A federal judge is expected to issue a preliminary injunction bar...
A federal judge is expected to issue a preliminary injunction barring inventor Till Keesmann from selling part of Nano-Proprietary’s carbon nanotube technology. Nano- Proprietary, which licensed carbon nanotube technology from Keesmann in 2000, would suffer “irreparable damage” to its…
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business if he cuts off the license and sells the patents, U.S. Dist. Judge Wayne Anderson, Chicago, said in a 15-page decision. Nano-Proprietary’s motion for a preliminary injunction will be granted once a bond is set, Anderson said. A bond hearing is set this month, he said. Nano-Proprietary also is embroiled in a legal battle with Canon over an alleged breach of their licensing agreement, but that case doesn’t appear linked to the Keesmann suit. Nano-Proprietary paid Keesmann $1.2 million in royalties in May 2004 under their agreement. In late 2005, Keesmann asked Nano- Proprietary for the right to auction off its interest in the pact. Nano-Proprietary rejected Keesmann’s request, arguing that it wouldn’t release the patents for less than $200 million. Keesmann, who sought to sell the patents to NPV Nano Patent Gmbh, tried to terminate the deal in March 2005, alleging that Nano-Proprietary didn’t “actively market” the 3 patents and “failed” to identify companies may have infringed the IP. Nano-Proprietary, however, helped Keesmann get 3 patents reissued, contacted 19 CE companies regarding the technology and made developmental sales to 18 research groups, Anderson said. It also promoted the technology at trade shows, he said. Keesmann and Nano-Proprietary agreed the market for the patents may be worth “hundreds of millions, if not billions” of dollars, but “no commercial application” for them exists yet, Anderson said. “We believe that Nano-Proprietary has adequately established that it actively marketed the sublicense agreements,” he said. Nano- Proprietary also discussed with Keesmann on “several occasions” 2002-2005 whether any of the patents were being “illicitly used” by other companies developing carbon nanotube technology, Anderson said. Nano-Proprietary wasn’t “negligent” in “identifying infringers,” he said. Nano- Proprietary also complied with an audit request but disagreed on its scope and required Keesmann sign a non-disclosure pact. Nano-Proprietary’s attempts to change Keesman’s rights to the records is “somewhat troubling,” its response to the audit was “reasonable,” Anderson said.