RE: IAM article7 Mar 2023 09:26
The answer was the perceived value of the IP. Even though we hadn’t litigated it yet, it kept shareholders’ faith in the company’s value.”
However, this increased the potential risk associated with asserting its patents against Samsung. “Going into this litigation, there was binary risk for us,” Tenner states. “If we lost, not only would we have failed in the lawsuit, but it would have suggested that our core IP was not enforceable.” But companies need to be prepared to use the IP that they own, he insists, otherwise it is useless.
One of the reasons Nanoco was sufficiently confident to assert its rights was that the narrative behind the litigation was so compelling and simple, Tenner stresses. “Samsung came to us in 2006-2007 and said they didn’t know how to make cadmium-free quantum dots and asked if we could help them. Their chief scientist at the time was on-record as saying that she did not know how to make them,” he claims. “We worked extensively with them for six or seven years after that. Like many small companies, we effectively did that for nothing because the potential prize was so big. But we got to 2013 and Samsung effectively pulled the plug on our cooperation agreement.”
The importance of litigation funding
Nevertheless, Nanoco would not have been able to utilise the US legal system without financial assistance, Tenner emphasises. “The cost of US litigation would have been unaffordable for Nanoco,” he says. “I asked the former CEO: Why not get somebody else to pay for the litigation? He said: Is that even a thing? And I said: of course, it is a thing. Whether it is a health claim, an employment claim, there are companies that will fund third-party litigation in return for a share of the pie.”
But potential funders wanted to make sure Nanoco had a strong case before they would commit, Tenner explains. “In 2018 or 2019, we formally put Samsung on notice, while a lot of due diligence on our case and supporting evidence was performed by potential funders and also legal advisors.”
This process had the collateral benefit of boosting Nanoco’s own confidence in its stance, Tenner comments. “If an independent funding organisation was willing to put its money where its mouth was, having done a detailed review of the case, that gives us confidence,” he says.
Ultimately, however, there were no shortage of companies willing to fund the litigation. “To choose a funder, we ran a beauty parade,” Tenner explains. “We had four different bids and evaluated them like for a tender.” These all put forward different terms and conditions depending on the size of the win and how the win was achieved. “We probably could have got ten bids, but we thought four was enough. We picked GLS Capital.”
Nanoco also worked with strategic advisor Ron Epstein, a former Head of IP at Intel, as well as US legal counsel at Mintz Levin Cohn Ferris Glovsky & Popeo and Caldwell Cassady & Curry. cont....