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Lawyers, other representatives, expert(s), tribunal’s secretary

Final Award

Glossary of Abbreviations

Documents
CMC Case Management Conference held on July 31, 2018
Decision on Challenge Decision on Challenge of Arbitrator Joseph E. Neuhaus, dated August 19, 2019
Document Requests Parties’ Requests for the Production of Documents, dated November 16, 2018
DTSA The Defend Trade Secrets Act, 18 U.S.C. §§1836 et seq.
Employee Agreement Employee Agreement Supplementing Mutual Non-Disclosure Agreement of July 28, 2010 and Wafer Supply Agreement of February 6, 2012
IBA Rules International Bar Association Rules on the Taking of Evidence in International Arbitration (2010)
IQE IQE plc, Claimant and Counter-Respondent
Joint Submission Joint Submission for Case Management Conference, dated July 24, 2018
LCIA London Court of International Arbitration
LCIA Rules LCIA Arbitration Rules (2014)
MBE Molecular beam epitaxy
Mem. Order Memorandum Order (Jurisdiction), dated September 12, 2018
MOCVD Metal organic chemical vapor deposition
Protective Order Protective Order and Confidentiality Agreement, dated September 23, 2018
SJC Solar Junction Corporation, Respondent and Counter-Claimant
Tr. Transcript of the Hearing (September 4-6 and 9-12, 2019)
WSA Wafer Supply Agreement, dated February 6, 2012, between IQE and SJC (Ex. 2011)
396 Application U.S. Patent Application No. 15/188,396 (Ex. 1005)
339 Patent U.S. Patent No. 9,768,339 B2 (Ex. 1003)
Submissions 
RFA Request for Arbitration, dated January 24, 2018
Resp RFA Response to the Request for Arbitration and Comments Regarding Counterclaims, dated March 23, 2018
SOC SJC’s Statement of Case, dated September 28, 2018
SOD IQE’s Statement of Defense, dated November 12, 2018
IQE PreHB IQE’s Pre-Hearing Brief on All Issues Other than Quantum, dated August 2, 2019
SJC PreHB SJC’s Pre-Hearing Brief on Liability, dated July 8, 2019
IQE Dmg PreHB IQE’s Pre-Hearing Brief on Quantum of Damages (If Any), dated August 19, 2019
SJC Dmg PreHB SJC’s Pre-Hearing Brief on Remedies, dated August 9, 2019
IQE PostHB IQE’s Post-Hearing Brief, dated October 21, 2019
SJC PostHB SJC’s Closing Brief, dated October 21, 2019
IQE PostHRB IQE’s Post-Hearing Reply Brief, dated November 4, 2019
SJC PostHRB SJC’s Reply Closing Brief, dated November 4, 2019
Witnesses 
A. Liu Testimony of Dr. Amy W.K.. Liu
Bank Testimony of Dr. Seth Bank (Expert)
Dowd Testimony of Dr. Philip Dowd
Fitzgerald Testimony of Dr. Eugene A. Fitzgerald (Expert)
Horsburgh Testimony of Dr. Gordon Horsburgh
Jackrel Testimony of Dr. David B. Jackrel (Expert)
Lynde Testimony of Dr. Matthew R. Lynde (Expert)
Nelson Testimony of Dr. Andrew W. Nelson
Nunna Testimony of Dr. Kalyan Nunna
Pelzel Testimony of Dr. Rodney Pelzel
Sheldon Testimony of Mr. Michael Sheldon
T. Liu Testimony of Dr. Ting Liu
Torabi Testimony of Mr. Hamid R. Torabi
Vigil Testimony of Dr. Robert L. Vigil (Expert)
Yanka Testimony of Mr. Robert Yanka
Yuen Testimony of Dr. Homan B. Yuen

I. The Parties

1.
IQE plc, the Claimant, is a public limited company registered under the laws of the United Kingdom, with its registered office located at Pascal Close, St. Mellons, Cardiff, CF3 OLW, United Kingdom ("IQE" or "Claimant"). IQE is a leading global supplier of advanced wafer products and services to the semiconductor industry with nearly 30 years of experience in photonic semiconductor manufacturing. (Request for Arbitration ("RFA") ¶4).
2.
Claimant’s contact information is:

IQE plc
Pascal Close
St. Mellons
Cardiff, CF3 OLW United Kingdom Tel: (44) 2920-839-400
Email: jhowells@iqep.com

(RFA ¶5).

3.
Solar Junction Corporation, the Respondent, is a company incorporated under the laws of Delaware in the United States, with its registered agent located at 251 Little Falls Drive, Wilmington, Delaware 19808 ("SJC" or "Respondent"). SJC develops solar cells and related products. (RFA ¶7; Response to Request for Arbitration and Comments Regarding Counterclaims, dated March 23, 2018 ("Resp RFA") ¶6).
4.
Respondent’s contact information is:

Solar Junction Corporation
401 Charcot Avenue
San Jose, CA 95131
United States of America
Tel: (408) 503-7000
Email: info@sj-solar.com

(RFA ¶8; Resp RFA ¶6). SJC’s name has been changed to Array Photonics.

II. Counsel

5.
Claimant’s legal representatives are:

Peter M. Brody, Esq.
Ryan C. Brunner, Esq.
Ropes & Gray LLP
2099 Pennsylvania Avenue, N.W.
Washington, D.C. 20006
Tel: (202) 508-4612
Fax:(202) 508-4650
Email: peter.brody@ropesgray.com ryan.brunncr@ropesgray.com

Edward J. Kelly, Esq.
Samuel L. Brenner, Esq.
ROPES & GRAY LLP
Prudential Tower
800 Bolyston Street
Boston, MA 02199-3600
Tel: (617) 951-7120
Email: edward.kelly@ropesgray.com samuel.brenner@ropesgray.com

Courtney M. Cox, Esq.
ROPES & GRAY LLP
1211 Avenue of the Americas
New York, NY 10036
Tel: (212) 596-9208
Fax: (212) 596-9090
Email: courtney.cox@ropesgray.com

Shong Yin, Esq.
ROPES & GRAY LLP
1900 University Avenue, 6th Floor
East Palo Alto, CA 94303
Tel: (650) 617-4000
Fax: (650)617-4090
Email: shong.yin@ropesgray.com

6.
Respondent’s legal representative are:

James Pooley, Esq.
JAMES POOLEY PLC
325 Sharon Park Drive, No. 208
Menlo Park, CA 94025-1015
Tel: (650) 285-8520
Email: j ames@pooley.com

Ian Feinberg, Esq.
FEINBERG DAY ALBERTI LIM TONKOVICH & BELLOLI 1600 El Camino Real, Suite 280
Menlo Park, CA 94025
Tel: (650)618-4360
Fax: (650) 618-4368
Email: ifeinberg@feinday.com

Robert P. Taylor, Esq.
RPT LEGAL STRATEGIES PC
2443 Fillmore Street, Suite 332
San Francisco, CA 94115
Tel: (415) 447-3975
Fax: (415) 400-4148
Email: robert.taylor@rptstrategies.com

III. The Arbitral Tribunal

7.
The Arbitral Tribunal is comprised of:

Robert B. Davidson, Esq. FCIArb
JAMS
620 Eighth Avenue, 34th Floor
New York, NY 10018
Tel: (212) 607-2752
Email: rdavidson@jamsadr.com
Co-Arbitrator

Joseph E. Neuhaus FCIArb
SULLIVAN & CROMWELL LLP
125 Broad Street
New York, NY 10004-2498
Tel: (212) 558-4240
Fax: (212) 558-3588
Email: neuhausj@sullcrom.com
Co-Arbitrator

John J. Kerr, Jr.
Retired Partner
SIMPSON THACHER & BARTLETT LLP
425 Lexington Avenue
New York, NY 10017-3954
Tel: (212) 455-3805
Fax: (212) 455-2502
Email: j kerr@stblaw.com
Presiding Arbitrator

8.
The parties selected the three arbitrators pursuant to an exchange of emails from May 24 to June 7, 2018, and as a result of a list procedure in coordination with the London Court of International Arbitration ("LCIA"). (LCIA letter dated 6/11/18). By agreement of the parties, the arbitrators decided among themselves that Mr. Kerr would serve as the Presiding Arbitrator.
9.
By letter dated June 28, 2018, the LCIA notified the parties and their counsel that pursuant to Article 5 of the LCIA Arbitration Rules ("LCIA Rules"), the LCIA Court appointed Robert B. Davidson, Joseph E. Neuhaus and John J. Kerr, Jr. to be the Tribunal in this arbitration, with Mr. Kerr presiding.

IV. The Arbitration Agreement

10.
The dispute in this arbitration arises from a Wafer Supply Agreement, dated February 6, 2012, between IQE and SJC (the "WSA"). Article 8.11 of the WSA contains an agreement to arbitrate, which provides as follows:

"8.11 Arbitration. All disputes and differences between IQE and Solar Junction arising out of or under this Agreement shall be settled amicably through negotiations. In case such dispute or difference cannot be settled amicably through negotiations, either party may send to the other an arbitration demand notice, in which case the dispute shall be finally settled by arbitration in New York, NY, under the LCIA Rules then in effect. Either party may request accelerated rules, in which case the parties will cooperate in good faith to adopt procedural rules recommended by LCIA for such accelerated proceedings. The language of the arbitration shall be in English. The number of arbitrators shall be one, unless the dispute involves an amount in excess of One Million Dollars, in which case three arbitrators shall hear the dispute. If a single arbitrator is to be selected, the LCIA shall provide the parties with a list of five recommended arbitrators, and each party shall take turns deleting a person from that list until a single person is left, who shall hear the dispute. If three arbitrators are to be selected, the LCIA shall provide the parties with a list of seven recommended arbitrators, and each party shall take turns deleting a person from that list until three persons are left, who shall hear the dispute. The award rendered by arbitrator(s) shall be final and binding upon the parties hereto, and may be entered in and enforced in any applicable jurisdiction desired by any of the parties."

V. Place and Language of the Arbitration

11.
Pursuant to Article 8.11 of the WSA, the place of arbitration is New York, New York, and the language of the arbitration is English.

VI. Applicable Rules

12.
Pursuant to Art. 8.11 of the WSA, the arbitration is to be conducted "under the LCIA Rules then in effect." Accordingly, this arbitration has been conducted pursuant to the LCIA Arbitration Rules (2014). (Procedural Order No. 1 ¶15). The Tribunal is guided, but not bound, by the IBA Rules on the Taking of Evidence in International Arbitration (2010) ("IBA Rules") in ruling on documentary or evidentiary disputes. (Procedural Order No. 1 ¶16).

VII. Applicable Law

13.
Pursuant to Article 8.12 of the WSA, the governing law of the WSA is New York law. Article 8.12 provides:

"8.12 Governing Law. This Agreement and matters connected with the performance hereof shall be construed, interpreted, applied and governed in all respects in accordance with the laws of the State of New York, without regard to conflict of law principles."

VIII. Background of the Dispute

14.
SJC, founded in 2007, designs and manufactures semiconductor materials that can be used for converting light energy into electrical energy. A central feature of SJC’s semiconductor materials is that they use a "dilute nitride," in this case an alloy comprising gallium, indium, nitrogen, arsenic and antimony, referred to as "GaInNAsSb." SJC is the owner of intellectual property as a result of its investment of time and resources in developing and perfecting dilute nitride semiconductor alloys for use primarily in solar cells. (Resp RFA, Ex. R-2 ¶¶11-14).
15.
By mid-2011, SJC was ready to go to market with its first dilute nitride product, a multi-junction solar cell having a dilute nitride subcell. SJC lacked the capital necessary to expand its manufacturing capability to meet the demand it anticipated for its solar cells. SJC approached companies, also known as foundries, that could manufacture epitaxial wafers on a commercial scale to be used in its solar cells. (Witness Statement of Dr. Homan Yuen, dated May 6, 2019 ("Yuen") ¶28).
16.
IQE, which was founded as Epitaxial Products International ("EPI") in 1988, has three decades of experience in the growth of semiconductor wafers using epitaxial growth methods.1 Over time, IQE expanded its expertise and production capabilities through both internal development and external acquisitions to become the leading global supplier of advanced compound semiconductor wafer products and services. (Witness Statement of Dr. Andrew W. Nelson, dated June 10, 2019 ("Nelson") ¶¶20-22; Statement of Defense ("SOD") ¶¶48-49).
17.
On February 6, 2012, IQE and SJC entered into the WSA under which IQE agreed to manufacture and SJC agreed to purchase certain semiconductor wafers made to SJC’s specifications. The WSA granted IQE a limited license to use SJC’s patents and know how needed to comply with the WSA, and contains a number of provisions designed to protect and keep confidential the intellectual property of the parties. In addition, each IQE employee who would have access to SJC’s trade secrets signed an individual non-disclosure and non-use agreement with IQE, naming SJC as third-party beneficiary. (Statement of Case ("SOC") ¶29; WSA Art. 5.2). Those agreements required the IQE employees to adopt the commitments IQE had made to "maintain stringent confidentiality procedures" in respect of SJC’s trade secrets. (Id. ; SOC ¶29; Resp RFA, Ex. R-l).
18.
During the term of the WSA, IQE and its employees worked independently of the WSA relationship to develop an invention relating to a photonic semiconductor photodetector for data and telecommunications, using a dilute nitride alloy. That work led IQE on June 22, 2015, to file U.S. Patent Application No. 62/183,060, which listed as inventors five IQE employees. Each of those employees had signed a non-disclosure agreement (the "Employee Agreement"). On June 21, 2016, IQE filed U.S. Patent Application No. 15/188,396, which claimed priority to the provisional application (the "396 Application"). (Ex. 1005). On December 22, 2016, as required by U.S. patent law, the U.S. Patent and Trademark Office published the 396 Application as Publication No. US 2016/0372624 Al. On September 19, 2017, the U.S. Patent and Trademark Office issued U.S. Patent No. 9,768,339 B2 (the "339 Patent") to IQE. (RFA ¶¶16-19, 28; Ex. 1003).
19.
SJC discovered the publication of IQE’s patent application in early 2017. (SOC ¶42). In exchanges of correspondence between IQE and SJC and their legal representatives starting with a letter dated March 16, 2017, SJC alleged that the filing by IQE and subsequent publication by the U.S. Patent and Trademark Office of the 396 Application constituted a breach of IQE’s contractual obligations under the WSA and a violation of SJC’s rights under trade secret laws. On September 26, 2017, the parties entered into a Standstill Agreement in which they agreed that neither company would take steps to initiate or support the initiation of legal action relating to the 339 Patent or the 396 Application. The Standstill Agreement provided that either party could terminate it on 72 hours’ notice. (RFA ¶¶31-29).
20.
On November 30, 2017, SJC notified IQE that it was terminating the Standstill Agreement. On December 4, 2017, SJC filed an action in the United States District Court for the Southern District of New York (Case No. 17 Civ. 9478) in New York City naming as defendants the five named inventors on the 339 Patent (the "Chung Action"). (RFA ¶¶31-32).
21.
On January 16, 2018, pursuant to Articles 8.7 and 8.11 of the WSA, IQE, through counsel, sent SJC by FedEx express mail an Arbitration Demand Notice. (RFA ¶35).

