the carbon nanotube patent landscape

The Carbon Nanotube Patent Landscape

Drew Harris, J.D.

IP Litigation Attorney Managing Editor

What are Carbon Nanotubes?

Another form of carbon found in nature, with unique structural properties

Two Different Kinds of Nanotubes:Multi-Walled & Single Walled

TEM image of multi-walled carbon nanotube

SWNT MWNT

Unique Properties & Potential Applications of CNTs

Structural properties Manufacturing Films & coatings

Electrical properties Use in electronics Field emission displays

Biological properties Drug delivery Diagnostics

Babolat’s NanotubeTennis Racquet

Using nanotubes for cancer treatment

SPECIFIED USEOF NANOSTRUCTURE

30%

MISCELLANEOUS<1%

MATHEMATICAL ALGORITHMS, E.G.,

SPECIFICALLY ADAPTED FOR

MODELING CONFIGURATIONS OR

PROPERTIES OF NANOSTRUCTURE

<1%

NANOSTRUCTURE 31%

MANUFACTURE, TREATMENT,

OR DETECTION OFNANOSTRUCTURE

39%

Rush to Patent Basic Nanotechnology

Source: Presentation by Bruce Kisliuk, Group Director, USPTO

Nanotech Patents and Pre-grant Publications Distribution By Type of Invention

Crowded Nanotube Patent Landscape

Source: John Miller, The Handbook of Nanotechnology Business, Policy, and Intellectual Property Law (2004)

Basics of Patent Law

Patents are granted by the USPTO Patent requirements: Appropriate subject

matter, novelty, non-obviousness, utility, enablement, etc.

Patent gives 20 years of a “negative right” to exclude others

Patents are numbered (5,747,161 or ‘161) and have one or more “claims” describing the invention

People infringing the “claim” can be sued for up to treble damages

Alleged infringers often challenge the validity of the patent in court

Key “Nanostructure” Patents on Carbon Nanotubes

NEC’s MWCNT Patent NEC’s Iijima credited with

discovering and synthesizing MWCNTs in 1991

NEC’s ‘161 patent claims: “A graphite filament having a

tubular structure and an outer diameter of 30 nm or less, said tubular structure comprising a helical structure of carbon hexagons.”

IBM’s SWCNT Patent IBM researchers developed

method to create SWCNTs in 1993

IBM’s ‘054 patent claims:

“A hollow carbon fiber having a wall consisting essentially of a single layer of carbon atoms.”

Other Potentially Overlapping Composition of Matter Patents

Carbon Nanotechnologies’ ‘783 patent: “A composition of matter comprising at least about 99% by weight of single-wall carbon molecules.”

Nantero’s ‘921 Patent: “An article having a defined orientation and a generally planar extension comprising: a substantially planar web of nanotubes, each nanotube generally lying in a plane that is coplanar with the article and extending along the article but not constrained to being parallel to other nanotubes wherein the substantially planar web of nanotubes provides a conductive pathway through the article.”

Hyperion’s ‘230 Patent: “An essentially cylindrical discrete carbon fibril characterized by a substantially constant diameter between 3.5 and about 70 nanometers ...”

I.L. Medintz, A.R. Clapp, H. Mattoussi, E.R. Goldman, B. Fisher, J.M. Mauro

Dekker Group, Delft U.

Material & Process Simulation Center

Nanoparticles, nanocrystals, nanoparticulate, quantum dots, nanodots, colloidal crystals

Carbon nanotubes, carbon fibrils, Carbon nanotubes, carbon fibrils, carbon whiskers,carbon whiskers, molecular wires molecular wires

Dendrimers, dendritic molecules, Dendrimers, dendritic molecules, starburst conjugatesstarburst conjugates

Problem: Different Terms Can Describe Same Structures

Navigating Upstream through the Nanotube Patent Landscape

Synthesis & Processing

Field Emission Displays

Composition of Matter

Semiconductors

Drug Delivery

Sensors

Patents on Nanotube Synthesis

Example: Unidym’s ‘901 CVD Patent: “A process for synthesis of carbon nanotubes, comprising: anodizing an aluminum substrate in an effective bath to produce an alumina template with a plurality of pores each having a pore diameter; depositing an effective catalyst into the pores; and exposing said alumina template with the catalyst containing pores to an effective hydrocarbon gas at an effective temperature to grow carbon nanotubes in said pores, each carbon nanotube having an outer diameter not greater than the pore diameter in the template in which said carbon nanotube is produced.”

