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`Paper No. ___________
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEALS BOARD
`
`NEXEON LTD.
`Petitioner
`
`v.
`
`ONED MATERIAL LLC
`Patent Owner
`
`Case IPR2017-00543
`Patent 7,939,218
`
`
`
`
`
`
`
`
`
`REPLY IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`TABLE OF AUTHORITIES ................................................................................ iii
`LIST OF EXHIBITS .............................................................................................. iv
`I. Introduction ........................................................................................................ 1
`II. Claim Construction ........................................................................................... 1
`A. “nanowire” ........................................................................................................ 1
`B. “basal plane carbon” ......................................................................................... 2
`C. “substantially devoid of basal plane carbon” ................................................. 11
`III. Chow anticipates claims 1–11 ...................................................................... 12
`A. Claim 1 ........................................................................................................... 12
`B. Claim 2 ........................................................................................................... 18
`C. Claims 3–11 .................................................................................................... 19
`IV. Conclusion ..................................................................................................... 19
`
`
`
`ii
`
`
`
`
`
`
`
`Cases
`
`TABLE OF AUTHORITIES
`
`Cook v. Principi, 318 F.3d 1334 (Fed. Cir. 2002) ................................................... 16
`
`Markman v. Westview Instruments, Inc., 52 F.3d 967 (Fed. Cir. 1995) .................. 16
`
`Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) ................................ 4, 7, 12
`
`Retractable Techs. v. Becton, Dickinson and Co., 653 F.3d 1296 (Fed. Cir. 2011)
`
` ....................................................................................................................... 11, 12
`
`Seachange Int’l, Inc. v. C-COR, Inc., 413 F.3d 1361 (Fed. Cir. 2005) ................... 11
`
`
`
`
`
`iii
`
`
`
`
`
`
`
`Exhibit No.
`
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`LIST OF EXHIBITS
`
`Description
`U.S. Patent No. 7,939,218 to Chunming Niu et al., issued on
`May 10, 2011.
`
`Expert Declaration of Dr. George Blomgren, dated December
`23, 2016.
`
`English Language Translation of Japanese Patent Application
`Publication No. 2003-168426, to Toru Tabuchi et al.
`
`U.S. Patent Application Publication No. 2002/0121460 to Moy
`et al., published on October 7, 2004.
`
`X. T. Zhou et al., “Highly efficient and stable
`photoluminescence from silicon nanowires coated with SiC,”
`Chem. Phys. Lett. 332(3-4):215-8 (December 2000).
`
`U.S. Patent No. 7,057,881 to Calvin. Y. H. Chow and Robert
`S. Dubrow, issued on June 6, 2006.
`
`English Language Translation of Japanese Patent Application
`Publication No. 2004-281317, to Hideaki Oyama et al.,
`published on October 7, 2004.
`
`U.S. Patent No. 7,585,474 to Stanislaus S. Wong and Tae-Jin
`Park, issued on September 8, 2009.
`
`Kyung Sun Lee et al., “Anomalous growth and
`characterization of carbon-coated nickel silicide nanowires,”
`Chem. Phys. Lett. 384(4-6):215-8 (December 2003).
`
`U.S. Patent Application Publication No. 2005/0029678 to
`Tobias Hanrath et al., published on February 10, 2005.
`
`iv
`
`
`
`
`
`Exhibit No.
`
`1011
`
`1012
`
`1013
`
`1014
`
`1015
`
`1016
`
`1017
`
`1018
`
`1019
`
`1020
`
`1021
`
`Description
`S. R. Qi et al., “Synthesis of titanium carbide nanowires,” J.
`Cryst. Growth 219(4):485-8 (November 2000).
`
`U.S. Provisional Application No. 60/554,549, filed on March
`18, 2004.
`
`U.S. Provisional Patent Application No. 60/726,709, filed on
`October 13, 2005.
`
`U.S. Provisional Patent Application No. 60/485,244, filed on
`July 8, 2003.
`
`U.S. Patent Application No. 11/601,842, filed on November
`20, 2006.
`
`U.S. Patent Application No. 11/295,133, filed on December 6,
`2005.
