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: IPR2015-00532
`Patent No. 6,501,091
`________________________
`
`PETITIONER’S REPLY
`
`
`
`
`101921608v.3
`
`
`________________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________________
`
`NANOCO TECHNOLOGIES, LTD.
`Petitioners
`v.
`MASSACHUSETTS INSTITUTE OF TECHNOLOGY
`Patent Owner
`________________________
`
`Case No: IPR2015-00532
`Patent No. 6,501,091
`________________________
`
`PETITIONER’S REPLY
`
`
`
`
`101921608v.3
`
`
`
`
`
`TABLE OF CONTENTS
`
`I.
`II.
`
`Page
`INTRODUCTION ........................................................................................... 1
`PATENT OWNER DOES NOT CHALLENGE THE
`UNPATENTABILITY OF ALL CLAIMS ..................................................... 2
`III. BURT ANTICIPATES CLAIM 1 AND ITS DEPENDENT CLAIMS ......... 2
`1.
`Patent Owner does not explain why light from Burt’s laser
`cannot pass through the matrix. ............................................................. 4
`Patent Owner’s argument is inconsistent with Burt, which
`clearly shows that light from Burt’s semiconductor laser excites
`QDs in the matrix. ................................................................................. 4
`Burt’s semiconductor laser is part of the same device containing
`the quantum dots. .................................................................................. 6
`IV. CONCLUSION ................................................................................................ 9
`
`2.
`
`3.
`
`
`
`
`
`i
`
`
`
`
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Statutes
`35 U.S.C. § 102(a) ..................................................................................................... 2
`35 U.S.C. § 102(b) ..................................................................................................... 2
`Other Authorities
`37 C.F.R. § 42.23 ....................................................................................................... 1
`
`
`
`
`
`ii
`
`
`
`
`
`
`
`
`
`Exhibit
`Number
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`1013
`
`1014
`
`1015
`
`PETITIONER’S EXHIBIT LIST
`
`Description
`
`U.S. Patent No. 6,501,091 (“the ‘091 Patent”).
`
`U.S. Patent No. 5,847,507 (“Butterworth”).
`
`Declaration of Margaret Hines in Support of Petition for Inter partes
`Review (“Hines Declaration”).
`U.S. Patent No. 5,422,489 (“Bhargava”).
`File History of the ‘091 Patent.
`
`Bhargava, et al., “Doped nanocrystals of semiconductors – a new
`class of luminescent materials,” J. Lum. 60 & 61 (1994) 275-280
`(“Bhargava II”).
`
`International Application Publication WO 96/10282 (“Burt”).
`
`U.S. Patent No. 5,882,779 (“Lawandy”).
`
`U.S. Patent No. 5,998,925 (“Shimizu).
`
`U.S. Patent No. 5,260,957 (“Hakimi”).
`
`U.S. Patent No. 6,600,175 (“Baretz”).
`
`U.S. Patent No. 5,813,753 (“Vriens”).
`
`U.S. Patent No. 6,322,901 (“Bawendi” or “the ‘901 Patent”).
`
`Hines et al., “Synthesis and Characterization of Strongly
`Luminescing ZnS-Capped CdSe Nanocrystals,” J. Phys. Chem. 100
`(1996), 468-471 (“Hines”).
`
`Fogg, et al., “Fabrication of Quantum Dot/Polymer Composites:
`Phosphine-Functionalized Block Copolymers as Passivating Hosts
`for Cadmium Selenide Nanoclusters,” Macromolecules, 30 (1997),
`
`iii
`
`
`
`Exhibit
`Number
`
`Description
`
`417-426 (“Fogg”) (Published January 13, 1997, as per publication
`data available from http://pubs.acs.org/toc/mamobx/30/1).
`
`Dabbousi, et al. “(CdSe)ZnS Core-Shell Quantum Dots: Synthesis
`and Characterization of a Size Series of Highly Luminescent
`Nanocrystallites,” J. Phys. Chem. B 101 (1997) 9463-9475
`(“Dabbousi”).
`
`IPR Petition for Bawendi (the ‘901 Patent).
