UNITED STATES PATENT AND TRADEMARK OFFICE
`
`________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`________________________
`
`
`
`NANOCO TECHNOLOGIES, LTD.
`Petitioners
`
`v.
`
`MASSACHUSETTS INSTITUTE OF TECHNOLOGY
`
`Patent Owner
`
`________________________
`
`
`Case No.: IPR2015-00528
`Patent No. 6,322,901
`________________________
`
`
`PETITIONER’S REPLY
`
`
`
`
`
`101921024v.4
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`

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`TABLE OF CONTENTS
`
`I.
`II.
`
`Page
`INTRODUCTION ........................................................................................... 1
`PATENT OWNER DOES NOT CHALLENGE THE
`UNPATENTABILITY OF ALL CLAIMS ..................................................... 2
`III. PENG ANTICIPATES CLAIMS 32, 44, AND THEIR
`DEPENDENTS ................................................................................................ 3
`A.
`Patent Owner’s claim construction argument is supported only
`by attorney argument as to the plain language of the claims ................ 4
`B. Under the broadest reasonable construction, the claim recites a
`list of alternative characteristics which either is or has the same
`meaning as a Markush group ................................................................ 5
`1.
`The claim language at issue is a Markush group ........................ 5
`2.
`The plain and ordinary meaning of the claim language is
`a list of alternatives ..................................................................... 7
`The plain language of “selected” does not indicate that all
`of the specified colors must be available for selection ............. 10
`a.
`Howmedica Osteonics is irrelevant to the broadest
`reasonable interpretation ................................................. 11
`b. Metrologic Instruments is irrelevant to the broadest
`reasonable interpretation ................................................. 13
`Contrary to Patent Owner’s argument, the specification
`indicates that only one color can be emitted by a given
`nanocrystal ........................................................................................... 14
`Peng anticipates even under Patent Owner’s proposed
`construction ......................................................................................... 16
`IV. MURRAY ANTICIPATES CLAIMS 1, 32, 44, AND THEIR
`DEPENDENTs .............................................................................................. 17
`CONCLUSION .............................................................................................. 19
`
`3.
`
`C.
`
`D.
`
`V.
`
`i
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`

`
`
`
`
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Abbott Labs. v. Baxter Pharm.,
`334 F.3d 1274 (Fed. Cir. 2003) .................................................................... 5, 6, 7
`Amgen Inc. v. F. Hoffmann-La Roche, Ltd.,
`580 F.3d 1340 (Fed. Cir. 2009) .......................................................................... 16
`Brown v. 3M,
`265 F.3d 1349 (Fed. Cir. 2001) ........................................................................ 8, 9
`In re Driscoll,
`562 F.2d 1245 (C.C.P.A. 1977) ............................................................................ 6
`In re Harnisch,
`631 F.2d 716 (C.C.P.A. 1980) .............................................................................. 6
`In re Luck,
`476 F.2d 650 (C.C.P.A. 1973) ............................................................................ 16
`In re NTP, Inc.,
`654 F.3d 1279 (Fed. Cir. 2011) ............................................................................ 4
`In re Thorpe,
`777 F.2d 695 (Fed. Cir. 1985) ............................................................................ 16
`Howmedica Osteonics Corp. v. DePuy Orthopaedics, Inc.,
`C.A. Nos. 11-CV-6498, 11-CV-6499, 11-CV-6500, 11-CV-6511,
`2013 WL 3455727 (D.N.J. July 9, 2013) ............................................... 11, 12, 13
`Kustom Signals, Inc. v. Applied Concepts, Inc.,
`264 F.3d 1326 (Fed. Cir. 2001) ............................................................................ 8
`Metrologic Instruments, Inc. v. PSC Inc.,
`No. Civ. 99–4876, 2003 WL 22077652 (D.N.J. Aug. 26, 2003) ................. 13, 14
`Schumer v. Lab. Comput. Sys.,
`308 F.3d 1304 (Fed. Cir. 2002) ........................................................................ 7, 8
`
`
`
`ii
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`

`
`Vitronics Corp. v. Conceptronic, Inc.,
`90 F.3d 1576 (Fed. Cir. 1996) .............................................................................. 8
`Other Authorities
`37 C.F.R. § 42.23 ....................................................................................................... 1
`MPEP 2173.05(h) ....................................................................................................... 6
`MPEP 2173.05(p) ..................................................................................................... 16
`
`iii
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`PETITIONER’S EXHIBIT LIST
`
`Description
`
`Exhibit
`Number
`1001
`
`U.S. Patent No. 6,322,901 (“the ‘901 Patent”).
