The carbon nanotube patent landscape

Nanotechnology Law and Business

Volumn 3, Issue 4, 2006, Pages 427-454

[No Author Info available]

Author keywords

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Indexed keywords

COST EFFECTIVENESS; ELECTRONIC EQUIPMENT; HEALTH CARE; PATENTS AND INVENTIONS; PLANT STARTUP;

CARBON NANOTUBE PATENT LANDSCAPE; PATENT HOLDERS; PATENT LANDSCAPE; PATENT PROTECTION;

CARBON NANOTUBES;

EID: 34948814704     PISSN: 15462080     EISSN: 15462080     Source Type: Journal    
DOI: None     Document Type: Article

References (122)

1. For a detailed overview of carbon nanotubes, see B. I. Yakobson & R. E. Smalley, Fullerene Nanotubes: C1.000,000 and Beyond, 85 AMERICAN SCIENTIST 324 (1997);
2. M. S. DRESSELHAUS ET AL., SCIENCE OF FULLERENES AND CARBON NANOTUBES (1996).
3. For an overview of the properties of nanotubes and citations to technical references, see generally JOHN C. MILLER ET AL., THE HANDBOOK OF NANOTECHNOLOGY BUSINESS, POLICY, AND INTELLECTUAL PROPERTY LAW 1718 (2005).
4. See id.
5. Some of the most disruptive applications of carbon nanotubes involve massive integration of organized nanotube architectures. For example, using nanotubes as interconnects in integrated circuits requires CMOS-compatible techniques for getting large numbers nanotubes with particular electrical properties in the proper position and location on the chip. At the time of this writing, however, manufacturers have not yet demonstrated the ability to reliably and controllably manufacture individual nanotubes directly into devices in a high volume manufacturing setting. See, e.g., Anna Fontcuberta i Morral et al., Carbon Nanotubes: A Solution to the Burning Interconnect Problem?, 2 NANOTECH L & Bus. 321 (2005).
6. At the time of this writing, it costs $375 per gram for untreated HiPco nanotubes from Carbon Nanotechnologies Inc. See Carbon Nanotechnologies, Inc. Online Store, http://www.cnanotech.com/pages/store/6- 0_online_store.html#Research_Grades (last visited Nov. 26, 2006).
7. See Patrick Collines & John Hagerstrom, Creating High Performance Conductive Composites with Carbon Nanotubes, available at http://www.fibrils.com/PDFs/SPE%20Auto%20Composites%202002-09-13%20.pdf (last visited Dec. 5, 2006) ("Carbon nanotube-filled plastics are being used in several commercial automotive applications in North America, Europe, and Japan. One application area is in fuel lines.").
8. Easton, for example, currently sells baseball bats incorporating carbon nanotubes. For a detailed description of the product, see Easton CNT Is Real Nanotechnology, available at http://baseball.eastonsports.com/pdf/ EastonCNT_baseball.pdf (last visited Dec. 5, 2006).
9. For example, UT Dallas researchers have shown that fibers comprised of carbon nanotubes are stronger than steel, Kevlar, or spider silk. See Alan B. Dalton et al., Super-Tough Carbon-Nanotube Fibres, 423 NATURE 703 (2003).
10. See also Veedu et al., "Macroscopic Fiber Comprising Single-wall Carbon Nanotubes and Acrylonitrile-based Polymer and Process For Making the Same," U.S. Patent 6,852,410 (issued Feb. 8, 2005) ("High strength and high modulus fibers comprising single-wall carbon nanotubes are useful in a variety of applications, including, but not limited to carbon fiber production, fabrics for body armor, such as bullet-proof vests, and fibers for material reinforcement, such as in tire cord and in cement.").
11. See Glatkowski et al., "Electromagnetic Shielding Composite Comprising Nanotubes," U.S. Patent Number 6,265,466 (issued July 24, 2001).
12. For a comprehensive review of the electron field emission properties of carbon nanotubes, see Yuan Cheng & Otto Zhou, Electron Field Emission From Carbon Nanotubes, 4 C. R. PHYSIQUE 1021 (2003).