`
`Fogg, et al., “Fabrication of Quantum Dot/Polymer Composites:
`Semiconductor Nanoclusters in Dual-Function Polymer Matrices
`with Electron-Transporting and Cluster-Passivating Properties,”
`Macromolecules, 30 (1997), 8433-8439 (“Fogg II”) (Published
`December 29, 1997, as per publication data available from
`http://pubs.acs.org/toc/mamobx/30/26).
`
`Decision on Appeal in Reexamination Control No. 95/001,268,
`Appeal 2013-000713, May 31, 2013 (PTAB).
`
`Decision on Appeal in Reexamination Control No. 95/001,298,
`Appeal 2013-011692, May 31, 2013 (PTAB).
`
`Claim Charts for Each Asserted Ground of Unpatentability (for
`Board’s Convenience Only)
`
`1016
`
`1017
`
`1018
`
`1019
`
`1020
`
`1021
`
`iv
`
`
`
`
`
`
`
`
`
`
`
`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 1-3, 8, 10-15,
`
`17, 19-23 and 28 of the ‘091 Patent.
`
`I.
`
`INTRODUCTION
`On July 27, 2015, the Patent Trial and Appeals Board (PTAB) instituted trial
`
`of claims 1, 2, 3, 8, 10 and 11 over Burt and of claims 12-15, 17, 19-23, and 28 in
`
`view of one or more of Bhargava, Dabbousi, Bawendi, and Hines.
`
`On October 27, 2015, Patent Owner filed a Response to the institution of
`
`review of claims 1-3, 8, 10, and 11 over Burt. 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
`
`
`
`
`
`II.
`
`PATENT OWNER DOES NOT CHALLENGE THE
`UNPATENTABILITY OF ALL CLAIMS
`The Board instituted trial on five separate grounds:
`
`Whether claims 12, 13, 15, and 20 are unpatentable under 35 U.S.C. §
`102(b) as anticipated by Bhargava;
`
`Whether claims 1–3, 8, 10, and 11 are unpatentable under 35 U.S.C. §
`102(b) as anticipated by Burt;
`
`Whether claims 12–15, 19–23, and 28 are unpatentable under 35 U.S.C.
`§ 102(a) as anticipated by Dabbousi;
`
`Whether claims 12–14, 17, and 19–23 are unpatentable under 35 U.S.C.
`§ 102(a) as anticipated by Bawendi; and
`
`Whether claims 12–14, 19, and 20 are unpatentable under 35 U.S.C. §
`102(b) as anticipated by Hines.
`
`Paper 8 at 42. Patent Owner’s response addresses only the second ground: claims
`
`anticipated by Burt. Patent Owner thus concedes the unpatentability of all challenged
`
`claims on the remaining grounds. Accordingly, Petitioner requests cancellation of
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`claims 12-15, 17, 19-23, and 28.
`
`III. BURT ANTICIPATES CLAIM 1 AND ITS DEPENDENT CLAIMS
`Claim 1 of the ‘091 Patent recites:
`
`1.
`
`An electronic device comprising:
`
`a solid-state device which serves as a primary light source; and
`
`a population of photoluminescent quantum dots dispersed in a host
`matrix, at least a portion of the quantum dots having a band gap energy
`
`
`
`2
`
`
`
`
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`smaller than the energy of at least a portion of the light produced by the
`source, and the matrix allowing light from the source to pass
`therethrough.
`
`The Petition details where each and every limitation of claim 1 is described in Burt.
`
`Petition (Paper 5) at 14, 26-32. Patent Owner does not dispute any of the following
`
`statements from the Petition regarding the application of Burt to claim 1:
`
`•
`
`The semiconductor laser (element 11) of Burt is a solid-state light
`
`source;
`
`•
`
`The semiconductor laser is used to excite quantum dots contained in the
`
`colloidal material within the optical fiber;
`
`•
`
`Burt describes quantum dots dispersed in matrix materials that can be
`
`liquids and solids;
`
`•
`
`The quantum dots of Burt have a band gap of 0.8-1.0 eV and the
`
`semiconductor laser of Burt has a wavelength of 1.06 µm, which corresponds to an
`
`energy of 1.17 eV. The band gap energy of the quantum dots is smaller than the
`
`energy of the light produced by the solid-state laser;
`
`•
`
`The quantum dots of Burt absorb light from the solid-state laser and
`
`emit light at a lower wavelength.