IX. History of the Proceeding

22.
On January 24, 2018, IQE filed its Request for Arbitration with the LCIA. The RFA seeks (1) a declaration that IQE is not liable for certain claims alleged by SJC, (2) a determination that IQE did not misappropriate SJC’s trade secrets provided to IQE in performance of the WSA, and (3) a determination that IQE did not commit any breach of contractual obligations alleged by SJC. The claims alleged by SJC against IQE were set forth in SJC’s March 16, 2017, letter in which SJC alleged that the filing by IQE of the 396 Application and its subsequent publication by the U.S. Patent and Trademark Office constituted a breach of IQE’s contractual obligations under the WSA and a violation of SJC’s rights under trade secret laws. (RFA, Ex. C-3).
23.
Pursuant to the forum selection clause in the Employee Agreements, SJC had filed its complaint against the five IQE employees in the Chung Action on December 4, 2017, in the U.S. District Court. IQE filed a motion in the District Court requesting a stay or dismissal of the Chung Action in favor of the LCIA arbitration proceeding. After the commencement of this LCIA arbitration, SJC filed a complaint against IQE in the U.S. District Court for the Southern District of New York (Case No. 18 Civ. 2564) on March 22, 2018, seeking a declaration of its rights and requesting an injunction against IQE continuing the LCIA arbitration (the "IQE Action").
24.
On March 23, 2018, SJC filed its Response to the Request for Arbitration and Comments Regarding Counterclaims. SJC contended that the Arbitral Tribunal lacked jurisdiction over the dispute because the arbitration agreement upon which IQE relies was superseded with respect to the claims asserted in the RFA by the later Employee Agreements. Each of the Employee Agreements provided in section 4 that "[a]ny proceeding brought to enforce this Employee Agreement will be brought in United States District Court for the Southern District of New York." (Resp RFA, Ex. R-l). SJC contended that this arbitration should either be stayed or held in abeyance pending a ruling on SJC’s request to enjoin this arbitration in the District Court. (Response to RFA; Mem. Order ¶¶4-5).
25.
On May 9, 2018, the District Court (1) issued an order in the IQE Action denying SJC’s motion for a preliminary injunction; and (2) issued an order in the Chung Action granting IQE’s motion for a stay pending arbitration. On May 16, 2018, SJC filed a voluntary dismissal of its declaratory judgment claim in the IQE Action. (Mem. Order ¶6).
26.
On June 28, 2018, the LCIA notified the parties and their counsel that the LCIA Court had appointed the Arbitral Tribunal.
27.
On July 13, 2018, the District Court held a conference with counsel for the parties and issued an order staying the IQE Action pending the conclusion of the LCIA Arbitration. (Mem. Order ¶6).
28.
On July 24, 2018, the parties filed in this arbitration a Joint Submission for Case Management Conference (the "Joint Submission") scheduled to be conducted on July 31, 2018. In the Joint Submission, the parties informed the Tribunal they were in agreement that, in light of the District Court’s denial of SJC’s motion for a preliminary injunction and the staying of both the Chung Action and the IQE Action pending this arbitration, SJC’s request for a stay in this proceeding was moot. In the Joint Submission, the parties also informed the Tribunal they were in agreement that the Tribunal should consider whether it could resolve the jurisdictional challenge as a preliminary issue on the basis of the existing record, including the briefs, declarations, exhibits, hearing transcripts, and opinions and orders of the District Court in the IQE and Chung Actions, and, if so, the Tribunal should proceed to do so before considering the contractual issues. (Mem. Order ¶7).
29.
On July 31, 2018, the Arbitral Tribunal held a telephone Case Management Conference ("CMC") with the parties, represented by their counsel, to address the schedule of the proceedings in this arbitration and a number of procedural issues. During the CMC, the Tribunal informed the parties that it would take up the jurisdictional challenge as a preliminary issue based on the existing record.
30.
On August 3,2018, the parties jointly submitted a Revised Proposed Schedule for this case in the event the Tribunal determined it had jurisdiction.
31.
On August 23, 2018, the Tribunal issued Procedural Order No. 1 in which the Tribunal (1) informed the parties that it had considered the challenge raised by SJC to the Tribunal’s jurisdiction and determined that it has jurisdiction; (2) indicated that it would issue an order setting forth the reasons for its determination on jurisdiction in due course; and (3) adopted the agreed Revised Proposed Schedule for the case as the Schedule of the Arbitral Proceedings, which was attached to Procedural Order No. 1 as Appendix A.
32.
As further discussed at paras. 75-80 below, on September 12, 2018, the Tribunal issued its Memorandum Order setting forth the reasons for its determination on jurisdiction ("Mem. Order").
33.
On September 14, 2018, SJC submitted its Identification of Trade Secrets pursuant to Procedural Order No. 1.
34.
On September 23, 2018, the Presiding Arbitrator signed, on behalf of the Arbitral Tribunal, a Protective Order and Confidentiality Agreement jointly submitted by the parties (the "Protective Order").
35.
On October 1,2018, the Tribunal held a telephone conference with counsel for the parties to address a concern raised by SJC that the Protective Order dated September 23, 2018, may not provide sufficient protection for SJC’s trade secrets to be disclosed to IQE in this arbitration. SJC proposed having any IQE employee who was not already a party to an Employee Agreement (on confidentiality and non-disclosure) be required to sign one before being permitted to review trade secret information produced by SJC pursuant to the Protective Order. On October 11, 2018, the Tribunal issued Procedural Order No. 2 declining to impose this additional obligation on IQE employees for the reasons set forth in the order and stating it was the view of the Tribunal that the LCIA Arbitration Rules and the Protective Order provided sufficient protection to SJC’s trade secret information produced pursuant to the Protective Order.
36.
On September 28,2018, SJC submitted its Statement of Case.
37.
On November 12,2018, IQE submitted its Statement of Defense along with Exhibits 2001-2061.
38.
On November 16, 2018, the parties exchanged Requests for the Production of Documents ("Document Requests"). On November 20, 2018, the parties exchanged responses and objections to the Document Requests. Pursuant to Procedural Order No. 1 (as amended), the parties made a Joint Submission to the Tribunal regarding unresolved disputes arising from the Document Requests.
39.
On December 27, 2018, the Tribunal held a telephone conference with counsel for the parties to address their document disputes. The parties’ disputes centered on the number of IQE custodians whose files would be searched, the search terms to be used, and the protocol to be followed in conducting the search and producing the documents. On December 29, 2018, the Tribunal issued Procedural Order No. 3 ruling on the pending document disputes. During the telephone conference, the Tribunal raised two additional procedural matters with the parties. The first concerned requests in IQE’s SOD to "strike" certain of SJC’s allegations in its SOC. The Tribunal asked the parties for their views on whether the Tribunal should address these requests before the hearing. The second concerned whether the parties thought the 25-page limit set in Procedural Order No.l on briefs to be submitted in advance of the hearing was sufficient to cover the matters they intended to cover in these briefs. The parties were directed to meet and confer on these two questions and to make a joint submission to the Tribunal addressing them by January 11, 2019.
40.
On January 9, 2019, the parties made a joint submission to the Tribunal advising the Tribunal that (i) the parties requested that the page limit for the pre-hearing arbitration briefs should be extended to 50 pages, and (ii) the parties agreed that the Tribunal should consider IQE’s requests to strike "at this time" following written submissions of "letter briefs" by the parties on a proposed schedule (subsequently amended). The Tribunal agreed to the amended page limit for pre-hearing briefs and the proposed schedule of submissions on the requests to strike.
41.
IQE submitted its opening letter brief on January 18, 2019; SJC submitted its responsive letter brief and two witness declarations on February 6, 2019; and IQE submitted its reply letter on February 13, 2019. Subsequently, SJC submitted an additional letter on February 14, 2019, and an email on February 19,2019; and IQE submitted an additional letter dated February 16, 2019. IQE’s main contention was that SJC’s identification of trade secrets alleged to have been misappropriated by IQE was insufficient to comply with sections 5 and 7 of Procedural Order No. 1. After considering all of the submissions of the parties, the Tribunal issued Procedural Order No. 4, dated February 25, 2019, in which it concluded that (i) SJC’s Identification of Trade Secrets (September 14, 2018) failed to comply with Procedural Order No. 1, section 5’s requirement that SJC provide a "precise statement of the trade secrets that Respondent alleges were misappropriated," and (ii) SJC’s SOC did not correct the deficiencies of its Identification of Trade Secrets and failed to comply with Procedural Order No. 1, section 7’s requirement that it "include a detailed description of the trade secrets." The Tribunal decided, however, that the appropriate remedy was not to strike SJC’s trade secret claims or require SJC to replead its SOC, which would entail a reworking of the procedural schedule and a substantial delay. The Tribunal noted that the procedural schedule required SJC to put forward the evidence supporting its case in chief relatively soon, and that the Tribunal expected SJC’s witness statements and expert reports to disclose SJC’s "post-discovery" theory of misappropriation in greater detail. The Tribunal also noted that SJC had the burden of proving what precise trade secrets were misappropriated by IQE and how.
42.
On March 22, 2019, the parties submitted a joint letter to the Tribunal informing the Tribunal that (i) the parties had resolved certain additional document disputes and were completing document production; (ii) SJC was withdrawing its requests for depositions; (iii) the parties wished to postpone indefinitely any "joint technology tutorial" (for which May 10, 2019, had been reserved); and (iv) the parties requested certain amendments to the procedural schedule concerning the submission of witness statements, witness lists and expert reports. The Tribunal approved the requested amendments to the schedule and issued Procedural Order No. 5 with an amended Appendix A to Procedural Order No. 1.
43.
On May 6, 2019, SJC submitted its witness list; witness statements of Philip Dowd, Ting Liu, Michael Sheldon, Hamid Torabi and Homan Yuen; expert reports of Seth Bank, David Jackrel and Matthew Lynde; and Exhibits 1008-1172.
44.
On June 10, 2019, IQE submitted its witness list; witness statements of Andrew Nelson, Rodney Pelzel, Gordon Horsburgh, Robert Yanka, Kalyan Nunna and Amy Liu; expert reports of Eugene Fitzgerald and John Jarosz; and exhibits 2062-2410.
45.
On June 13,2019, Arbitrator Joseph E. Neuhaus disclosed that his law firm Sullivan & Cromwell had retained John Jarosz as an expert witness in an arbitration in which he was lead counsel. On June 19,2019, SJC sent an email to the Tribunal expressing its concern about the prospect of IQE’s expert having parallel and contemporaneous ex parte contact with one of the arbitrators. On the same day, IQE advised that prior to receiving Mr. Neuhaus’s disclosure, Ropes & Gray and IQE were not aware of the involvement of John Jarosz and his firm Analysis Group in the arbitration identified by Mr. Neuhaus. At the suggestion of the parties, the Tribunal held a teleconference with the parties on June 25, 2019, to discuss the situation and how to address it. During the teleconference, the Presiding Arbitrator raised as a possibility that another member of Analysis Group be engaged as a substitute for Mr. Jarosz.
46.
On June 26, 2019, SJC proposed a compromise to obviate the need for a formal objection and to minimize the duplication of work already carried out by Analysis Group. SJC indicated it was prepared to agree that another expert from Analysis Group replace Mr. Jarosz provided that the new expert was "walled off’ from Mr. Jarosz and members of his team and have no access to the Jarosz expert report. Further email exchanges indicate that IQE made a counterproposal in which IQE would replace Mr. Jarosz with another Analysis Group expert provided that the new expert could review all the work product generated by Mr. Jarosz’s team. The parties did not reach an agreement on their counterproposals before the deadline for SJC to bring a formal challenge to Mr. Neuhaus.
47.
On June 27, 2019, SJC filed its Challenge to Continued Participation of Arbitrator Joseph E. Neuhaus and sent a copy to the Tribunal, requesting that the date for submission of its pre-hearing brief (July 8, 2019) be suspended until the resolution of the challenge.
48.
On June 28, 2019, the LCIA acknowledged receipt of Respondent’s Challenge. On July 3, 2019, IQE filed its Opposition to SJC’s Challenge to Continued Participation of Arbitrator Joseph E. Neuhaus.
49.
On June 30, 2019, the Tribunal informed the parties that it was inclined to proceed with the preparations for the hearing scheduled for September in accordance with IQE’s proposal to submit a new expert report, whether or not SJC proceeded with its challenge, and invited the parties to confer on a schedule for the filing of a new expert report and the parties’ pre-hearing briefs. A joint schedule for these submissions was proposed by the parties on July 2 and accepted by the Tribunal on July 5,2019.
50.
On July 5, 2019, the LCIA informed the parties and the Tribunal that the challenge would be referred to the LCIA Court pursuant to Article 10.6 of the LCIA Rules. On July 16, 2019, the LCIA informed the parties and the Tribunal that the Court had appointed Vera Van Houtte, a former Vice-President of the LCIA Court, to determine the challenge.
51.
On July 25, 2019, Ms. Van Houtte invited the parties to inform her of any further comments they had and to file cost submissions by July 30, 2019. On July 28,2019, IQE submitted a letter in opposition to the challenge, and on July 29,2019, SJC filed its Supplemental Brief in further support of its challenge. On July 30, 3019, IQE made its submission on legal costs incurred in relation to SJC’s challenge.
52.
On August 19, 2019, Ms. Van Houtte issued her Decision on Challenge of Arbitrator Joseph E. Neuhaus ("Decision on Challenge"). The Decision (1) ruled that SJC’s challenge was admissible; (2) rejected SJC’s challenge; and (3) decided that the costs relating to the challenge shall be determined and allocated by the Tribunal in its final award or, if it deems appropriate, another decision. In rejecting the challenge, Ms. Van Houtte noted that the parties seemed to agree that in circumstances such as this, the conflict ought to be resolved by the withdrawal of the expert, not the arbitrator; that there also appeared to be agreement that the new expert could also be a member of Analysis Group; and that the disagreement between the parties was thus reduced to the question of an "ethical wall" between Mr. Jarosz and the new expert, and specifically whether the "ethical wall" insisted upon by SJC would not only prohibit IQE’s new expert from discussing the case with Mr. Jarosz but, in addition, prohibit the new expert from using any of the working materials produced by Mr. Jarosz’s team prior to the challenge. Having taken into account all the relevant circumstances, including the amount and type of work to be done by the expert, Ms. Van Houtte concluded that "the walling off requested by Respondent is not necessary, let alone required, in order to preserve the integrity of the proceedings or in order to justify the rejection of the challenge to Mr. Neuhaus for reason of the alleged relationship with Mr. Jarosz." (Decision on Challenge ¶78).
53.
On July 8, 2019, SJC submitted its Pre-Hearing Brief on Liability ("SJC PreHB") with Exhibits 1173 and 1174.
54.
On July 31, 2019, IQE submitted its new expert report of Robert L. Vigil, in substitution for the expert report of John Jarosz.
55.
On August 2,2019, IQE submitted its Pre-Hearing Brief on All Issues other than Quantum ("IQE PreHB").
56.
On August 9, 2019, SJC submitted its Pre-Hearing Brief on Remedies ("SJC Dmg PreHB").
57.
On August 19, 2019, IQE submitted its Pre-Hearing Brief on the Quantum of Damages (If Any) ("IQE Dmg PreHB").
58.
When SJC submitted its Pre-Hearing Brief on Liability on July 8, it also submitted rebuttal witness statements of Homan B. Yuen and Ting Liu and a rebuttal expert report of Seth Bank. In a letter dated August 12,2019, IQE objected to these witness statements and expert report on the ground that neither Procedural Order No. 1 nor any other order of the Tribunal provided for such supplemental or rebuttal statements or reports. IQE also moved to exclude certain exhibits submitted by SJC which it contended had not been "authenticated," and portions of other witness statements and expert reports on various grounds. SJC responded preliminarily to IQE’s objections in an email dated August 13, 2019, and IQE replied with an email dated August 14,2019. The Tribunal wrote to the parties by email dated August 15, 2019, stating that exhibits submitted by the parties with their written submissions are deemed to be authentic unless the authenticity of an exhibit is challenged by a party, the point of this arrangement being to avoid the time and expense of having witnesses authenticate documents when their authenticity is not in dispute. Accordingly, the Tribunal denied IQE’s request to exclude exhibits on the ground that they had not been authenticated. The Tribunal extended the time for the parties to challenge the authenticity of specific exhibits to August 16. With respect to IQE’s other evidentiary objections, the Tribunal invited SJC to respond to IQE’s request that SJC’s supplemental expert report and rebuttal witness statements be stricken and to IQE’s objections to portions of Hamid Torabi’s witness statement by August 16, 2019.
59.
In a letter dated August 15, 2019, SJC provided its responses to IQE’s evidentiary objections, and in a letter dated August 16, 2019, IQE provided its reply.
60.
On August 18,2019, the parties provided to the Tribunal a proposed procedural stipulation concerning the conduct of the hearing, noting areas of disagreement in brackets and with comments.
61.
On August 19, 2019, the Tribunal provided the parties with an agenda for the Pre-Hearing Conference to be conducted on August 21, 2019. In addition, the Tribunal ruled on a number of IQE’s evidentiary objections. The Tribunal (1) noted that no specific objections to the admissibility of an exhibit on the ground of authenticity were received by the August 16 deadline, and that all exhibits submitted by the parties were deemed admitted unless a specific objection (on another ground) was made; (2) directed that demonstrative exhibits would be admitted and given a number indicating they are demonstrative exhibits; (3) granted IQE’s motion to exclude the rebuttal witness statements of Dr. Yuen and Dr. Liu and the supplemental expert report of Dr. Bank on the ground that Procedural Order No. 1, which governed the parties’ written submissions in the case and was agreed to by the parties and ordered by the Tribunal, did not provide for rebuttal witness statements or supplemental expert reports, and that no leave to file such submissions was requested or granted; (4) denied IQE’s request to strike testimony in the Torabi Witness Statement about the LONGESST Project; (5) indicated it would hear further argument at the Pre-Hearing Conference on IQE’s objection to testimony in the Torabi Witness Statement concerning a possible compromise of the claim in this arbitration; and (6) reserved decision on IQE’s remaining evidentiary objections.
62.
On August 21,2019, a Pre-Hearing Conference was held to address hearing logistics, the conduct of the hearing, the parties’ proposed stipulation and IQE’s remaining evidentiary objections.
63.
During the Pre-Hearing Conference, the Tribunal reviewed the parties’ proposed procedural stipulation with counsel, gave certain directions concerning the conduct of the hearing (including the scope of direct and cross examination), and confirmed arrangements for the hearing.
64.
Subsequent to the Pre-Hearing Conference and as a follow up to it, the Tribunal sent an email to the parties dated August 23, 2019, in which the Tribunal, inter alia, (1) made rulings on the disputed items in the parties’ proposed procedural stipulation; (2) sustained IQE’s objection to portions of the Torabi Witness Statement concerning his discussion with Andrew Nelson about a possible compromise of SJC’s claim in this arbitration, namely paragraphs 34-37; and (3) gave directions with respect to IQE’s remaining evidentiary objections to portions of SJC’s witness statements and expert reports (Objections 2, 3, 4, 5, 8 and 9), noting that the issues raised by IQE could be addressed in cross examination and that the Tribunal would decide the appropriate weight to be given to the testimony after hearing from the witnesses at the hearing rather than strike testimony from the record.
65.
On August 26, 2019, SJC submitted a letter addressing an assertion by IQE, made during the Pre-Hearing Conference, that the nature of SJC’s claims was still unclear and that SJC had waived certain claims. SJC’s letter stated that "SJC’s claims are for breach of contract and trade secret misappropriation, the latter asserted under the DTSA or as necessary under New York Common Law." SJC also informed the Tribunal that in a letter dated July 12, 2019, it had informed IQE that it would not pursue its previously-asserted unfair competition claim and would not pursue the LONGESST issue as a claim.
66.
On August 28, 2019, IQE submitted a responding letter in which it asserted that SJC had waived certain claims that were not specifically addressed or argued in SJC’s two Pre-Hearing Briefs. Each party submitted a brief reply email on August 29, 2019.
67.
On August 31,2019, the Tribunal informed the parties via email that it had considered the parties’ submissions of August 26 and 28 and declined to rule that SJC had waived any of the claims cited by IQE for failure to argue them in SJC’s Pre-Hearing Briefs. The Tribunal stated that the trade secrets to be addressed are those identified in the Briefs, and the witness statements and expert reports that SJC submitted, and the remedies sought are those addressed in SJC’s Pre-Hearing Brief on Remedies.
68.
On September 3, 2019, the Tribunal issued Procedural Order No. 6, which contained the parties’ procedural stipulations and the Tribunal’s directions concerning the conduct of the hearing to commence on September 4, 2019.
69.
The hearing on the merits was conducted on September 4-6 and 9-12, 2019, in New York, New York in the offices of Ropes & Gray. The following witnesses appeared and testified at the hearing:

SJC Fact Witnesses
Dr. Homan Yuen
Dr. Ting Liu
Mr. Michael Sheldon
Dr. Philip Dowd
Mr. Hamid Torabi

IQE Fact Witnesses
Dr. Andrew Nelson
Dr. Rodney Pelzel
Mr. Robert Yanka
Dr. Kalyan Nunna Dr. Gordon Horsburgh [Dr. Amy Liu was excused from appearing by agreement of the parties and approval of the Tribunal]

SJC Expert Witnesses
Dr. Seth Banks
Dr. David Jackrel
Dr. Matthew Lynde

TOE Expert Witnesses
Dr. Eugene Fitzgerald
Dr. Robert Vigil

70.
On September 21, 2019, the Tribunal issued Procedural Order No. 7 setting forth the timetable of post-hearing submissions by the parties. Set forth in Appendix A of Procedural Order No. 7 was a list of questions prepared by the Tribunal for the parties to address in their post-hearing briefs.
71.
On October 21, 2019, IQE submitted its Post-Hearing Brief ("IQE PostHB") and SJC submitted is Closing Brief ("SJC PostHB").
72.
On November 4, 2019, IQE submitted its Post-Hearing Reply Brief, ("IQE PostHRB"), and SJC submitted its Reply Closing Brief ("SJC PostHRB").
73.
On November 18, 2019, the parties submitted their Submissions on Costs. IQE submitted a Corrected Cost Submission on November 25, 2019. On December 2 & 3, 2019, the Tribunal requested certain additional information from the parties regarding their cost submissions, which the parties submitted on December 9, 2019.
74.
On December 17, 2019, the Tribunal formally closed the record of the proceedings.

X. The Tribunal’s Determination on Jurisdiction

75.
With the agreement of the parties, the Tribunal took up the question of its jurisdiction as a preliminary issue. After receiving the parties’ Joint Submission of July 24,2018, and convening a Case Management Conference with the parties on July 31, 2018, the Tribunal, with the parties’ consent, determined that it could resolve SJC’s jurisdictional challenge based on the existing record before the Tribunal, which included the briefs, declarations, exhibits, hearing transcripts, opinions and orders from the federal court litigation (the Chung Action and IQE Action) as well as the RFA, Response to RFA and other submissions in this arbitration.
76.
In the Response to RFA, SJC submitted that the Tribunal lacks jurisdiction over the dispute because the arbitration agreement was superseded with respect to the claims asserted in the RFA by later agreements that require resolution of the dispute in the United States District Court for the SDNY. The later agreements are five identical Employee Agreements signed by five IQE employees listed as inventors in the 396 Application.
77.
The first issue considered by the Tribunal was whether the Tribunal has the authority to determine its own jurisdiction in this case. The Tribunal concluded that the parties’ selection of the LCIA Rules in the WSA arbitration agreement constituted a clear and unmistakable intention to have the Arbitral Tribunal decide questions of arbitrability of the dispute, including the issue of whether a later agreement between the parties affected the arbitrability of the dispute. (Mem. Order ¶¶10-13).
78.
The second issue considered by the Tribunal was whether the Arbitral Tribunal has jurisdiction in this case. The Tribunal found that the claims at issue in the arbitration are disputes or differences falling squarely within the WSA’s arbitration agreement. With respect to SJC’s contention that the arbitration agreement in the WSA was superseded with respect to the claims in the RFA by the Employee Agreements’ submission to federal court jurisdiction, the fact that the Employee Agreements were executed after the WSA, by itself, was insufficient to establish that they supersede the WSA. For a later agreement to supersede an earlier agreement to arbitrate, the later agreement must demonstrate an intention by the parties to revoke their agreement to arbitrate disputes. Primex Int’l Corp. v. Wal-Mart Stores, Inc., 89 N.Y.2d 594, 657 N.Y.S.2d 385,679 N.E.2d 624 (1997). Here the Employee Agreements specifically provided that they supplemented the WSA, not superseded it. Moreover, the scope of the forum selection clause was narrow, limited to any proceeding to enforce the Employee Agreement, and there was no claim in this arbitration to enforce an Employee Agreement and no employee was a party to this arbitration. The Tribunal concluded that the arbitration clause in the WSA had not been superseded by the Employee Agreements’ forum selection clause, and denied SJC’s jurisdictional challenge. (Mem. Order ¶¶14-17).
79.
The Tribunal thus found that it has jurisdiction to hear and decide the claims set forth in IQE’s RFA. (Mem. Order ¶18).
80.
The Tribunal’s Memorandum Order on jurisdiction, dated September 12, 2018, is incorporated into and made part of this Final Award. It is appended hereto as Appendix A.

XI. The Wafer Supply Agreement

81.
There are a number of provisions of the WSA that are particularly relevant to the dispute. Those provisions are set forth below, in relevant part.
82.
The "Whereas" clauses of the WSA describe the parties’ arrangement in basic terms:

"WHEREAS, IQE is engaged, inter alia, in the design, development, manufacture and sale of various semiconductor device wafers, including foundry and manufacture of solar cell wafers; and

WHEREAS, Solar Junction is engaged in the design, development and sale of certain solar cells and related products; and

WHEREAS, Solar Junction wishes to be supplied with certain semiconductor wafers manufactured by IQE and IQE is willing to supply such wafers to Solar Junction."

Exhibit 2011, p. 1.

83.
Article 1.2 of the WSA defines "Confidential Information":

"1.2 ‘Confidential Information’ means all proprietary or nonpublic information disclosed by one party to another party in connection with this Agreement, whether in graphic, oral, written or electronic form, directly or indirectly, which information (a) is marked as ‘proprietary’ or ‘confidential’ or, if disclosed orally, is designated as confidential or proprietary at the time of disclosure, or (b) provided under circumstances reasonably indicating that it constitutes confidential and proprietary information. The terms and conditions of this Agreement shall constitute Confidential Information."

84.
Article 2.1 provides that IQE shall manufacture and SJC shall purchase Wafers, defined in Article 1.8 as "GaAs, Ge or Silicon substrates with the relevant epitaxial structures grown upon them to the agreed Specifications, from which solar Products can be manufactured":

"2.1 Purchase and Sale. Solar Junction shall purchase from IQE, and IQE shall sell to Solar Junction, the Wafers pursuant to the terms and conditions of this Agreement from which Solar Junction may produce Products. The Wafers may be manufactured and sold by IQE or any of its Affiliates and the purchase may be by Solar Junction or any of its Affiliates. Wafers purchased by Solar Junction may be used and/or distributed for any purpose in Solar Junction’s sole discretion."

85.
Article 2.2 provides that IQE shall be the exclusive supplier of Wafers to SJC and recognizes that IQE would devote significant resources by way of capital investment in equipment, investment of engineering, design and management expertise to develop foundry processes and techniques to produce the Wafers, and associated diversion of resources from other opportunities:

"2.2 Exclusivity. During the term of this Agreement, IQE shall be the exclusive provider of Wafers for Products distributed or sold by Solar Junction or Affiliates controlled by Solar Junction, or other persons who distribute or sell the Products pursuant to authority granted to them by Solar Junction or its Affiliates, subject to the conditions and limitations set forth in this Agreement. This exclusivity covenant is worldwide, and shall further apply to all external parties to whom Solar Junction may license the right to design or manufacture the Products that utilize the Wafers. Solar Junction and IQE mutually agree that the exclusivity covenant in this Agreement is reasonable and fair and adequate consideration exists to support such covenant, including that IQE will devote significant resources by way of capital investment in equipment, investment of engineering, design and management expertise to develop foundry processes and techniques to produce the Wafers, and associated diversion of resources from other opportunities."