13. See Motorola Media Center, Motorola Labs Debuts First Ever Nano Emissive Flat Screen Display Prototype, available at http://www.motorola. com/mediacenter/news/detail/0,5484_5474_23,00.html (posted on May 9, 2005).
14. For a detailed discussion of thermal management issues facing the semiconductor industry, see Alessandro Zago, Nanomaterials: Disrupting the Thermal Management and Textile Industries, 2 NANOTECH. L & Bus. 23 (2005).
15. For a more comprehensive discussion of commercialization of nanotube-based heat sinks, see id. For a more detailed technical discussion of the thermal properties of carbon nanotubes,
16. see J. Hone et al., Thermal Properties of Carbon Nanotubes and Nanotube-Based Materials, 74 APPLIED PHYSICS A 339 (2002).
17. See Fujitsu Pioneers Use of Carbon Nanotubes for Heatsinks for Semiconductors, http://www.fujitsu.com/global/news/pr/archives/month/2005/ 20051205-01.html (posted on Dec. 5,2005).
18. Nantero, for example, claims that it its drop-in memory chip will come to market in 2007. See TG Daily, Nantero To Roll Out Carbon Nanotube Memory In 2007, http://www.tgdaily.com/2006/02/03/nantero_cnt_memory/ (posted on February 3, 2006).
19. For a detailed discussion of how carbon nanotubes could serve as a suitable replacement to copper interconnects in integrated circuits, see Fontcuberta i Morral et al., supra note 4.
20. In 1998, IBM researchers fabricated field-effect transistors based on individual single and multi-wall carbon nanotubes. See R. Martel et al., Single and Multi-wall Carbon Nanotube Field-Effect Transistors, 73 APPLIED PHYSICS LETTERS 2447 (1998). In 2002, IBM announced a prototype for a nanotube transistor that outperforms existing silicon transistors.
21. TH DESIGN AUTOMATION CONFERENCE 94 (2002). In 2005, GE Global Research announced the development of an ideal carbon nanotube diode that operates at the "theoretical limit," or best possible performance.
22. See Nano Science and Technology Institute, GE Global Research Develops "Ideal" Carbon Nanotube Diode, available at http://www.crd.ge.com/04_media/news/20050819_cnd.shtml (posted on Aug. 18, 2005).
23. There is controversy surrounding the use of nanotubes for hydrogen storage. Several early experiments demonstrated impressive hydrogen storage capacities. These results, however, have not been consistently demonstrated, and there is no clear evidence that nanotubes can store the amount of hydrogen required for automotive applications. For a detailed review of the technical literature, see M. Hirscher & M. Becher, Hydrogen Storage in Carbon Nanotubes, 3 J. NANOSCI. NANOTECHNOL. 3-17 (2003).
24. NEC, for example, has developed a tiny fuel cell for mobile terminals using carbon nanotubes as electrodes. See NEC Laboratories, NEC Uses Carbon Nanotubes to Develop a Tiny Fuel Cell For Mobile Applications, available at http://www.labs.nec.co.jp/Eng/Topics/data/r010830/ (posted on Aug. 30, 2001). In 2005, Pacific Fuel Cell Corp. announced a prototype that uses 75% less platinum while exceeding the performance of current membrane electrode assemblies for fuel cells.
25. See, e.g., L. Hu, et al, Percolation in Transparent and Conducting Carbon Nanotube Networks, 4 NANO LETT. 2513 (2004).
26. See, e.g., E. Kymakis & G. A. J. Amaratunga, Single-Wall Carbon Nanotube / Conjugated Polymer Photovoltaic Devices, 80 APPLIED PHYSICS LETTERS 112 (2002).
27. In 2005, for example, a group at UC Davis published a process for making high density supercapacitors using thin films of multi-walled nanotubes. See C. Du, J. Yeh & N. Pan, High Power Density Supercapacitors Using Locally Aligned Carbon Nanotube Electrodes, 16 NANOTECHNOLOGY 350 (2005).
28. In 2002, researchers at the University of North Carolina published data suggesting that nanotubes hold twice as much energy as graphite materials currently used as electrodes in rechargeable lithium ion batters. See H. Shimoda et al., Lithium Intercalation Into Opened Single-Wall Carbon Nanotubes: Storage Capacity and Electronic Properties, 88 PHYS. REV. LETT. 15502 (2002).
