UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Duk San Neolux Co., Ltd.,
`Petitioner,
`
`v.
`
`Idemitsu Kosan Co., Ltd.,
`Patent Owner
`
`PETITION FOR INTER PARTES REVIEW
`OF
`U.S. PATENT NO. 9,056,870
`
`Case IPR: Unassigned
`
`CHALLENGING CLAIMS 1, 3, 4 and 14-26
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark
`Office P. O. Box 1450
`Alexandria, VA 22313-1450
`
`i
`
`

`
`TABLE OF CONTENTS
`
`I.
`
`II.
`
`III.
`
`IV.
`
`V.
`
`MANDATORY NOTICES .............................................................................1
`Real Party-in-Interest................................................................................. 1
`Related Matters.......................................................................................... 1
`Lead and Back-up Counsel and Service Information.................................1
`Payment of Fees .........................................................................................1
`
`GROUNDS FOR STANDING........................................................................2
`
`IDENTIFICATION OF CHALLENGE AND RELIEF REQUESTED .........2
`
`INTRODUCTION ...........................................................................................2
`
`THE ‘870 PATENT.........................................................................................7
`A. Prosecution History...............................................................................7
`B. Specification........................................................................................10
`C. Challenged Claims ..............................................................................14
`
`VI.
`
`STATUTORY GROUNDS FOR THE CHALLENGES ..............................17
`
`VII. CLAIM CONSTRUCTION ..........................................................................17
`
`VIII. LEVEL OF ORDINARY SKILL IN THE ART...........................................18
`
`IX.
`
`PRIORITY DATE .........................................................................................18
`
`X.
`
`IDENTIFICATION OF HOW THE CLAIMS ARE UNPATENTABLE....27
`
`A. GROUND 1: Claims 1, 3, 4, 14-20 and 22-26 are Anticipated or
`Obvious under 35 U.S.C. §§ 102/103 by or over Kim 2010.. ............27
`1. Claims 1, 3, 4, 14-16 and 24 Read on TC3-H4 or TC9-H4
`Compound.....................................................................................27
`2. Claims 17-20 Read on the Device of Example 9 or 20.................29
`3. Claims 22, 23, 25 and 26 are Obvious from Specific Examples ..30
`
`B. GROUND 2: Claims 1, 14-20 and 22-26 are Anticipated or Obvious
`under 35 U.S.C. §§ 102/103 by or over Park......................................32
`1. Claims 1, 14-16 and 22-25 Read on Compound 2-6 or 2-12........32
`2. Claims 17-20 Read on the Device of Park....................................33
`ii
`
`

`
`3. Claim 26 is Obvious from Specific Examples of Park... ..............34
`
`C. GROUND 3: Claims 1, 14-26 are Anticipated or Obvious under 35
`U.S.C. §§ 102/103 by or over Kim 2011. ...........................................35
`1. Claims 1, 14-16, 21 and 24 Read on Compound 129 ...................35
`2. Claims 17-20 are Obvious from the device of Kim 2011.............36
`3. Claims 22, 23, 25 and 26 are Obvious over Kim 2011.................38
`
`D. GROUND 4: Claims 1, 3, 4 and 14-26 are Obvious under 35
`U.S.C. § 103(a) over Heil in view of Vestweber or Ikeda.................39
`
`E. GROUND 5: Claims 1, 3, 4 and 14-26 are Obvious under 35
`U.S.C. § 103(a) over Heil in view of Kawaguchi..............................46
`
`F. GROUND 6: Claims 1, 3, 4, 15, 16, and 22-26 are Obvious under
`35 U.S.C. § 103(a) over Kai in view of Kawaguchi..........................50
`
`G. GROUND 7: Claims 14 and 17-21 are Obvious under 35 U.S.C.
`103 (a) over Kai in view of Kawaguchi and further in view of
`Heil.....................................................................................................56
`
`H. GROUND 5 and GROUND 6 are Not Horizontally Redundant .......58
`
`I. GROUND 4 and GROUND 5 are Not redundant..............................59
`
`XI. CONCLUSION..............................................................................................60
`
`iii
`
`

