Quantum Dot Patent Infringement Lawsuit Resolved

Posted on July 27, 2009 by John C. Monica, Jr.

Readers may be interested in the recent resolution of a quantum dot patent infringement lawsuit between Nanosys and Nanoco/Sigma-Aldrich. 

In April 2009, Nanosys sued Nanoco and Sigma-Aldrich in Wisconsin federal court for allegedly infringing three quantum dot patents owned by MIT which were exclusively licensed to Nanosys.  Nanoco purportedly marketed and sold competing luminous quantum dot nanocrystals under its Lumnidot brand through its U.S. distributor Sigma-Aldrich.  The suit was brought in Wisconsin because that was where the products allegedly infringing the patents were sold.

In the complaint initiating the lawsuit, Nanosys explained that its "technology is covered by a portfolio of over 500 patents and patent applications, including patents in the quantum dot field, that is currently being applied to opportunities in multiple industries including energy, electronics, optoelectronics, life science, and defense. Current application areas of Nanosys technology include flat-panel displays, non-volatile memory, fuel cells, solid-state lighting, chemical analysis chips and medical devices."

The lawsuit was resolved prior to any substantive defense.  In June 2009, the parties told the Court that the case had been settled and that they were drafting the final settlement documentation.  In July 2009, Nanosys voluntarily dismissed the case with prejudice as to both defendants -- as to any prior act, or infringement by selling quantum dot nanocrystals having a CdSe/Zns core-shell structure.

According to a Nanoco press release, the parties settled the case without an admission of liability by Nanoco or Sigma-Aldrich. However, as part of the settlement, Nanoco agreed to terminate its U.S. business for heavy metal quantum dots. Nanoco's CEO explained the cost of defending the litigation was unwarranted by the amount of business generated by the product.  He further stated that the company would continue to market its quantum dot products based on heavy metal-free technology, differing from the technology involved in the lawsuit.

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Obvious Inventions: Teleflex and its Impacts

Posted on May 18, 2007 by Michael E. Heintz

By Laurie N. Jacques:

The Supreme Court’s decision in KSR v. Teleflex makes it easier to show that an invention is obvious. This case is likely to result in changes in the nanotechnology field and elsewhere, including:

?For patent applicants, fewer – but perhaps more valuable – allowed patents.
?For patent owners, a greater risk to patent claims that are challenged based on obviousness.
?For patent licensees, another factor to consider when evaluating existing license agreements in view of Medimmune v. Genentech.

Here’s what happened:

35 U.S.C. §103 requires that a patentable invention be nonobvious in view of the prior art. A finding of obviousness may be based on a single reference. For example, a claim for nanometer size aluminum oxide particles was found to be prima facie obvious in view of a reference that disclosed aluminum oxide particles with overlapping particle sizes and size distributions. In re Kumar, 418 F.3d 1361 (Fed. Cir. 2005). More often, though, a finding of obviousness is based on a combination of references that together disclose all elements of an invention, with elements “missing” from one reference being supplied by another reference. For example, a release agent comprising a stable emulsion of submicron size polysiloxane particles was held to be obvious in view of references that disclosed (1) a stable polysiloxane emulsion of similarly sized particles, and (2) an organopolysiloxane polymer used as a release agent. In re Ona, 38 U.S.P.Q.2d 1597 (Fed. Cir. 1995).

Before KSR, references could be combined only when there was teaching, suggestion, or motivation to combine the references at the time the invention was made (the “TSM” test). This avoided obviousness findings based on hindsight – an examiner or patent challenger could not rely on a combination of references unless the prior art pointed toward that combination. In the Ona case, above, the first reference taught numerous uses of the microemulsion and suggested its use where stability is desired. The court noted that this teaching would motivate one of ordinary skill in the art to use the microemulsion as a release agent, as taught by the second reference.

The Supreme Court concluded that the TSM test was too rigid and could preclude fact finders from applying common sense. The Court explained that “any need or problem known in the field . . . at the time of the invention . . . can provide a reason for combining the elements in the manner claimed” and that “familiar items may have obvious uses beyond their primary purposes, and in many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.” The Court did not abolish the TSM test but opened the door to a broader range of justifications for combination of references. In addition to increasing the difficulty of obtaining new patent claims, this new standard increases the likelihood that previously allowed claims will be held invalid, particularly if an obviousness rejection was overcome during prosecution by arguing that the TSM test was not satisfied.

[Editor's Note: Check back soon for an additional discussion on Medimmune]
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Nano Patents: 21st Century "Sooners"?

Posted on May 15, 2007 by Michael E. Heintz

By Laurie N. Jacques:

A recent Nanowerk Spotlight likens the rush to secure nanotechnology patents to the Oklahoma land rush of 1889, in which “sooners” entered the territory before the legal time of entry to claim the choice homesteads. The “sooners’ in the nanotechnology patent rush are said to be those who, while not intentionally violating any rules, may have obtained unduly broad patents early and, like the “sooners” of old, find their claims subject to challenge.

Early nanotechnology patentees are more like explorers who laid claim to broad swaths of beachfront property – at low tide. None of them can be certain of the scope of the claims they will have after the tide of legal challenges rolls in. Some will find themselves still in possession of valuable beachfront property. Others will find their claims severely eroded or even swept away.

What differentiates those on the high side of the tide line from the rest? The nature of the invention, attention to the prior art, patent drafting skill, and sometimes even luck. The Spotlight focuses on inadequate disclosures in early nanotechnology patents resulting from the lack of standardized technology in a developing field, applicants seeking “windfall” claims that exceed the scope of the disclosure, and delayed nanotechnology training for patent examiners, leaving the patents vulnerable to challenge under 35 U.S.C. §112. Early – and even more recent – nanotechnology patents also may be vulnerable to challenges based on obviousness under 35 U.S.C. §103, especially in view of the U.S. Supreme Court decision in KSR v. Teleflex, No. 04–1350.

[Editor's note: check back soon for a more detailed discussion of Teleflex]
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