`
`Declaration of Margaret Hines
`
`File History of Inter Partes Reexamination of U.S. Patent No.
`6,861,155 (“the ‘155 Patent”).
`
`File History of Inter Partes Reexamination of U.S. Patent No.
`7,125,605 (“the ‘605 Patent”).
`
`Hines et al., “Synthesis and Characterization of Strongly Luminescing
`ZnS-Capped CdSe Nanocrystals,” Journal of Physical Chemistry,
`1996, 100, 468-471 (“Hines”).
`
`Danek et al. “Preparation of II-VI quantum dot composites by
`electrospray organometallic chemical vapor deposition,” J. Cryst.
`Growth, 1994, 145, 714-720 (“Danek”).
`
`1007 Murray et al. “Synthesis and Characterization of Nearly Monodisperse
`CdE (E = S, Se, Te) Semiconductor Nanocrystallites,” J. Am. Chem.
`Soc. 1993, 115, 8706-15 (“Murray”).
`
`Tischchenko, et al., Solid State Communications, Vol. 96, 1995, 795-
`798 (“Tischchenko”).
`
`and
`“Cathodoluminescence
`al.,
`et
`Rodriguez-Viejo
`Photoluminescence of Highly Luminescent CdSe/ZnS Quantum Dot
`Composites,” App. Phys. Let., 1997, 70, 2132-2134 (“Rodriguez-
`Viejo”).
`
`Peng et al., “Epitaxial Growth of Highly Luminescent CdSe/CdS
`Core/Shell Nanocrystals with Photostability and electronic
`Accessibility,” J. Am. Chem. Soc. 1997 (119) 7019-29 (“Peng”).
`
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1008
`
`1009
`
`1010
`
`
`
`iv
`
`

`
`Exhibit
`Number
`1011
`
`1012
`
`1013
`
`1014
`
`1015
`
`1016
`
`Description
`
`Kortan et al. “Nucleation and Growth of CdSe on ZnS Quantum
`Crystallite Seeds, and Vice Versa, in Inverse Micelle Media,” J. Am.
`Chem. Soc. 1990, 112, 1327-32 (“Kortan”).
`
`Premachandran et al., “The Enzymatic Synthesis of Thiol-Containing
`Polymers to Prepare Polymer-CdS Nanocomposites,” Chem. Mater.,
`1997, 1342-47 (“Premachandran”).
`
`Coffer et al., “Characterization of quantum-confined CdS
`nanocrystallites stabilized by deoxyribonucleic acid
`(DNA),”
`Nanotechnology 1992 69-76 (“Coffer”).
`
`File History of the ‘901 Patent.
`
`The American Heritage Dictionary Second College Edition, 1111
`(Houghton Mifflin Company 1982)
`
`The Oxford American Desk Dictionary, 543 (Frank Abate, ed., Oxford
`University Press 1998)
`
`
`v
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`

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`Pursuant to 37 C.F.R. § 42.23, Petitioner provides this Reply to Patent
`
`Owner’s Response to the institution of inter partes review of claims 1, 2, 4, 6-14,
`
`16, 18-20, 24, 31-33, and 35-43 of the ‘901 Patent.
`I.
`INTRODUCTION
`On July 27, 2015, the Patent Trial and Appeals Board (PTAB) instituted trial
`
`of claims 1, 2, 4, 6, 13, 14, 16, 24, 31, 32, 35-41, 43, 44, and 47-50 over Peng and
`
`of claims 1, 2, 6-14, 16, 18-20, 24, 31-33, 35-39, and 41-43 over Murray. Paper 6 at
`
`32.
