No Nano Chill from Canonâ€™s IP Loss - NSTI Finds Legal, Partnership Lessons
Last week, the biggest nanotechnology licensing battle ever came to an end when a U.S. District Judge ruled that Canon Inc., one of the worldâ€™s largest electronics manufacturers, violated a licensing agreement with nanotechnology component maker Nano-Proprietary, Inc. of Austin, Texas.
In his ruling, Judge Samuel Sparks found Canonâ€™s decision to launch a third-party venture with Toshiba to build SED (surface-conduction electron-emitter displays) TVs using Nano-Proprietaryâ€™s patented nano-components breached its deal with Nano-Proprietary. Sparks also granted Nano-Proprietaryâ€™s request for summary judgment to terminate its licenses with Canon.
Since the ruling, a handful of analysts and bloggers have questioned whether the ruling is good news for nanotechnology at large. They posit that Sparkâ€™s ruling will be a chilling effect on interest by larger companies in nanotechnology partnerships. They note reports from Reuters that Canon is reassessing its plan to build a $1.5 billion SED factory in Japan.
What Nano Chill?
But, look a little deeper, and talk of a Nano Chill may be overstated. In fact, just the opposite.
Just days ago, a report in SmartHouse, an online electronics magazine, reported that before the ink was dry on Sparkâ€™s ruling, representatives from Samsung (one of Canonâ€™s arch-competitors) was hopeful that it could secure a license for Nano-Proprietaryâ€™s nanotube technology. In part, the report said: â€śSamsung insiders say this [ruling] has opened up the door for them to investigate the possibility of obtaining a license [from Nano-Proprietary] to produce SED TVs.â€ť
And why not? The SED display business is poised to capture a huge piece of the $84 billion flat-panel display market. And nanotechnology components, such as Nano-Proprietaryâ€™s, are well positioned to benefit, so long as proper business and legal assurances for all parties are in place.
And so, some nano experts say the ruling should trigger optimism, not nay-saying. "Itâ€™s because nanotechnology is maturing, and coming out of the lab and getting ready for market, that we have IP disputes and partnering challenges like this one between Nano-Proprietary and Canon,â€ť said Dr. Matthew Laudon, Executive Director of the Nano Science & Technology Institute (NSTI). â€śIn fact, NSTI has been working for years to help inventors and licensees reach better agreements over nanotechnology IP uses.â€ť
NSTIâ€™s May Nanotech Ventures, TechConnect Offer Expert Focus on IP, Partnering
In May, in fact, NSTI will host the Nanotech Ventures and TechConnect IP partnering conferences, an executive-level series of conferences to allow companies to see what nanotechnology IP may impact their business and help companies better prepare for smooth business partnering.
Dr. Laudon notes that in the past 3-4 years, the U.S. Patent and Trademark Office have received some 7,000 nanotechnology-related patent applications. â€śMany hundreds of these technology portfolios will mature enough to attract commercial interests in the next few years, and as nanotechnology moves from lab-to-marketplace, NSTI intends to address the business and legal aspects, not solely the technology ones,â€ť Dr. Laudon added.