`
`PETITIONER’S EXHIBIT LIST
`DSN-1001 U.S. Patent No. 9,056,870 to Kato et al. (“the ‘870 patent”)
`
`DSN-1002 Excerpts from Prosecution File History of the ‘870 patent
`
`DSN-1003 Declaration of Benjamin J. Schwartz, Ph.D.
`
`DSN-1004 Curriculum Vitae of Benjamin J. Schwartz, Ph.D.
`
`DSN-1005 JP 2008-148514 (Foreign Priority Application electronically retrieved
`by USPTO from a participating IP Office) (“the JP prior application”)
`
`JP 2008-148514 A (as obtained from
`DSN-1006 English Translation of
`prosecution file history of EP09758282, a patent family of the 870
`patent)
`
`DSN-1007 U.S. Application No. 12/253,586 (“the ‘586 parent application”)
`
`DSN-1008 WO 2010/107244 A2 (“Kim 2010“)
`
`DSN-1009 KR 10-2011-0058246 A (“Park”)
`
`DSN-1010 English Translation of Park, with verification of accuracy of
`translation
`
`DSN-1011 KR 10-2011-0066766 A (“Kim 2011”)
`
`DSN-1012 English Translation of Kim 2011, with verification of accuracy of
`translation
`
`DSN-1013 WO 2007/022845 A1 (“Heil”) having International Application
`Number PCT/EP2006/007386
`
`DSN-1014 Transmittal Letter to U.S. Designated/Elected Office Concerning
`Submission Under 35 U.S.C. 371 for
`International Application
`PCT/EP2006/007386
`
`iv
`
`

`
`DSN-1015 English Translation of PCT/EP2006/007386 filed with Exhibit
`DSN-1014 (“Heil US”)
`
`DSN-1016 Kawaguchi et al., “Synthesis, Structures, and Properties of
`Asymmetrical Heteroacenes Containing Both Pyrrole and Furan
`Rings,” Organic Letters 2008 Vol. 10, No. 6, Pages 1199-1202
`(Online published Feb. 16, 2008) (“Kawaguchi”)
`
`DSN-1017 WO 2008/056746 (“Kai”) having International Application Number
`PCT/JP2007/071728
`
`DSN-1018 Transmittal Letter to U.S. Designated/Elected Office Concerning
`Submission Under 35 U.S.C. 371 for
`International Application
`PCT/JP2007/071728
`
`DSN-1019 English Translation of PCT/JP2007/071728 filed with Exhibit DSN-
`1018 (“Kai US”)
`
`DSN-1020 WO 2006/122630 A1 (“Vestweber”) having International Application
`Number PCT/EP2006/003670
`
`DSN-1021 Transmittal Letter to U.S. Designated/Elected Office Concerning
`Submission Under 35 U.S.C. 371 for
`International Application
`PCT/EP2006/003670
`
`DSN-1022 English copy of PCT/EP2006/003670 filed with Exhibit DSN-1021
`(“Vestweber US”)
`
`DSN-1023 International Search Report of PCT/JP2009/059980, a Patent Owner’s
`International Application equivalent to the ‘870 patent
`
`DSN-1024 US 2006/0051612 A1 (“Ikeda”)
`
`“DSN” throughout this petition and related materials is an abbreviation for
`“Duk San Neolux” as appears in the marked exhibits.
`
`v
`
`

`
`I.
`
`MANDATORY NOTICES
`
`1. Real Party-in-Interest
`
`Petitioner, Duk San Neolux Co., Ltd. is the only real party-in-interest.
`
`2. Related Matters
`
`As of the filing date of this Petition and to the best knowledge of Petitioner,
`
`U.S. Patent No. 9,056,870 (hereinafter, “the ‘870 patent”) is not involved in
`
`litigation.
`
`3. Lead and Back-up Counsel and Service Information
`
`Petitioner designates William H. Oldach III (Reg. No. 42,048), available at
`
`1909 K Street NW, Suite 900, Washington, DC 20006-1152 (T: 202-467-8880), as
`
`Lead Counsel and Ari G. Zytcer (Reg. No. 57,474), available at 52 East Gay Street,
`
`Columbus, Ohio 43215 (T: 614.464.5420) and Mihsun Koh (Reg. No. 65,080)
`
`available at the same address as Lead Counsel, as Backup Counsel.
`
`Petitioner consents to service by electronic email at wholdach@vorys.com,
`
`agzytcer@vorys.com,
`
`mskoh@vorys.com,
`
`lgubinsky@vorys.com,
`
`lmelliottt@vorys.com, and patlaw@vorys.com.
`
`4. Payment of Fees
`
`The Office is authorized to charge the fee set forth in 37 C.F.R. §42.15(a) to
`
`Deposit Account No. 22-0585 as well as any additional fees that might be due in
`
`connection with this Petition.
`
`1
`
`