29. See, e.g., Nadine Wong Shi Kam, Carbon Nanotubes As Multifunctional Biological Transporters and Near-Infrared Agents For Selective Cancer Cell Destruction, 102 PROCEEDINGS OF THE NATIONAL ACADEMY OF SCIENCES 11600 (2005).
30. See, e.g., Robert Chen et al., Noncovalent Functionalization of Carbon Nanotubes for Highly Specific Electronic Biosensors, 100 PROCEEDINGS OF THE NATIONAL ACADEMY OF SCIENCES 4984 (2005).
31. See, e.g., Bin Zhao et al., A Bone Mimic Based on the Self-Assembly of Hydroxyapatite on Chemically Functionalized Single-Walled Carbon Nanotubes, 17 CHEM. MATER. 3235 (2005).
32. See, e.g., Xinfeng Shi et al., Rheological Behavior And Mechanical Characterization of Injectable Poly(propylene fumarate) / Single-Walled Carbon Nanotube Composites For Bone Tissue Engineering, 16 NANOTECHNOLOGY S531 (2005).
33. For a detailed review of the three synthesis methods, see Hongjie Dai, Nanotube Growth and Characterization, in CARBON NANOTUBES 29 (M.S. Dresselhaus, G. Dresselhaus & Ph. Avouris eds., 2001).
34. Id. at 31.
35. NEC researchers have shown that water-assisted CVD growth can yield up to 99.98% pure single walled nanotube samples, which is far superior than any other method. See K. Hâta et al., Water-Assisted Highly Efficient Synthesis of Impurity-Free Single-Walled Carbon Nanotube, 306 SCIENCE 1362 (2004).
36. CVD enables nanotube synthesis at predetermined locations through catalyst patterning. See J. Kong et al., Synthesis of Individual Single-Walled Carbon Nanotubes on Patterned Silicon Wafers, 395 NATURE 878 (1998). Additionally, electric fields and control of the gas flow can be used to synthesize oriented arrays of nanotubes.
37. See A. Ural et al., Electric-Field-Aligned Growth of Single-Walled Carbon Nanotubes On Surfaces, 81 APPLIED PHYSICS LETTERS 3464 (2002);
38. S. Huang et al., Growth of Millimeter Long And Horizontally Aligned Single-Walled Carbon Nanotubes On Flat Substrates, 125 JOURNAL OF THE AMERICAN CHEMICAL SOCIETY 5636 (2003). Different synthesis techniques can be used to control nanotube diameter. For example, ferritin has been used as the catalyst precursor in a plasma-enhanced CVD reactor to synthesize narrow diameter nanotubes.
39. See Y. Li et al., Preferential Growth of Semiconducting Single-Walled Carbon Nanotubes by A Plasma Enhanced CVD Method, 4 NANO LETTERS 317 (2004). The "CoMoCAT" developed at University of Oklahoma and being commercialized by Southwest Nanotechnologies can also be used to achieve highly uniform nanotube diameters.
40. See Resasco et al., A Scalable Process for Production of Single-Walled Carbon Nanotubes by Catalytic Disproportionation of CO on a Solid Catalyst, 4 JOURNAL OFNANOPARTICLE RESEARCH 131 (2002). Finally, recent production advances also enable control of the length of nanotubes.
41. See L. Zheng et al., Ultralong Single-wall Carbon Canotubes, 3 NATURE MATERIALS 673 (2004).
42. Plasma CVD involves the use of similar gases as conventional CVD, but includes an electric field for plasma ignition. Plasma CVD can be used to grow vertically aligned nanotubes at lower temperatures than conventional CVD. See Z. F. Ren et al., Synthesis of Large Arrays of Well Aligned Nanotubes on Glass, 6 SCIENCE 1105 (1998).
43. HiPco involves a gaseous metal catalyst injected into the reactor with a stream of carbon monoxide. See P. Nikolaev et al., Gas-Phase Catalytic Growth of Single-walled Carbon Nanotubes from Carbon Monoxide, 313 CHEM. PHYS. LETT. 91 (1999). Carbon Nanotechnologies has developed the HiPco process for supplying carbon nanotubes.
