IAM article7 Mar 2023 09:25
Nanoco Group, a UK-based SME that was spun out of the University of Manchester in the early 2000s, struck a “transformative” $150 million settlement with Samsung last month, ending a patent infringement dispute spanning the US, Germany and China.
The assertion campaign that brought about the big-money deal would not have been possible without the backing of a litigation funding entity, Nanoco’s CEO Brian Tenner has said. And now, he told IAM in an exclusive interview, the company is eyeing up other infringers and forming a new strategy for future patent monetisation efforts.
Nanoco asserted five patents against Samsung in the US prong of the legal action, which got underway in 2020. These cover fundamental inventions relating to cadmium-free quantum dots, which, Nanoco claimed, are used in Samsung’s QLED TVs. After 47 challenged claims were upheld in inter partes reviews at the USPTO’s Patent Trial and Appeal Board, and with just hours to go before the beginning of a Western District of Texas jury trial, the parties were able to reach an agreement.
Samsung will hand over the $150 million in two equal installments: one this month and one in February 2024. It will owe no further royalties for use of the technology and will also gain ownership of a small portfolio of Nanoco’s non-core patents.
Nanoco will get only $90 million (60%) of this money, with litigation funders GLS Capital and the company’s legal advisors taking the remaining share. Nevertheless, the deal represents an extraordinary boost for Nanoco, which earned just £2.5 million in 2022.
“We have used the word ‘transformational’ to describe this litigation’s significance for the business and its prospects,” comments Tenner. “There are all kinds of reference points to illustrate how important the agreement is.” In the 20 years the company has existed it has raised a total of just £60 million from shareholders, he notes.
“We have had two or three equity raises over the past few years just to keep the lights on, so this net settlement allows us to push that into the long grass and push forward with some of our projects.” Another telling illustration of the deal’s value is that, when it filed suit against Samsung, Nanoco was worth around $75 million – less than the payment it has now won.
The value of Nanoco’s IP
Nanoco has no product of its own on the market, so the settlement underscores the commercial importance of the company’s IP portfolio. According to its 2022 annual report, this includes 503 patents and a “significant amount of know-how and business secrets”.
“IP is important for us as an R&D based company with no product of our own on the market as yet,” explains Tenner. “In the darker days for Nanoco – because we have been jilted at the alter twice: once by Samsung and once by another large company – we started to ask ourselves what the residual value in the business was. cont.....