`
`On October 27, 2015, Patent Owner filed its Response. Patent Owner has not
`
`sought any discovery from Petitioner, did not seek to depose Petitioner’s declarant,
`
`and did not petition to amend any of the claims. This Reply therefore addresses only
`
`the issues Patent Owner raised in its Response.
`
`Patent Owner’s Response is based solely on attorney argument and is not
`
`supported by an expert declaration or any other evidence. Patent Owner does not
`
`challenge any evidence presented in the Petition. Finally, Patent Owner fails to even
`
`address the unpatentability of all instituted claims on all instituted grounds.
`
`Petitioner’s evidence stands uncontroverted, and demonstrates that the challenged
`
`claims are unpatentable by a preponderance of the evidence. Petitioner respectfully
`
`requests cancellation of all instituted claims.
`
` 1
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`II.
`
`PATENT OWNER DOES NOT CHALLENGE THE
`UNPATENTABILITY OF ALL CLAIMS
`The Board instituted trial on two grounds: Peng and Murray. Paper 6 at 32. In
`
`its response, Patent Owner does not address the patentability of all of the instituted
`
`claims, nor address both grounds for all claims instituted on both grounds. Patent
`
`Owner thus concedes the unpatentability of each such claim.
`
`As to Peng, Patent Owner only addresses arguments to claims 32 and 44 and
`
`their dependent claims. Paper 9 at 7, 9 (specifying claims 32, 33, 35-40, 44-45, and
`
`47-50).1 Patent Owner does not address claims 1, 2, 4, 6, 13, 14, 16, 24, 31, 41, or
`
`43. See id. Accordingly, Petitioner’s arguments and evidence as to Peng for these
`
`unaddressed claims stand unrebutted, and the Board should find these claims to be
`
`unpatentable based on the Petition and evidence cited therein.
`
`As to Murray, Patent Owner addresses arguments to the same claims as for
`
`Peng (claims 32 and 44 and their dependent claims). Paper 9 at 10. Patent Owner
`
`also addresses arguments to claims “1, 10-12, 18, 19 and 20 and claims that depend
`
`therefrom.” Id. at 10. This group conceivably includes claims 1, 2, 4, 6-14, 16, 18-
`
`20, 24, 31, 41, 42, and 43. However, because Patent Owner did not address
`
`
`1 Although Patent Owner references claims 33 and 45, trial was not instituted as to
`
`Peng for those claims. Paper 6 at 32.
`
` 2
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`

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`Petitioner’s arguments that claims 1, 2, 4, 6, 13, 14, 16, 24, 31, 41, and 43 are
`
`anticipated by Peng, Patent Owner’s arguments that these claims are not anticipated
`
`by Murray are irrelevant. In other words, these claims are anticipated based on Peng
`
`because Petitioner’s arguments and evidence stand unrebutted. The only claims in
`
`this group to which Peng does not apply (because trial on these claims was not
`
`instituted as to Peng) are claims 7-12, 18-20, and 42.
`
`Accordingly, because Patent Owner has not challenged Petitioner’s argument
`
`or evidence as to all instituted grounds for these claims, the Board should cancel
`
`claims 1, 2, 4, 6, 13, 14, 16, 24, 31, 41, and 43 as anticipated by Peng.
`III. PENG ANTICIPATES CLAIMS 32, 44, AND THEIR DEPENDENTS
`Patent Owner does not dispute that Peng discloses a coated nanocrystal
`
`emitting green, yellow, orange, or red light as required by claim 32. Rather, Patent
`
`Owner argues that the claim language “emits light in a narrow spectral range selected
`
`from blue light, green light, yellow light, orange light, or red light” somehow
`
`requires that each of the listed colors of light must be capable of selection for the
`
`claim limitation to be met. Id. at 8 (“[T]he claim language . . . is a recitation of
`
`species that have to be available for selection.”). Thus, because Peng does not
`
`explicitly discuss blue light, Patent Owner argues that it cannot anticipate. Id. at 9.