`
`II. GROUNDS FOR STANDING
`
`Petitioner certifies that the ‘870 patent is available for inter partes review
`
`and that Petitioner is not barred or estopped from requesting inter partes review
`
`challenging the patent claims on the grounds identified in this Petition.
`
`III.
`
`IDENTIFICATION OF CHALLENGE AND RELIEF REQUESTED
`
`Claims 1, 3, 4 and 14-26 (“Challenged Claims”) of the ‘870 patent are
`
`challenged in this Petition. Petitioner respectfully requests that the Board review
`
`the accompanying prior art and analysis, institute a trial for inter partes review of
`
`the Challenged Claims, and that the Board cancel those claims as unpatentable.
`
`IV.
`
`INTRODUCTION
`
`The ‘870 patent was filed as USSN 13/173,486 (“the ‘486 application”) on
`
`June 30, 2011 by Kato et al., as a Continuation application of USSN 12/253,586
`
`(“the ‘586 parent application) filed on October 17, 2008, claiming priority to
`
`Japanese Patent Application No. 2008-148514 filed on June 5, 2008.
`
`The ‘870 patent relates to the purportedly novel concept of using a
`
`compound having a π-conjugated heteroacene1 skeleton crosslinked with a carbon
`
`1 Heteroacene (CHEBI:53294): Definition - An acene composed of heteroatom-
`substituted aromatic groups.
`http://www.ebi.ac.uk/chebi/searchId.do?chebiId=53294;
`Acenes: Definition - Polycyclic aromatic hydrocarbons consisting of fused
`benzene rings in a rectilinear arrangement.
`
`2
`
`

`
`atom (C), nitrogen atom (N), oxygen atom (O), or sulfur atom (S) as a material for
`
`an organic electroluminescent (EL) device showing a high luminous efficiency,
`
`free of any pixel defect, and having a long lifetime. DSN-1001 at 3:15-32; 6:47-53;
`
`201:40-205:20.
`
`For those purposes, the ‘870 patent claims a material for an organic EL
`
`device represented by Formula (1) or (2), as reproduced herein below, comprised
`
`of, in the monomer form of Formula (1), Ar1, Ar2 and Ar3 crosslinked with X1 and
`
`X2 (X3 and X4 are excluded for p and o being 0) and substituted with A1-L1 on Ar1
`
`and A2-L2 on Ar3 (as well as claims an organic EL device comprising the same).
`
`Following protracted prosecution, the only generic claim was limited to
`
`specifically recite, in the above formulas, Ar2 as a substituted or unsubstituted
`
`benzene or naphthalene group; X1 as NR1 where R1 is an aromatic hydrocarbon
`
`(hereinafter, “aryl”) selected from 14 particular groups and substituted with an
`
`Source: PAC, 1995, 67, 1307 (Glossary of class names of
`organic compounds and reactivity intermediates based on structure (IUPAC
`Recommendations 1995)) on page 1310. http://goldbook.iupac.org/A00061.html.
`
`3
`
`

`
`aromatic heterocyclic (hereinafter, “heteroaryl”) group having a ring formed of 3
`
`to 40 atoms, or a heteroaryl group having a ring formed of 3 to 24 atoms which is
`
`unsubstituted or substituted with particular groups; X2 as S or O; o and p are 0
`
`producing a cis form of the formulas2; and s and q are each 1. DSN-1002 at p. 18,
`
`Amendment filed on February 27, 2015.
`
`As detailed in this Petition, however, the subject matters of the Challenged
`
`Claims were not described in the ‘586 parent application in a manner to convey
`
`with reasonable clarity to a person of ordinary skill in the art (POSITA) that they
`
`were in possession of Kato et al. at the time of filing the ‘586 parent application,
`
`thereby failing to meet the written description requirement under 35 U.S.C. § 112,
`
`¶1 to be entitled to the priority under 35 U.S.C. § 120. The subject matters of the
`
`Challenged Claims are not per se described, nor can they be implied from the
`
`broad genus and species disclosures of the ‘586 parent application. Not a single
`
`compound of the 476 species described in the ‘586 parent application can represent
`
`the claimed genus compound. Particularly, the claimed subject matter having a
`
`naphthalene group as Ar2, substituted or unsubstituted, combined with
`
`a
`
`substituted aryl group or a heteroaryl group as R1, is not described within the ‘586
`
`2 See DSN-1002 at p. 15, Interview Summary dated March 4, 2015 and the
`Applicant’s Response dated Feb. 27, 2015, where it is clearly expressed that by
`the amendment the claims exclude X3 and X4 and produce a “cis” form of the
`formulas.
`
`4
`
`

