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The more I read the filings, I think Samsung's strategy was to muddle and complicate this case as much as possible so when they got in front of a jury, they would just try and confuse them into an adverse ruling (using confusion to put patent validity and infringement beyond reasonable doubt in the mind of the jury members). Unpacking this, they attempted to clobber together a prior art defence based on the combination of multiple very complex nanoparticle chemistry processes, which would be very difficult for the guy off the street to understand in the scope of a week, whilst also having to listen to our side of the story. As a jury member, it would sound pretty convincing until you were told that one of Samsung's experts doesn't actually believe in the prior art defence.
Once we had that **** up in our pocket - thanks to the brilliant work by Mintz - we said OK lets kill your defence, because remember... they are bound by stipulation not to enter the same arguments used in the IPR proceedings. This was the only way they had IPRs instituted. Now if the PTAB validates the various patents and underlying claims, we are on to showing an infringement story that is much easier to tell.... That we worked hand in hand with Samsung for years after they reached out and now the QDs in their TVs look just like ours. On the eve of starting production with them, they told us no thanks, we have another solution. It is a much easier story to tell to a jury, especially when we want to focus on showing that this was wilful infringement.
Samsung will try to strike various portions of our expert opinions etc but will fall flat on their faces.
They were playing a high risk game to start with because they basically point to several methods of prior art and say that if one would have incorporated all of these, effectively linking them together because in using one, the next one in the chain became obvious, you would be able to create cadmium free QDs. Poking holes in just one of these prior art defences leads to the house of cards collapsing, which is what we have done.
Samsung will try to discredit our experts and strike important declarations from Corsair and other experts, but will be highly unlikely to succeed. Corsair is highly credible and independent - have a look at her CV, she is an extremely impressive individual. I also found it interesting that she has been aware (and a believer) in Nanoco's patents for a very long time. I think she mentions since the early-2000s.
We can use Bawendi''s deposition in our filings, but for now the specificities of this i.e. what he has actually said, must remain redacted. You will only see references to Bawendi rather than his comments from the deposition.
Brandi Corsair referred to Bawendi in her report and Michael Newman used Bawendi to go on the attack with 'Doctor' Green. I am sure we will see more references to Bawendi because of the significance.
There have been no motions to strike Bawendi's deposition, expert reports, or declarations from what I can see. We will never attempt to strike him and I have never seen a defendant strike their own witness, nor do I know what the grounds to even do so would be.
Nanoco are requesting that a non-redacted version of that deposition should be published, so hopefully we will see the full extent of the damage soon, but it is evident. Then we still have 'Doctor' Green who also didn't do himself any favours on the record.
I would also add that I think the only reason our share price is lagging is because I would say that our two biggest shareholders (and buyers in light of the recent developments), Richard Griffiths and Lombard Odier, are highly likely to be restricted and may remain that way for a very long time, if not through the entire duration of the case. They would have been privy to more detailed information on these topics, the deposition testimony, legal opinions, etc in order to underwrite the debt instrument that was agreed. I do now sympathise a little bit with the debt deal they agreed. They took a leap of faith in restricting themselves, but were probably very keen to to quickly provide significant financing as a show of strength to Samsung after the stay was granted.
I think this is pretty ground breaking stuff. Now I really start to think that Samsung wants to de-risk their Nanosys investment via a SPAC as they know they will have to pay up and that they don't stand a chance at producing advanced QDs in the future. In fact, that deposition from Bawendi could blow up that deal in its entirety and maybe that is why they have requested that it remains redacted.
Here we go...
So I can see from 'PATENT OWNER’S MOTION TO SEAL AND TO ENTER DEFAULT PROTECTIVE ORDER PURSUANT TO 37 C.F.R. § 42.54' that Samsung's star expert witness, Dr. Moungie Bawendi, was deposed on June 16, 2021. If you look through that document, where Nanoco is saying there is no reason to redact the document and that his deposition and rebuttal report should be disclosed, you will see that Dr. Bawendi was deposed on June 16th, 2021, quoted as (Excerpts of the June 16, 2021 Deposition Transcript of Moungi G. Bawendi, Ph.D.).
Why is this important?