44. A number of different methods for purifying nanotubes have been developed. It is likely that manufacturers will use combinations of these different methods. See R. C. Haddon et al., Purification and Separation of Carbon Nanotubes, 29 MRS BULLETIN 252 (2004). One of the most common purification methods involves heating the nanotubes under oxidizing conditions and washing the nanotubes with a solution comprising surfactant.
45. See J. Liu et al., Fullerene Pipes, 280 SCIENCE 1253 (1998);
46. Smalley et al., "Method for Purification of As-Produced Single-Wall Carbon Nanotubes," U.S. Patent 6,936,233 (issued Aug. 30,2005). A recently developed and promising purification technique involves use of microwave heating in air for purification.
47. See Avetik R. Harutyunyan et al., Purification of Single-Wall Carbon Nanotubes By Selective Microwave Heating of Catalyst Particles, 106 J. PHYS. CHEM.B. 8671 (2002).
48. See generally K. TANAKA, T. YAMABE & K. FUKUU, THE SCIENCE AND TECHNOLOGY OF CARB ON NANOTUBES (1999). In addition to high purity levels being needed to leverage unique nanotube properties, integrating nanotubes into existing electronics manufacturing facilities requires highly pure materials.
49. See, e.g., Rahul Sen et al., "High Purity Nanotube Fabrics and Films," U.S. Patent Application 20050058797 (published Mar. 17,2005) ("[T]he inclusion or incorporation of the SWNT as part of standard microelectronic fabrication process has faced challenges due to a lack of a readily available application method compatible with existing semiconductor equipment and tools and meeting the stringent materials standards required in the electronic fabrication process. Standards for such a method include, but are not limited to, non-toxicity, non-flammability, ready availability in CMOS or electronics grades, substantially free from suspended particles (including but not limited to submicro- and nano-scale particles and aggregates)...").
50. Because nanotubes are difficult to disperse and dissolve in water and other inorganic materials, chemical functionalization strategies are generally used for dispersion and solubilization of nanotubes. Noncovalent functionalization strategies have proven to be more effective in maintaining the unique properties of nanotubes than covalent functionalization strategies. For a detailed review of nanotube solubilization and dispersion, see Andreas Hirsch & Otto Vostrowsky, Functionalization of Carbon Nanotubes, 245 TOPICS IN CURRENT CHEMISTRY 193 (2005).
51. See, e.g., Cheol Park et al., Dispersion of Single Wall Carbon Nanotubes by In Situ Polymerization Under Sonication, 364 CHEM. PHYS. LETT. 303 (Oct. 2002).
52. See Fontcuberta i Morral et al., supra note 4.
53. A number of different techniques have been proposed for separating nanotubes by chirality and diameter. See, e.g., Debjit Chattopadhyay et al., A Route For Separation of Semiconducting From Metallic Single-Wall Carbon Nanotubes, 125 J. AM. CHEM. SOC. 3370 (2003) (proposing dispersion of nanotubes with octadecylamine in tetrahydrofuran);
54. Krupke et al., Separation of Metallic From Semiconducting Single-Walled Carbon Nanotubes, 301 SCIENCE 344 (2003) (proposing the use of alternating current dielectrophoresis);
55. M. Zheng et al., Structure-Based Carbon Nanotube Sorting by Sequence-Dependent DNA Assembly, 302 SCIENCE 1545 (2003) (proposing wrapping nanotubes in DNA and using ion exchange chromatography);
56. H. P. Li et al., Selective Interactions of Porphyrins With Semiconducting Single-Walled Carbon Nanotubes, 126 J. AM. CHEM. SOC. 1014 (2004) (proposing use of carboxy- functionalized nanotubes with assistance of porphyrins);
57. Z. Chen et al., Bulk Separative Enrichment in Metallic or Semiconducting Single Wall Carbon Nanotubes, 3 NANO LETT. 1245 (2003) (proposing use of complexation with bromine);
58. Yutaka Maeda et al., Large-Scale Separation of Metallic and Semiconducting SingleWalled Carbon Nanotubes, 127 J. AM. CHEM. SOC. 10287 (2005) (proposing a dispersion-centrifugation process in a tetrahydrofuran solution of amine).
