Printed Electronics Now staff09.01.20
Nanosys released a statement on the Aug. 18, 2020, decision by the U.S. Patent Office to review the validity of U.S. Patent No. 7,105,051.
According to Nanosys, NajingTech Co., Ltd. (NajingTech) has "stumbled and suffered a major setback in its attempt to weaponize and assert a U.S. taxpayer-funded patent through a shell subsidiary against Nanosys."
Silicon Valley-based Nanosys said it has worked hard over the past two decades to create a vibrant, growing marketplace for its proprietary quantum dot technology.
Employing more than 120 scientists and technicians, and manufacturing this advanced nanotechnology in the US, the company’s light-emitting quantum dots can be found in hundreds of unique models of consumer electronic products around the world ranging from tablets to monitors to TVs, the company said.
Leading industry research firms including DSCC expect consumer electronic brands will ship more than 10 million of these devices in 2020.
In 2011, NajingTech acquired NN-Labs through its subsidiary NNCrystal, a US company created by the founder of NajingTech, Dr. Xiaogang Peng, a former professor at the University of Arkansas.
According to Nanosys, NN-Labs had previously obtained the patent rights to U.S. Patent 7,105,051 (‘051 patent) owned by The Board of Trustees of the University of Arkansas, which was created with the help of a grant from the National Science Foundation (NSF), funded by U.S. taxpayer dollars.
In July 2019 NajingTech, through its subsidiary NNCrystal, brought suit against Nanosys for allegedly infringing the ‘051 patent, and, Nanosys said, "in so doing attempted to destroy the market for quantum dots created by Nanosys, the only domestic manufacturer of quantum dots."
On Aug. 25, 2020, the trial court brought this lawsuit to a halt because the U.S. Patent Office had decided to review the validity of the ’051 patent.
In particular, on Aug. 18, 2020, the Patent Office instituted an Inter Partes Review of the ’051 patent, which is a special proceeding for the Office to assess the validity of issued patents.
In instituting this proceeding, the Patent Office found that Nanosys “has established a reasonable likelihood of prevailing in showing that claims 1–11 and 13–23 of the ’051 patent are unpatentable.”
“This decision by the Patent Office validates our position that NajingTech lacks any valid Intellectual Property assets to enable it to participate in the market we have created. It is a critical step towards the ultimate dismissal of the case against us,” said Jason Hartlove, president and CEO of Nanosys. “Our technology has a rich history of being developed in the research labs of MIT, UC Berkeley, Berkeley National Labs, The Hebrew University of Jerusalem and many others. We have licensed our technology from these institutions and pay fair and reasonable royalties to them for the use of their inventions, to which we have added many of our own. When our customers buy products from us, they can be assured that we have secured the legal rights to practice our technology and our business."
Nanosys has multi-tier IP coverage including over 650 patents and pre-grant applications on key materials, processing techniques, surface chemistry and quantum dot devices including QDEFTM.