Functionalizing CNTs

Zyvex’s ‘667 Patent: “A method of functionalizing a nanotube, said method comprising: noncovalently bonding a polymer comprising at least one functional group with a nanotube in a non-wrapping fashion.”

Source: S. Banerjee, et al., Covalent Surface Chemistry of Single-Walled Carbon Nanotubes, 17 Advanced Materials 17-29 (2005).

Functionalizing CNTs

Patents on Post-Growth Control & Functionalization

Patents on Methods of Usein a Given Field

Example: Using CNTs for Drug Delivery

Building Block Patents Potentially Preempting Their Fields

Patent # Controlled By Claim Fields

RE38,223 Applied Nanotech A field emission cathode comprising: a substrate; a conducting material deposited over the substrate; and a carbon nano-cylinder deposited over the conducting material.

Nanotube field emission displays

6,031,711 Hyperion A capacitor having an electrode comprising nanofibers having a surface area greater than about 100 m.sup.2 /gm.

Nanotubes in capacitors

6,528,020 Stanford University A molecular sensor comprising: a) a nanotube device comprising at least one carbon nanotube, wherein a first end of said nanotube is in electrical contact with a first conducting element and a second end of said nanotube is in electrical contact with a second conducting element; and b) a coating of one or more sensing agents deposited on said nanotube; wherein said sensing agents are so chosen such that the agents-coated nanotube responds to a particular molecular species.

Nanotubes as sensors

6,824,755 Unidym A method for producing a catalyst support comprising: a) providing a plurality of single-wall carbon nanotubes; b) contacting at least some of the single-wall carbon nanotubes of the plurality with at least one catalytic metal; and c) activating the catalytic metal.

Nanotubes for enhanced catalytic converters

6,965,513 Intel A thermal interface structure comprising: at least one carbon nanotube bundle oriented substantially parallel to a desired heat transfer axis of the thermal interface; and an interstitial material in which the nanotube bundles are embedded.

Nanotubes for heat transfer

NEC Now Enforcing its CNT Patents

Patent Infringement Defenses

1) Argue non-infringement

2) Attack the patent’s validity Not patentable subject matter (35 U.S.C. § 101) Not novel (35 U.S.C. § 102) Not non-obvious (35 U.S.C. § 103) Patent description does not enable (35 U.S.C. §

112)

Applying § 101 Validity Arguments to CNT Structure Patents

35 U.S.C. § 101 Patentable Subject Matter: If CNTs are naturally occurring, is the basic CNT structure still patentable?

U.S. Supreme Court: Laws of nature and basic properties of matter generally not patentable

Federal Court of Appeals: You can still get a patent if you are the first to isolate & characterize CNTs (doctrine from Amgen case on gene patents)

Note: Original fullerene structure (1985) never patented

Applying § 102 Validity Arguments to CNT Structure Patents: Prior Art?

Does Prior Research on Carbon Fibers May Invalidate the Patent?

M. Endo, Grow Carbon Fibers in the Vapor Phase: What You Can Make Out of These Strong Materials and How to Make Them,

Chemtech 18(9), 568-578 (Sept. 1988).


1978 TEM images from R.T.K. Baker published in Chemistry and Physics of Carbon


Does Hyperion’s 1984 patent on “carbon fibrils” anticipate carbon nanotubes?

But Attacking Patent Validity Without Basis Can Cost You

In the recent Takeda Chemical Industries v. Alphapharm case, the court ordered the defendant to pay $16.8 million for baselessly challenging patent validity

Defendants Alphapharm and Mylan baselessly attacked the validity of Takeda’s ‘777 patent on diabetes drug Actos, and kept revising theory of why patent was invalid

Judge Cote order defendants to pay Takeda $16.8 million plus interest in legal and expert fees.

First Nanotechnology Patent Infringement Suit: Elan v. Abraxis

Elan alleges Abraxis’ Abraxane drug, a nanoparticle formulation of paclitaxel for treatment of metastatic breast cancer, violates two of Elan’s patents

Conclusion: Stay Tuned