59. See, e.g., R. Krupke, Simultaneous Deposition of Metallic Bundles of Single-Walled Carbon Nanotubes Using AC-Dielectrophoresis, 3 NANO LETT. 1019 (2003);
60. Jinqi Li, Manipulation of Carbon Nanotubes Using AC Dielectrophoresis, 86 APPL. PHYS. LETT. 153116 (2005);
61. Zhuo Chen, Controllable Interconnection of Single-Walled Carbon Nanotubes Under AC Electric Field 109 J. PHYS. CHEM. B. 11420 (2005).
62. Many of the sensor and therapeutic applications of nanotubes require functionalizing the nanotubes to target certain types of molecules. See, e.g., Ravi A. Chandrasekaran et al., Detecting Molecules: The Commercialization of Nanosensors, 2 NANOTECH. L. & BUS. 8, 11 (2005).
63. See, e.g., Maria J. Esplandiu et al., Nanoelectrode Scanning Probes from Fluorocarbon-Coated Single-Walled Carbon Nanotubes, 4 NANO LETTERS 1873 (2004).
64. Patent infringement can occur either literally or under the doctrine of equivalents. Under the doctrine of equivalents, infringement takes place when an element in a claim is not literally found in the accused device, but its equivalent is present. See Warner-Jenkinson Co. v. Hilton Davis Chem. Co, 520 U.S. 17,29 (1997). An element in an accused device can be found to be equivalent if it performs substantially the same function in substantially the same way to obtain substantially the same result as the claim element.
65. See Graver Tank & Mfg. Co. v. Linde Air Prod. Co., 339 U.S. 605, 608 (1950). Because it is difficult to determine how judges and juries will resolve doctrine of equivalents issues, there can be a great deal of uncertainty regarding infringement.
66. For a more detailed explanation of the causes of nanotube patenting, see Ruben Serrato et al., Nanotech IP Landscape, 2 NANOTECH. L. & BUS. 150,152 (2005) ("There are several explanations for the compulsion to patent that has swept academic and business enterprises. In the scientific community, patents can bolster a researchers' reputation and enhance his or her resume. In the business world, patents create barriers to entry. Companies can sometimes shut down competitors and they may also deter future companies from entering their marketplace. Patents also may enable companies to generate revenue through licensing or increase their valuation, as evidence by stock fluctuations in response to patent issuances and court decisions. Just as patents have become central components of academic and business enterprises, legal restraints on patenting have gradually eroded. As courts have chipped away at the barriers to obtaining patents, the Patent and Trademark Office has demonstrated an increased willingness to issue patents.").
67. See also MILLER ET AL., supra note 2, at 308 n.21 (identifying several explanations for the general explosion of patenting activity).
68. Nanotech IP Battles Worth Fighting, press release available at http://www.luxresearchinc.com/press/RELEASE_Nanotech_IP_Battles_Worth_Fighting. pdf (posted on July 25, 2006).
69. For example, Stanford University was the assignee of two patents (the "Cohen Boyer" patents) broadly covering the fundamental technology used for recombinant DNA research. Similarly, the University of Wisconsin was awarded U.S. Patent 6,200,806 broadly claiming embryonic stem cells.
70. See Serrato et al., supra note 44, at 152.
71. See MILLER ET AL. , supra note 2, at 218.
72. See, e.g., Tennent et al., "Graphitic Nanofibers in Electrochemical Capacitors," U.S. Patent 6,031,711 (issued February 29, 2000) ("The term nanofiber, nanotube, and fibril are used in interchangeably. Each refers to elongated structures having a cross section (e.g., angular fibers having edges) or diameter (e.g., rounded) less than 1 micron. The structure may be either hollow or solid.").
73. See, e.g., Keesman et al., "Field Emission Cathode Having an Electrically Conducting Material Shaped of a Narrow Rod or Knife Edge," U.S. Patent RE38.223 (issued August 19,2003) (using the term "single shell carbon nano-cylinder" to describe a single-walled nanotube);
74. Li et al., "Catalyst Patterning For Nanowire Devices," U.S. Patent 6,831,017 (issued Dec. 14,2004) (defining "nanowires" to include "single and multiple wall carbon nanotubes and semiconductor nanowires").