`
`Instead, Patent Owner challenges Burt based solely on the contention that
`
`Burt’s laser is not “a primary light source.” Specifically, Patent Owner argues that
`
`“the semiconductor laser in Burt is not a ‘primary light source’ because light emitted
`
`
`
`3
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`
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`
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`from it is not allowed to pass through the matrix due to the fact that the device in
`
`Burt is designed for improved amplification or wavelength conversion.” Paper 11
`
`at 8.
`
`1.
`
`Patent Owner does not explain why light from Burt’s laser cannot
`pass through the matrix.
`Patent Owner’s contention is difficult to understand. Patent Owner seems to
`
`suggest that since the Burt device is an amplifier, light from the semiconductor laser
`
`cannot pass through the matrix. But Patent Owner does not explain why that is the
`
`case, let alone provide any evidence in support. Is it generally a property of optical
`
`amplifiers, like the one in Burt, that light cannot pass through a matrix? Is there
`
`something specific about the geometry of the Burt device that prevents light passing
`
`through the matrix? Patent Owner simply does not explain what it means, nor
`
`support its contention that light from Burt’s laser cannot pass through the matrix.
`
`Therefore, Patent Owner’s contention is entitled to no weight.
`
`2.
`
`Patent Owner’s argument is inconsistent with Burt, which clearly
`shows that light from Burt’s semiconductor laser excites QDs in
`the matrix.
`Regardless of why Patent Owner believes that light from the semiconductor
`
`laser does not pass through the matrix, the text of Burt contradicts Patent Owner’s
`
`contention. Specifically, Burt states that the semiconductor laser 11 is used to
`
`promote an electron from one of the low-energy states in the quantum dot into one
`
`
`
`4
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`
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`
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`of the high-energy states of the quantum dot. See Ex. 1007, page 8 lines 7-161
`
`(“Additionally, the fibre is pumped by, for example, a semiconductor laser 11, in
`
`order to promote an electron from one of the low energy states . . . in the quantum
`
`dot into one of the high energy states . . . .”). In order to excite quantum dots as
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`described in Burt, light from the semiconductor laser must impinge upon the
`
`quantum dots. See Ex. 1003 ¶ 10 (explaining that promotion of an electron from a
`
`low energy to a high energy state requires absorption of a photon). To impinge upon
`
`quantum dots, the light must pass through the matrix because the quantum dots are
`
`contained within that matrix. See Ex. 1003 ¶ 21 (“Burt states that light with a
`
`wavelength of 1.06 µm is fed into the colloidal QDs.”) (citing Burt, Ex. 1007, page
`
`9, line 28); see also Ex. 1007 page 9, lines 25-30 (explaining that the light fed into
`
`the colloidal QDs is light fed into the fibre and pumped at a wavelength of 1.06 µm).
`
`Patent Owner does not explain how light from the semiconductor laser excites the
`
`quantum dots if, as Patent Owner contends, that light does not pass through the
`
`matrix and impinge on those quantum dots. Patent Owner’s contention is wrong and
`
`contrary to the specific teachings of Burt.
`
`
`1 All citations to Burt herein refer to the pagination of the as-filed exhibit, not the
`
`original pagination.
`
`
`
`5
`
`
`
`
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`3.
`
`Burt’s semiconductor laser is part of the same device containing
`the quantum dots.
`Patent Owner further argues that a “primary light source” “must be part of the
`
`device which contains the quantum dots.” Paper 11 at 8. This is pure attorney
`
`argument; Patent Owner cites nothing in support of this position. Although
`
`completely unsupported, even if one assumes, arguendo, that the primary light
`
`source must be part of the same device which contains the quantum dots, Burt still
`
`anticipates.
`
`Patent Owner’s argument rests on the premise that the semiconductor laser of
`
`Burt is not “part of the device.” In support of that statement, Patent Owner contrasts
`
`FIG. 1 of the ‘091 Patent with FIG. 4 of Burt:
`
`
`
`Although Patent Owner’s argument is not entirely clear, it appears that Patent
`
`Owner believes that semiconductor laser 11 and fiber 1 (which contains the quantum
`
`dots) are not part of the same device. By contrasting Burt, FIG. 4 with ‘091, FIG. 1,
`
`Patent Owner seems to imply that the claims require the light source to be contained
`6
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`
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`within a single packet along with the quantum dots, as shown in FIG. 1 of the ‘091.