`
`Patent Owner is wrong. Patent Owner presents no extrinsic evidence in
`
`support of its position, nor does it argue that the language at issue has any specialized
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` 3
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`meaning. Under the broadest reasonable construction, the claim recites a list of
`
`alternatives which, if it is not a formal Markush group, has the same meaning as a
`
`Markush group. Thus, any one of the listed colors in the prior art anticipates. The
`
`plain and ordinary meaning of selected does not mandate any narrower reading, nor
`
`does the specification support Patent Owner’s argument. Finally, Patent Owner’s
`
`construction is essentially that the claims are product-by-process claims (requiring a
`
`specific selection process where all colors are available). Such claims are anticipated
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`when the claimed product—here, a nanocrystal of any one of the listed colors—are
`
`present in the prior art.
`
`A.
`
`Patent Owner’s claim construction argument is supported only by
`attorney argument as to the plain language of the claims.
`
`Patent Owner’s argument is based on claim construction—whether the
`
`referenced claim language requires that each color be “capable of being selected” or
`
`whether each color is merely an alternative, where the use of any one of the listed
`
`colors would infringe the claims. Patent Owner did not allude to this issue in its
`
`preliminary response, which did raise claim construction issues as to three other
`
`terms. Paper 5 at 4-10. Patent Owner’s preliminary response did, however, agree that
`
`the correct claim construction standard here is the broadest reasonable construction.
`
`Id. at 4. The preliminary response also cited to In re NTP, Inc., 654 F.3d 1279 (Fed.
`
`Cir. 2011) for the proposition that the Board must consider both intrinsic and
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`extrinsic evidence, including “extrinsic evidence showing what a person of ordinary
`
`skill in the art would recognize regarding the subject matter claimed.” Paper 5 at 4
`
`(internal quotation marks omitted). Despite this, Patent Owner has not introduced
`
`the testimony of any witness willing to testify to Patent Owner’s proposed
`
`construction, and instead relies purely on attorney argument as to the meaning of the
`
`plain language of the claims. See id. at 7-10. Although there is no extrinsic evidence
`
`before the Board on the proper interpretation of this limitation, there is no indication
`
`of any specialized meaning, and the Board may properly construe the claims based
`
`on the intrinsic evidence and the plain and ordinary meaning.
`
`B. Under the broadest reasonable construction, the claim recites a
`list of alternative characteristics which either is or has the same
`meaning as a Markush group.
`
`Claims 32 and 44 each claim “[a] coated nanocrystal capable of light
`
`emission” which “emits light in a narrow spectral range selected from blue light,
`
`green light, yellow light, orange light, or red light.” Patent Owner insists this is a
`
`“recitation of species that have to be available for selection,” and not a Markush
`
`group, apparently because it does not use the formula “selected from the group
`
`consisting of A, B and C.” Paper 9 at 8. However, this language does indicate a
`
`Markush group, or has exactly the same meaning as a Markush group.
`
`1.
`
`The claim language at issue is a Markush group.
`
`A Markush group “is a listing of specified alternatives of a group in a patent
`
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`claim, typically expressed in the form: a member selected from the group consisting
`
`of A, B, and C.” Abbott Labs. v. Baxter Pharm., 334 F.3d 1274, 1280 (Fed. Cir.
`
`2003) (citing In re Harnisch, 631 F.2d 716 (C.C.P.A. 1980)) (emphasis added).
`
`However, the typical expression is not a required formula. Harnisch, cited with
`
`approval by the Federal Circuit in Abbot Labs, explains that “[w]hen materials
`
`recited in a claim are so related as to constitute a proper Markush group, they may
`
`be recited in the conventional manner, or alternatively. For example, if ‘wherein
`
`R is a material selected from the group consisting of A, B, C and D’ is a proper
`
`limitation then ‘wherein R is A, B, C or D’ shall also be considered proper.” In re
`
`Harnisch, 631 F.2d 716, 723 (C.C.P.A. 1980) (emphasis added). See also MPEP
`
`2173.05(h) (“Alternative Limitations . . . Alternative expressions are permitted if
`
`they present no uncertainty or ambiguity with respect to the question of scope or
`
`clarity of the claims. A ‘Markush’ claim recites a list of alternatively useable species.