75. For example, there is substantial interest in using carbon nanotubes as interconnects. Much of the research and data that has been generated involve multi-walled nanotubes. See Fontcuberta i Moral, supra note 4. The patents based on this research broadly claim "nanotubes." Yet, devices based on single-walled nanotubes might be constructed and perform very differently from devices based on multi-walled nanotubes.
76. See, e.g., In re Baird, 16 F.3d 380, 383 (Fed. Cir. 1994) ("A disclosure of millions of compounds does not render obvious a claim to three compounds, particularly when that disclosure indicates a preference leading away from the claimed compounds.").
77. The novelty of such claims may be limited, however, by the doctrine that "one cannot establish novelty by claiming a known material by its properties." In re Crish, 393 F.3d 1253, 1258 (Fed. Cir. 2004) (citing In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990) ("The discovery of a new property or use of a previously known composition, even when that property and use are unobvious from prior art, cannot impart patentability to claims to the known composition.")).
78. The "patent exhaustion doctrine" is also known as the "first sale doctrine." According to patent law scholar Donald Chisum, "[t]he first sale doctrine operates to imply a term into the contracts for such sales of patented good giving buyers a license to use and sell that article." DONALD S. CHISUM, ET AL, PRINCIPLES OF PATENT LAW 1120 (2001) (emphasis added). It should be noted that parties can contract around the doctrine such that the patent holder restricts the buyer in first sale. Id.
79. The supply contract between the supplier and purchaser is likely to explicitly grant the purchaser a license to practice under certain patents. If the contract does not explicitly include such a license, the purchaser might still have received an implied license to practice those other patents. See, e.g., United States v. Univis Lens Co., Inc., 316 U.S. 241 (1942) ("[Wjhere one has sold an uncompleted article which, because it embodies essential features of his patented invention, is within the protection of his patent, and has destined the article to be finished by the purchaser in conformity to the patent, he has sold his invention so far as it is or may be embodied in that particular article.");
80. Met-Coil Sys. Corp. v. Körners Unlimited, Inc., 803 F.2d 684, 686 (Fed. Cir. 1986) ("[TJhis court set out two requirements for the grant of an implied license by virtue of a sale of nonpatented equipment used to practice a patented invention. First, the equipment involved must have no noninfringing use... Second, the circumstances of the sale must 'plainly indicate that the grant of a license should be inferred.'");
81. Cyrix Corp. v. Intel Corp., 846 F. Supp. 522, 537-38 (E.D. Tex) affd, 42 F.3d 1411 (Fed. Cir. 1994) ("Since Cyrix's claim 1 microprocessors cannot be used without infringing claims 2 and 6 of the 338 Patent, there are no commercially viable non-infringing uses for the microprocessors. Intel's rights in claims 1, 2, and 6 have been exhausted. Intel may not derogate from the rights granted TI and ST under the licensing agreement by requiring their customers who purchase licensed products to sell such products only to Intel licensees."). On the other hand, an implied license might not be found.
82. See, e.g., Stukenborg v. United States, 372 F.2d 498 (Ct. Cl. 1967) (concluding that the accused infringer did not have an implied license to use the completed assemblies, even though they were constructed in part from component parts that the accused infringer had purchased from a licensed source).
83. See Kingsdown Medical Consultants Ltd. v. Hollister Inc., 863 F.2d 867 (Fed. Cir. 1988) (explaining inequitable conduct).
84. See 35 U.S.C. §273 (detailing defense to infringement based prior use by an earlier inventor).
85. For more information on the narrow "experimental use" defense, see Madey v. Duke University, 307 F.3d 1351 (Fed. Cir. 2002); Roche Prods., Inc. v. Bolar Pharm. Co., Inc., 733 F.2d 858 (Fed. Cir. 1984). For a discussion of the statutory "safe harbor" exemption for FDA testing as applied to nanobiotechnology, see Stephen B. Maebius & Harold C. Wegner, Merck v. Integra: The Impact of a Broader "Safe Harbor" Exemption on Nanobiotechnology, 2 NANOTECH. L. & BUS. 254 (2005).
