Federal Circuit Compels Transfer of Ownership of Japanese Patent Applications

In SiOnyx LLC v. Hamamatsu Photonics K.K., Nos. 2019-2359, 2020-1217 (Fed. Cir. Dec. 7, 2020), the Federal Circuit reversed the district court’s denial of SiOnyx’s sole ownership of Japanese patent applications. The Federal Circuit also addressed, but declined to reverse, the district court’s other rulings regarding the statute of limitations, pre-judgment interest, permanent injunctions, damages, ownership of U.S. patents, willful infringement, and attorney fees. 

The dispute between the parties stemmed from a 2007 non-disclosure agreement between the parties to evaluate and develop applications for “pulsed laser process doped photonic devices.” The agreement stipulated that whichever party disclosed confidential information to the other party “claims ownership of the information and all patent rights ‘in, or arising from’ the information.” After termination of the agreement, Hamamatsu used confidential information received from SiOnyx as the basis for a series of Japanese patent applications, to which U.S. patents at issue in this case claimed priority.

The Federal Circuit granted SiOnyx sole ownership of the Japanese patent applications, reiterating that courts have authority to compel transfer of ownership of foreign patents. It based its decision, in part, on the fact that Hamamatsu did not contribute any of its own confidential information provided under the agreement to the Japanese patent applications. The Federal Circuit declined to overturn the district court’s many other holdings based on determinations made by a jury.