British firm settles smart TV row with Samsung for $150m
The Korean company has agreed to pay Nanoco for infringing quantum dot tech | Investor added ‘substantial value’ via litigation funding and support | Petitioner set for major revenue boost from settlement.
A British innovator in nanoparticle and quantum dot technology is set to receive a $90-million boost to its revenue after reaching a settlement with Samsung Electronics over disputed patents used in its smart televisions.
In February 2020, Nanoco, manufacturer of cadmium-free nanoparticles, or ‘quantum dots’, accused Samsung of infringing several of its patents, with the release of its QLED TV.
The dispute involved patents held by the firm in the US, Germany and China, and included five inter partes review petitions at the US Patent and Trademark Office (USPTO), in which all challenged claims were upheld.
The "no-fault" settlement was announced on Friday, February 3 at the US District Court for the Eastern District of Texas, where Nanoco had originally filed its suit because Samsung’s allegedly infringing activities took place in this jurisdiction.
Nanoco said in its 2020 complaint that Samsung had stolen its quantum dot technology after being approached by the Korean firm as early as 2010 to explore the use of this tech. The British firm provided samples of its quantum dots, but they failed to reach a licence agreement. Samsung then debuted its quantum dot TV in 2015.
The US patents in dispute were US patent numbers: 7,588,828; 7,803,423; 7,867,557; 8,524,365; and 9,680,068.
Revenue boost
Nanoco, located in Cheshire, northwest England, was financed by Chicago-based investment firm GLS Capital.
The $150-million settlement will deliver a significant revenue boost of more than $90 million in net proceeds for Nanoco, after litigation costs are paid.
In an announcement on the London Stock Exchange, Nanoco explained that this includes a global, perpetual licence agreement and the sale of non-core patents, and that the settlement will be paid in two equal tranches (by 5 March 2023 and by 3 February 2024).
Chris Richards, chairman of Nanoco Group, said: "This has been a long and hard battle for Nanoco…The settlement value is almost three times our own low case damages model; settling now avoids the risks associated with further litigation and the adverse impact from the time value of money in an appeals process that would have extended for years.
“Even more importantly, it validates Nanoco's core IP, which we will continue to defend vigorously.”
'Equal footing'
Nanoco CEO Brian Tenner said in a press release yesterday: “Litigation finance allowed us to pursue our claims on [an] equal footing against a much larger adversary.
“We are grateful for their assistance throughout the course of the litigation, which we believe added substantial value.”
Adam Gill, managing director at GLS Capital, described Nanoco as a “true pioneer in its field”, stating: “We were proud to support Nanoco in obtaining the recognition and compensation they deserve for their fundamental inventions.
“Its foundational technology allows quantum dots to be made without the use of toxic heavy metals like cadmium, enabling displays like Samsung’s QLED televisions to be brighter, more brilliant and environmentally friendly.”
Describing its patent investment strategy, Gill explained in a separate release that GLS “funds complex subject matter that solves difficult engineering problems” and that the case between Nanoco and Samsung “fit the bill”.
“Nanoco’s patents covered colloidal synthesis of nanoparticles. The industry had been trying for years to make high-quality cadmium-free quantum dots at scale, but Nanoco figured out how to do it.”
Counsel for Nanoco, Michael Newman—partner at Mintz—told WIPR: "Mintz is proud to have assisted Nanoco in protecting its pioneering intellectual property in cadmium-free quantum dots, which revolutionised high-end televisions and other displays.
"This is a great result, and recognises the significant contributions made by this remarkable company."
WIPR has approached legal representatives for Samsung for comment, without immediate response.
Smartphone dispute
Separately, Samsung and Apple have appealed to the Patent Trial and Appeal Board (PTAB) over unsuccessfully challenging a patent covering smartphone touchscreen technology held by Neonode Smartphone.
Global firm Neonode, headquartered in Sweden, sued in 2020 for alleged infringement of interface technology used in Apple’s iPhone and Samsung’s Galaxy (US patent numbers 8,095,879, and 8,812,993.
In their appeal, filed yesterday, Monday 6, the smartphone manufacturers argued that both patents were invalid since they protect innovations that are obvious in light of prior art.
This article has been updated since publication to incorporate comment from Michael Newman.