86. See 18 U.S.C. §101 ("Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.").
87. Diamond v. Chakrabarty, 447 U.S. 303, 309 (1980).
88. Yury Gogotsia & Joseph A. Libera, Hydrothermal Synthesis ofMultiwall Carbon Nanotubes, J. MATER. RES., Vol. 15, No. 12 (Dec. 2000) (carbon nanotubes naturally formed in many types of coal);
89. M. Shibuya, M. Kato, M. Ozawa, PH Fang, & E. Osawa, Detection of Buckminsterfullerene in Usual Soots and Commercial Charcoals, FULLERENE SCIENCE AND TECHNOLOGY, V.7, no.2, at 181-193 (Mar. 1999) (finding C6o present in commercial charcoals);
90. 70 in coal samples).
91. See, e.g., Amgen, Inc. v. Chugai Pharmaceutical Co., Ltd., 13 U.S.P.Q.2d 1737, 1989 WL 169006 (D. Mass. 1989) ("purified and isolated" DNA sequence was not nonpatentable natural phenomenon).
92. Mark A. Lemley, Patenting Nanotechnology, 58 STANFORD L. REV. 601, 614 n.63 (2005).
93. MEHL/Biophile Int'l Corp. v. Milgraum, 192 F.3d 1362, 1365 (Fed. Cir. 1999).
94. P. Schutzenberger & L. Schutzenberger, C. R. ACAD. SCI. PARIS 111 (1890).
95. A. Oberlin, M. Endo & T. Koyama, Filamentous Growth of Carbon Through Benzene Decomposition, JOURNAL OF CRYSTAL GROWTH 32, at 335-49 (1976).
96. Id. at 336-37.
97. M. Endo, Grow Carbon Fibers in the Vapor Phase: What You Can Make Out of These Strong Materials and How to Make Them, CHEMTECH 568-578 (Sept. 1988).
98. David Forman, On the History and Future of Carbon Nanotubes, SMALL TIMES (July 2006), at http://www.smalltimes.com/ Articles/Article_Display.cfm?Section=ARTCL&ARTICLE_ID=260008& VERSION_NUM=2&p=109.
99. Endo Cultivates Catalytic Growth - of Nanotubes and Nano Industry, SMALL TIMES MAGAZINE Vol. 6, No. 5 (Sept./Oct. 2006), at 28.
100. R. T. K. Baker & P. S. Harris, Formation of Filamentous Carbon, CHEMISTRY AND PHYSICS OF CARBON Vol. 14 (1978), at 83.
101. See Continental Can Co. v. Monsanto Co., 948 F.2d 1264 (Fed. Cir. 1991)
102. See Carbon Nanotubes in an Ancient Damascus Sabre, 444 NATURE 286 (2006); Antique Nanotubes, NEW YORK TIMES, NOV. 28, 2006, at D3.
103. See Graham v. John Deere Co., 383 U.S. 1 (1966); In re Dow Chemical Co., 837 F.2d 469 (Fed. Cir. 1988).
104. See Vivek Koppikar, Stephen B. Maebius & J. Steven Rutt, Current Trends in Nanotech Patents: A View From Inside the Patent Office, 1 NANOTECH L. & Bus. 24,29 (2004) ("If the prior art does not enable one to make a smaller version of an existing device at the nanoscale, then the resulting nanoscale version of the same device may in fact be non-obvious over its larger cousin even if there is no difference other than size.") (emphasis in original).
105. In re Kumar, 418 F.3d 1361 (Fed. Cir. 2005). See also Andrew S. Baluch, Leon Radomsky & Stephen B. Maebius, In re Kumar: The First Nanotech Patent Case in the Federal Circuit, 2 NANOTECH. L. & Bus. 342 (2005).
106. KSR International v. Teleflex, Supreme Court No. 04-1350 (argued Nov. 28, 2006)
107. 35 U.S.C. §112.
108. For a detailed discussion of the application of the enablement doctrine in biotechnology and how it might be applied in nanotechnology, see Melissa D. Schwaller & Gaurav Goel, Getting Smaller: What Will Enablement of Nanotechnology Require?, 3 NANOTECH. L. & Bus. 145 (2006).