86.
Article 5.1 sets forth confidentiality obligations of the parties:

"5.1 Confidentiality. Each party agrees, and agrees to cause its officers, directors, employees, attorneys, accountants, auditors and agents (collectively, "Representatives"), to maintain in confidence the Confidential Information it has received from another party, using the same degree of care to preserve the confidentiality of such Confidential Information that the party to whom such Confidential Information is disclosed would use to preserve the confidentiality of its own information of a similar nature and in no event less than a reasonable degree of care or a degree of care established by this Agreement. Except as authorized in writing by the affected party, none of the other parties shall at any time use or disclose or permit to be used or disclosed any Confidential Information of such party to any person, firm, corporation or entity, (a) except as may reasonably be required in connection with the performance of this Agreement by the parties or their Affiliates, and (b) except to the parties’ Representatives or Affiliates who are informed by the parties of the confidential nature of the information and are bound to maintain its confidentiality. The obligation not to use or disclose information under Section 5.1 hereof shall not apply to information that, (a) is acknowledged in writing (such acknowledgment not to be unreasonably withheld or delayed) by the affected party, or can otherwise be shown by the party desiring to treat such information as non-confidential, that it is generally available to the public other than as a result of disclosure made by the party desiring to treat such information as non-confidential, (b) is confirmed in writing by the affected party that the party desiring to treat such information as non-confidential may do so, or (c) is required to be disclosed pursuant to a governmental order or decree or other legal requirement, provided that the party required to disclose such information shall give the other parties prompt notice thereof prior to such disclosure and, at the request of the other parties, shall cooperate in all reasonable respects in maintaining the confidentiality of such information, including obtaining a protective order or other similar order. Nothing in this Section 5.1 shall limit in any respect any party’s ability to disclose information in connection with enforcement by such party of its rights under this Agreement; provided that the proviso of clause (c) in the immediately preceding sentence shall apply to the party desiring to disclose such information. The obligations of the parties set forth in this Section 5.1 with respect to the protection of Confidential Information shall remain in effect until the later of (a) five (5) years after the date of disclosure and (b) two (2) years after the termination of this Agreement."

87.
Article 5.2 deals with SJC’s Dilute Nitride Trade Secrets:

"5.2 Dilute Nitride Trade Secrets. Solar Junction possess certain trade secrets regarding certain processes and compositions related to dilute nitride materials to which IQE will be given access in connection with the performance of services under this Agreement. The parties agree and acknowledge that improper disclosure of Solar Junction’s dilute nitride trade secrets could cause irreparable harm to Solar Junction. Accordingly, IQE shall at all times maintain stringent confidentiality procedures in respect of such trade secrets, including that all IQE Representatives exposed to Solar Junction’s trade secrets in respect of dilute nitride processing shall enter into separate non-disclosure agreements in a form reasonably satisfactory to Solar Junction and which name Solar Junction as a third party beneficiary of such confidentiality covenants. IQE further covenants on behalf of itself and its Affiliates that it shall not utilize Solar Junction’s dilute nitride trade secrets or any associated patents in any products designed, manufactured or sold by IQE other than the Wafers sold to Solar Junction and its permitted external licensees hereunder, nor will IQE offer foundry services that enable other persons unaffiliated with IQE to grow dilute nitrides using Solar Junction’s trade secrets or patents. Moreover, in order to avoid any disputes regarding the foregoing, IQE agrees that it shall not use Solar Junction’s Dilute Nitride Technology to grow dilute nitrides by MBE for use in solar cell applications. Solar Junction’s Dilute Nitride Technology is defined for this purpose as the use of any epitaxial layer in a solar cell that contains nitrogen and any one or more of gallium, indium and/or arsenic, wherein the mole fraction of nitrogen is greater than 0% and less than 15%. A confidential schedule of Solar Junction trade secrets will be provided by Solar Junction to IQE Representatives involved in the epitaxial manufacture of solar cells pursuant to this Agreement and who have executed the separate NDA as provided above. IQE shall maintain control in locked condition and an inventory of all written copies of such list and all writings that disclose any details of Solar Junction’s trade secrets, and upon the request of Solar Junction after termination or expiration of this Agreement will either return or destroy (including certification by IQE of such destruction) all copies of such lists and writings. For the avoidance of doubt, Solar Junction acknowledges the IQE has preexisting expertise in growing dilute nitrides by MBE for applications other than solar cells and nothing in this Agreement is intended to preclude IQE from using that expertise to manufacture dilute nitride structures for non-solar applications. A confidential schedule of IQE trade secrets will be provided by IQE to Solar Junction Representatives who have executed the separate NDA as provided above. Solar Junction shall maintain control in locked condition and an inventory of all written copies of such list and all writings that disclose any details of IQE’s trade secrets, and upon the request of IQE after termination or expiration of this Agreement will either return or destroy (including certification by Solar Junction of such destruction) all copies of such lists and writings."

88.
Article 5.3 describes the license granted to IQE by SJC:

"5.3 License Grant. Subject to the terms and conditions of this Agreement, Solar Junction grants IQE a non-exclusive, non-transferable, royalty-free right and license to all Intellectual Property (whether arising from patents, copyrights, trade secrets or otherwise) of Solar Junction or its Affiliates necessary or useful in order to manufacture Wafers on behalf of Solar Junction, the scope of such license limited to permit the manufacture and sale such Wafers to Solar Junction or its designees. Subject to the terms and conditions of this Agreement, Solar Junction also grants IQE a non-exclusive, non-transferable, royalty-free right and license to reproduce any documentation provided by Solar Junction hereunder to enable IQE to manufacture the Wafers on behalf of Solar Junction. All such documentation will only be provided to those who need to know and IQE shall maintain control and inventory of all copies of such information including limiting access to all paper and electronic copies only to necessary personnel. IQE shall have the right to grant sublicenses to its Affiliates to the extent necessary to perform its obligations hereunder, subject in each case to the written agreement of the Affiliate to be bound by the obligations and limitations of this Agreement restricting use and disclosure of Solar Junction Intellectual Property. Solar Junction shall be a third party beneficiary to that Agreement. Solar Junction confirms that as of the date hereof, Solar Junction has not granted any licenses of the Intellectual Property that permits any other person to manufacture Wafers for the Products to any other person."

89.
Article 5.4 addresses SJC’s ownership of certain designs, documentation and intellectual property:

"5.4 Solar Junction Ownership. Solar Junction will own all right, title and interest in and to: (i) the designs and other ownership rights of Solar Junction embedded in the Products as of the date hereof, and any other documentation that Solar Junction provides IQE pursuant to this Agreement, and (ii) any Intellectual Property developed by its employees or contractors after the date hereof without involvement or assistance of IQE or its employees or contractors."

90.
Article 5.6.1 addresses the ownership of epitaxial wafer process technology jointly developed by SJC and IQE during the term of the WSA:

"5.6.1 Epitaxial wafer process technology that is jointly developed during the term of this Agreement by the employees or contractors of both Solar Junction and IQE shall be owned jointly and each party shall hold and maintain full rights to use such Intellectual Property, but without right to assign or license to any person unaffiliated with such owner other than with prior written consent of the other owner, except for acquisition of Solar Junction or IQE. In the case that one of the parties is acquired, ownership of the acquired party’s Intellectual Property may pass to the acquirer without written consent of the other owner. The foregoing restriction on assignment and licensing of such jointly developed Intellectual Property shall continue after termination of this Agreement unless such termination of this Agreement is due to an event or circumstance described in Section 4.2.2. or 4.2.3, in which case only the insolvent or breaching party shall continue to be bound by such restrictions."

91.
Article 5.6.2 addresses other new technology or intellectual property rights not covered by Article 5.6.1:

"5.6.2 For all other new technology or Intellectual Property rights not described in Section 5.6.1 intended to be jointly developed by the employees or contractors of both Solar Junction and IQE, the parties will enter into a separate written development agreement to address the terms and conditions of such development work, and the resulting ownership and licenses applicable to any Intellectual Property rights created as a result."

XII. The Claims and Defenses of the Parties

A. Claimant's Claims

92.
In the RFA, Claimant IQE requests (1) a determination that it did not misappropriate SJC’s trade secrets, and (2) a determination that IQE has not committed any breach of its WSA obligations alleged by SJC. (RFA ¶¶36-38). SJC’s allegations of misappropriation and breach of contract were set forth in its March 16, 2017 letter to IQE. IQE’s claim is for declaratory relief; it does not seek monetary relief (except for its costs in this arbitration). (RFA ¶40).
93.
In the Response to the RFA, Respondent SJC challenged the Tribunal’s jurisdiction. In addition, SJC indicated that it had counterclaims which it "may assert" if the arbitration proceeding ultimately were to go forward under the WSA. (Resp to RFA ¶25). Following the Tribunal’s decision on jurisdiction, the parties agreed that SJC would file a Statement of Case asserting its claims, recognizing that the substantive claims in this case belong to SJC, to be followed by a Statement of Defense filed by IQE.

B. Respondent’s Claims

94.
In its SOC, SJC alleges that its trade secrets identified in SJC’s September 14, 2018, Identification of Trade Secrets were improperly used by IQE for its own benefit and disclosed in IQE’s 396 Application. According to SJC, those actions constituted (1) a breach of the WSA, (2) unfair competition and (3) misappropriation of trade secrets under the Defend Trade Secrets Act ("DTSA"), 18 U.S.C §1836 and (to the extent necessary) New York common law.2 (SOC ¶16).
95.
In addition, SJC also alleged that IQE misused SJC’s dilute nitride technology in IQE’s participation in a project to develop a solar cell for use in space satellites built for the European Space Agency (the "LONGESST project") and improperly disclosed SJC’s trade secrets in the filing of an international patent application (PCT application WO2018/078348) in connection with that project in violation of WSA Section 5.2. (SOC ¶¶53-58).
96.
SJC seeks to recover damages under the DTSA, 18 U.S.C § 1836(b)(3)(B), in the amount of $45.1 million. (SOC ¶¶59-61). Alternatively, SJC seeks to recover damages based on IQE’s unjust enrichment, including "avoided costs," in the amount of $45.1 million. (SOC ¶¶62-65). Alternatively, SJC seeks a hypothetical lump sum royalty "agreed" to by SJC and IQE. (SOC ¶66).
97.
SJC also seeks exemplary damages and attorneys’ fees under the DTSA 18 U.S.C. §1836(b)(3)(C). (SOC ¶67). SJC seeks equitable remedies consisting of enjoining IQE from further use of SJC’s trade secrets, requiring the return of that information and anything derived from it, and requiring the assignment to SJC of relevant IQE patents and patent applications. (SOC ¶68).
98.
Subsequent to the SOC, SJC informed IQE and the Tribunal that SJC would not pursue its unfair competition claim or its claim based on the LONGESST project. (See ¶65, supra).

C. Claimant's Defenses

99.
In its SOD, IQE contends, first, that the trade secrets identified by SJC in its Identification of Trade Secrets are not genuine trade secrets and thus are not protected by the DTSA or New York law. (SOD ¶¶77-101). Second, IQE contends that it developed the GEN2000 processes used for the SJC solar cell, and thus those processes were not SJC trade secrets. (SOD ¶¶l02-107). Third, IQE contends that it did not misappropriate any of SJC’s trade secrets: that it did not use any of SJC’s trade secrets in developing the 339 Patent, and that the 339 Patent did not disclose SJC’s trade secrets. (SOD ¶¶l08-123). Fourth, IQE contends that it did not breach any of the terms of the WSA. (SOD ¶¶133-136). Finally, IQE contends that SJC is not entitled to any of the remedies it seeks. IQE argues that SJC is not entitled to damages because IQE did not breach the WSA or misappropriate SJC’s trade secrets. It also argues that SJC’s calculation of damages is flawed and unsubstantiated. (SOD ¶¶137-143). As for exemplary damages and attorneys’ fees under the DTSA, IQE contends that SJC’s conclusory allegations do not satisfy the requirements of the DTSA or New York law. (SOD ¶144). As for equitable relief, IQE contends that SJC failed to establish the requirements for equitable relief. (SOD ¶145).
100.
In addition to the declaratory relief previously pleaded by IQE, it requests its arbitration costs and reasonable attorneys’ fees incurred in this arbitration in accordance with LCIA Rules 28.2-28.4. (SOD ¶147-149).

D. The Parties' Further Delineations of Their Claims and Defenses

101.
Subsequent to submitting the SOC and SOD, the parties exchanged requests for the production of documents and produced documents. Thereafter, the parties submitted pre-hearing briefs on liability and damages in which they further delineated their legal positions. In addition, the parties submitted fact witness statements and expert reports that provided further factual details to their claims and defenses.
102.
The scope of SJC’s misappropriation claim was narrowed to the contention that IQE used six of SJC’s trade secrets in developing the dilute nitride that is described in the 339 Patent. (See Trade Secret Table, Ex. 3006). In other words, SJC alleges that IQE used SJC’s trade secrets as a platform for its own development work on dilute nitrides. (SJC PreHB, p. 29 et seq.; SJC PostHB, pp. 22-54). SJC’s breach of contract claim was narrowed to the contention that IQE disclosed three of SJC’s confidential trade secrets in its"339 Patent in violation of Article 5.1 of the WSA. (SJC PostHB, pp. 64-65). The trade secrets that SJC alleges were misappropriated are described in section XIII.G, infra, and the trade secrets that SJC alleges were improperly disclosed are described in section XIII.H, infra.
103.
The scope and emphasis of IQE’s defenses were also developed in IQE’s written submissions responding to SJC’s submissions. IQE’s leading contention is that the epitaxial wafer processing technology that IQE used to develop its 339 Patent dilute nitride was jointly developed by IQE and SJC, each contributing its own expertise and experience, in transferring SJC’s technology and processes from a GEN200 reactor to a GEN2000 reactor. (IQE PreHB, p. 8). Relying on Article 5.6.1 of the WSA, IQE argues that this jointly developed technology is jointly owned by IQE and SJC, and each of them has full rights to use it. (IQE PreHB, pp. 17-19). Alternatively, IQE contends that SJC’s alleged trade secrets are not in fact trade secrets because SJC failed to take reasonable measures to guard the secrecy of its alleged trade secrets (IQE PreHB, pp. 26-29), and because they were all publicly known, were readily ascertainable, and/or lacked any commercial benefit by reason of their secrecy. (IQE PreHB, pp. 29-38). With respect to SJC’s improper disclosure claim, IQE argues that the alleged trade secrets disclosed in the 339 Patent were publicly known and not trade secrets. (IQE PreHB, pp. 38-39).
104.
SJC’s claimed remedies are set forth in it Pre-Hearing Brief on Remedies and in the Expert Report of Dr. Matthew R. Lynde. SJC seeks compensation under the DTSA for IQE’s misappropriation of its trade secrets under three separate alternative approaches: (1) for actual harm caused by the misappropriation in the amount of $28.5 million, measured as the value of its research and development expenditure devoted over several years to the discovery of key dilute nitride manufacturing process trade secrets; (2) for unjust enrichment to IQE caused by the misappropriation in the amount of $28.5 million, based on IQE not having to spend an equivalent amount on research and development to discover the SJC trade secrets; or (3) a reasonable royalty for the disclosure or use of the trade secrets, calculated as an upfront payment of $28.5 million for access and a running royalty of 10% on future sales of products using the trade secrets, based on a hypothetical negotiation between IQE and SJC prior to the misappropriation. (SJC Dmg PreHB, p. 2; Expert Report of Matthew R. Lynde ("Lynde") ¶14). SJC also seeks an injunction against further use or disclosure of its trade secrets (recognizing that it would not be entitled to future royalties if IQE is enjoined from using its trade secrets) and an order requiring IQE to assign the 339 Patent to IQE. (SJC Dmg PreHB, pp. 9-10).
105.
IQE opposes SJC’s claimed remedies on numerous grounds in its Pre-Hearing Brief on Quantum of Damages and in the Expert Report of Dr. Robert L. Vigil. According to Dr. Vigil. SJC’s three alternative remedies are based on a single calculation of SJC’s supposed research and development ("R&D") expenses from 2008 to 2011 that is flawed because it includes all of SJC’s R&D and salary expenses for the period even though the six trade secrets that SJC claims were misappropriated are only a small subset of the intellectual property produced by SJC in that period. (IQE Dmg PreHB. pp. 4-5; Expert Report of Robert L. Vigil ("Vigil") ¶¶75-84). With respect to the calculation of actual harm. IQE argues that SJC’s R&D costs do not establish the actual value of the trade secrets at the time of misappropriation; only the market can do that and the total value of SJC as a company was only $6 million in 2014 when it was acquired for that price by a third party in an arm's length transaction. (IQE Dmg PreHB. pp. 6-7). With respect to unjust enrichment. IQE contends there is no basis to assume its cost of developing SJC’s trade secrets would be the same as SJC’s. as Dr. Lynde assumes. (IQE Dmg PreHB. p. 8). With respect to a reasonable royalty, IQE argues that Dr. Lynde relied on erroneous data in reaching his conclusions. (IQE Dmg PreHB. pp. 8-9). In addition. IQE criticizes Dr. Lynde for failing to apportion damages among the six trade secrets, making it impossible to calculate damages if the Tribunal finds that fewer than all six trade secrets were misappropriated. (IQE Dmg PreHB. pp. 5-6). Finally, IQE contends that SJC is not entitled to exemplary damages under 18 U.S.C. §1836(b)(3)(c) because IQE's conduct was not "willful and malicious," and SJC is not entitled to equitable remedies because it failed to show that the requirements for injunctive relief (such as irreparable harm) have been met. (IQE Dmg PreHB, pp. 9-10).