`
`parent application either by a proper genus or subgenus formula, nor by species
`
`amounting to the same. The parent ‘586 application fails to convey with reasonable
`
`clarity to a POSITA that Kato et al. had at the time of the filing of the parent
`
`application, possession of the full and complete scope of the later claimed subject
`
`matter. Accordingly, Kato et al. is not entitled to a priority date earlier than the
`
`actual filing date of the ‘870 patent, or June 30, 2011.
`
`The Challenged Claims were known in the art before the filing date of the
`
`‘870 patent of June 30, 2011, and they are anticipated by or obvious over prior art.
`
`Also, the use of a π-conjugated heteroacene skeleton crosslinked with N and
`
`O (or S) in a material for an organic EL device was known in the art before the
`
`filing date of the ‘586 parent application, so were the use of naphthalene as Ar2 and
`
`the particular heteroaryl-substituted aryl or heteroaryl as R1,
`
`rendering the
`
`Challenged Claims obvious by combination of prior art.
`
`At issue here are Kim 2010 (DSN-1008), Park (DSN-1009,1010), and Kim
`
`2011 (DSN-1011,1012), each disclosing a π-conjugated heteroacene skeleton
`
`crosslinked with N and O (or S) as a material for an organic EL device and an
`
`organic EL device using the compound; and the combination of Heil (DSN-1013),
`
`having been relied upon as the closest prior art during prosecution and disclosing a
`
`π-conjugated core skeleton crosslinked with two heteroatoms X and X, same or
`
`different, with Vestweber (DSN-1020) disclosing a π-conjugated heteroacene
`
`5
`
`

`
`skeleton crosslinked with N and S providing motivation to select X1 and X2 with
`
`such different two heteroatoms in Heil, or with Ikeda (DSN-1024) disclosing a
`
`Heil type compound crosslinked with N and O (or S) and having a heteroaryl
`
`group (pyridine) as a substituent on the N atom; the combination of Heil, above,
`
`with Kawaguchi (DSN-1016) disclosing a π-conjugated heteroacene skeleton
`
`crosslinked with N and O and the benefits desired in EL heteroacene compounds
`
`that may arise from the asymmetrical structure; and the combination of Kai (DSN-
`
`1017) disclosing a π-conjugated heteroacene skeleton crosslinked with two N
`
`atoms and an organic EL device using the same, with Kawaguchi, above. See
`
`below for each disclosed material in the references.
`
`Kim 2010 at 28-30: TC3-H4 & TC9-H4
`
`Park at 10:2-12
`
`Kim 2011 Cpd. 129
`
`Kai Cpd. 131
`
`Kawaguchi at 1200
`
`6
`
`

`
`Vestweber: 49
`
`Heil: Formula (2a)
`
`Ikeda: Cpd. 533
`
`Petitioner accordingly requests that the Board institute inter partes review of
`
`the Challenged Claims and cancel those claims as unpatentable.
`
`V.
`
`THE ‘870 PATENT
`
`A. Prosecution History
`
`Original Claim 1 was directed to a material for an organic EL device
`
`represented by Formula (1) or (2), below, wherein, inter alia, Ar2 represented a
`
`substituted or unsubstituted aryl group having a ring formed of 6 to 24 carbon
`
`atoms, or a substituted or unsubstituted aromatic heterocyclic group having a ring
`
`formed of 3 to 24 atoms, and R1 represented a C1-20 alkyl group, a C3-20 substituted
`
`or unsubstituted cycloalkyl group, a C7-24 aralkyl group, a C3-20 silyl group, a C6-24
`
`substituted or unsubstituted aryl group, or a substituted or unsubstituted aromatic
`
`heterocyclic group having a ring formed of 3 to 24 atoms. DSN-1002 at p. 214,
`
`Claims filed on June 30, 2011.
`
`Original Claim 1 also included limitations allowing X1 to X4 each to represent NR1,
`
`O, S or CR2CR3, and R2 and R3 to each represent the same as defined for R1, above.
`
`7
`
`

