Tech Transfer Central
Tech Transfer eNews

Tech Transfer E-News provides a weekly round-up of current news and information in the world of tech transfer, delivered every Wednesday (sign up here). It is published by Technology Transfer Tactics newsletter, which is available as a monthly subscription. For more information or to order a subscription click here, or for a sample issue, click here.

In high-stakes case, RFSUNY sues JSR subsidiary for infringing on photoresist technology

The Research Foundation for the State University of New York (RFSUNY) is suing Inpria, a subsidiary of Japan’s JSR Corp., for infringing on and illegally patenting a novel semiconductor technology.

RFSUNY has alleged that Inpria — a university spinout — is selling advanced photoresists using technology developed through a joint research project with RFSUNY, for which Inpria did not acquire a license. There’s a whole lot at stake given that photoresist materials are essential to the manufacture of advanced semiconductors, as they enable the complex process of etching patterns into silicon.

The case also has implications for US-Japan relations since JSR is itself in the process of being acquired by the Japan Investment Corp (JIC), which is overseen by the nation’s trade ministry and seeks to revitalize its own semiconductor industry.

RFSUNY claims that the key research behind the patented technology was conducted by SUNY professor Robert Brainard, who worked at Inpria for two years after the joint research project concluded. According to RFSUNY, it agreed to grant Inpria a limited license to the IP resulting from Brainard’s earlier research and development, but the license did not include commercialization rights and RFSUNY retained IP ownership. The agreement gave Inpria the option to acquire an exclusive, royalty bearing license, but Inpria never exercised that options, the lawsuit maintains.

The suit alleges that Inpria is using the IP commercially in violation of the agreement with RFSUNY and without a license to do so, and that it failed to list Brainard and his research team as inventors or co-inventors of the technology in the patents.

RFSUNY is seeking a jury trial and is requesting that relevant patent inventorship records be  amended and Inpria be injuncted from using the patents without license, plus compensation and all profits from Inpria’s alleged commercialization of its technology.

Inpria was acquired by JSR Corp. in 2021 in a deal said to be worth $514 million. In a statement on its site, JSR comments, “Inpria is a former university spin-out with deep roots in academic research on metal oxides stretching back two decades. The patents in question are in patent families filed prior to the full acquisition of Inpria by JSR in 2021. Internal investigations conducted to date have not uncovered any improper activities involving Inpria or implicating JSR. JSR and Inpria will continue to defend our business, intellectual property, and personnel against SUNY’s unsubstantiated claims and lawsuit in the forthcoming court proceedings.”

Source: The Register

Posted under: Tech Transfer e-News