XIII. Analysis and Findings

A. The WSA and the License Granted to IQE by SJC

106.
The WSA describes the basic arrangement between SJC and IQE. IQE is engaged in the design, development, manufacture and sale of semiconductor device wafers, including the foundry and manufacture of solar cell wafers, and SJC is engaged in the design, development and sale of solar cells. SJC wished to be supplied with certain semiconductor wafers manufactured by IQE, and IQE was willing to supply them. (Ex. 2011, WSA "Whereas" clauses, p.l).
107.
More specifically, the parties agreed that IQE would manufacture wafers (GaAs, Ge or Silicon substrates with the relevant epitaxial structures grown on them meeting SJC’s specifications) and sell them to SJC pursuant to the terms of the WSA, and SJC would use them in its products. (Id. Arts. 1.8, 2.1). IQE is the exclusive provider of wafers for products distributed and sold by SJC, and it was understood that IQE would devote significant resources in the nature of capital investment in equipment, and investment of engineering, design and management expertise, to develop foundry processes and techniques to produce the wafers, and that IQE would divert resources from other opportunities, in consideration for the exclusivity. (Id. Art. 2.2). SJC, for its part, granted IQE a non-exclusive, non-transferable, royalty-free right and license to all intellectual property (whether arising from patents, copyrights, trade secrets or otherwise) of SJC necessary or useful in order to manufacture the wafers for SJC (subject to the terms and conditions of the WSA). (Id. Art. 5.3).

B. SJC’s Development of the Technologies and Processes To Grow Dilute Nitride Semiconductors

108.
In 1996, a new class of semiconductor materials called "dilute nitrides" was discovered that seemed promising to increase the efficiency and lower the cost of certain types of photovoltaic devices. (Yuen ¶4). Comprising gallium, indium, nitrogen, arsenic and sometimes antimony, these compounds are often referred to as GaInNAs or GaInNAsSb. Because the bandgap energy of dilute nitride material can be tuned so as to allow the more efficient conversion of various portions of the light spectrum, these compounds were recognized as potentially revolutionary for lasers, photodetectors and solar cells. Several growth techniques have been employed to grow dilute-nitridc films, with molecular beam epitaxy ("MBE") being the most successful. (SJC PreHB, pp. 7-9.)
109.
Homan Yuen and several other post-graduate student colleagues working in the laboratory of Professor James Harris at Stanford University’s Department of Electrical Engineering in the early 2000s, investigated the dilute nitride alloy GalnNAsSb for use in laser diodes. After developing sufficient epitaxy experience to deposit reasonably good quality GalnNAsSb for making laser devices, they turned their attention to using the epitaxy process technology to make dilute nitride material for use as the bottom subcell in a multi-junction solar cell.3 Their material performed sufficiently well that Stanford, at the request of Prof. Harris, filed for a patent for their work. (Yuen ¶¶2, 8-9).
110.
After Dr. Yuen received his Ph.D. from Stanford, he, Dr. Michael Wicmer and Dr. Vijit Sabnis, along with Prof. Harris, founded SJC in July 2007 with funding from three venture capital firms and a license from Stanford to its patent application4 to further develop the process technology for making GalnNAsSb semiconductors, with the focus on commercializing multi-junction solar cells in which dilute nitride could increase the conversion efficiencies over existing devices. (Yuen ¶10). SJC decided to use MBE rather than other epitaxial processes such as metal organic chemical vapor deposition ("MOCVD"). (Yuen ¶16).
111.
Between 2007 and 2011, SJC developed processes using a Veeco Gen200 MBE reactor to perfect its dilute nitride for use in a solar cell. Among other things, SJC solved the "nitrogen penalty" problem that degraded performance of dilute nitrides and was seen as a barrier to developing more efficient dilute nitride materials. (Yuen ¶¶11-23). SJC’s work paid off, and by late 2011 it was ready to go to market with its first dilute nitride product, a multi-junction solar cell. It issued a press release publicizing that it had achieved a world record for conversion efficiency. (Yuen ¶24; Ex. 1058).
112.
SJC lacked the capital necessary to expand its manufacturing capacity for commercial production of wafers for solar cells. By this point, it had raised and spent nearly $60 million. SJC began to consider companies that could manufacture wafers for its solar cells. (Yuen ¶28). One of the companies it approached was IQE.
113.
One of the important decisions SJC made as it planned to commercialize its dilute nitride technology was to patent aspects of its technology that "would be easy to reverse engineer," such as the composition of the various materials, but to keep its processes as trade secrets rather than patent them. (Yuen ¶¶25-26).

C. IQE's Experience in Manufacturing Dilute Nitride Products.

114.
IQE is the leading global supplier of advanced compound semiconductor wafer products and services. It has extensive experience dating to the early 2000s in a broad range of production methods and materials, including growing dilute nitride by both MBE and MOCVD. IQE has a long history of collaboration on such projects with universities and companies around the world, including Singapore’s Nanyang Technological University, Columbia University, the Air Force Research Lab and Penn State University. (Nelson ¶22). IQE has the largest fleet of MBE reactors in the world, and its Pennsylvania facility was the site of the first commercial installation of a Veeco GEN2000 MBE reactor. (Nelson ¶20, 23). IQE employs more than 700 employees, including more than sixty Ph.D.-level scientists who work on epitaxial material science development. (Nelson ¶21).

D. The Work of IQE and SJC To Transfer SJC's Technology and Process from a GEN200 to a GEN2000.

115.
As contemplated by the WSA, IQE and SJC worked together to transfer the technology and processes that SJC had developed for a Veeco GEN200 MBE reactor to the larger GEN2000 reactor. (Nelson ¶6; Witness Statement of Gordon Horsburgh, dated June 10, 2019 ("Horsburgh") ¶¶22-30; Witness Statement of Rodney Pelzel, dated June 10, 2019 ("Pelzel") ¶¶34-35, 41-59; Witness Statement of Kalyan Nunna, dated June 10, 2019 ("Nunna") ¶¶7,31-39). The GEN200 is a smaller scale reactor well-suited for the kind of experimental work in which SJC was engaged in developing processes to grow dilute nitride material. To produce semiconductors on the larger scale that SJC envisioned, it was necessary to use the larger GEN2000.
116.
SJC planned to sell a multi-junction, three-layer solar cell consisting of "J1", "J2", and "J3" layers. (Yuen ¶37; Horsburgh ¶29; Nelson ¶40). With its GEN200, SJC had grown all three junctions together, using a "dual-chamber" system to form the J3 (dilute nitride) layer in a first chamber, and the top two layers (JI and J2) in a connected second chamber. To avoid exposing a wafer to air, the dual-chamber system passed the J3 wafer between the two chambers under vacuum. (Horsburgh ¶29; Nelson ¶¶40-41). SJC contemplated using the same two-chamber set-up on the GEN2000, but IQE, given its experience and expertise with large-scale production reactors, recognized that a dual-chamber GEN2000 system would not be cost-effective to operate in production and instead proposed configuring two separate, stand-alone GEN2000 reactors. (Horsburgh ¶29; Nelson ¶40). Because this meant that the J3 structure would be exposed to air as it was brought to the reactor growing the J1/J2 layers, IQE recommended growing a gallium-arsenide capping layer to prevent damaging air exposure. (Nelson ¶41; Expert Report of Eugene A. Fitzgerald, dated June 10,2019 ("Fitzgerald") ¶¶67-68).
117.
MBE reactors are very complex, and many variables have to be controlled to grow dilute nitride wafers for use in semiconductors successfully. The processes and configurations that SJC had developed to grow wafers on a GEN200 would not work on a GEN2000 and had to be modified substantially for the larger reactor. (Fitzgerald ¶¶54-60). IQE and SJC worked together to develop the processes for growing dilute nitrides on IQE’s GEN2000s. (Para. 115, supra; Witness Statement of Robert Yanka, dated June 10, 2019 ("Yanka") ¶¶16-39; Fitzgerald ¶¶72-74).
118.
Between 2012 and 2014, IQE personnel, including Drs. Horsburgh and Pelzel, worked to devise the configurations of the GEN2000 reactors to produce wafers meeting SJC’s specifications. As part of this effort, IQE, with input from SJC, developed, implemented and tested configurations of MBE reactor sources, [REDACTED] (Horsburgh ¶¶31-43; Pelzi ¶¶39-65) [REDACTED]
119.
The processes developed for the GEN2000 included every aspect of the growth process, [REDACTED] Yanka ¶¶26-32; Fitzgerald ¶74).
120.
The collaboration between IQE and SJC was successful. In mid-2013, approximately nine months after IQE began growing dilute nitride wafers on the GEN2000, SJC "qualified" IQE’s equipment and processes. (Ex. 2297; Nelson ¶¶61-62; Pelzel ¶69; Yanka ¶18; Nunna ¶38). Dr. Yuen wrote to Dr. Nelson that SJC’s employees, "along with the engineers from NC [IQE’s facility in North Carolina] have done a great job in completing the process transfer as well as making sure the wafers are as uniform as possible," and that, "with some slight optimizations and improvement," the wafers produced by IQE’s processes would be "a good [as] or even better" than SJC’s. (Ex. 2013). Shortly thereafter, IQE produced wafers that exceeded SJC’s previous record for multi-junction solar cell efficiency. (Ex. 2012; Nelson ¶61-62; Pelzel ¶69; Yanka ¶18; Nunna ¶38).5 Dr. Vijit Sabnis, SJC’s then-CEO, stated:

"Breaking a World Record is a major achievement, but improving on our most recent record using high-volume production equipment produced in conjunction with our manufacturing partner IQE, and Solar Junction’s fabrication line in Sunnyvale, CA, is dramatically more significant. The result is a testament to our close partnership with IQE."

Ex. 2012.

E. The Lack of Commercial Success of SJC’s Solar Cells

121.
Although SJC succeeded in producing highly efficient solar cells using the dilute nitride wafers manufactured by IQE, SJC’s solar cells were not a commercial success. Concentrator photovoltaic ("CPV") solar cells like those produced by SJC rely an optical equipment that can concentrate incoming sunlight and a tracking system to follow the movement of the sun to maintain that concentrating effect. (Nelson ¶65; Vigil ¶38; Ex. 2252, p. 3). CPV solar cells generally require costlier materials and manufacturing techniques, which make them more expensive to manufacture than silicon and other PV cells. (Vigil ¶38; Ex. 2252, p.3).
122.
Despite being relatively expensive to produce, there was hope among some in the solar industry that the improved efficiencies of CPV solar cells could offer an attractive value proposition for use in solar farms over less expensive silicon solar PV cells, which were less expensive to manufacture but were less efficient. (Vigil ¶95; Nelson ¶66). However, that optimism faded as demand for CPV cells dropped substantially, caused, in part, by the precipitous decline in prices for competing silicon PV cells due to global competition and Chinese industrial policy. (Vigil ¶96). The average price of silicon solar cells declined from $1.61 in Q4 2010 to $0.31 in Q4 2012, an 81% drop in two years. (Vigil ¶96 and Appendices 5 and 6). CPV companies found it increasingly difficult to compete with these low prices. (Vigil ¶96). CPV solar cells represented approximately 0.25% of installations in the global marketplace for solar PV cells in 2014. (Vigil ¶38; Ex. 2254, p. 1). As Dr. Nelson testified, SJC’s technology could not compete cost-effectively in the marketplace for terrestrial solar power generation, "and there is no reason to think that it will be able to do so with this product in the foreseeable future." (Nelson ¶66.)

F. IQE’s Development of a New Long-Wavelength Photodetector and the 339 Patent

123.
By 2015, IQE had received few orders from SJC, and IQE’s GEN2000 reactors dedicated to producing wafers for SJC, costly to acquire and costly to maintain, were idle. (Nelson ¶84; Pelzel ¶71; Yanka ¶¶39-40; Nunna ¶40). The WSA required IQE to manufacture wafers to SJC’s specifications upon the receipt of orders during the term of the WSA, so IQE had to have the reactors configured and ready to produce wafers. (Ex. 2011, WSA Arts. 2.5.2, 2.6.1). In an effort to put the reactors to a productive use while retaining IQE’s ability to fulfill orders from SJC if any were received, IQE’s CEO, Dr. Nelson, instructed the IQE R&D team to find uses for the reactors for R&D work that could lead to commercial opportunities but without breaching their contractual obligations to SJC. (Nelson ¶84; Pelzel ¶¶71-72; Yanka ¶¶40-41; Ex. 2029). In response, IQE’s researchers focused their efforts on developing a long-wavelength photodetector technology. (Nelson ¶84; Ex. 2029). Specifically, IQE targeted a low band-gap of 0.8 eV for the photodetector in order to detect infrared wavelengths of 1.55 microns, commonly used in fiber optic communications (and not solar cells). (Yanka ¶45). IQE selected as a starting point for its experimentation certain growth conditions from a "high growth rate J3" or "high throughput J3" recipe that IQE had developed to grow wafers on its GEN2000 reactors, but which SJC declined to use in the joint project. (Yanka ¶¶29, 38, 48; Nunna ¶42; Fitzgerald ¶¶78-79).
124.
Using conditions and processes developed by IQE and SJC for the GEN2000 as the starting point, IQE experimented at length with various growth conditions and parameters and ended up with conditions different from those used in the production of wafers under the WSA. (Yanka ¶¶40-72; Nunna ¶¶40-49; Pelzel ¶¶71-82; Fitzgerald ¶¶75-82; IQE PreHB pp. 12-13). In its R&D, IQE used one of its GEN2000 reactors configured to produce wafers for SJC. (Yanka ¶41; Tr. 1363-64 (Nelson), 1550-52 (Pelzel)).
125.
Through this process of investigation and experimentation, IQE made the advances claimed in its 339 Patent. The advances included the identification of using specific indium-to-antimony flux ratios in the growth of thin films of dilute nitride to form photodetectors. (See Ex. 1003 at col. 10:25-35; IQE PreHB, p. 13). This long-wavelength photodetection technology was the subject of IQE’s 396 Application and the 339 Patent.