`
`After a second Final Rejection over Heil (DSN-1013) and secondary
`
`references, and after an Examiner Interview3 on Feb. 25, 2015, Claim 1 was finally
`
`amended to specifically recite,
`
`in part,
`
`that Ar2 represents “a substituted or
`
`unsubstituted naphthalene group,” as well as a substituted or unsubstituted benzene
`
`group, X1 represents NR1, X2 represents S or O, R1 represents “an aryl selected
`
`from the specified 14 compounds substituted with an heteroaryl group having a
`
`ring formed of 3 to 40 atoms, or an heteroaryl group having a ring formed of 3 to
`
`24 atoms, substituted with the specified groups in then claim 1,” o and p each
`
`represent 0, and s and q represent 1. DSN-1002 at p. 18, Amendment filed on
`
`February 27, 2015.
`
`In addition, new Claims 53-58 were added for the subject
`
`matters where Ar2 is “an unsubstituted naphthalene group” (Claim 53), R1 is
`
`“pyridine,
`
`pyridazine,
`
`pyrimidine,
`
`pyrazine,
`
`carbazole,
`
`dibenzofuran,
`
`3 The Interview Summary dated Mar. 4, 2015 states: “The Examiner stated that
`the proposed amendments to Claim 1, which would set o = p = 0 and q = 1
`(producing "cis" form of the formulae), set X1 = N-R1 and X2 = 0 or S, and set
`Ar2 = benzene or naphthalene group, would overcome the prior art reference
`Ikeda et al. The Examiner further pointed out that Heil et al. could still possibly
`be used as prior art; Heil et al. discloses a "cis" compound (29) on page 11,
`wherein one of the N-naphthyl groups can be substituted for either an oxygen or
`sulfur (as taught in [0018]) by one of ordinary skill in the art. The Examiner
`welcomed further amendments to overcome Heil et al., such as limiting the
`scope of R1 (to a heteroaryl, for example).” See DSN-1002 at p. 15.
`
`8
`
`

`
`dibenzothiophene, phenoxazine, or dihydroacridine” (Claim 54), particularly
`
`“pyridine, pyridazine, pyrimidine, or pyrazine” (Claim 55), or R1
`
`is “a
`
`substituted or unsubstituted aromatic heterocyclic group having a ring formed of 8
`
`to 24 atoms and having a fused ring structure comprising at least one of a
`
`pyrimidine group, a pyridine group, a pyrazine group and a pyridazine group”
`
`(Claim 57), particularly “a fused ring structure comprising a pyrimidine group”
`
`(Claim 58). Id.
`
`With the amendment, Applicant attempted to distinguish Claim 1 from Heil
`
`arguing that: the X1 and X2 bridging units are in a “cis” orientation with respect to
`
`the central/core aromatic moiety; the bridging units are NR1 and O (or S); the X1
`
`and X2 are heterogeneous and must be asymmetrical; and the Ar2 is a substituted or
`
`unsubstituted benzene or naphthalene. DSN-1002 at p. 31, Remarks in Response
`
`filed on February 27, 2015.
`
`The application received a Notice of Allowance on April 10, 2015, in which
`
`the Examiner stated for the allowable subject matter:
`
`“The closest prior art is provided by Heil et al. (WO 2007/022845 Al)
`which discloses compounds of the following form:
`Formula (2a)
`
`9
`
`

`
`([0029]) where X = C(R1)2, N(R1), O, or S ([0018]); R1 = aryl or
`heteroaryl group ([0019]) such as benzene or pyridine ([0024]). A
`particular embodiment is disclosed:
`
`(page 11). However, it is the position of the Office that neither Heil et
`al. singly nor in combination with any other prior art provides
`sufficient motivation to produce the compounds according to formulas
`(1) or (2) as defined by the Applicant, particularly in regards to X1-
`X2.” (Italic bold added) Id. at 13-14.
`
`The subject matter indicated as allowable in the Notice, however, was not
`
`described in the ‘586 parent application in the manner to convey with reasonable
`
`clarity to a POSITA that it was in possession of Kato et al. at the time of filing the
`
`‘586 parent application. In addition, the added limitations failed to distinguish the
`
`Challenged Claims from prior art.
`
`B. Specification
`
`The specification of the ‘870 patent as originally filed is substantially the
`
`same as the ‘586 parent application,
`
`therefore the discussion here of
`
`the
`
`specification of the ‘870 patent applies to the ‘586 parent application too.
`
`10
`
`

`
`The ‘870 patent submits that prior art compounds, such as those having a
`
`terphenylene skeleton crosslinked with a C, N, or O atom or indolocarbazole
`
`compounds having a substituent on the N atom, are not in practical use when used
`
`as a host material for a phosphorescent material in the light emitting layer of an EL
`
`device because they don’t have a high enough luminescent efficiency, require a
`
`high voltage, and have a larger molecular weight of 800 or more. DSN-1001 at
`
`2:6-3:10.
`
`To solve the problems and provide an organic EL device showing high
`
`luminous efficiency, is free of any pixel defect, and has a long lifetime, the ‘870
`
`patent explains that Kato et al. have found a compound having a π-conjugated
`
`heteroacene skeleton crosslinked with a C, N, O, or S atom(s) as a material for
`
`such an organic EL device, and thereby completed their invention. DSN-1001 at
`
`3:15-32; 6:47-53; 201:40-205:20.
`
`For such a material, the ‘870 patent describes a compound of Formula (1) or
`
`(2), as shown above, and as a preferred compound subgenus compounds of
`
`Formulas (5), (7) to (9), (13), (15) and (17) for Formula (1), all requiring “a
`
`substituted or unsubstituted benzene” as Ar2, and subgenus compounds of
`
`Formulas (6), (10) to (12), (14), (16) and (18) for Formula (2), all requiring “a
`
`substituted or unsubstituted benzene” as Ar2. DSN-1001 at 11:8-21:34.
`
`11
`
`

