Who Owns CarbonNanotube Field Emisssion Displays?   

    Nano Proprietary Inc. is a tiny company in Austin TX, an outgrowth of SIDiamond, with a history that illuminates lost battles for display manufacturing in the  U. S., from its founding concentrating on exploiting the properties of diamonds for devices, backed by awards from the DoD ( mostly from the Ballistic Missile Defense arm) and by the public  in  numerous stock issues.  Nine years ago SIDiamond was taken over by Zvi Yaniv, now President, and a group of  financiers from the midWest.

    Yaniv has a lifelong connection to display.  
    He was there when LCDs began, and played a prominent role in their home-grown flickering life and death in the U. S.
He has worked on flat panels from AMLCDs to cholesteric LCDs, diamonds to LEDs and now to nano carbon FEDs.   A prolific inventor
with 99 patents, he is also veteran and survivor of many courtroom battles. 

   Nano Proprietary has 29  employees.  It has made some money from  licensing  - its most successful license  from Canon, who paid $5.7M in 1999 for access to NPI's then patent portfolio, published between 1993 and 1998.   
Nano Proprietary is now fighting for  two patent  lawsuits, one NPI would like decided rapidly (against patent holder Till Keesmann ) the other against Canon, Inc., which  looks like progress will be stately  Canon, almost ready to produce SED TVs, a cousin to nano-carbon FEDs,  may meanwhile gain time for SED production with trial runs in Japan.   NPI would like  more speed, thinking of a gigantic upturn in its fortunes from a one time payment, to royalties on every SED TV sold by Canon.  
    Licensed to Canon were 167 patents, some still pending, building on the work of two early SID researchers: Nalin Kumar and Chenggang Xie. Founder Howard Schmidt appears as an author now and again; by '96 Zvi Yaniv  also is named with Kumar, later with inventor Richard Fink. 
Somewhere after 2000, SIDiamond/NPI made the decision to change from an R/D development house to  become a patent licenser.   

          One year after the Canon agreement NPI  signed with German entrepreneur Till Keesmann  for 3 additional field emission display  patents - these were nano-carbon patents.   Half the rights were bought for one and one quarter million dollars.  NPI now believes those patents to be of inestimable value: (pressed, NPI came up with the price of $200M, which it might/or might not accept.)
The earlier agreement with Canon would seem to rule out Canon's involvement in the Keesmann case,  but last year agents of Keesmann rushed to offer rights to those 3 patents to Canon, while NPI  separately, accuses Canon of involvement in the Keesmann case.   
   
    NPI is demanding (much) more money from Canon  claiming its' patents' use in SEDs,  Surface-conduction Electron-emitter Display,  that Canon has been developing since the '90s.
    Toshiba too began nano carbon (or like) display development in the '90s,  as did Motorola and a legion of others. .
 

    The Canon case is being heard in Texas, where Nano Proprietary has a good chance of winning  largely because of an unrelated Canon blunder. Canon and Toshiba had hoped to partner developing/producing/selling SEDs, and formed SED Inc., an almost joint ownership with Canon taking 1% greater interest.  Canon claimed the partnership was a Canon 'subsidiary,' licensed, therefore to use  its patents.   
But,  NPI points out,  in Canon's contract with Toshiba,  all disputed IP decisions revert to Canon only,  thus changing SED Inc. from  a Canon subsidiary, into a new company  NOT licensed to use NPI patents,  an interpretation agreed to by a  Texas judge:
    "To put it bluntly, Canon's characterization of SED as a subsidiary simply can't pass the smell test. Canon has bargained away its voting rights in SED.  Dead fish don't swim, dead dogs don't hunt and Canon's dead voting rights don't give it a 'majority of the shares entitled to vote' in SED."  (Judge Sam Sparks, 11/14/'06). 
 

    Ready for a U.S. showing at CES 2007 early in January, Canon and Toshiba instead closed  booths, telling reporters the displays were ready, only absent because of lawsuits.   A week later Toshiba pulled out of SED Inc., renaming its employees Canon employees, eschewing development. 
    "Canon will purchase from Toshiba all of Toshiba's outstanding shares of SED Inc....SED Inc. will become a wholly owned subsidiary of Canon, effective January 29, 2007."
    That doesn't satisfy Nano Proprietary who sees it as a ploy for Canon  to evade paying  NPI   royalties.
    “We have terminated Canon’s license as a result of breach of contract. Moreover, our complaint against Canon includes other counts, including fraud unrelated to the ownership of SED....We are, however, willing to enter into a new license agreement with Canon on reasonable terms. "(Jan. 13,2007.) " says NPI. The Texas trial continues in this month, March 
Other, however, are also eager to enter into agreements with Canon on those patents. That story (and trial) is  taking place in Chicago.

    Canon plans to continue its development with its new employees for a commercially available SED TV by the end of 2007, perhaps to be sold only in Japan. Or Canon may first concentrate on specialized sets for broadcast studios,  very low volume, very high price.

     Should the Texas trial end with a new  NPI licensing agreement for SED, speculation says NPI may demand royalties for  every SED sold - wealth way beyond the ~ $6 M Canon paid in 1999.

Nano Proprietary is facing powerful problems of its own. 

    One year after the Canon agreement was signed in  2000 NPI came across  3 new patents, two of which are believed  to be a treasure trove.   In a 2006 Conference Call, CEO Marc Eller announced NPI's  new patents "very crucial to our strategy as we continue to strengthen our intellectual property base in nanotechnology and more specifically in the use of carbon nanotubes for immediate applications.” 

     The three were acquired in 2000 by NPI from German entrepreneur Till Keesmann ( maybe co-inventor/ maybe not,)  who got them from inventor Hubert Grosse-Wilde  for $6500 up front, plus a promise to pay G-W 30% of future profits.
Keesmann and Grosse Wilde then patent the inventions in Germany and the U.S., UK and France.
     The last we hear of the mysterious Grosse-Wilde is when his revenue rights are terminated by Keesmann as K. sells his patents again to new German partners late 2006.

 In 2000 NPI bought 50% of  Keesmann's rights for  $250,000  with the signing of  a contract,  the  payment of  an additional $1 million  almost four years later, and a promise to pay him half the royalties from companies recruited by NPI.  The contract promises  to promote  joint ventures, partnerships, sub-licenses "exclusively and world-wide."
Till must sign all licenses.  NPI has 60 days to "cure." any complaints
Till may have.   He may also ask for an audit.

- to be continued-