G. The Trade Secrets Alleged To Have Been Misappropriated

126.
The trade secrets that SJC alleges were misappropriated by IQE were technology and processes developed by SJC to make an alloy having sufficient nitrogen to achieve a useful bandgap in the range below 1.0 eV and with sufficient thickness to be used as an optical absorber for solar cells. (SJC PostHB, p. 22). While SJC has stressed the importance of its trade secrets as "an integral part of the larger process responsible for its technological breakthrough" (Id., p. 24) in developing a dilute nitride semiconductor for solar cells, in particular SJC has identified six specific asserted trade secrets that it claims were used improperly by IQE in developing the material described in IQE’s 339 Patent:

[REDACTED]

127.
Article 5.2 of the WSA required SJC to provide IQE with a schedule of the trade secrets that SJC disclosed to IQE in connection with performance under the WSA. It is essentially undisputed that SJC did not provide the required schedule, at least prior to the work on the 339 Patent. (Tr. 746-47 (Dowd), 1222 (Torabi); SJC PreHB, pp. 5-6; IQE PostHB, p. 23). Testimony by SJC’s witnesses at the hearing revealed that SJC maintains a detailed schedule of its intellectual property, including trade secrets, in the form of a spreadsheet containing detailed information and links to documents. (See Tr. 720-35 (Dowd); Tr. 1164-65 (Torabi)). SJC did not provide this list of trade secrets, or even a portion of it, to IQE. (Tr. 771 -72 (Yuen)). SJC points out that Article 5.2 of the WSA also required IQE to provide to SJC a schedule of its trade secrets provided to SJC, and that IQE also failed to provide such a schedule. Dr. Nelson testified that, given the nature of the technology and the advanced state of the art, IQE did not have any trade secrets relevant to the work under the WSA. (Tr. 1368). In any event, IQE is not claiming misappropriation of its trade secrets in this arbitration.
128.
Rather than provide IQE with a "confidential schedule" of SJC’s trade secrets, SJC used a cover sheet on all documents that it provided to IQE identifying them as containing trade secrets and confidential information without identifying what in the documents constituted trade secrets. (SJC PreHB, p. 6; Witness Statement of Dr. Ting Liu, dated May 6, 2019 ("T. Liu") ¶8; Yuen ¶36). (See Ex. 1050 containing a cover sheet stating: "This Document Contains Trade Secrets and Confidential Information That Are the Property of Solar Junction Company."). For electronic documents, SJC employed a similar "cover sheet" notification. (Yuen ¶38). SJC’s trade secret designations were vastly overinclusive, covering materials that obviously were not trade secrets and, in some cases, covering information that IQE had originally generated. (Nelson ¶59; Pelzel ¶40).

H. The Trade Secrets Alleged To Have Been Disclosed in the 339 Patent

129.
SJC also contends that IQE misappropriated some of its trade secrets by disclosing them to the public in its 339 Patent. (SJC PostHB, pp. 54-55). Specifically, SJC claims that the 339 Patent discloses the following "aspects of SJC’s trade secrets":

[REDACTED]

(SJC PostHB, p. 55).

130.
Nos. 1, 3,4 and 5 are aspects of SJC’s Trade Secret No. 3. No. 2 is an aspect of SJC’s Trade Secret No. 4, and No. 6 is an aspect of SJC’s Trade Secret No. 6.

I. Jointly Developed Epitaxial Wafer Process Technology

131.
The central dispute of contract interpretation in this arbitration is the meaning of WSA Article 5.6.1, which provides in relevant part:

"Epitaxial wafer process technology that is jointly developed during the term of this Agreement by the employees or contractors of both Solar Junction and IQE shall be owned jointly and each party shall hold and maintain full rights to use such Intellectual Property, but without right to assign or license to any person unaffiliated with such owner other than with prior written consent of the other owner, except for acquisition of Solar Junction or IQE."

132.
IQE contends that it jointly developed and, therefore, jointly owns the processes for the manufacture of wafers under the WSA and that it could use these processes for the project that resulted in the 339 Patent. It argues that Article 5.6.1 confers on both parties the right to use the technology "regardless of the degree to which it ‘includes’ or ‘incorporates’ or has an ‘ancestral link’ to any process technology that SJC or IQE owned or used pre-WSA and contributed to the joint development." (IQE PostHRB, p. 4).
133.
SJC disputes this interpretation on several grounds. First, it argues that this reading of Article 5.6.1 would be inconsistent with various other sections of the WSA, in particular, Articles 4.3, 5.2, 5.3 and 5.4, discussed below. In particular, SJC says, "whatever [Article 5.6.1] means cannot include technology or Intellectual Property owned by SJC before the WSA, because § 5.4 states that SJC continues to own it." (SJC PostHB, p. 7-8). Second, its witnesses maintained that the work that IQE performed was merely transferring the technology that SJC developed, and was not "development" within the meaning of Article 5.6.1, and that the clause must be taken to refer to work on other, future projects that the parties envisioned. (Tr. 327-29 (Bank), 528-29 (T. Liu), 778-87 (Yuen), 1198-99 (Torabi)). Third, SJC says that reading Articles 5.6.1 and 5.6.2 of the WSA together indicates that the technology referred to in Article 5.6.1 must be "new" technology—because Article 5.6.2 refers to "other new technology" —and technology that is based on technology that has been developed by someone else is not "new." (SJC PostHB, p. 15-16).
134.
The Tribunal agrees with IQE. By its terms, "[e]pitaxial wafer process technology" refers to any technology for the process of epitaxial creation of wafers, which quite accurately captures what IQE was engaged to do. Taking first the language of Article 5.6, there is no basis in the contract for the suggestion that what IQE was engaged to do was not "development" within the meaning of Article 5.6.1. To the contrary, the WSA refers to that work as development in at least two other places:

Article 2.2, which provides IQE with the exclusive right to be SJC’s source of Wafers for Products, recites that "IQE will devote significant resources by way of capital investment in equipment, investment of engineering, design and management expertise to develop foundry processes and techniques to produce the Wafers" (emphasis added).

Article 2.3 provides, "The parties will use best efforts promptly to develop and finalize Specifications for the Wafers consistent with Solar Junction’s Product specifications and requirements." (Emphasis added). ("Specifications" is defined in Article 1.7 to refer to the manufacturing process that IQE was hired to work on).

135.
SJC argues that "new" technology cannot refer to technology that is based on prior work by SJC. But Article 5.6 clearly distinguishes between "[e]pitaxial wafer process technology that is jointly developed" and "other new technology... not described in Article 5.6.1 intended to be jointly developed by the employees or contractors of both Solar Junction and IQE," as to which the parties would enter into a separate development agreement. The latter work apparently envisioned work on products not covered by the WSA, and, as indicated below, the parties did in fact enter into a subsequent agreement to address one such product. Thus, the work that is contemplated by Article 5.6.1 was precisely the work to develop the GEN2000 processes. In the terminology of the WSA, that was "new" epitaxial wafer technology. There is nothing about the ordinary meaning of the word "new" that prevents it from referring to work or inventions that are based on prior work. Indeed, in a sense, all inventions start from preexisting technology.
136.
IQE’s reading of Article 5.6.1 is not inconsistent with Articles 4.3, 5.2, 5.3 or 5.4. Taking Article 5.3 first, that section provides that SJC was granting IQE a license to use all SJC’s Intellectual Property "necessary or useful in order to manufacture Wafers on behalf of Solar Junction, the scope of such license limited to permit the manufacture and sale of such Wafers to Solar Junction or its designees." (Emphasis added). But Article 5.3 is expressly qualified by the other provisions of the WSA: it begins, "Subject to the terms and conditions of this Agreement...." So if the terms of Article 5.6.1 grant IQE the right to use SJC’s Intellectual Property as a result of that Intellectual Property being contributed to the joint development, the license is subject to that right. (The term "Intellectual Property" is defined capaciously in Article 1.4 to include all kinds of intellectual property and does not affect this analysis.)
137.
IQE’s reading of Article 5.4 is also not inconsistent with Article 5.6.1. Article 5.4 provides:

"Solar Junction will own all right, title and interest in and to: (i) the designs and other ownership rights of Solar Junction embedded in the Products as of the date hereof, and any other documentation that Solar Junction provides IQE pursuant to this Agreement, and (ii) any Intellectual Property developed by its employees or contractors after the date hereof without involvement or assistance of IQE or its employees or contractors."

The term "Products" is defined in Article 1.5 to refer to the particular solar cell devices, that is, the physical result of the manufacturing process. The technology that is jointly developed would not affect "the designs and other ownership rights embedded in the Products," as the technology was what was to be used to produce the Products; that technology is not "embedded" in the Products any more than the assembly line was embedded in the Model T Ford. Likewise, SJC’s ownership of the documentation that it provided to IQE need not diminish IQE’s joint ownership of the technology that was thereafter developed.

138.
Turning to Article 5.2, it provides, in part:

"IQE further covenants on behalf of itself and its Affiliates that it shall not utilize Solar Junction’s dilute nitride trade secrets or any associated patents in any products designed, manufactured or sold by IQE other than the Wafers sold to Solar Junction and its permitted external licensees hereunder, nor will IQE offer foundry services that enable other persons unaffiliated with IQE to grow dilute nitrides using Solar Junction’s trade secrets or patents."

Dr. Nelson offered two reasons why this clause is not inconsistent with IQE’s use of the GEN2000 process as the starting point for the development of the 339 Patent. He noted that IQE had not used that process in any other "products." (Tr. 1329-30 ("that’s referring I think specifically to other products.... So it was designed for not using Solar Junction’s IP in other product manufacturing."). Accord IQE PostHB, p. 14). He also said that the 339 Patent work was in any case "covered by the jointly developed technology." (Tr. 1339-40).

139.
We think Dr. Nelson was clearly correct on the first point: the work on the development of the 339 Patent has not resulted in any product to date (Tr. 1365, 1469-70), and so IQE is in full compliance with Article 5.2’s prohibition on using SJC’s dilute nitride trade secrets (assuming there were any, which IQE disputes) in any "products." The undefined term "products" in this section of an agreement dealing with a commercial manufacturing process seems clearly to mean what Dr. Nelson suggested, the result of the production process that would be marketed or sold, such as the Wafers, not a prototype or the interim results of a research project.
140.
We are likewise persuaded that neither Article 5.2 nor Article 5.6.1 prevents IQE from using any SJC trade secrets that are incorporated into the jointly developed technology, because that technology is jointly owned. Any SJC trade secrets pertained to the process for making the J3 layer on a GEN200 reactor; the jointly developed technology concerned the process for making that layer on a GEN2000 reactor. What the parties agreed to in Article 5.6.1 is that, when either party contributed its own intellectual property and technology to the joint effort (and it was expected that both parties would so contribute, see eg. Tr. 1290-95,1306-08 (Nelson)), both parties would have "full rights to use" the resulting jointly developed process with all its constituent parts. (Tr. 1307-09 (Nelson)). Article 5.6.1 effectively grants a limited license to use any trade secret (or anything else) that is contributed to the jointly developed process, but only as part of that jointly developed process.
141.
Article 4.3, which SJC first raised in its Post-Hearing Reply Brief (and therefore was not addressed in witness testimony), is similar. It addresses termination of the WSA (which is still in effect today) and provides, in pertinent part, upon termination of the WSA "IQE’s license to manufacture Wafers using Solar Junction’s trade secrets and Intellectual Property terminates and IQE will immediately cease use of any such Intellectual Property." (Emphasis added). IQE’s interpretation of Article 5.6.1 does not contemplate that IQE would continue to use the intellectual property that SJC provided to IQE relating to the structure of the J3 layer or GEN200 processes; it contemplates that both IQE and SJC would have continued rights to use the jointly developed process for dilute nitride epitaxy on the GEN2000 reactor.
142.
In short, we find that IQE’s proposed interpretation of Article 5.6.1 better accords with the agreement as a whole than SJC’s interpretation. See Maven Technologies, LLC v. Vasile, 46 N.Y.S.3d 720, 722,147 A.D.3d 1377,1378 (2017) ("It is well settled that a contract must be read as a whole to give effect and meaning to every term."). In the end, SJC does not offer a coherent explanation of all the provisions of the agreement, and its interpretation of Article 5.6.1 renders it essentially meaningless. SJC says, "whatever it means," Article 5.6.1 cannot mean what IQE says it does. But IQE gives meaning to all of the provisions of the agreement.
143.
SJC’s broader objection to IQE’s interpretation of Article 5.6.1 is essentially that SJC could not possibly have intended to create a competitor: "before the WSA there was only one company that could make a commercial dilute nitride for photodetectors with bandgaps of 1.0 eV and below; now there are two, the second being the trusted supplier of the first." (SJC PostHB, p. 1).
144.
The parties’ intentions that matter, of course, are those set forth in the language of the WSA, which we discuss above. But more generally we note that Article 5.6.1 was heavily negotiated. In the summary of proposed terms that formed the basis for the WSA, SJC initially proposed that SJC would own "[e]pitaxial wafer process technology jointly developed" and license it royalty free to IQE. (Ex. 2702, p. 27493). Such an arrangement would have allowed SJC to limit IQE’s use of that technology to manufacturing wafers for SJC. But IQE refused to accept this, altering this language to say that such technology would be "owned jointly." (Ex. 2704, p. 16064). SJC changed the language back. (Ex. 2705, p. 27242). IQE insisted, and in an email dated January 11,2102, Dr. Nelson explained to the primary SJC negotiator, Ed Birss, that IQE intended to use this jointly developed technology for other non-solar products: "Would definitely like to see joint ownership of jointly developed epi technology as 1 think there are a number of areas where we can input strongly and would want to use for other non solar applications (and definitely non competitive with SJ)." (Ex. 2703, p. 27194) (emphasis added). SJC acquiesced. SJC was thus on notice that IQE understood this provision to allow IQE to use the jointly developed technology on other applications, and that SJC’s fundamental protection was that IQE would not be competing with SJC in the manufacture of solar wafers.
145.
This view finds expression in Article 5.2 of the WSA, which provides, after the sentence discussed above, "Moreover, in order to avoid any disputes regarding the foregoing, IQE agrees that it shall not use Solar Junction’s Dilute Nitride Technology to grow dilute nitrides by MBE for use in solar cell applications." The term "Solar Junction’s Dilute Nitride Technology" is defined very broadly in terms of the resulting wafer and reaches essentially any solar cell wafer dilute nitride layer: "the use of any epitaxial layer in a solar cell that contains nitrogen and any one or more of gallium, indium and/or arsenic, wherein the mole fraction of nitrogen is greater than 0% and less than 15%." These provisions, and the foregoing drafting history, strongly suggest that the central commercial deal with respect to the intellectual property that SJC contributed to the project was that (1) SJC would continue to own what it brought to the table, including the GEN200 process, (2) jointly developed processes would be owned by both parties, leaving both parties free to use the GEN2000 processes they developed (but not to sublicense that intellectual property), and (3) IQE would not use those processes, or (in essence) any dilute nitride process, to grow dilute nitrites by MBE for solar cell applications.
146.
This view that IQE could use the jointly developed technology for purposes other than manufacture of the wafers for SJC (as long as it did not use it for any solar cell dilute nitride layer) is also supported by some evidence of the parties’ course of dealing, which suggests that the parties understood that IQE would be, and was, using the GEN2000 reactor that IQE had configured for SJC’s work for other projects. In particular, in January 2016, the parties entered into a supplemental agreement to work on a four-junction solar cell for space applications, and that agreement envisioned the use of IQE’s MBE tools that had been configured for work on the three-junction wafers to be produced under the WSA. (Ex. 1173, Art. 2; see Tr. 1579-80 (Pelzel testimony identifying the reactors to be used)). The agreement provided that IQE would use best efforts "to enable SJC to retain near exclusive use of the MBE tools. However, IQE retains the right to use the tools for its own purposes for short periods of time for operational reasons as long as such use does not significantly interfere with or delay the 4J Program." (Ex. 1173, Art. 2.3 (emphasis added)). Mr. Torabi testified on cross-examination that he understood this clause meant use "not for other purposes" but for "calibration or some other tests, whatever they have to do to make sure it is working fine." (Tr. 1213). But emails reflecting the practice under that agreement indicate that in fact IQE told SJC that it was using the machines for "non SJ epi," including "electronic devices on Silicon substrates," and "IQE project work," and that IQE explained that this avoided "wasted time and material." (Exs. 1501, 1502). There is no indication that SJC objected that this work went beyond what the agreement contemplated; rather, SJC responded that it wanted to make sure "that the proposed non-SJ work will not significantly interfere with the 4J Program," but that if that were worked out, "things can proceed." (Ex. 1501, p. 334).
147.
SJC in its Post-Hearing Brief does not pursue Mr. Torabi’s distinction, but argues that these references—about which the Tribunal asked both during the hearing and in specific questions to be addressed in the Post-Hearing Briefs—permitted IQE to use the reactors "for other purposes, so long as SJC trade secrets and confidential information are not used or disclosed in doing so." (SJC PostHB, p. 8). SJC suggests, for example, that IQE could use the NC-16 reactor (the reactor configured to grow the J3 layer) "for non-SJC purposes" so long as it did not use the [REDACTED] (Id.) SJC cites to no testimony or exhibit in the record that suggests that this limited use of the reactors was reasonable or practical, and there is nothing in the emails cited above that suggests that restriction. To the contrary, Dr. Nelson testified persuasively that it would be "practically impossible" to carve out some part of the GEN2000 process: "You have a very complex process which is built around all the different factors of the design of the Gen2k systems, the various bits and pieces that we ended up putting into it." (Tr. 1309). It is also hard to understand how, as a practical matter, IQE could have been expected to know what aspects of the configuration of the MBE reactors SJC would contend embodied its trade secrets. In this arbitration SJC maintains that the combination of the six trade secrets it now asserts, which encompassed not only the [REDACTED] but the [REDACTED] of the GEN2000 process, constituted a protected trade secret. As we discuss Delow, SJC did not provide IQE with a schedule listing its trade secrets as it was required to do under Article 5.2 of the WSA.
148.
In short, the weight of the evidence before us indicates that the parties, at least in 2016, understood that IQE was permitted to use the GEN2000 reactors configured for SJC’s work for other purposes, as long as they were not used to grow dilute nitride solar cells. That is what IQE did in its work on the 339 Patent to develop a new long-wavelength photodetector.