`
`U.S. Patent No. 7,179,561 to Chunming Niu et al., issued on
`February 20, 2007.
`
`U.S. Provisional Patent Application No. 60/801,377, filed on
`May 19, 2006.
`
`U.S. Provisional Patent Application No. 60/738,100, filed on
`November 21, 2005.
`
`U.S. Provisional Patent Application No. 60/634,472, filed on
`December 9, 2004.
`
`J. Robertson and E. P. O’Reilly, “Electronic and atomic
`structure of amorphous carbon,” Phys. Rev. B 35(6):2946-57
`(February 1987).
`
`1022
`
`Japanese Patent Application Publication No. 2000-215887.
`
`v
`
`
`
`
`
`Exhibit No.
`
`Description
`
`1023
`
`1024
`
`1025
`
`1026
`
`1027
`
`1028
`
`David Belitskus, “Fiber and Whisker Reinforced Ceramics for
`Structural Applications,” Mercel Decker, Inc., New York
`(1993).
`
`U.S. Patent No. 6,383,686 to Tatsuo Umeno et al., issued on
`May 7, 2002.
`
`Prosecution History of U.S. Patent No. 7,939,218.
`
`Japanese Patent Application Publication No. 2003-168426,
`published on June 13, 2003.
`
`Japanese Patent Application Publication No. 2004-281317,
`published on October 7, 2004.
`
`Certificate of Translation of Japanese Patent Application
`Publications Nos. 2003-168426 and 2004-281317.
`
`
`
`
`
`vi
`
`
`
`
`
`I.
`
`Introduction
`
`Patent Owner in its response attempts to overcome the anticipatory prior art
`
`through arguments seemingly designed to frustrate any comparison of prior-art
`
`compositions to the claim terms used in the ‘218 Patent. Patent Owner relies on
`
`hand-picked extrinsic evidence to argue that any prior-art composition not
`
`explicitly described as “devoid of basal plane carbon” could not certainly be so.
`
`But the intrinsic evidence of the ‘218 Patent is fully sufficient to guide the Board in
`
`determining whether the prior art anticipates claims 1–11 of the ‘218 Patent.
`
`Because Patent Owner has not presented any arguments sufficient to
`
`overcome Petitioner’s references, the Board should find all challenged claims
`
`unpatentable.
`
`
`
`II. Claim Construction
`
`A.
`
`“nanowire”
`
`Patent Owner claims that “Nexeon entirely left out of its construction the
`
`additional requirement in the specification that [the nanowire] be made of an
`
`“elongated conductive or semiconductive material.” Paper 22 at 4. But even the
`
`text of the ‘218 Patent quoted by Patent Owner discloses that its claimed nanowires
`
`can be made from “any elongated conductive or semiconductive material (or other
`
`material described herein).” Ex. 1001, 13:54–56 (emphasis added). The
`
`Specification of the ‘218 Patent confirms that “[t]he nanowires can be fabricated
`
`1
`
`
`
`
`
`from essentially any convenient material or materials,” and that nanowires can
`
`“also be comprised of organic polymers, ceramics…biologically derived
`
`compounds, e.g., fibrillary proteins, etc., or the like.” Id. at 13:63–65, 14:53–57.
`
`Petitioner did not propose a limitation on the “nanowire” material because the ‘218
`
`Patent teaches that there is none. Thus, the broadest reasonable interpretation of
`
`“nanowire” should be “an elongated structure having at least one cross sectional
`
`dimension that is less than 500 nm and an aspect ratio of greater than 10.”1 Paper 2
`
`at 12.
`
`B.
`
`“basal plane carbon”
`
`Patent Owner ultimately asserts that the broadest reasonable interpretation of
`
`“basal plane carbon” should be no more than that of one particular phrase in the
`
`‘218 Patent:
`
`To the extent any construction is necessary…“basal plane carbon” is
`“carbon in its characteristic bonded, crystalline structure found in
`graphene sheets and/or graphite layers.”
`
`Paper 22 at 10; see Ex. 1001, 19:55–58. But the broadest reasonable interpretation
`
`is not a variable interpretation—and Patent Owner’s selective application of
`
`1 Regardless, Petitioner submits that the nanowires of Chow also meet Patent
`Owner’s proposed construction including the “conductive material,
`semiconductive material or other material” limitation. Ex. 1002, ¶ 204; see Paper
`22 at 3–4.
