Apple Disputes ‘Efforts to Manufacture’ Imaging Sensor Claims Against iPhone 15 Technology

In response to a Boston-based tech company’s latest allegations that Apple had pre-suit knowledge of its patented low-light imaging sensors, the multinational technology company pointed to an agreement that prohibited the plaintiff’s “effort to manufacture” those claims.

Last month, SiOnyx, a developer and manufacturer of ultra-low-light complementary metal-oxide-semiconductor image sensors and high-performance night vision cameras, filed an amended complaint to its patent infringement suit in U.S. District Court for the District of Massachusetts against Apple. In the initial complaint filed in September, SiOnyx accused Apple of wrongfully using its technology in the iPhone 15, which included at least one image sensor made by Sony.

In part of its new allegations, SiOnyx asserted that Apple had pre-suit knowledge of the three imaging patents at issue and claimed the parties connected as early as May 2014 to discuss technological developments. The amended complaint also references an August 2017 meeting where SiOnyx provided a technical update to Apple on its deep trench isolation structure and its black silicon technology that cited SiOnyx’s patents. After the meeting, SiOnyx said it shared its presentation to Apple employees, the plaintiff’s complaint said.

However, an undisclosed agreement between the parties appears to be a sticking point as to whether SiOnyx could pursue such allegations.

On Wednesday, Apple’s attorney, Michael D. Strapp of DLA Piper, filed a motion to strike portions of the new allegations and for part of the case to be dismissed for failure to state a claim. Strapp asked the court to draw its attention to SiOnyx’s reliance on a sealed agreement used “in an effort to manufacture pre-suit willful and indirect infringement claims.” The new claims are explicitly prohibited based on the parties’ agreement, Strapp claims.

“Apple requests that the court take judicial notice of the agreement and strike the new allegations,” Strapp wrote. “Judicial notice is appropriate because SiOnyx has directly put at issue the agreement by relying upon pre-suit communications between the parties made pursuant to the agreement in the new allegations as a basis for asserting claims of pre-suit willful and indirect infringement in the FAC. Pursuant to Rule 12(f), Apple also asks the court to strike the new allegations because they are immaterial to the claims and defenses in this lawsuit and are prejudicial to Apple.”

Strapp said SiOnyx relied on “a designation of ‘proprietary and confidential’ that is affixed to every slide except for the title slide of the 2017 presentation,” and that Apple would be prejudiced “by being forced to respond to the new allegations.”

Apple also encouraged the court to rely on the U.S. Court of Appeals for the First Circuit’s 2017 opinion in Ironshore Specialty Insurance Co. v. General Dynamics Corp., as guidance for considering “‘documents central to plaintiffs’ claim,'” Strapp cited.

“Like SiOnyx here, the Ironshore plaintiff did not attach an agreement between the parties to the complaint. The Ironshore court nonetheless held that judicial notice of that agreement was appropriate because the claim relied on an assertion that a particular sea vessel was not a ‘public vessel’ exempted from liability—and the agreement between the parties expressly governed that determination. Similarly, SiOnyx’s claims of willful and indirect infringement rely upon alleged communications between the parties in 2017,” Strapp said.

Attorneys with Troutman Pepper Hamilton Sanders filed the complaint Sept. 12 on behalf of SiOnyx. The case is captioned SiOnyx v. Apple.
Apple has denied SiOnyx’s allegations. In November, Apple filed a motion to dismiss the complaint for failure to plausibly plead willful infringement, induced infringement, or contributory infringement. U.S. District Judge Julia E. Kobick subsequently denied Apple’s dismissal request because SiOnyx filed the amended complaint on Dec. 9.

Messages seeking comment from the attorneys were not immediately returned.