`
`In Formulas (5), (7) to (9), (13), (15) and (17), the ‘870 patent describes X1
`
`and X2 are each independently selected as O, S, NR1 or CR2R3, where R1, R2 and
`
`R3 each independently represent a myriad of groups, provided that, when both the
`
`Xs represent NR1, at least one R1 represents a substituted or unsubstituted
`
`monovalent fused aromatic heterocyclic group having a ring formed of 8 to 24
`
`atoms. DSN-1001 at 11:34-47; 14:14-28; 16:22-36. For the “substituted or
`
`unsubstituted heteroaryl group having a ring formed of 3 to 24 atoms,” the ‘870
`
`patent lists pyridine, pyridazine, pyrimidine, pyrazine, 1,3,5-triazine, carbazole,
`
`dibenzofuran, dibenzothiophene, phenoxazine, phenothiazine and dihydroacridine.
`
`For the “unsubstituted or substituted aryl group having a ring formed of 6 to 24
`
`carbon atoms, substituted with a heteroaryl group having a ring formed of 3 to 40
`
`atoms,” the ‘870 patent lists benzene, naphthalene, biphenyl, terphenyl, fluorene,
`
`phenanthrene,
`
`triphenylene, perylene, chrysene,
`
`fluoranthene, benzofluorene,
`
`bnezotriphenylene, benzochrysene and anthracene. DSN-1001 at 21:38-46.
`
`The ‘870 patent provides 476 species as examples of the formulas. DSN-
`
`1001 at 24:27-29; 24-202. None of the 476 species represent Formula (1) or (2)
`
`as claimed. The majority of the species are crosslinked with two of the same
`
`heteroatoms O/O, NR1/NR1, or S/S, showing symmetry; only 8 species (208, 209,
`
`214, 215, 226, 227, 220 and 221) are crosslinked with NR1/O (or S), yet having a
`
`12
`
`

