SiOnyx, LLC et al. v. Hamamatsu Photonics K.K., et al. (15-cv-13488).

Closing out this dispute, at least at the District Court, Final Judgement was entered awarding SiOnyx:

  • $1,377,109 in contractual and unjust enrichment damages plus $1,752,017 in pre-judgment interest for a total of $3,129,126;
  • post-judgment interest at 2.4% pursuant to 28 U.S.C. §1961, with an accounting of post-verdict sales to occur;
  • judgment that the ‘467 patent was willfully infringed;
  • addition of Dr. James Carey as co-inventor of the ‘467 patent;
  • ownership of nine U.S. patents; and
  • a permanent injunction barring infringement of all ten patents by Hamamatsu.

Let the appellate process begin…

SiOnyx, LLC et al. v. Hamamatsu Photonics K.K., et al. (15-cv-13488).

Following trial, Judge Saylor dealt with a number of post-trial motions. He granted SiOnyx’s motion for equitable relief, awarding ownership of the nine patents in dispute to SiOnyx and ordering Hamamatsu to take all necessary steps to correct ownership of the patents. This was based on the non-disclosure agreement that a jury found to have been violated, that provided for ownership of all patent rights arising from the confidential information SiOnyx disclosed to Hamamatsu when exploring a possible business relationship. While the SiOnyx employee who took part in the disclosure was found to be only a con-inventor (along with Hamamatsu personnel), Judge Saylor noted that the non-disclosure agreement expressly provided ownership in the resulting ideas to SiOnyx. Judge Saylor further granted an injunction prohibiting Hamamatsu from making, using, selling, offering for sale, or importing accused products based on language in the NDA that explicitly provided for injunctive relief in the event of breach as well as on SiOnyx’s ownership of the patents, one of which the jury found to be infringed.

Judge Saylor denied Hamamatsu’s motion for judgment as a matter of law, finding that the statute of limitations did not bar suit on the NDA. He noted that this is generally a jury decision, and that there was no reason to overturn the jury’s verdict on this issue. He further refused to modify the unjust enrichment award to stop damages from accruing after the NDA expired, finding that the jury reasonably concluded that post-expiration damages flowed from pre-expiration conduct in designing the accused products.

The rulings were not all bad for Hamamatsu. Judge Saylor treated SiOnyx’s motion to amend the judgement to have their employee deemed the sole inventor on the patents in suit (filed prematurely) as a motion for judgment as a matter of law and denied it. SiOnyx contended that a jury instruction erroneously stated that the method of forming a claimed aspect of the invention was irrelevant, but Judge Saylor determined that, having failed to object to the instruction prior to the jury retiring under Fed. R. Civ. P. 51, SiOnyx had waived the argument, and further that SiOnyx could not raise the issue because it was not argued in SiOnyx’s motion for a directed verdict. Accordingly, Hamamatsu employees remain co-inventors.

Judge Saylor also denied SiOnyx’s motion for fees for an exceptional case. He noted that, while SiOnyx alleged Hamamatsu’s invalidity and non-infringement defenses to be substantively too weak to merit litigating, SiOnyx did not seek summary judgment on either issue. He further found no evidence that Hamamatsu deliberately sought to increase the cost and complexity of the litigation for an improper purpose.

Finally, Judge Saylor denied SiOnyx’s motion for enhanced damages pursuant to 35 U.S.C. 284, which allows the court to assess damages when not found by the jury. Here, the jury awarded damages for breach of contract and unjust enrichment, but awarded $0 in patent damages despite finding willful infringement. SiOnyx contended that the $0 award was, in effect, the jury not “finding” damages pursuant to the statute, permitting the judge to do so. Judge Saylor disagreed, noting that SiOnyx’s damages expert told the jury that there may be overlap between the breach of contract damages and infringement damages, and that the jury might need to choose between the two. Given this, and given the fact that the jury was told not to award duplicative damages, it is reasonable to interpret the $0 infringement award to mean that the infringement damages were covered by the breach of contract damage award. Judge Saylor further refused to treble the damages, since there was no way to accurately determine the level of damages attributable to infringement.

If anyone is wondering why patent litigation is so expensive, note that this case was filed in November 2015, and included significant motion practice and discovery disputes to get to this point, including 70 docket entries just to get to the filing of an answer to the complaint (with motions to dismiss, contesting adequacy of service, and for a preliminary injunction intervening). The case took almost two years to get to a claim construction order, and almost another two years to get to trial, and the matter is just now coming due for appeal. While this case involved additional issues beyond mere patent claims, this is not an unusual time-frame for patent litigation, and helps explain the costs involved.