`
`2
`
`
`
`
`
`different meanings of “basal plane” to distinguish different prior-art materials
`
`demonstrates that a clearer understanding of the term is necessary.
`
`Patent Owner’s discussion of “basal plane carbon,” citing to 10 different
`
`extrinsic references, is a transparent attempt to confuse the term to such an extent
`
`that the only prior art references that could meet the limitation “devoid of basal
`
`plane carbon” would be those that stated so verbatim. See Paper 22 at 4–10 (citing
`
`Exs. 2001–2005, 2009–11, 2013–14). Fortunately, the intrinsic evidence of record
`
`these proceedings preempts Patent Owner’s extrinsic evidence:
`
` The ‘218 Patent defines carbon black as an amorphous carbon. Ex.
`
`1001, 34:19–20.
`
` The ‘218 Patent distinguishes amorphous carbon from “basal plane
`
`carbon.” Id. at 20:40–45.
`
` The ‘218 Patent distinguishes amorphous carbides from “basal plane
`
`carbon.” Id. at 20:50–59.
`
` The Prosecution History explains that “basal plane carbon” does not
`
`describe the layers of a single crystal, but rather carbon that is bonded
`
`and arranged as it would be in the “crystalline structure found in
`
`graphene sheets and/or graphite layers.” Ex. 1025 at 70.
`
`But Patent Owner disregards the more relevant intrinsic evidence in order to
`
`rely on “less reliable,” hand-picked extrinsic evidence. Phillips v. AWH Corp., 415
`
`3
`
`
`
`
`
`F.3d 1303, 1318 (Fed. Cir. 2005) (explaining that extrinsic evidence is “in general
`
`[] less reliable than the patent and its prosecution history” because “extrinsic
`
`evidence by definition is not part of the patent and does not have the
`
`specification’s virtue of being created at the time of patent prosecution for the
`
`purpose of explaining the patent’s scope and meaning”).
`
` Patent Owner asserts that disclosure by the ‘218 Patent that “[i]n other
`
`embodiments, amorphous, non-crystalline carbon-based layer 104 will be
`
`substantially devoid of basal plane carbon” indicates that “some amorphous
`
`carbon-based layers contain basal plane carbon and other do not.” Paper 22 at 5;
`
`see Ex. 1001, 19:50–52. But Patent Owner disregards the immediately preceding
`
`sentence, which provides a specific definition:
`
`As used herein, the terms non-crystalline and amorphous refer to
`carbon that lacks a distinct crystalline structure and instead has a
`random arrangement of carbon atoms.
`
`Ex. 1001, 19:47–50 (emphasis added). Patent Owner cannot reasonably suggest,
`
`then, that such materials could encompass basal plane carbon:
`
`Basal plane carbon refers to carbon in its characteristic bonded,
`crystalline structure found in graphene sheets and/or graphite layers.
`
`Id. at 19:55–58 (emphasis added).
`
`Patent Owner relies on Dr. Blomgren’s testimony explaining that carbon
`
`blacks may have “various levels of crystallinity” to argue that carbon blacks might
`
`4
`
`
`
`
`
`include basal plane carbon. Paper 22 at 7; Ex. 2011, 16:25–17:22. But to take a
`
`generic discussion of carbon black and attempt to overcome the precise language
`
`of the ‘218 Patent is improper. To do so, Patent Owner must again ignore
`
`definitional language in the specification of the ‘218 Patent:
`
`Carbon black is a form of amorphous carbon that has an extremely
`high surface area to volume ratio.
`
`Ex. 1001, 34:19–20 (emphasis added).
`
`Patent Owner again skips past the intrinsic evidence to focus on extrinsic
`
`evidence to claim that amorphous carbons and amorphous carbides can contain a
`
`“small amount of carbon atoms arranged in graphene for graphite nanocrystals.”
`
`Paper 22 at 7–8. As a preliminary matter, neither reference cited by Patent Owner
`
`supports such an assertion—both references describe the formation of graphitic
`
`materials by heating carbon-comprising materials to extreme temperatures. Ex.