`
`phenyl group as the substituent on the N atom (R1) which does not fall within the
`
`scope of R1 as claimed.
`
`Next,
`
`the ‘870 patent describes an organic EL device containing the
`
`material of Formula (1) or (2) serving as a compound having π-conjugated
`
`heteroacene skeleton crosslinked with a C, N, O or S atom. For examples of such
`
`heteroacene skeletons the ‘870 patent describes indenofluoren (bridging units C/C),
`
`indolocarbazole
`
`(N/N),
`
`benzofuranodibenzofuran
`
`(O/O)
`
`benzothiophenodibenzothiophene
`
`(S/S),
`
`benzofuranocarbazole
`
`(N/O),
`
`benzothiophenodibenzofuran
`
`(O/S),
`
`indenodibenzofuran
`
`(O/C)
`
`and
`
`benzothiophenocarbazole (N/S), all requiring benzene only as Ar2. DSN-1001 at
`
`col. 201:35-205:20. See also Note 1 in this Petition.
`
`The ‘870 patent describes Synthesis Examples 1-31: Compounds 11, 40, 47,
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`66, 100, 103, 116, 119, 134, 139, 154, 157, 239, 249, 259, 269, 233, 243, 253, 263,
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`272, 273, 274, 276, 1, 192, 108, 281, 284, 306 and 329, which, again, are all
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`crosslinked with N/N, O/O, S/S, or C/C. None of them are crosslined with NR1/O
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`(or S), and no preparation method for the compound as claimed is provided by the
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`‘870 patent. DSN-1001 at 336-390.
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`The ‘870 patent decribes preparation of organic EL devices using 26
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`compounds as host materials: Compounds 11, 40, 47, 66, 100, 103, 116, 119, 134,
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`139, 154, 157, 233, 239, 243, 249, 253, 259, 263, 269, 272, 273, 274, 276, 1, and
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`13
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`108 and evaluated their light emitting peformances. None of the materials used in
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`the EL device are crosslined with NR1/O (or S). Accordingly, no test or evaluation
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`of the material property of the compound as claimed is provided by the ‘870 patent.
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`In this regard, the Challenged Claims expressly require the generic compounds are
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`“a material for an organic EL device.” DSN-1001 at cols. 390:39-398:60.
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`As such, while the Challenged Claims are directed to a material for an
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`organic EL device represented by Formula (1) or
`
`(2), which requires
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`heterogeneous bridging units NR1/O (or S) (asymmetrical), a particular heteroaryl-
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`substituted aryl group or heteroaryl group as R1, allowing as Ar2 a substituted or
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`unsubstitued naphthalene, the ‘870 patent, in the original specification or the ‘586
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`parent application, does not provide an adequate written descripion of such
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`materials as a whole, in terms of the structure, name, or material properties as an
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`organic EL material.
`
`C.
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`Challenged Claims
`
`The ‘870 patent issued with Claims 1-26, of which Claims 1, 3, 4 and 14-26
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`are the Challenged Claims discussed herein.
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`Issued Claims 1-26 are attached to
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`this Petition as they are shown in DSN-1001 at 399-403. Below is an explanation
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`of the subject matter of the Challenged Claims.
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`Claim 1 is directed to a material of an organic EL device represented by
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`Formula (1) or (2). Formula (1) represents a monomer form of the material while
`
`14
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`Formula (2) represents a dimer, trimer, or tetramer form of the material according
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`to the definition of “n,” which is a number of 2 to 4.
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`In claim 1, with o and p being 0, Formula (1) or (2) excludes X3 and X4,
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`producing a “cis” form. From the definition of X1 being NR1 and X2 being O or S,
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`Formula (1) or (2) represents “asymmetrical” structures and excludes the materials
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`where X1 or X2 is CR2CR3.
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`Ar1 and Ar3 are each a substituted or unsubstituted benzene, and Ar2 is a
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`substituted or unsubstituted benzene or a substituted or unsubstituted naphthalene
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`group. Each of Ar1 to Ar3 is optionally substituted with a single or multiple Y(s),
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`and Ar1 and Ar3 are optionally substituted with A1-L1 and A2-L2, respectively,
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`When Ar1 to Ar3 are substituted with a group of Y, A1-L1, or A2-L2 that is a
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`heteroaryl having a ring formed of 3 to 24 atoms, the substituent is connected to
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`Ar1 to Ar3 through C-C bond (Id. at 399:45-47; 400:16-19, 39-41; 401:20-22, 31-
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`33). When L1 or L2 is a C1-20 alkyl or alkylene, A1 or A2 is not hydrogen (Id. at 33-
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`35;44-46).
`
`Formula (1) or (2) does not clearly represent the bonding position between
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`Ar1 and Ar2 crosslinked with X1, and between Ar2 and Ar3 crosslinked with X2, but
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`only formulas that may encompass various types of stated subgenus, such as
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`Formulas (5)-(18) when Ar2
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`is benzene are disclosed; other various types of
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`subgenus when Ar2 is naphthalene are not described in the specification.
`
`15
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`

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`Claims 3 and 4 are each dependent from Claim 1, wherein X2 is O. Claim
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`14 is dependent from Claim 1, wherein X2 is S. Claim 15 is dependent from Claim
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`1, wherein L1 and L2 are a single bond and A1 and A2 are hydrogen. Claim 16 is
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`dependent from Claim 15, wherein Ar2 is an unsubstituted benzene group or an
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`unsubstituted naphthalene group. Claim 24 is dependent from Claim 1, wherein
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`the material has Formula (1) and L1 and L2 are a single bond.
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`Claim 17 recites an organic EL device comprising one or more organic thin
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`film layers including a light emitting layer between a cathode and an anode,
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`wherein at least one layer of the organic thin film layers contains the material for
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`an organic EL device of Claim 14. Claim 18 is dependent from Claim 17, wherein
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`the light emitting layer contains the material for an organic EL device as a host
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`material. Claim 19 is dependent from Claim 18, wherein the light emitting layer
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`further contains a phosphorescent material. Claim 20 is dependent from Claim 17,
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`wherein R1 is a substituted or unsubstituted heteroaryl group having a ring formed
`
`of 3 to 24 atoms.
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`Claim 21 is dependent from Claim 1, wherein Ar2 is an unsubstituted
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`naphthalene group.
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`Claims 22 and 23 are dependent from Claim 1, wherein R1 is selected from
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`the group consisting of pyridine, pyridazine, pyrimidine, pyrazine, carbazole,
`
`16
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`