Remember that after IPRs were instituted, Samsung filed a renewed motion to stay on May 20th. Then through June, replies and sur-replies were filed where it was very clear that we did not want to stay the case. We filed a sur-reply against the motion to stay on June 14th and then we deposed Dr. Bawendi on June 16th, where he clearly discredited Samsung's prior art defence to a devastating degree. This left Samsung with their tail between their legs, now looking to redact and conceal the damage he has done. It appears to be a significant self-inflicted and potentially fatal blow to the IPR proceedings and at the district court level.
I think it was this very damaging testimony which gave our lawyers the impetus to stay the case ahead of IPRs, because he singlehandedly killed the prior art defence, which was all they could ever fall back on. In my view, Bawendi, the supposed 'King of Quantum Dots' has confirmed that the patents are valid.
What a bit of digging and investigative work can do.
I am reading the Dr Brandi Corsair declaration this evening. As you know, Dr Corsair is one of our experts. I would advise you guys to read through the declaration, but I think this paragraph summarises her view of Samsung's prior art argument.
In my opinion, the Board should uphold the validity of the ’828 Patent. The Board instituted this proceeding under the belief that Samsung’s primary reference, Banin, discloses a molecular cluster compound required by all challenged claims. In fact, Banin does not disclose such a cluster compound and instead teaches the use of a molten gold droplets with a range of sizes to access nanomaterials through a distinct mechanism. In addition, where Samsung has relied upon combinations of references in its in proposed Grounds, the references do not align. While all are nanotechnology references, they teach different techniques that a person of ordinary skill in the art would not attempt to mix or perform together. Reflective of that fact, Samsung has not adequately explained how the references would have worked together in the proposed combinations, particularly where the Grounds propose combining discrete aspects from references teaching techniques that although well known, are largely incompatible.
She tears each prior art reference apart for various reasons, some of which are very clear to a layman such as myself. One of these is that not only would using all the prior art references be incompatible, but even if they did, one would have to use each reference with specific reaction parameters (for simplicity lets just say the heat, pressure applied, etc), which an ordinary person skilled in the art would not do.
Now here is a bomb... The key here is the term Molecular Cluster Compound, a definition which is central to our process. For simplicity, let's just say that this means using different MCCs which are all consistent in mass, shape, etc. Dr. Corsair points out that one of the prior art references, Hutchinson, produces significant impurities. She then references SAMSUNG's expert, Dr. Bawendi (Nanosys/QD Vision/MIT) which is under redaction at the request of Samsung, where she says "I agree with Dr. Bawendi that clusters having a wide distribution of different masses cannot be considered a MCC, nor does that change if one assigns a “theoretical” molecular formula or mass based on an average value." and that "A POSITA would not confuse assumptions and estimates with a welldefined chemical structure, particularly where the data points used to generate that assumption are so widely varied. This opinion is shared by Samsung’s district court witness, Moungi G. Bawendi, Ph.D. a professor of chemistry at MIT, respectively. "
No wonder the Bawendi deposition (or declaration) is under seal and that Kirkland's Jeremy Wilson took such great offence to Michael Newman's questioning of Dr. Mark Green. Samsung's own expert witness, Dr. Moungie Bawendi, has discredited there case.
Fascinating, but I am no
I also find it very funny that 'Doctor' Mark Green, who spent decades researching nanomaterials and quantum dots claimed not to have been familiar with the Bawendi exhibits/research. In fact on his King's College page, one of his research interests is Organometallic based synthesis of semiconductor and metal nanoparticles. He was lying through his teeth and his answer was cooked. Working alongside the late Paul O'Brien, he would have had a close eye on what the MIT research team was up to.
Too bad he ran into Michael Newman - Before joining Mintz, Michael worked with the law firms Pepper Hamilton LLP and Fish & Richardson PC. He has also worked as a software engineer and has conducted biochemical research at Harvard Medical School.
Bawendi should be struck as an expert, he is clearly conflicted for the reasons noted previously. Mark Green should also be struck. Reading the transcripts, his performance looked laughable. Knowing how Samsung play, I wouldn't be surprised if the Samsung Research Institute has promised him some grant down the line. The fact that he once asked Nigel Pickett for a reference for a grant application and then turned on him agreeing to serve as an expert for Samsung, tells me all I need to know about the man.
I have thought a bit more and think I have a decent interpretation of what Michael Newman was getting at when he pressed Mark Green on Bawendi. Earlier on in his deposition, Mark Green basically argues that 'a person having ordinary skill in the art' wouldn't interpret our definition of molecular clusters to mean a cluster of more than one different compound and that our patents (and for arguments sake, Samsung's infringed products) do not practice that definition.