`
`2005 at 196 (“An investigation of the structure of carbons of different origin
`
`treated at temperatures between 1000 and 3000°C…”); Ex. 2014 at 1178–79
`
`(“When sintered at 1773 K [1500 °C] the silicon carbide particles were…”).
`
`Regardless, the presence of “graphite nanocrystals” in carbon black or
`
`amorphous carbon would not change the fact that the inventors of the ‘218 Patent
`
`defined “carbon black” as an “amorphous carbon,” or that the inventors defined
`
`“amorphous carbon” as “lacking a distinct crystalline structure,” in contrast to
`
`5
`
`
`
`
`
`“basal plane carbon.” Paper 22 at 8; Ex. 1001, 34:19–20, 19:47–50, 19:55–58.
`
`For the purposes of the ‘218 Patent, “basal plane carbon” excludes amorphous
`
`carbon and carbon black. Patent Owner presents references that highlight short- or
`
`even medium-range crystallinity in some carbon blacks or amorphous carbons—
`
`but these extrinsic references cannot supersede the definitions provided by
`
`inventors while acting as their own lexicographers in the ‘218 Patent Specification.
`
`Consequently, such references serve only to contextualize the inventors’
`
`definitions. If amorphous carbon and carbon black can have short- or medium-
`
`range crystallinity, then the “distinct crystalline structure” of “basal plane carbon”
`
`must be delimited to long-range crystallinity for the purposes of the ‘218 Patent.
`
`See Ex. 1002, ¶¶ 46–47.
`
`The ‘218 Patent specification provides even more evidence of the distinction
`
`between basal plane carbon and amorphous carbon:
`
`In an embodiment, the present invention provides a substantially
`carbon-based nanowire structure that is not a carbon nanotube, i.e.
`that does not comprise basal plane carbon wrapped around a core…,
`but rather, comprises amorphous, substantially non-crystalline carbon
`layered on a core…
`
`Id. at 20:40–45. Patent Owner claims that such disclosure “does not define ‘basal
`
`plane carbon’”—but to suggest that the usage of “basal plane carbon” in the
`
`specification of the ‘218 Patent is irrelevant to claim construction is disingenuous.
`
`6
`
`
`
`
`
`Paper 22 at 6. Phillips, 415 F.3d at 1313 (“Importantly, the person of ordinary
`
`skill in the art is deemed to read the claim term not only in the context of the
`
`particular claim in which the disputed term appears, but in the context of the entire
`
`patent, including the specification.”).
`
`Patent Owner also claimed, incorrectly, that the above distinction between
`
`“basal plane carbon” and amorphous carbon was made in reference to “carbon-
`
`based structure 106,” rather than a “carbon-based layer 104.” Id. The inventors do
`
`not describe “carbon-based structure 106” until the paragraph following that
`
`quoted above. See Ex. 1001, 20:47–59. But Patent Owner’s attempt to thus
`
`undermine the comparison suggests that Patent Owner ignores the central claim
`
`construction tenet that terms are to be construed consistently with their use
`
`throughout the ‘218 Patent. See Phillips, 415 F.3d at 1314 (“Because claim terms
`
`are normally used consistently throughout the patent…”). It is unclear why Patent
`
`Owner believes that only disclosure related to “carbon-based layer 104” is relevant
`
`to construction of “basal plane carbon.”
`
`The inventors of the ‘218 Patent do, however, discuss “basal plane carbon”
`
`with respect to “carbon-based structures 106” in a separate section:
`
`In other embodiments, carbon-based structures 106 are amorphous
`carbon fibers or nanowires extending from carbon-based layer 104.
`These carbon nanowires can comprise carbon, for example in the
`form of carbide, such as SiC, or any suitably carbide described herein
`
`7
`
`
`
`
`
`or known in the art. In other embodiments, the nanowires can consist
`essentially of carbon, or in additional embodiments, can consist only
`of carbon. In such embodiments the carbon-based structures will be
`substantially devoid of any basal plane carbon.
