Hamamatsu is Ordered to Transfer its Foreign Black Silicon Patents to SiOnyx

KnobbeMartens, Justia:  The US Court of Appeals for the Federal Circuit has ruled that  Hamamatsu must transfer its foreign patents for Black Silicon technology to SiOnyx.

"Hamamatsu entered into a Non-Disclosure Agreement (“NDA”) with SiOnyx to discuss joint development of the technology and received confidential information.  The NDA provided that ownership of all patent rights in or arising from confidential information resides in the disclosing party.  Hamamatsu ultimately declined to use SiOnyx’s proprietary process.  However,  Hamamatsu continued to develop photodetector devices using SiOnyx’s confidential information, for which Hamamatsu applied for and obtained patents in the U.S. and several other countries.

After Hamamatsu started commercializing products, SiOnyx sued Hamamatsu for breach of contract, unjust enrichment, patent infringement, and correction of inventorship in Hamamatsu’s U.S. patents.

The Court found that under the NDA, the disclosing party owned the patents arising from the disclosing party’s confidential information exchanged under the agreement.  Hamamatsu failed to show any evidence that it contributed confidential information to the patents under the terms of the NDA, other than that which it appropriated from SiOnyx. ...the Federal Circuit found that the evidence establishing SiOnyx’s sole ownership of the U.S. patents also applied to ownership of the foreign patents."