J. SJC's Misappropriation of Trade Secrets Claims

1. The Obligation to Identify Trade Secrets

149.
In pleading its claim for misappropriation under the DTSA and New York law, SJC was required to specify the trade secrets it alleged were misappropriated. Elsevier Inc. v. Doctor Evidence, LLC, No. 17-cv-5540 (KBF), 2018 WL 557906, at 8-10 (S.D.N.Y. Jan. 23, 2018); Big Vision Private Ltd. v. E.I. Dupont De Nemours & Co., 1 F. Supp. 224, 257-66 (S.D.N.Y. 2014); MSCI Inc. v. Jacob, 945 N.Y.S.2d 863, 864-66 (N.Y. Sup. Ct. 2012). SJC’s failure to plead its allegedly misappropriated trade secrets with specificity has been an issue in this arbitration from the start of the case. SJC’s Response to the RFA was short on detail, and the issue was addressed subsequently in Procedural Order No.l, which required SJC to submit a "Precise Statement of Trade Secrets" providing "a precise statement of the trade secrets that Respondent alleges were misappropriated" before submitting its Statement of Case, which also was required to "include a detailed description of the trade secrets." We found in Procedural Order No. 4 that SJC had failed to comply with this provision of Procedural Order No. 1 and put SJC on notice that it was expected to disclose its "post-discovery" theory of misappropriation in greater detail in its witness statements and expert reports. We also noted that SJC bore the burden of proving what precise trade secrets were expropriated by IQE and how.
150.
In time SJC identified (i) 6 specific trade secrets that it alleged were misappropriated by use in developing the photodetector described in the 339 Patent and (ii) elements of 3 of those trade secrets that were misappropriated by disclosure in the 339 Patent. They are described in sections XIII.G and II above. These trade secrets are the focus of our trade secret analysis.

2. SJC’s Allegations of Misappropriation by Use

151.
SJC alleges that IQE misappropriated the six specified trade secrets in developing the photodetector described in the 339 Patent. (SJC PostHB, pp. 22-54). Given our finding that IQE used jointly developed epitaxial wafer process technology, and not SJC’s trade secrets, to develop the 339 Patent photodetector, we find no misappropriation by use, and SJC’s claim fails.

3. SJC’s Allegations of Misappropriation by Disclosure

152.
Contrary to IQE’s argument in its post-hearing brief (IQE PostHB, p. 27), the conclusion that IQE had joint ownership of the process for growth of dilute nitrides on the GEN2000 reactor, and could use that process for (non-solar) purposes other than manufacturing Wafers for SJC, does not end the analysis. Article 5.6.1 does not permit IQE to destroy the value of any trade secrets that were jointly owned, still less any trade secrets that SJC disclosed to IQE in the course of the joint development, by publishing them. Article 5.6.1 prohibits IQE from assigning or licensing the jointly owned technology, and it thus appears to go without saying that neither party could destroy the joint intellectual property rights.
153.
SJC alleges that IQE misappropriated part or all of three of the alleged trade secrets by disclosing them in the 339 Patent. (SJC PostHB, pp. 54-55). We conclude that the 339 Patent did not disclose any SJC trade secrets.
154.
SJC claims first that the 339 Patent disclosed [REDACTED] were produced by the GEN200 process(and by the GEN200 proccess) (identified as Trade Secrets 3(a)-(d) in SJC’s list of trade secrets, Ex. 2511). The difficulty with asserting trade secret protection over the composition of a final product that is sold to the public is that trade secret protection is not available if the information is "readily ascertainable," including through "reverse engineering... or any other lawful means of acquisition." 18 U.S.C. § 1839(3)(B), (6)(B); accord Clearwater Sys. Corp. v. Evapco, Inc., No, 3:05CV507 (SRU), 2005 WL 3543717, at *8 (D. Conn. July 26, 2005) ("information that would be readily ascertainable by someone in the industry, i.e., ascertainable quickly and at little cost, is also not afforded trade secret protection"). See also Restatement (Third) of Unfair Competition § 39 comment f (1995) (trade secret protection exists if reverse engineering "would be difficult, costly, or time-consuming").
155.
We conclude that the information regarding the composition of the dilute nitride layer would be readily ascertained by persons in the semiconductor industry through standard techniques. We set out below the bases for this conclusion as to each of the aspects of the composition of the dilute nitride layer which SJC claims is entitled to protection. [REDACTED]
156.
SJC asserts that the 339 Patent disclosed a trade secret insofar as it disclosed that the dilute nitride consisted of [REDACTED]
157.
At the outset, the fact that the supposed disclosure is in the form of [REDACTED] XRD is a well-known process for analyzing a semi-conductor layer. IQE's expert witness Dr. Fitzgerald testified that an industry of third-party providers has developed that provides XRD and another technique called secondary ion mass spectrometry, or SIMS, that reveal the structure and other properties of competitors’ products:

"My Ph.D. students over all those years have actually used all those techniques to determine structures of semiconductors.... It’s a scaled industry because the semiconductor industry is huge and so a lot of resources have went into looking at other peoples’ products. So understanding compositions of thin films and lattice structures and all this sort of thing is very well known."

(Tr. 2037-38). Dr. Fitzgerald testified that SIMS analyses, which would allow one to determine the composition [RDACTED] referred to in the 339 Patent, "are done by companies just basically in a few days. You pay a thousand dollars and you can get the profile." (Tr. 2040). IQE’s Dr. Pelzel also testified that SJC and IQE routinely used these techniques during the development process, including "sending] things out for SIMS." He characterized them as "garden variety tests." (Tr. 1545-46).