`
`A Markush claim is commonly formatted as: “selected from the group consisting of
`
`A, B, and C;” however, the phrase “Markush claim” means any claim that
`
`recites a list of alternatively useable species regardless of format.”) (internal
`
`citations omitted) (emphasis added).
`
`Members of a Markush group are understood to be “alternatively usable for
`
`the purposes of the invention.” Abbot Labs, 334 F.3d at 1280 (citing In re Driscoll,
`
`562 F.2d 1245, 1249 (C.C.P.A. 1977)). That is, selection of any one member of the
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`group will practice the claim. If a patentee wants a claim to require more than one
`
`member of the Markush group, “the patentee would need to add qualifying language
`
`while drafting the claim. . . . Thus, without expressly indicating the selection of
`
`multiple members of a Markush grouping, a patentee does not claim anything other
`
`than the plain reading of the closed claim language.” Id. at 1281. Thus, if the
`
`language at issue is a Markush group, any one of the specified colors in the prior art
`
`anticipates the claims.
`
`2.
`
`The plain and ordinary meaning of the claim language is a
`list of alternatives.
`
`Even if the “selected from . . .” language at issue is not considered a formal
`
`Markush group, the claims have exactly the same meaning. The broadest reasonable
`
`construction of claims 32 and 44 would include a nanocrystal if it is capable of
`
`emitting light in a narrow spectral range of any one of blue, green, yellow, orange,
`
`or red light. This is the plain meaning of the phrase “and the coated nanocrystal emits
`
`light in a narrow spectral range selected from blue light, green light, yellow light,
`
`orange light, or red light,” because the use of the word “or” indicates each particular
`
`color is a non-required alternative.
`
`The Federal Circuit has interpreted similar language on multiple occasions. In
`
`deciding Schumer v. Lab. Comput. Sys., 308 F.3d 1304 (Fed. Cir. 2002), the court
`
`examined its prior case law on this issue. In the absence of any specialized meaning
`
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`(and Patent Owner here has not claimed any such meaning), “[t]he proper approach
`
`is to construe the claim language using standard dictionary definitions . . . Webster's
`
`Third International Dictionary defines ‘or’ as follows: ‘used as a function word to
`
`indicate (1) an alternative between different or unlike things, states, or actions . . .
`
`(2) choice between alternative things, states, or courses.’ We have consistently
`
`interpreted the word ‘or’ to mean that the items in the sequence are alternatives to
`
`each other.” Schumer, 308 F.3d at 1311-12. The court explained its precedent:
`
`In Brown v. 3M, 265 F.3d 1349, 1352, 60 USPQ2d 1375, 1377 (Fed.
`Cir. 2001), we upheld the district court's construction of the word “or”
`in the claim as meaning that the apparatus was capable of converting
`“‘only two-digit, only three-digit, only four-digit, or any combination
`of two-, three-, and four-digit date-data,’” by finding that the
`interpretation of the word “or” involved a “plain reading of the claim
`text. These are not technical terms or art, and do not require elaborate
`interpretation.” In Kustom Signals, Inc. v. Applied Concepts, Inc., 264
`F.3d 1326, 1331, 60 USPQ2d 1135, 1138 (Fed. Cir. 2001), we agreed
`with the district court’s construction of “or” as “designating
`alternatives.” We noted that “there is no indication that Kustom used
`these words in a different meaning. Particularly, there is no basis
`whatsoever for believing that Kustom intended its usage of ‘or’
`somehow to embrace ‘and.’”