Then when he puts the Bawendi exhibit in front of him, which refers to the use of two different zinco oxo clusters to be molecular compounds, Mark Green refuses to confirm that these are two different molecular compounds in a cluster. Bear in mind that Bawendi figured out how to make QDs with zinc (heavy metal) and we figured out how to make QDs without heavy metals (cadmium free). Michael Newman is saying, Bawendi's patents practice the definition of a molecular cluster using different molecular compounds, so why can't that interpretation be used for Nanoco's patents? He continues to prod and discredit him about his interpretation of what a molecular cluster compound is and Mark Green flip flops all over the place, non-committal, whilst Counsel Wilson of Kirkland & Ellis basically keeps telling him not to answer the question.
This is very important, because on one hand Samsung use Bawendi's patents and therefore a similar definition of molecular clusters to produce QDs with heavy metal, but then argue that this doesn't hold true for cadmium free QDs i.e. non-metal molecular clusters. That is why Kirkland & Ellis tell Newman 'you are trying to advance your civil court infringement action through this vehicle'. It was very clever from Newman. On one hand they lean on that definition to produce QDs but they want to have their cake and eat it too in saying the definition doesn't work when it comes to Nanoco's patents. It gives a lot of credence to the validity of the patents and also the fact that Samsung is infringing.
Sorry guys - I kept digging and must correct myself. I had read the filing incorrectly. Moungi Bawendi was engaged as an expert by Samsung to rebut one of our expert reports. This rebuttal and his deposition were put under seal with respect to the district court litigation, which was requested by Samsung.
Moungi Bawendi has seemingly a big contributor to the development of QD Vision's patent portfolio. QD Vision was an MIT spin out that was later acquired by Samsung for USD$ 70m in December 2016. Bawendi was also an early scientific advisor to Nanosys from 2003 and he licensed a number of his QD patents to Nanosys. Of course, Samsung is also an investor in Nanosys.
You will recall that Nanosys tried to sue Nanoco and its US distributor in Wisconsin. We actually settled this lawsuit, which related to the production of QDs with Cadmium (see: https://www.technologylawsource.com/2009/07/articles/nanotechnology/quantum-dot-patent-infringement-lawsuit-resolved/ and https://www.nanocotechnologies.com/media/nanoco-settles-patent-infringement-lawsuit-with-nanosys-inc-for-quantum-dot-technology/ - we then invalidated many of the claims at the PTAB.
Now this is where it gets interesting. We had a host of claims in two MIT patents invalidated where Moungi Bawendi was the inventor. Just looking at the patent language in those patents and people like Paul O'Brien, Nigel Pickett, and Nanoco itself are cited. Irrespective of the fact we invalidated many of his claims, he is testifying on our behalf. Now that is honour at it's finest - there is clearly huge respect between the two sides, who are pioneers in the field. Fantastic.
https://patents.google.com/patent/US6322901B1/en
https://patents.google.com/patent/US6501091B1/en?oq=+6%2c501%2c091
PTAB Nixes Claims In MIT-Owned 'Quantum Dot' Patent
By Kelly Knaub
Law360, New York (July 6, 2016, 6:51 PM EDT) -- The Patent Trial and Appeal Board on Tuesday found that Nanoco Technologies Ltd. had sufficiently shown that various claims in a Massachusetts Institute of Technology patent related to so-called quantum dot technology were invalid as anticipated by prior art.
In a final written decision, the board ruled that Nanoco had proved that most of the challenged claims in MIT's patent, titled "Highly Luminescent Color-Selective NanoCrystalline Materials," are invalid as anticipated by prior art referred to as Peng.
Quantum dots are nanometer-sized semiconductor nanoparticles that emit bright, near-monochromatic light under light or electrical stimulation and are intended for use in ultrathin displays, lighting, solar cells and biological imaging.
"Having fully considered the parties' contentions and supporting evidence, we are persuaded that petitioner has demonstrated by a preponderance of the evidence that claims 1, 2, 4, 6, 13, 14, 16, 24, 31, 32, 35–41, 43, 44, and 47–50 are unpatentable as anticipated by Peng," the PTAB wrote.
But the board said Nanoco had failed to show that a number of claims were unpatentable as anticipated by prior art referred to as Murray.
The patent was among several that Nanoco was accused of infringing in 2009 by rival Nanosys Inc. in Wisconsin's Western District, but the suit was voluntarily dismissed with prejudice.