158.
SJC’s expert Dr. Bank agreed that these techniques could reveal all of this information regarding the composition of SJC’s dilute nitride product. He said, "Now these are the standard reverse engineering tools that you would use in the... conventional compound semiconductor industry." (Tr. 289). He went on to say that, because of the particular characteristics of dilute nitrides, knowing such information for dilute nitrides would "give[] you no understanding of how to actually prepare that particular material." (Id.) But he did not dispute that SIMS and XRD were both standard techniques and would disclose what was disclosed about the composition of the dilute nitrides at issue in the 339 Patent. Further, one of SJC’s founders, Dr. Yuen, testified that SJC "filed patent applications on certain aspects of [its new] technology that would be easy to reverse engineer from the devices, including the compositional ranges of the various elements that make up our material and the doping profiles... of the finished materials." (Yuen ¶25).6
159.
SJC witnesses raised two counter-arguments. First, SJC’s expert Dr. Jackrel testified that it would be difficult to strip off the layers on SJC’s completed Wafers to get to the dilute nitride layers. (Tr. 1913-14). Dr. Bank did not mention this concern when asked about such reverse engineering. (Tr. 286-89). In response, Dr. Fitzgerald testified that stripping off the layers not of interest was commonly done in the industry. (Tr. 2039-40). Dr. Jackrel appeared less familiar with the present state of the industry.
160.
Second, Dr. Jackrel and SJC’s Dr. T. Liu testified that for SIMS one needs a calibration sample of a known similar material. (Tr. 418-24 (T. Liu); 1907-11 (Jackrel)). But Dr. Fitzgerald testified that the industry has developed libraries of such samples (Tr. 2102-03), and Dr. Jackrel himself testified that an iterative process can be used where there is no close standard (Tr. 1910-11). In addition, there was evidence that the industry has developed a technique, called Rutherford backscattering spectrometry, or RBS, that Dr. Fitzgerald testified could be used to determine the composition of SJC’s material without a sample. (Tr. 2045-46). Dr. T. Liu also noted that RBS was used to calibrate samples that SJC provided to the analysis company it used. (Tr. 419). Dr. Jackrel admitted that he was "not that well versed" in, and had not used, that technique (Tr. 1999).
161.
SJC counters with the argument that if reverse engineering the dilute nitride layers were that easy, IQE would have had it done for this arbitration. There is some force to this point, but in the end we do not think it outweighs the evidence of the reverse-engineering industry described above and Dr. Yuen’s admission that SJC published patents claiming the compositions of its wafer that would be "easy to reverse engineer from the devices." Moreover, we are dealing now with a portion of the case— disclosure of the composition of the material in the 339 Patent—that received relatively little attention; reverse engineering would not have aided IQE in showing that SJC had no trade secret in, for example, [REDACTED] which was at the center of the parties’ trade secret dispute. In the end, we are persuaded that the kind of information regarding the [REDACTED] of SJC’s dilute nitride layer that arguably was disclosed in the 339 Patent was, as Dr. Fitzgerald testified, readily ascertainable in the semiconductor industry. (Tr. 2103-04).
162.
The same is true of the other two aspects of the composition of SJC’s dilute nitride layers that SJC asserts were disclosed in the 339 Patent. [REDACTED]
163.
[REDACTED] (Ex. 1003, col. 10:25-55; Pelzel ¶78; Fitzgerald ¶¶80-82). SJC asserted that that proposition- [REDACTED] The evidence in support of SJC's claim to having discovered this relationship is thin. Dr. Yuen testified that the recalled that in 2009 someone on his team suggested that SJC try [REDACTED] and that "turned out to form the basis for a new direction in our work." (Yuen ¶15.) But the basic idea that SJC’s product has "low antimony (Sb) content and with enhanced indium (In) content... as compared with known alloys of GalnNAsSb" was not a secret: it was disclosed in SJC’s patents. (Eg., Ex. 1091, col. 2:55-58). SJC offered documentary support suggesting that SJC had focused specifically on the [REDACTED] and there is substantial support for the proposition that IQE independently came up with the analysis of the importance of the [REDACTED] set forth in the patent.
164.
In any event, to the extent SJC is claiming that the [REDACTED] would have been revealed by standard reverse engineering techniques such as those noted above. (Tr. 2040 (Fitzgerald), 284-85 (Bank), 1546-47 (Pelzel)).
165.
SJC also says that the 339 Patent disclosed [REDACETED] (SJC PostHB, p. 55). that degrade the electrical performance of a dilute nitride alloy. (Ex. 2511, p.3). SJC cites [REDACTED] (SJC PostHB, p. 55 citing Ex. 1003 Claim 1, col. 10:25-35 and Fig. 8, col. 11:17-36 and Fig. 12).
166.
It does not appear that the "role played by background carrier concentration" is itself a trade secret. The record is clear that it is widely viewed as a bad thing in most applications, and the question is how to reduce it. Moreover, here too, there is reason to doubt SJC’s assertion that it came up with the concentration thresholds revealed in the 339 Patent. The fact that SJC sought similar background carrier concentrations as those described in the 339 photodetector patent is something of a coincidence and would not necessarily tell a materials scientist anything about SJC’s solar cell process. Photodetectors are more sensitive to background carrier concentration than solar detectors, because background carrier concentration can result in "false positives" (Pelzel ¶77; Tr. 1561), and Dr. Pelzel and Mr. Yanka testified that IQE experimentally altered the techniques it had used for the J3 process from which they started in order reduce background carrier concentration in the lower bandgap materials described in the 339 Patent. (Pelzel ¶77; Yanka ¶¶61 -67; Tr. 1561-63 (Pelzel)).
167.
In any event, to the extent SJC is claiming that the report of the precise background concentration in the 339 Patent revealed an SJC trade secret, we are persuaded that, like the other features of the finished wafer discussed above, the background concentration could be reverse engineered easily by a materials scientist in the industry. While Dr. Jackrel was unaware of any technique that could be used to do this in the context of a multi-layer wafer like the one at issue (Tr. 1980-83), Dr. Fitzgerald testified that a test called Polaron could be used to measure background carrier concentration from such a finished device and that third parties provided the test "relatively cheap[ly]." (Tr. 2098-101). IQE appears to have used Polaron to measure "background doping" during the 339 Patent work. (Ex. 1115, p. 20).
168.
SJC also contends that the 339 Patent disclosed two asserted trade secrets (SJC Trade Secret Nos. 4 and 6) regarding the process for making its dilute nitride alloy. Here, the problem is that, to qualify as a trade secret, information must be both "secret" and derive independent economic value from not being "generally known to... another person who can obtain economic value" from the disclosure or use of the information. DTSA, 18 U.S.C. § 1839(3); accord Computer Assocs. Int'l, Inc. v. Bryan, 784 F. Supp. 982, 988 (E.D.N.Y. 1992) ("Matters of public or general knowledge in an industry" cannot constitute a trade secret.). Both of the claimed process trade secrets disclosed in the 339 Patent were matters generally known in the industry. [REDACTED]
169.
SJC asserts that [REDACTED] was disclosed by a passage in the 339 Patent that discussed the fact that the [REDACTED] (SJC PostHB, p. 55). The patent described [REDACTED] (Ex.1003 col. 9:28-col. 10:13). SJC does not claim that the use of a [REDACTED] was an SJC trade secet, and it clearly was not; it was developed by IQE in the course of the 339 Patent work. SJC used a different system for [REDACTED] namely a program that [REDACTED] over time
170.
But precisely what SJC claims was the disclosed trade secret remains unclear. In the section of its post-hearing brief on disclosure, SJC asserted, as noted above, that it was [REDACTED] PostHB, p. 55). But in the section of the same breif discussing its trade secret claims, SJC expressly disavowed that it was claiming "ownership of the abstract concept of [REDACTED] but rather that the trade secret was [REDACTED] (Id. at 40-41). But the [REDACTED] not disclosed in the 339 Patent.
171.
In any event, taking SJC’s claim of improper disclosure at face value, the evidence is clear that [REDACTED] indeed, apparently during MBE processes generally-was well known. (Fitzgerald ¶¶155-62; Ex. 2233, p. 285 (2006 article noting [REDACTED]; Ex. 2237, p. 1505-06 (1998 article discussing [REDACTED] Witness Statement of Dr. Amy W.K. Liu, dated June 10, 2019 ("A. Liu") ¶40 (disscussing 1998 IQE design of [REDACTED] during MBE semiconductor growth); Tr. 305-06 (Dr. Bank acknowledging that "before 2007...people [were] [REDACTED]
172.
SJC claims that the 339 Patent improperly disclosed] [REDACTED] (SJC PostHB, p. 55). SJC cites a discussion in the patent, and accompanying figures, that describes the effect [REDACTED] in the photodetector material. (Ex. 1003 col. 11:17-51 and Figs. 12 & 13).
173.
At the outset, SJC has not established that this disclosure in fact revealed anything useful about SJC’s process. SJC points to a series of documents in the development of the GEN2000 process in which SJC suggested to IQE [REDACTED] but the [REDACTED] discusses [REDACTED] (Ex. 1032, p. 19; Expert Report of Dr. David B. Jackrel, dated May 6, 2019 ("Jackrel") ¶48). These [REDACTED] and the patent disclosures say nothing about [REDACTED] Moreover, it is undisputed that the [REDACTED] (Tr. 31-12 Bank)). Indeed, an SJC document on annealing provided to IQE cautioned that [REDACTED] (Ex. 2312, P. 7). [REDACTED] (Ex. 1032, p. 0023 (a [REDACTED] see also Tr. 1700-01 (Nunna) (indicating that [REDACTED]. In short, a reader of the 339 Patent would not gain much of an insight into identifying the [REDACTED] to use to replicate SJC’s process.
174.
In any event, SJC’s expert Dr. Bank, who obtained his Ph.D. in the same laboratory as the founders of SJC working on the same dilute nitride compound, stated in his thesis published in 2006 that [REDACTED] (Ex. 2436, p. 43 n.6). And Drs. Yuen (an SJC founder) and Bank published a paper also in 2006 that likewise disclosed [REDACTED]. Thus, to the extent the 339 Patent might be read to disclose an aspect of SJC’s process, that feature, or a very close approximation, was already published and available to the industry a decade earlier in a source that was more closely tied to SJC than the 339 Patent.
175.
Thus, the 339 Patent did not disclose any trade secret in any of the disclosures cited by SJC. Although SJC does not expressly argue that these disclosed features, even if not themselves trade secrets, constituted a combination that was a trade secret, we have considered that possibility and concluded that they do not. The process of reverse engineering to discover the composition of a competitors’ products is widespread and well-developed, and a competitor would undoubtedly focus on the aspects of the composition disclosed in the patent. And the need to [REDACTED] in growing thicker films and the range of effective [REDACTED] s are also points that any materials scientist seeking to build a dilute nitride would address.

K. SJC's Breach of Contract Claims

176.
SJC contends that IQE breached the confidentiality provisions of the WSA by disclosing SJC’s "Confidential Information" in the 339 Patent. (SJC PostHB, pp. 64-65). Specifically, SJC claims that IQE breached Article 5.1 of the WSA which required IQE to maintain in confidence "Confidential Information" it received from SJC. This claim is a corollary to SJC’s claim of disclosure of trade secrets, positing that if the information disclosed did not constitute trade secrets, it was in any event confidential information.8 We conclude that none of IQE’s disclosures in the 339 Patent impermissibly disclosed Confidential Information of SJC in breach of Article 5.1 of the WSA.
177.
The WSA defines "Confidential Information" to mean "proprietary or nonpublic information disclosed by one party to another party" under circumstances indicating that the information is confidential and proprietary. (Ex. 1011 § 1.2). Article 5.1 of the WSA prohibits disclosure of "Confidential Information" but states that "[t]he obligation not to... disclose information... shall not apply to information that... can... be shown by the party desiring to treat such information as non-confidential, that it is generally available to the public."
178.
Much of the information that was disclosed in the 339 Patent about which SJC complains was not in fact "disclosed by [SJC] to [IQE]." In particular, [REDACTED] The remaining information about the composition of SJC’s alloy was "generally available to the public" through reverse engineering; the information about SJC’s preferred [REDACTED] was generally available through prior publication; and the information about the need to [REDACTED] was generally available because it was well-known in the industry.

XIV. Conclusion

179.
Based on the above analysis and findings, the Tribunal concludes as follows:

1. IQE’s development of the photodetector described in the 339 Patent used jointly developed "epitaxial wafer process technology" as that term is described in WSA Article 5.6.1, which it jointly owned with SJC and which IQE had full rights to use.

2. IQE did not misappropriate SJC’s trade secrets in developing the photodetector described in the 339 Patent and did not disclose SJC’s trade secrets in the 396 Application or the 339 Patent. SJC’s claims based on the DTSA and New York law are denied.

3. IQE did not breach the WSA confidentiality restrictions applicable to SJC’s materials in the disclosures in the 396 Application or the 339 Patent. SJC’s claim of breach of contract under New York law is denied.

4. Because of our conclusions on the issues of liability, we do not need to address the parties’ submissions on remedies.

The Tribunal has taken note of, and considered, all submissions and evidence put before it. It has referred in this Final Award to those parts of the submissions and evidence it has considered necessary for the explanation of its reasoning; however, all submissions and evidence were taken account of, whether expressly referred to or not, in the formulation and articulation of the reasons and conclusions in this Final Award.

XV. Costs

180.
Both parties in this arbitration claim entitlement to their costs of the arbitration and their legal costs. They agree, implicitly, that the Tribunal has authority to allocate and award costs consistent with the LCIA Rules.9

A. Claimant's Costs

181.
Claimant seeks recovery of the following legal costs:
The arbitration proceedings: Legal Fees Expert Costs Other Costs (Total) $5,400,457.00 478,690.29 234,829.65 $6,113,976.94
Challenge to Arbitrator Neuhaus: Legal Fees$89,861.40
(Total) $89,861.40
Proceedings in the SDNY: Legal fees $837,183.00
Other Costs19,948.51
(Total) $857,131.51
Grand Total $7,060,969.85

(IQE Corrected Legal Costs Submission dated 11/25/19).

B. Respondent’s Costs

182.
Respondent seeks recovery of the following legal costs:
The arbitration proceedings: Attorney’s Fees Expert Costs Other Costs (Total) $2,463,127.19 $627,686.29 $232,168.64 $3,322,982.12
Challenge to Arbitrator Neuhaus: Legal Fees (Total)$71,523.16 $71,523.16
Proceedings in the SDNY: Legal Fees Other Costs (Total) $157,413.45 3,720.36 $161,133.81
Grand Total $3,555,639.09

(SJC Corrected Cost Submission dated December 9, 2019).

C. Costs of the Arbitration

183.
Art. 28 of the LCIA Rules provides in relevant part:

"28.1 The costs of the arbitration other than the legal or other expenses incurred by the parties themselves (the "Arbitration Costs") shall be determined by the LCIA Court....

28.2 The Arbitral Tribunal shall specify by an award the amount of the Arbitration Costs determined by the LCIA Court. The Arbitral Tribunal shall decide the proportions in which the parties shall bear such Arbitration Costs....

28.3 The Arbitral Tribunal shall also have the power to decide by an award that all or part of the legal or other expenses incurred by a party (the "Legal Costs") be paid by another party. The Arbitral Tribunal shall decide the amount of such Legal Costs on such reasonable basis as it thinks appropriate....

28.4 The Arbitral Tribunal shall make its decisions on both Arbitration Costs and Legal Costs on the general principle that costs should reflect the parties’ relative success and failure in the award or arbitration or under different issues, except where it appears to the Arbitral Tribunal that in the circumstances the application of such a general principle would be inappropriate under the Arbitration Agreement or otherwise. The Arbitral Tribunal may also take into account the parties’ conduct in the arbitration, including any co-operation in facilitating the proceedings as to time and cost and any non-co-operation resulting in undue delay and unnecessary expense. Any decision on costs by the Arbitral Tribunal shall be made with reasons in the award containing such decision."

184.
The net costs of the arbitration (other than the legal or other costs incurred by the parties themselves) have been determined by the LCIA Court, pursuant to Article 28.1 of the LCIA Rules, to be as follows:
Registration fee: £1,750.00
LCIA’s administrative charges: £36,622.75
Tribunal’s fees and expenses: £367,476.24
Total costs of the arbitration: £420,607.52

These fees and expenses are subject to the appropriate VAT of £4,012.28

Towards these costs, the Claimant has paid £229,914.58, which includes the Registration fee, deposits lodged, interest accrued, and the Respondent has paid £227,883.12 which includes deposits lodged and interest accrued. In accordance with Article 28.7 of the Rules, the balance of funds will be returned to the Parties in the proportions they were paid.

185.
The Tribunal has decided that SJC shall bear 100% of the Arbitration Costs. IQE shall therefore recover from SJC the amount of £ 213,252.64 (being the total funds lodged by the Claimant less the refund due from the LCIA). Our decision is based on the fact that IQE has prevailed on all of the claims in this arbitration, namely SJC’s challenge to the jurisdiction of the Tribunal, IQE’s claim for a determination that it did not misappropriate SJC’s trade secrets or breach the WSA, and SJC’s counterclaims for misappropriation of trade secrets and breach of the WSA. The Tribunal is of the view that it is appropriate that the allocation of these costs reflect the parties’ relative success and failure in the award.

D. The Parties’ Legal Costs

186.
The Tribunal has decided that SJC shall pay $4,000,000 of the Legal Costs incurred by IQE in this arbitration. Our decision here is based in large part on the fact that IQE has prevailed on all of the claims in this arbitration. However, the Tribunal also has considered other factors. Although SJC did not prevail on its claims in this case, SJC had a serious and legitimate litigation position based on the disclosures in the 396 Application and 339 Patent, which touched on aspects of the dilute nitride process that it had chosen not to disclose in its patents; its lack of information about IQE’s development work leading to these publications until the document disclosures in this case; and the provision in Section 5.6.1 of the WSA dealing with jointly developed epitaxial wafer process technology, which was apparently novel for both parties. We have also taken into account the proportionality of the expenses in light of the exposure. Under the circumstances, the Tribunal is of the view that it would be inappropriate to allocate 100% of IQE’s Legal Costs to SJC.
187.
Both parties incurred legal costs in the litigation in the U.S. District Court preceding this arbitration. While the Tribunal used the submissions of the parties to the District Court on jurisdiction in making its decision on SJC’s jurisdictional challenge, SJC’s motion to enjoin arbitration in the IQE Action and its claims against five IQE employees in the Chung Action under the Employee Agreements are proceedings distinct from those in this arbitration. The claims in the Chung Action were stayed by the Court pending the outcome of this arbitration, and presumably there will be further proceedings in that case subsequent to this arbitration. Under the circumstances, it is the Tribunal’s view that it would be inappropriate to award either party its costs in the District Court litigation and declines to do so.
188.
In the Decision on Challenge, Ms. Van Houtte decided that the costs relating to the challenge shall be determined and allocated by the Tribunal in its final award. The Tribunal has decided that SJC shall pay IQE’s Legal Costs incurred in the challenge proceeding in the amount of $89,861.40. Our decision is based on the fact that SJC failed on each of the issues it raised in the challenge. The Tribunal is of the view that it is appropriate that the allocation of these costs reflect the parties’ relative success and failure in the Decision on Challenge.

XVI. AWARD

For the reason stated, the unanimous award of the Tribunal is as follows:

1. The Arbitral Tribunal has jurisdiction to hear and decide the claims in this case.

2. Claimant IQE’s request for a determination that it did not misappropriate SJC’s trade secrets and did not breach the WSA is granted.

3. Respondent SJC’s claims of misappropriation of trade secrets under the Defend Trade Secrets Act, 18 U.S.C. §§1836 et seq. and under New York law are denied.

4. Respondent SJC’s claim of breach of the WSA is denied.

5. In respect of costs, SJC is ordered to pay IQE $4,089,861.40 in respect of Legal Costs and £213,252.64 in respect of Arbitration Costs.

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