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`dibenzofuran, dibenzothiophene, phenoxazine and dihydroacridine (Claim 22),
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`particularly pyridine, pyridazine, pyrimidine and pyrazine (Claim 23).
`
`Claims 25 and 26 are dependent from Claim 1, wherein R1 is a substituted or
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`unsubstituted heteroaryl group having a ring formed of 8 to 24 atoms and having a
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`fused ring structure comprising at least one of a pyrimidine group, a pyridine group,
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`a pyrazine group and a pyridazine group (Claim 25), particularly a pyrimidine
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`group (Claim 26).
`
`VI.
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`STATUTORY GROUNDS FOR THE CHALLENGES
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`This Petition provides the following challenges:
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`Ground 1 Anticipation or Obviousness of Claims 1, 3, 4, 14-20 and 22-
`26 under 35 U.S.C. § 102/103 by or over Kim 2010.
`Ground 2 Anticipation or Obviousness of Claims 1, 14-20 and 22-26
`under 35 U.S.C. §§ 102/103 by or over Park
`Ground 3 Anticipation or Obviousness of Claims 1, 14-26 under 35
`U.S.C. §§ 102/103 by or over Kim 2011.
`Ground 4 Obviousness of Claims 1, 3, 4 and 14-26 under 35 U.S.C. §
`103(a) over Heil in view of Vestweber or Ikeda.
`Ground 5 Obviousness of Claims 1, 3, 4 and 14-26 under 35 U.S.C. §
`103(a) over Heil in view of Kawaguchi.
`Ground 6 Obviousness of Claims 1, 3, 4, 15, 16, 22, 23, 24, 25 and 26
`under 35 U.S.C. § 103(a) over Kai in view of Kawaguchi.
`Ground 7 Obviousness of Claims 14, 17, 18, 19, 20 and 21 under 35
`U.S.C. § 103 (a) over Kai in view of Kawaguchi and further in
`view of Heil
`
`VII. CLAIM CONSTRUCTION
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`17
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`

`
`This Petition analyzes the claims consistent with the broadest reasonable
`
`interpretation in light of the specification. See 37 C.F.R. § 42.100(b); In re Cuozzo
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`Speed Tech., LLC, Case No. 14-13001, slip op. at 16, 18-19 (Fed. Cir. Feb. 2,
`
`2015). While the specification cannot be used to impermissibly narrow the
`
`meaning of a claim term, terms must be construed broadly enough to encompass
`
`all meaning set forth in the specification and the references incorporated therein.
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`See MSM Investments Co., v. Carolwood Corp., 259 F.3d 1335, 1339-40 (Fed. Cir.
`
`2001).
`
`Here, a POSITA would have understood each term in each of the Challenged
`
`Claims to have its plain and ordinary meaning, and would have understood that no
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`term requires special construction for purposes of this Petition.
`
`VIII. LEVEL OF ORDINARY SKILL IN THE ART
`
`A POSITA, at the time the parent application of the ‘870 patent was filed,
`
`was aware of various aspects of luminescent materials and of the use of such
`
`materials in conjunction with, at least, anodes, cathodes, host materials, doping
`
`materials, hole injecting materials, and electron injecting materials, and would
`
`have had a good understanding of the mechanism of operation of organic EL
`
`devices. DSN-1003 at ¶8. Such a person would have a bachelor’s degree in
`
`chemistry, physics, materials science or a related discipline and two to three years
`
`of relevant experience, which could be obtained either through graduate studies or
`
`18
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`

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`work experience. Id. A person of ordinary skill would have had an understanding
`
`of the electronic structure of organic materials and how the electronic structure of
`
`such materials impacts their spectroscopic properties and performance in organic
`
`EL devices. Id.
`
`IX. PRIORITY DATE
`
`Each of the Challenged Claims is not entitled to a priority date prior to the
`
`filing date of the ‘870 patent of June 30, 2011, because the ‘586 parent application
`
`fails to meet the written description requirement under 35 U.S.C. §§ 112, 120. The
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`‘586 parent application does not provide a sufficient written description to convey
`
`with reasonable clarity to a POSITA that Kato et al. had possession of the full
`
`scope of each of the Challenged Claims prior to June 30, 2011. In re Curtis, 354
`
`F.3d 1347, 1351 (Fed. Cir. 2004) (“This requires the disclosure in the earlier
`
`application to reasonably convey to one of ordinary skill in the art that the
`
`inventors possessed the later-claimed subject matter when they filed the earlier
`
`application.”).
`
`The written description requirement is separate from enablement. Ariad
`
`Pharmaceuticals, Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1341 (Fed. Cir. 2010)
`
`(en banc) (“Every patent must describe an invention. …The specification must
`
`then, of course, describe how to make and use the invention (i.e., enable it), but
`
`that is a different task.”; “the claims recite methods encompassing a genus of
`
`19
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`

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`materials achieving a stated useful result, but the specification does not disclose a
`
`variety of species that accomplish the result….”). See also MPEP 2163.02.
`
`To meet the written description requirem