`
`Ex. 1001, 20:50–59 (emphasis added). The inventors’ differentiations of “basal
`
`plane carbon,” first from amorphous, non-crystalline carbon, and second from
`
`amorphous carbon nanowires (whether carbide or solely carbon), are clear and
`
`consistent.
`
`The definition of “basal plane carbon” in the ‘218 Patent is also limited to
`
`“carbon in its characteristic bonded…structure found in graphene sheets and/or
`
`graphite layers.” Id. at 19:55–58 (emphasis added). Patent Owner suggests that
`
`Dr. Blomgren’s characterization of the characteristic bonding of graphite and
`
`graphene was “entirely unsupported.” Paper 22 at 6. But Patent Owner’s own
`
`references indicate the opposite
`
`
`
`8
`
`
`
`
`
`(Ex. 2004, Figure 10.1a), stating that “[t]he structure consists of carbon atoms
`
`arranged in hexagonal rings that are stacked in an orderly fashion in graphite.” Ex.
`
`2004 at 22. The characteristic bonding of graphite layers and graphene (i.e., an
`
`isolated graphite layer) is hexagonal, three-fold, carbon-carbon bonding. Id.
`
`Patent Owner completely disregards the “characteristic bonded” limitation
`
`when discussing carbides. Paper 22 at 8–9. Instead, Patent Owner provides a
`
`number of extrinsic references that reference a crystallographic “basal plane”—the
`
`plane perpendicular to the principal axis of a crystal structure. Id.; see, e.g., Ex.
`
`2001 at 7 (“each Si-C bilayer can simplistically be viewed as a planar
`
`sheet…known as the basal plane, while the…stacking direction or the [0001]
`
`direction, is defined normal to the Si-C bilayer”). Patent Owner claims that,
`
`because certain types of crystalline silicon carbide have such a “basal plane,” any
`
`carbon lying in that plane is “basal plane carbon.” Paper 22 at 8–9. But the
`
`characteristic bonding of silicon carbide is tetragonal, four-fold, carbon-silicon
`
`bonding—different in every way from that of graphite. Compare Ex. 2001 at 6
`
`(“Fig. 2.1 shows the layer structure of SiC…with the tetrahedrally bonded carbon
`
`atoms linked to three Si atoms within the bilayer and having a single bond linked
`
`to a Si atom in the layer below.”), with Ex. 2004 at 22 (“The structure consists of
`
`carbon atoms arranged in hexagonal rings that are stacked in an orderly fashion in
`
`graphite…”).
`
`9
`
`
`
`
`
`And the crystallographer’s definition, convenient as it may be against a
`
`prior-art carbide material, contradicts Patent Owner’s earlier assertion that
`
`materials other than single crystals can also include “basal plane carbon.” Paper
`
`22 at 5 (“some amorphous carbon-based layers contain basal plane carbon”), 7
`
`(“the known prior art[] teaches both examples of carbon black and silicon carbide
`
`(even when amorphous), which can include basal plane carbon”).
`
`Moreover, Patent Owner argued against this very interpretation during
`
`prosecution of the ‘218 Patent:
`
`Examiner contends that “[b]ecause the carbon forms tubes, it would
`substantially lack the flat parallel structures known as basal planes.”
`Applicants respectfully disagree…As would be understood by a
`person of ordinary skill in the art, carbon nanotubes are formed of the
`same crystalline structure found in graphene and graphite layers—i.e.,
`basal plane carbon.
`
`Ex. 1025 at 70 (emphasis added). Individual carbon nanotubes are not single
`
`crystals, and accordingly lack a crystallographic “basal plane.” See, e.g., Ex. 2003,
`
`Figure 2 (listing nanotubes as a derived form of carbon distinct from diamond,
`
`graphite, and even polycrystalline graphite). The intrinsic evidence again shows
`
`that “basal plane carbon,” for the purposes of the ‘218 Patent, is not referring to
`
`carbon in any crystallographic basal plane, but rather carbon bonded and arranged
`
`as in a graphite basal plane.
`
`10
`
`
`
`
`
`The Board should accordingly accept Petitioner’s proposed construction for
`
`“basal plane carbon”: “carbon in an ordered domain comprising hexagonal,
`
`threefold bonded carbon, ordered over a range larger than that found in carbon
`
`black or amorphous carbon.” Paper 2 at 14.
