US research body sues chip tech company Japan’s government plans to buy

The stakes are high because the disputed items - photoresists – are essential for EUV lithography

The Research Foundation for the State University of New York (SUNY RF) is suing a subsidiary of Japan's JSR Corporation over claims that photoresist materials developed by the foundation were commercialized and patented illegally.

The complaint [PDF] filed on January 25 claims that Inpria Corporation sells advanced photoresists using technology developed as part of a joint research project with SUNY RF, for which it did not acquire a license. Inpria was acquired by JSR in 2021 in a deal said to be worth $514 million.

To further complicate matters, JSR is itself in the process of being acquired by the Japan Investment Corp (JIC), which is overseen by the nation's trade ministry, as part of moves by the local government to revitalize its own semiconductor industry in light of ongoing chip wars between the US and China.

JSR and Inpria said they intend to defend themselves against the claims in court.

At the heart of the case are photoresist materials used in extreme ultraviolet (EUV) lithography. The substances are critical to the complex process of etching patterns into silicon and therefore essential during manufacture of the most advanced semiconductors, enabling process nodes of 7nm down to the 2nm and even more refined processes currently being developed.

Just who owns photoresist tech is therefore of great interest given huge demand for chips, and the shift to more sophisticated manufacturing processes that rely on photoresists.

At the heart of the case are photoresist materials used in extreme ultraviolet (EUV) lithography. This is used in the manufacturing of the most advanced semiconductors, enabling process nodes of 7nm down to the 2nm and smaller processes currently being developed.

SUNY RF asserts that the key research in this area was carried out by Dr Robert Brainard, a professor in the Department of Nanoscale Science & Engineering at SUNY’s College of Nanotechnology, Science and Engineering (CNSE).

The court filing states that in 2011, Dr Brainard started a project at CNSE to design and synthesize "never-before-explored organometallic compounds" – otherwise known as metal oxide photoresists, and particularly tin-oxide photoresists – in place of the resists then available using organic materials.

SUNY RF claims that in 2012, Inpria joined CNSE's SEMATECH consortium created to boost innovation in the semiconductor industry, in order to collaborate on resists for EUV lithography.

It says that in 2014, Inpria took its partnership with CNSE a step further, and entered into a two-year research agreement with SUNY RF relating to organometallic photoresist materials, with Dr Brainard as the "principal investigator" overseeing the project. Following the conclusion of this work, Inpria hired Dr Brainard and the researchers working with him for a further two years, which was later extended to August 31, 2019.

SUNY RF claims that for these research projects, it agreed to grant Inpria a limited license to the intellectual property resulting from Dr Brainard's earlier research and development. It argues the agreements made it clear that SUNY RF did not grant Inpria a license to use the IP any other way – including commercializing or profiting from it in any way.

According to SUNY RF, the agreements stated that any IP generated by it during the course of the research would be owned exclusively by SUNY RF, and that the two organizations would hold joint title to any IP not conceived exclusively by either party.

It claims that the agreements gave Inpria the option to acquire an exclusive, royalty bearing license to the technologies invented, but that Inpria never exercised those options.

Going by the complaint, it appears that SUNY RF became suspicious of Inpria when the latter entity filed its own patent infringement action against another business involved in chipmaking equipment, Lam Research Corporation.

According to SUNY RF, the technology in the patents involved in that case was based on Dr Brainard's earlier work, and which Inpria agreed not to use for any purpose other than research. It claims that Inpria now admits that it commercially exploits "tin based organometallic compositions" of the kind developed by Dr Brainard.

It alleges that Inpria uses SUNY RF's IP commercially in violation of the research agreements and without a license to do so, and that it failed to list Dr Brainard and his colleagues as inventors or co-inventors of the technology in the patents, which are now assigned solely to Inpria.

JSR has filed a statement on its site noting the lawsuit filed by SUNY RF, and the claims that it should be listed as a co-inventor on 25 patents granted to Inpria.

"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," the statement reads.

"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," it continues.

According to Reuters, JSR indicated it does not expect the lawsuit to have any impact on its acquisition by the JIC – previously stated to be a deal worth ¥909.3 billion ($6.4 billion).

SUNY RF is asking for the case to be heard by jury trial. If the trial goes in its favor, SUNY RF wants the relevant patent inventorship records amended, an injunction against Inpria using the patents without license, plus compensation and all the profits from Inpria's alleged commercialization of its technology. ®

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