Abiomed, Inc. v. Maquet Cardiovascular, LLC (16-cv-10914).

Judge Saylor denied Abiomed’s motion for a protective order prohibiting discovery of foreign sales of products whose components were exported from the United States and assembled abroad. Abiomed had sought to preclude this information because Maquet had not specifically pled 35 U.S.C. § 271(f) as a basis for infringement. Noting that the limits on discovery set forth in Rule 26 may encompass matters that could bear on any issue that “is or may be in the case,” Judge Saylor determined that discovery as to worldwide sales is potentially relevant to damages. He stated that the order concerns only discoverability, and that he was taking no position on whether a claim under 271(f) was properly pled or on whether the resulting discovery would ultimately be admissible at trial. Judge Saylor further denied Abiomed’s motion to compel discovery from the Getinge Group, a consortium of companies that includes Maquet and that is owned by Getinge AB, a Swedish company. Getinge AB had initially been named as a defendant in Abiomed’s declaratory judgment complaint, but had successfully moved to dismiss because it’s lack of ownership of the subject patents meant that it lacked standing to defend such claims. Abiomed then had sought information and documents related to patent transactions, assessments, valuations and licenses held by Getinge Group entities located outside of the United States. Judge Saylor determined that the documents were not in the possession, custody or control of Maquet, because the fact that Maquet is a subsidiary of and shares a legal services department with Getinge was insufficient to establish that Maquet is an alter ego of Getinge.

SiOnyx, LLC et al. v. Hamamatsu Photonics K.K. et al. (15-cv-13488).

The jury returned a verdict in this long-running saga over black silicon technology that SiOnyx disclosed to Hamamtsu under a nondisclosure agreement, finding that Hamamatsu breached the NDA and was unjustly enriched and awarding $1,377,109 in damages for these claims. They rejected Hamamatsu’s statute of limitations and equitable estoppel defenses. They further determined that SiOnyx employee Dr. Carey should be named as a co-inventor on the Hamamatsu patents-in-suit under 35 U.S.C. § 256. Finally, they determined that Hamamatsu willfully infringed SiOnyx’s patent and that the patent is valid, but awarded no damages for the infringement.

SiOnyx, LLC et al. v. Hamamatsu Photonics K.K. et al. (15-cv-13488).

As this case goes to trail, the Court is dealing with the parties’ motions in limine. Hamamatsu moved to preclude testimony from one co-inventor, Dr. Mazur, to corroborate the testimony of a different coinventor. The Court had already found that Dr. Mazur could not prove that he was a coinventor due to a lack of corroborating evidence. Citing the lack of documentary corroboration and the fact that Dr. Mazur is an interested party, Hamamatsu asserted that he could not corroborate the alleged contribution of the other coinventor to the invention, and thus sought to preclude his testimony. Judge Saylor denied the motion, finding that the motion was effectively an untimely motion for summary judgment, and indicated that he (or the jury) would determine whether the evidence at trial, including Dr. Mazur’s testimony, was sufficient to establish inventorship.

He granted Hamamatsu’s motion to preclude SiOnyx from referring to the PTAB’s decision not to institute an inter partes review at trial. Hamamatsu’s request for inter partes review was declined entirely with respect to one of the asserted patents and was partially declined with respect to another patent. Judge Saylor determined that the decision on whether to institute an IPR was not a decision on the merits (and that the decision to partially decline may be a statutory violation under recent case law) and would thus have little probative value, would take considerable time to explain to the jury, and would carry substantial risk of misinterpretation and unfair prejudice.

Judge Saylor further, in response to a request made by SiOnyx at the April 16th status conference, precluded Hamamatsu from arguing that it was excused from meeting its obligations under the NDA at issue due to a prior material breach of the agreement by SiOnyx, finding that Hamamatsu had waived such an argument by failing to raise it in the joint pretrial memorandum. He denied SiOnyx’s motion to preclude Hamamatsu form raising a defense of equitable estoppel. He also overruled Hamamatsu’s objection to deposition testimony from a senior corporate officer regarding the contract, finding that it did not impermissible call for a legal conclusion. Trial on this matter began yesterday.