`
`Schumer, 308 F.3d AT 1311-12. In Kustom Signals, the court stated that “[i]f a
`
`divergent specialized usage were intended, the context was such that it was required
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`to be clearly explained in the patent documents.” Kustom Signals, Inc. v. Applied
`
`Concepts, Inc., 264 F.3d 1326, 1330-31 (Fed. Cir. 2001) (citing Vitronics Corp. v.
`
`Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996) for the proposition that “a
`
`patentee may choose to be his own lexicographer and use terms in a manner other
`
`than their ordinary meaning, as long as the special definition of the term is clearly
`
`stated in the patent specification or file history”).
`
`In each of these cases, the Federal Circuit rejected an attempt to construe “or”
`
`as “and”—exactly what Patent Owner seeks to do here. Patent Owner is asserting
`
`that this is not a list of alternatives, but rather “a recitation of species that have to be
`
`available for selection.” Paper 9 at 8. This is contrary to the plain and ordinary
`
`meaning of “or” which, absent some special definition or instructions from the
`
`patentee, designates a list of alternatives. As the Federal Circuit has explained,
`
`“[w]hen a claim covers several structures or compositions, either generically or as
`
`alternatives, the claim is deemed anticipated if any of the structures or compositions
`
`within the scope of the claim is known in the prior art.” Brown v. 3M, 265 F.3d 1349,
`
`1351 (Fed. Cir. 2001) (citations omitted). Thus, no matter whether the claims contain
`
`formulaic Markush language, their broadest reasonable interpretation is a list of
`
`alternatives, and therefore Peng anticipates.
`
` 9
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`3.
`
`The plain language of “selected” does not indicate that all of
`the specified colors must be available for selection.
`
`Patent Owner asserts that the plain language of “selected” somehow requires
`
`that all of the specified colors be available options. Paper 9 at 8. In support, Patent
`
`Owner cites to two unpublished claim construction orders from the District of New
`
`Jersey. Id. at 7-8. Of course, neither court was attempting to apply the broadest
`
`reasonable construction that governs this proceeding. And, as discussed in more
`
`detail below, neither decision relates to the same or even similar claim language to
`
`that before the Board. Accordingly, neither order is probative of the broadest
`
`reasonable construction of the claims here.
`
`Beyond citing these two cases, Patent Owner does not explain exactly why
`
`the plain language of “selected” requires that all of the listed colors be available,
`
`especially in light of the fact that they are listed as alternatives. The dictionary
`
`definition of “selected” does not mandate this result. See Ex. 1015 at 1111 (“selected.
`
`1. singled out in preference; chosen.”); see also Ex. 1016 at 543 (“select . . . v.tr.
`
`choose, esp. as the best or most suitable.”). Singling out or choosing one of the listed
`
`colors does not mandate or require that all of the colors be “capable of selection”;
`
`e.g., if only red and green were available, one could still select red or green. The
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`patent contains no special definitions or explanations which would eliminate this
`
`reading from the range of meaning of the claim. Accordingly, even if Patent Owner’s
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`proffered construction were one possible interpretation, it is not the broadest
`
`reasonable interpretation and the claim should not be so limited.
`
`a. Howmedica Osteonics is irrelevant to the broadest
`reasonable interpretation.
`
`The first district court order cited by Patent Owner, Howmedica Osteonics
`
`Corp. v. DePuy Orthopaedics, Inc.,2 involves two patents involving surgical
`
`implants used in hip replacement procedures. Howmedica, 2013 WL 3455727 at *1.
`
`Patent Owner cites to language from the order’s discussion of U.S. Patent No.
`
`6,475,243. See Paper 9 at 7-8; Howmedica, 2013 WL 3455727 at *3-9.
