• D. Mass. IP Litigation Blog

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

  • July 26, 2018

As this patent and breach of contract case nears trial, Judge Saylor granted SiOnyx 2019 motion to amend its complaint to remove assertions of the 2018591 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 2018591 patent, and would suffer no legal prejudice from the withdrawal of the claim. The dismissal of the 2018591 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 2019 competing motions to exclude testimony from an opposing expert. SiOnyx has accused Hamamatsu of violating a nondisclosure agreement, obtaining patents on SiOnyx 2019s 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 2019s statement that he had 201cnot seen any evidence of secondary consideration 201d did not mean that he had not considered secondary factors. Accordingly, he denied SiOnyx 2019s motion. Hamamatsu, for its part, sought to entirely preclude SiOnyx 2019s 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 2019s 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 2019s 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 2019s opinions were adequately supported and that any disputes as to the calculations could be dealt with on cross-examination.

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