx LLC v. Hamamatsu Photonics K.K.., Nos. 2019-2359, 2020-1271 (Dec. 7, 2020).
After working together to develop and commercialize black silicon pursuant to a Non-Disclosure Agreement (“NDA”), Hamamatsu and SiOnyx went their separate ways. After Hamamatsu released and filed patents directed to black silicon, SiOnyx sued. A jury found Hamamatsu breached the NDA and was liable for willful infringement of a patent SiOnyx filed. The jury awarded damages for the breach and unjust enrichment, but it awarded no damages for willful infringement. The district court denied Hamamatsu’s post-trial motions. In response to SiOnyx’s post-trial motions, the district court (1) granted SiOnyx sole ownership of the U.S. patents filed by Hamamatsu, (2) enjoined Hamamatsu from practicing those patents and from infringing the SiOnyx patent, (3) awarded interest, and (4) denied SiOnyx’s motions for ownership of the foreign patents filed by Hamamatsu and for fees under § 285. Hamamatsu appealed, and SiOnyx cross-appealed.
The Federal Circuit first addressed the arguments made by Hamamatsu. The Court rejected Hamamatsu’s statute of limitations challenge, noting that when a plaintiff knew or should have known of an injury is a fact issue for the jury. The Court also affirmed the district court’s grant of interest and injunctive relief, and it rejected Hamamatsu’s challenges to damages and ownership of the U.S. patents. The Court refused to consider Hamamatsu’s challenge to the jury’s willfulness determination because the jury’s award of $0 in damages meant there was nothing for the Court to remedy.
The Court next considered SiOnyx’s cross-appeal. SiOnyx asserted that the district court erred in denying its request for ownership of the foreign patents. The Federal Circuit agreed. The Court explained that, because the U.S. patents claimed priority to a Japanese patent filed by Hamamatsu, the same evidence that established SiOnyx’s ownership of the U.S. patents establishes SiOnyx’s ownership of the Japanese patent and all foreign counterparts. The Federal Circuit also rejected the district court’s assertion that it lacked the jurisdiction to grant ownership of the foreign patents. The Court explained “it is well established that courts have authority to compel parties properly before them to transfer ownership of foreign patents, just as they would any other equitable remedy.” The Court also rejected SiOnyx’s challenge to the district court’s decision not to award fees under § 285.