109. See also MILLER ET AL., supra note 2, at 221-222.
110. In academic legal literature, this argument is generally described as the "tragedy of the anticommons." See generally Michael Heller & Rebecca Eisenberg, Can Patents Deter Innovation? The Anticommons in Biomedical Research, 280 SCIENCE 698 (May 1998) (arguing that the large number of patents on gene and gene fragments will deter research and development of downstream therapeutic applications).
111. Carl Shapiro, Navigating the Patent Thicket: Cross Licenses, Patent Pools, and Standard-Setting, in INNOVATION POLICY AND THE ECONOMY (Adam Jaffe, Joshua Lerner & Scott Stern eds., 2001) ("The hold-up problem is worst in industries where hundreds if not thousands of patents, some already issued, others pending, can potentially read on a given product. In these industries, the danger that a manufacturer 'will step on a land mine' is all too real. The result will be that some companies avoid the minefield altogether, i.e. refrain from introducing certain products for fear of hold-up.").
112. MILLER ET AL., supra note 2, at 77. See also Heller & Eisenberg, supra note 80, at 700 ("Large corporations with substantial legal departments have considerably greater resources for negotiating licenses on a case-by-case basis than the public sector institutions or small start-up firms."); LAWRENCE LESSIG, THE FUTURE OF IDEAS 209 (2001) ("On the margin, the costs of a patent system will harm small inventors more than large; negotiating a patent system is easier for IBM than for the garage inventor.").
113. To some extent, the willingness to disclose sensitive information depends on what stage the firm is at in product development. If licensees seek licenses before their final product has been developed, they will be more reluctant to disclose sensitive information. Further, even if a firm is comfortable disclosing such information under a confidentially agreement, it is difficult to negotiate fair consideration for a license until the final product and scaled manufacturing process has been fully fleshed out. If licensees seek licenses after production and shipping has begun, there are still significant obstacles to negotiating licenses. MILLER ET AL., supra note 2, at 75 (citing Suzanne Scotchmer, Standing on the Shoulders of Giants: Cumulative Research and the Patent Law, 5 J. ECON. PERSPECT. 29, 32(1991)).
114. MILLER ET AL., supra note 2, at 75 ("[I]n the semiconductor industry, several firms maintain more than 1,000 patents, and there is a high level of reciprocal infringement.") (citing John A. Barton, Antitrust Treatment of Oligopolies With Mutually Blocking Patent Portfolios, 3 ABA: ANTITRUST L.J. 69, 854 (2002)).
115. Firms find it rational to "forego full enforcement of property rights in exchange for reciprocal forbearance from competitors." Robert P. Merges, Contracting Into Liability Rules: Intellectual Property Rights and Collective Rights Organizations, 84 CALIF. L. REV. 1293, 1353 (Oct. 1996).
116. See John Allison & Mark Lemley, The Growing Complexity of the United States Patent System, 82 B.U. L. REV. 77 (Feb. 2002) ("[Biotechnology and pharmaceutical patents are more frequently litigated than patents in other industries and are often for entirely new products.").
117. See MILLER ET AL., supra note 2, at 74.
118. See MILLER ET AL., supra note 2, at 76 (describing patent pools on sewing machines, aircraft, and DVDs).
119. See Edward Rashba, Daniel Gamota, Doug Jamison, John Miller & Kirk Hermann, Standards In Nanotechnology, 1 NANOTECH. L. & Bus. 185, 187 (2004) (arguing that the adoption of standards may "advance the adoption of nanotechnology-based products").
120. MPEG-2 Business Review Letter from Joel I. Klein, Assistant Attorney General, Department of Justice, Antitrust Division, to Carey R. Ramos, Esq. (June 10, 1999), at 11.
121. See Dep't of Justice and Fed. Trade Comm'n, Antitrust Guidelines for the Licensing of Intellectual Property, 4 Trade Reg. Rep. (CCH) P 13,132 (Apr. 6, 1995), at §5.5, available at http://www.usdoj.gov/atr/ public/guidelines/0558.htm (setting forth in Example 10 a legally permissible patent pool containing "only patents that are blocking").
122. MILLER ET AL., supra note 2, at 82.