SiOnyx, LLC et al.v. Hamamatsu Photonics K.K. et al. (15-cv-13488).

As this patent and breach of contract case nears trial, Judge Saylor granted SiOnyx’ motion to amend its complaint to remove assertions of the ‘591 patent. SiOnyx asserts that, through late-produced discovery, the products accused of infringing this patent were still under development, and that a final configuration of these products was not likely to be set prior to trial. Hamamatsu had not filed counterclaims relating to the ‘591 patent, and would suffer no legal prejudice from the withdrawal of the claim. The dismissal of the ‘591 claims is with prejudice as to any products that had been accused during the proceeding, but not as against products developed in the future.

Judge Saylor also dealt with the parties’ competing motions to exclude testimony from an opposing expert. SiOnyx has accused Hamamatsu of violating a nondisclosure agreement, obtaining patents on SiOnyx’s technology without naming SiOnyx personnel as inventors, and infringing SiOnyx patents. SiOnyx sought to preclude testimony from a technical expert of Hamamatsu for failing to consider objective indicia of non-obviousness, which would render the report unreliable as applying an incorrect legal standard. Judge Saylor determined, however, that the expert’s statement that he had “not seen any evidence of secondary consideration” did not mean that he had not considered secondary factors. Accordingly, he denied SiOnyx’s motion. Hamamatsu, for its part, sought to entirely preclude SiOnyx’s damages expert, who is intended to testify as to damages for breach of contract, unjust enrichment, and patent damages. On the breach of contract claim, the expert relied on a non-binding memorandum of understanding between SiOnyx and Nikon to determine the damages from the loss of that opportunity, which Hamamatsu asserted to be too speculative. Judge Saylor found that, for the most part, the expert had relied not just on the memorandum but also on correspondence between SiOnyx and Nikon and other evidence in coming to her conclusions. Judge Saylor did exclude testimony on damages resulting from a proposed extension of the contract contemplated by the memorandum of understanding, because there was no discussion of pricing terms or the length of any potential extension in the memorandum, making the opinion on the loss of the extension too speculative. He also excluded testimony on SiOnyx’s theory that, had it entered into the Nikon agreement and developed a chip for Nikon, it would have been able to leverage that development in reducing the cost of development of the next generation chip by nearly $1 million. The Judge accepted that such a reduction on R&D costs could be the basis for damages, but felt that the steps used to determine the dollar figure were too attenuated and speculative. He denied Hamamatsu’s request with respect to breach of contract damages that Hamamatsu itself would have paid had it not breached the agreement and instead have licensed the technology, finding that the other SiOnyx agreements relied upon were not so different from the structure that Hamamatsu had discussed as to form an insufficient basis. With respect to the unjust enrichment claim, Mamamatsu objected to testimony on profits it incurred beyond the expiration of the nondisclosure agreement; Judge Saylor found that Hamamatsu had failed to support the notion that damages must end upon expiration of the NDA, and refused to exclude this testimony. Finally, he refused to preclude testimony on patent damages, finding that the expert’s opinions were adequately supported and that any disputes as to the calculations could be dealt with on cross-examination.

Palomar Technologies, Inc. v. MRSI Systems, LLC (18-cv-10236).

In a case involving allegations of infringement of a patent relating to placement of components on circuit boards, Palomar sought partial summary judgment of literal infringement.  Palomar asserted that of the three non-infringement grounds MRSI provided, one was based on a frivolous claim construction and the other two were directly contradicted by MRSI’s 30(b)(6) witness. Palomar also sought summary judgment on MRSA’s public use invalidity defense, alleging that MRSI had failed to timely provide contentions relating to this issue that provided the requisite detail to maintain the defense. Noting that no claim construction order has yet issued and discovery remains on-going, Judge Saylor denied Palomar’s motions without prejudice, finding them to be premature. He further noted that, to the extent the motions were the result of an alleged failure of MRSI to provide discovery or make required disclosures, a motion to compel or for sanctions would be the appropriate step for Palomar to take.

Purdue Pharma LP et al. v. Collegium Pharmaceutical, Inc. (15-cv-13099).

Judge Saylor granted Collegiums request for leave to file an amended answer pleading the reverse doctrine of equivalents as an affirmative defense. He found this defense not clearly futile, but expressly indicated that he was taking no position as to whether the reverse doctrine of equivalents is an affirmative defense that must be pled or whether it remains a viable legal doctrine.

