Wednesday, December 09, 2020

Sionyx, Harvard mostly win at CAFC in "black silicon" case

The background of the case: This appeal arises from research conducted at Harvard University by Professor Eric Mazur and his then-student James Carey. In 1998, Mazur discovered a process for creating “black silicon” by irradiating a silicon surface with ultra-short laser pulses. In addition to turning the silicon black, the process creates a textured surface, and the resulting black silicon has electronic properties different from traditional silicon. After discovering the process for making the material, Mazur worked with his students, including Carey, to study its properties and potential uses. Based on their work, Mazur and Carey filed U.S. Provisional Patent Application 60/293,590 on May 25, 2001, from which several patents eventually issued, including the ’467 patent. I. THE PARTIES’ RELATIONSHIP Around 2005, Mazur and Carey founded SiOnyx to further develop and commercialize black silicon. Thereafter, SiOnyx sought to establish relationships with companies that may be interested in its technology. Of interest is the reference to "advisory opinion" On appeal, Hamamatsu maintains that its infringement was not willful, challenging the adequacy of the evidence presented at trial to support the jury’s finding. However, given that the district court awarded no enhanced damages based on willfulness, it is not apparent what effect the jury’s finding of willfulness had on the district court’s judgment, and it is likewise not apparent what the effect a reversal by this court would be. We cannot reduce the enhanced damages awarded to SiOnyx for Hamamatsu’s allegedly willful infringement because no such damages exist. Because there is no “tangible, demonstrable consequence” to the jury’s finding of willfulness, our consideration of the issue would be tantamount to an advisory opinion, which we lack the authority to provide. Samsung Elec. Co., Ltd. v. Rambus, Inc., 523 F.3d 1374, 1380 (Fed. Cir. 2008) (quoting Chathas v. Local 134 IBEW, 233 F.3d 508, 512 (7th Cir. 2000)). Accordingly, we decline to address the willfulness issue.


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