`
`According to Patent Owner’s argument, because the light source in Burt—
`
`semiconductor laser 11—is connected to the fiber that contains the quantum dots 1
`
`via a second fiber 8, the laser is not itself a part of the device that contains the
`
`quantum dots.
`
`FIG. 4 of Burt, annotated below, shows that the solid-state laser and the fiber
`
`1 containing quantum dots are both integral to the operation of the Burt device. The
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`annotated FIG. 4 also shows that light from the solid-state laser clearly passes
`
`through the matrix containing the quantum dots, which is contained in fiber 1.
`
`
`
`As explained in Burt, fiber 1 contains quantum dots suspended in a matrix. See Ex.
`
`1007, page 7, lines 28-31. The fiber 1 is spliced to an additional length of fiber 7.
`
`Id., page 8, lines 5 to 7. Fiber 7 is connected to a source of signals to be amplified
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`10. Id., page 8, lines 7 to 8. The signals from source 10 travel along the fiber 7 and
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`impinge upon the quantum dots in fiber 1. Id. Petitioner does not allege that the
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`
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`7
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`
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`signal source 10 is the primary source according to claim 1 of the ‘091 Patent.
`
`Instead, the semiconductor laser 11 is the primary light source. Light from the
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`semiconductor laser 11 is shunted to fiber 7 via fiber 8. Id., page 8, lines 5-12. Fiber
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`8 is fused with fiber 7 within a coupling region 9, thereby allowing light from the
`
`semiconductor laser 11 to also travel within fiber 7 and fiber 1. Id., page 8, lines 5-
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`8. The semiconductor laser is fused to the fiber 1 containing quantum dots and is
`
`therefore part of the device which contains the quantum dots, contrary to Patent
`
`Owner’s allegation.
`
`The light from semiconductor laser 11 has an energy that is greater than the
`
`band gap of the quantum dots contained in fiber 1. See Petition at 30-31. Therefore,
`
`light from the semiconductor laser 11 can excite an electron from one of the low-
`
`energy states in the quantum dot into one of the high-energy states. See Ex. 1007,
`
`page 8, lines 8-12. As stated above, the light from the semiconductor laser 11 clearly
`
`must impinge on the quantum dots in fiber 1 in order to excite electrons in those
`
`quantum dots. And again, light from the semiconductor laser 11 must pass through
`
`the matrix in order to excite electrons in the quantum dots. Moreover, any light from
`
`the semiconductor laser 11 that is not absorbed by the quantum dots (i.e., the portion
`
`of the light from the semiconductor laser 11 that does not excite electrons in the
`
`quantum dots) is also transmitted through the fiber 1. In sum, the amplifier described
`
`in Burt is plainly an integrated device in which light from semiconductor laser 11
`
`
`
`8
`
`
`
`
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`passes through a matrix and impinges upon quantum dots contained in that matrix,
`
`just as required in claim 1 of the ‘091 Patent. Accordingly, even assuming Patent
`
`Owner’s argument that the claimed light source must be “part of the device”
`
`containing the quantum dots—an argument unsupported by any reference to intrinsic
`
`or extrinsic evidence—Burt anticipates because
`
`the primary
`
`light source
`
`(semiconductor laser 11) is part of the device.
`
`IV. CONCLUSION
`For the reasons stated herein, Petitioner respectfully requests the Board cancel
`
`all instituted claims (1-3, 8, 10-15, 17, 19-23, and 28).
`
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`Dated: January 27, 2016
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`Respectfully submitted,
`
`/ Russell T. Wong/
`Russell T. Wong
`Registration No. 32,322
`Counsel for Petitioner
`
`9
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`CERTIFICATE OF SERVICE
`
`I hereby certify that on this 27th day of January, 2016, a copy of Petitioner’s
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`Reply was served via electronic mail pursuant to Patent Owner’s service instructions
`
`at the below addresses:
`
`Harold H. Fox
`Steptoe & Johnson LLP
`1330 Connecticut Avenue, N.W.
`Washington D.C. 20036
`hfox@steptoe.com
`jabramic@steptoe.com
`532IPR@steptoe.com
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`/ Russell T. Wong /
`Russell T. Wong
`Registration No. 32,322
`Counsel for Petitioner
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