Purdue Pharma LP et al. v. Collegium Pharmaceutical, Inc. (15-cv-13099).

Purdue alleges that Collegium infringed three patents relating to abuse-deterrent extended-release oxycodone by filing an NDA for Collegium’s XTAMPZA ER product. Collegium sought summary judgment of non-infringement on two theories – that its active ingredient (oxycodone myristate) is not the equivalent of Purdue’s oxycodone hydrochloride, and that Collegium’s product lacks the claimed “irritant.” Collegium also asserted that one of the patents should be deemed invalid under issue preclusion or collateral estoppel, based on a final judgment in a New York court that three related patents were invalid and the PTO’s requirement, during examination of the patents at issue, that a terminal disclaimer be filed to overcome obviousness-type double patenting over the related patents.

The invalidated claims from the prior litigation were all product-by-process claims; while the Judge in that case acknowledged the process was novel, the claims stood or fell based solely on the product limitations, which did not describe a patentably-distinct compound. In evaluating the collateral estoppel argument, Judge Saylor noted that it had not been applied by the District of Delaware in an infringement case involving one of the patents of this suit. Judge Saylor applied Federal Circuit law on the preclusion and estoppel issues, which allows for preclusion on patent invalidity where the differences between the unadjudicated and adjudicated claims do not materially alter the question of patentability. He determined that the PTO’s double patenting analysis fails to satisfy this requirement, and that Purdue’s filing of the terminal disclaimers (particularly while expressly indicating its lack of agreement with the rejections) could not be converted into an admission or acquiescence on the merits of the rejections. He also determined that the claims at issue included additional limitations that materially alter the patentability as compared with the previously-invalidated claims, as the new claims included limitations relevant to the process that were not considered in the New York litigation. Collegium asserted that these limitations were inherently present in the invalidated Purdue patents, but Judge Saylor declined to apply the doctrine of inherency where the references in question, related Purdue patents, would not qualify as prior art, and noted that in any event there were unresolved issues of material fact that precluded summary judgment on the issue. While rejecting the preclusion issue, Judge Saylor did note that the findings of fact by the New York court rendered the validity of at least some of the asserted claims doubtful.

Collegium next sought to apply prosecution history estoppel to preclude a finding of infringement by equivalents, asserting that Purdue had specifically distinguished its hydrochloride form of oxycodone over other forms of oxycodone. Judge Saylor, however, determined that the scope of disavowal extended not further than products including oxycodone free base and declined to estop the equivalency argument. He found factual issues as to whether the two forms were equivalent that precluded summary judgment of non-infringement.

Collegium sought judgment of non-infringement on method claims, asserting that it does on itself complete all of the method steps because its product is manufactured by two companies that it does not control; Judge Saylor determined that Collegium could not demonstrate an absence of material fact on this issue, and denied summary judgment. Collegium’s last effort was to escape infringement of two of the patents on the basis that the myristic acid it utilized in its product is not an “irritant,” but instead is included to dissolve the oxycodone base. Looking back to the construction of “irritant,” the Court noted that Purdue had disavowed from the scope of that term components that both served both as an irritant and provided some other benefit, such as serving as an excipient. Noting that Purdue concedes that myristic acid in the XTAMPZA ER provides an excipient function, Judge Saylor granted summary judgment of non-infringement of all claims requiring an irritant, which effectively resulted in non-infringement on two of the three asserted patents.

Maquet Cardiovascular LLC v. Abiomed, Inc. et al. (17-cv-12311).

After being sued for patent infringement by Maquet, Abiomed filed non-infringement counterclaims against Maquet its corporate parent, Swedish company Getinge AB. Judge Saylor granted Getinge’s motion to dismiss, agreeing that Getinge lacks standing to sue Abiomed and determining that this insulates Getinge from the declaratory judgment counterclaim. Judge Saylor noted that the counterclaim does not allege that a written agreement exists by which Getinge was given any rights in the subject patent, and absent a written transfer of rights, Getinge can have no rights in the patent. He refused to extend the doctrine of equitable title, stating that there is nothing inherently unfair or inequitable in a corporate subsidiary owning all rights in a patent or in the parent then exercising substantial control over the subsidiary that would require bringing the parent into the controversy. Accordingly, the counterclaim was dismissed as applied to Getinge (although it remains in place against Maquet).