Nanosys had alleged that Nanoco's U.S. distributor, Sigma-Aldrich Corp., was using quantum dot technology under patents licensed from MIT to produce devices such as solid-state lighting, photovoltaics and electronic displays.
The company had asked the court to find that Nanoco and Sigma-Aldrich had infringed the MIT quantum dot patents and to issue an injunction barring them selling the dots in the U.S. Nanosys also claimed the defendants had infringed willfully and had sought treble damages.
Tuesday's decision marks the second MIT-owned patent Nanoco has successfully challenged recently, following a separate decision last week. On June 27, the PTAB found that various claims of U.S. Patent Number 6,501,091, which was not included in the 2009 suit, were anticipated by at least five different prior art references.
The patent-in-suit is U.S. Patent Number 6,322,901
When I compare our experts with Mark Green, its clear he is not even fit to wash their boots.
Our two key experts are:
https://chem.washington.edu/people/brandi-m-cossairt
https://en.wikipedia.org/wiki/Moungi_Bawendi
It seems some of Moungi's writings are also paramount to the strength of our case and that his deposition and expert report was also requested to be put under seal last week. He runs MIT's quantum dot research group - see https://nanocluster.mit.edu/
Remember that we previously invalidated two patents in their entirety which were owned by MIT via the IPR process. I don't know if these are relevant here but will do some digging (see: https://www.law360.com/articles/814387/attachments/0)
Mark Green seems central to their whole case but he isn't convincing at all. One thing that stood out was when Michael Newman of Mintz presses him on how he 'did you uncover the prior art or was it handed to you by someone?' and how he discovered it, he says he thinks he found the art himself and when asked how he found it, he implies 'oh I had some of the papers already and then I just did some Googling'.
We finish strongly by asking does he know some of the key experts and research that backs our validity arguments and he confirms that the authors of the relevant literature are professionals he highly respects.
Mark Green seems to be a central figure to Paul O'Brien's work as well. See - https://ref2014impact.azurewebsites.net/casestudies2/refservice.svc/GetCaseStudyPDF/42247
Paul O'Brien must be turning in his grave looking down on the betrayal.
If you go on this link - https://ptab.uspto.gov/#/login - search for the Nanoco case. Then look at the 'Documents for AIA Review Number IPR2021-00183'. From there you will see many documents, but the one I am referring to is the 'Deposition Transcript of Mark A. Green, Ph. D., July 29, 2021'.
I find it very odd how Samsung found Mark Green, who worked closely with Paul O'Brien and Nigel Pickett, as their expert witness to deliver a prior art defence. It stinks of jealousy and a 'revenge of the nerd' narrative.
The relationship with the key inventors behind Nanoco clearly goes way back and has continued until very recently. Mark Green even produced materials for Nigel a couple years ago and also had the cheek to ask Nigel for a letter of support for a grant he was applying to. We are talking about people who have worked very closely for 20 years. Mark Green and Paul O'Brien published many research papers and books together.
Nigel and Paul beat him to the punch in their inventions and filing the relevant patents, set up Nanoco with a lot of funding, effectively leaving him in the dust as he was not asked to join or even made aware that Nanoco was being spun out of the University of Manchester. In fact, he later shifted the core area of his research.
I am sure the PTAB will see through his envy and jealousy.
I thought the most interesting documents to read are the depositions of Samsung's experts, especially Dr Mark Green, who seemingly served under Paul O'Brien and authored papers together.
It is long - the best stuff is from around page 53 onwards... Michael Newman from Mintz butchers the witness in presenting a document he has not yet seen, which ****s on their prior art defence and underwrites the merits of our civil court infringement case. Kirkland reacted angrily, clearly knowing it was highly damaging.
blob:https://ptab.uspto.gov/d747e6fa-f64c-4899-a219-2a208a864261
Get some popcorn!
It is a pleasure. There seem to be a lot of nice people on this board and I enjoy how collaborative this all is.
I find it quite funny as I am heavily involved in another name on the Australian Stock Exchange that is in a very similar situation to Nanoco. In there case it is an arbitration dispute versus a government, with arguably a clearer cut positive result for the company is in sight in the very near term. I get a lot of vitriol back from posters on the Aussie boards for the analysis I share - some pretty shocking stuff. I guess some people don't like hearing the truth and I suppose it is also a cultural thing!