`
`The Howmedica court was faced with a construction dispute regarding the
`
`underlined language from the preamble of claim 20:
`
`An assembly having a shell member and an internal bearing member
`for selective securement within the shell member interoperatively, the
`internal bearing member being selected from a plurality of bearing
`members having different characteristics,
`including different
`securement characteristics, such that the acetabular cup assembly
`selectively is provided with characteristics corresponding to the
`characteristics of the selected internal bearing member, the shell
`member comprising:
`
`
`2 C.A. Nos. 11–CV–6498, 11–CV–6499, 11–CV–6500, 11–CV–6511, 2013 WL
`
`3455727 (D.N.J. July 9, 2013)
`
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`11
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`Id. at *8 and *7 n.11 (underlining added). Defendants argued that this language
`
`meant the claim required a surgeon to actively select a particular bearing member
`
`from a plurality of bearings. Id. at *8. Plaintiff argued that the term required no
`
`construction, and that the claim language “provides that a bearing is capable of being
`
`selected, but does not actually need to be selected.” Id. at *9.
`
`The court found that no construction was necessary, refusing to “read into the
`
`disputed language ‘active selection’ of a bearing member” and finding that “there is
`
`no reason to construe the disputed language to include a surgeon.” Howmedica, 2013
`
`WL 3455727 at *9. Thus, the issue in Howmedica was not whether only one of a set
`
`of listed alternatives suffices to practice a claim, or whether “selected from” meant
`
`that all potential alternatives must be present and “capable of selection,” but whether
`
`the claim required a human surgeon to perform some selection.
`
`In the instant case, the particular spectral range at which the claimed
`
`nanocrystal emits lights is only one in a series of alternatives. Howmedica’s claim
`
`construction standard, the particular issue before the court, and the claim structure
`
`and language, are all completely different from the instant proceeding, making
`
`Howmedica irrelevant. If there is any similarity between Howmedica and the instant
`
`case, it is that Patent Owner here appears to take the same position as the Howmedica
`
`defendants—arguing that there must be a particular selection step where all of the
`
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`12
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`listed colors are available for selection.
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`

`
`b. Metrologic Instruments is irrelevant to the broadest
`reasonable interpretation.
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`If possible, Metrologic Instruments, Inc. v. PSC Inc.3 is even less relevant than
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`Howmedica. Metrologic involved bar code scanning technology. Metrologic, 2003
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`WL 22077652 at *1. The claim language at issue (from claim 5 of U.S. Patent No.
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`5,081,342) was: “Means for measuring the time duration of each of said first and
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`second levels of said digital input signals using one of said plurality of frequencies
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`and producing digital data representing said measured time durations for use by.”
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`Id. at *32. As can be seen, the claim language does not contain any variant of
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`“selecting.” The court read “means for selecting” into this means plus function term
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`based on the prosecution history. Id. at *33. This claim is also fundamentally
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`different from the claim language at issue here, because it is a means plus function
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`term; the claimed device was required to actually possess a means for selecting as a
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`required function. Id. at *34 (“[T]he function of the limitation includes selecting a
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`frequency.”).
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`The claims at issue here are to a coated nanocrystal. The claimed nanocrystal
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`is not required to have any means to select the particular spectral range of its light
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`emissions—that range (whether blue, green, yellow, orange, or red) is merely an
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`3 No. Civ. 99–4876, 2003 WL 22077652 (D.N.J. Aug. 26, 2003)
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`alternative characteristic of the crystal. Thus, the fact that the Metrologic claim was
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`construed as performing a selection is simply irrelevant to this proceeding.
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`C. Contrary to Patent Owner’s argument, the specification indicates
`that only one color can be emitted by a given nanocrystal.
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`Patent Owner cites to the specification (specifically, Ex. 1001, 7:63-8:11) to
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`support its assertion that “the coated nanocrystal is able to emit a spectral range
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`including blue, green, yellow, orange, or red light.” Paper 9 at 9 (emphasis in
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`original). But a simple reading of the specification shows that this assertion cannot
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`be correct.
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`It is well understood that the color of the light emitted by a nanocrystal (i.e.,
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`a quantum dot) is a function of its size. For instance, the specification states that:
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`• “both the optical absorption and emission of quantum dots shift
`to the blue (higher energies) as the size of the dots gets smaller”
`(Ex. 1001, 1:32-34);
`• “[t]he large size distribution resulted in light emission over a
`wide spectral range. In addition, the reported preparation method
`does not allow control of the particle size obtained from the
`process and hence does not allow control of color” (Ex. 1001,
`2:22-26);
`• “a secondary emission of light occurs of a frequency that
`corresponds to the band gap of the semiconductor material used
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`in the quantum dot. As previously discussed, the band gap is a
`function of the size of the nanocrystallite” (Ex. 1001, 4:23-29);
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`The passage cited by Patent Owner states this clearly: “[a]s the size of the CdSe core
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`increased, the color of the luminescence shows a continuous progression from the
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`blue through the green, yellow, orange to red.” Ex. 1001, 8:3-6. Thus, each of the
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`samples in Figure 3 represents a different size core, with each sample accordingly
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`emitting in only a single spectral range, but different from the others.
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`Thus, any given nanocrystal/quantum dot—being of a specific size—can emit
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`light in only one spectral range. Thus, any given coated nanocrystal is not “able to
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`emit a spectral range including blue, green, yellow, orange or red light.” Any one
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`nanocrystal is able to emit only one of blue, green, yellow, orange or red light,
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`exactly as described for Figure 3. To emit a different color, the nanocrystal must be
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`a different size and therefore must be a different nanocrystal.
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`Moreover, the disputed claims do not claim multiple different nanocrystals of
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`differing sizes, but only a single coated nanocrystal. Because logic demands any
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`claimed nanocrystal be a single size, and not multiple different sizes, it can emit light
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`in only one color. The specification nowhere describes irradiating a single sample,
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`which then has the capability to emit light throughout the entire cited spectral range,
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`as Patent Owner contends. The specification does not support Patent Owner’s claim
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`15
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`construction.
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`D.
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`Peng anticipates even under Patent Owner’s proposed
`construction.
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`Assuming, arguendo, that Patent Owner’s proposed construction is used, the
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`challenged claims are still anticipated by Peng. This is because Patent Owner’s
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`proposed construction—that the claimed product must be created by a specific
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`selection process where all of the listed colors are available for selection—renders
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`the claims product-by-process claims.
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`A product-by-process claim is a product claim that defines the claimed
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`product in terms of the process by which it is made. See MPEP 2173.05(p) (citing,
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`inter alia, In re Luck, 476 F.2d 650 (C.C.P.A. 1973)). Claims 32 and 44 claim a
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`coated nanocrystal. Patent Owner’s proposed construction requires that the claimed
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`nanocrystal be made only after a specific selection process where all of the listed
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`light colors are available for selection. Paper 9 at 8 (“[I]t is a recitation of species
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`that have to be available for selection.”). Thus, under Patent Owner’s proposed
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`construction, claims 32 and 44, and their dependents, are product-by-process claims.
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`But, “[i]t has long been the case that an old product is not patentable even if
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`it is made by a new process.” Amgen Inc. v. F. Hoffmann-La Roche, Ltd., 580 F.3d
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`1340, 1366 (Fed. Cir. 2009). That is, “[i]f the product in a product-by-process claim
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`is the same as or obvious from a product of the prior art, the claim is unpatentable
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`even though the prior product was made by a difference process.” Id. (quoting In re
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`Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985)). Thus, even if Patent Owner is correct,
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`the challenged claims will be anticipated by Peng if it discloses the same coated
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`nanocrystal, regardless of the selection process followed.
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`As discussed above, any single nanocrystal can only be one particular size,
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`and therefore can emit light in only one of the listed colors. Thus, a coated
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`nanocrystal emitting light in any of the listed colors will anticipate the claims. As
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`detailed in the Petition, Peng discloses all the limitations of the claims, and emission
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`in the spectral range from green to red. Pet. at 40. Accordingly, Peng anticipates
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`even under Patent Owner’s proposed construction.
`IV. MURRAY ANTICIPATES CLAIMS 1, 32, 44, AND THEIR
`DEPENDENTS
`Patent Owner argues that, for the same reasons as discussed with respect to
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`Peng, Murray cannot anticipate claims 32, 44, or their dependents. Petitioners’
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`arguments above with regar