`
`
`C.
`
`“substantially devoid of basal plane carbon”
`
`Patent Owner argues that Petitioner’s proposed construction of
`
`“substantially devoid of basal plane carbon”—“having less than about 0.5% of
`
`basal plane carbon”—is invalid under the doctrine of claim differentiation. Paper
`
`22 at 10; see Paper 2 at 16. But “any presumption created by the doctrine of claim
`
`differentiation ‘will be overcome by a contrary construction dictated by the written
`
`description or prosecution history.’” Retractable Techs. v. Becton, Dickinson and
`
`Co., 653 F.3d 1296, 1305 (Fed. Cir. 2011) (quoting Seachange Int’l, Inc. v. C-
`
`COR, Inc., 413 F.3d 1361, 1369 (Fed. Cir. 2005)).
`
`As Petitioner previously noted, the ‘218 Patent defines “substantially
`
`devoid” when describing two separate embodiments:
`
`In other embodiments…carbon-based layer 104 will be substantially
`devoid of basal plane carbon. That is, carbon-based layer 104 will
`contain less than about 0.5% basal plane carbon…
`
`Ex. 1001, 19:50–53 (emphasis added);
`
`In other embodiments, core 102 is substantially devoid of carbon,
`that is will contain less than about 0.5% carbon…
`
`11
`
`
`
`
`
`Id. at 18:56–58 (emphasis added); see Phillips, 415 F.3d at 1314 (“Because claim
`
`terms are normally used consistently throughout the patent…”). Patent Owner has
`
`“expressly recite[d]” that the definition of “substantially devoid” is “contain[ing]
`
`less than about 0.5%” of a material. Retractable Techs., 653 F.3d at 1305; Ex.
`
`1001, 18:56–58.
`
`Patent Owner claims that “[b]ased on the disclosure of the ‘218 patent, a
`
`person of ordinary skill in the art would readily understand the amount of basal
`
`plane carbon that may still be present.” Paper 22 at 11. But the above-quoted
`
`disclosure is the only guidance of the disclosure of the ‘218 Patent.
`
`Accordingly, Petitioner’s proposed construction of “substantially devoid of
`
`basal plane carbon” is not an attempt to limit the scope of claim 1 to a disclosed
`
`embodiment, but rather a recognition of express limitations of the written
`
`description. Retractable Techs., 653 F.3d at 1304–1305. A claim differentiation
`
`argument based on claim 2 cannot overcome the definition used throughout the
`
`specification as filed. See id. The Board should accept Petitioner’s proposed
`
`construction: “having less than about 0.5% of basal plane carbon.” Paper 2 at 16.
`
`
`
`III. Chow anticipates claims 1–11
`
`A. Claim 1
`
`Patent Owner correctly points out that the term “basal plane carbon” is not
`
`explicitly described in Chow. Paper 22 at 13. But, as demonstrated above, “basal
`
`12
`
`
`
`
`
`plane carbon” is an uncommon term outside of characterization of single-crystal
`
`materials. The inventors of the ‘218 Patent acted as their own lexicographers,
`
`providing an express definition of “basal plane carbon” in the Specification. Ex.
`
`1001, 19:55–58. And Chow’s “amorphous phase” carbide layer, by that definition,
`
`is not basal plane carbon, because that express definition is exclusive of amorphous
`
`carbides. Ex. 1006, 20:11–16; Ex. 1002, ¶ 195.
`
`Patent Owner claims that “the Petitioner does not identify or explain why
`
`this means that the carbon-based layer is substantially devoid of basal plane
`
`carbon,” but then admits that “the basis for Nexeon’s contention…that Chow
`
`anticipates this limitation is based on [Petitioner’s proposed] construction of ‘basal
`
`plane carbon’ in the ‘218 patent.” Paper 22 at 13–14. Patent Owner then discusses
`
`why “certain types of carbon black may have basal plane carbon.” Paper 22 at 14.
`
`But Chow discloses an amorphous-phase coating of carbide—and an amorphous
`
`carbide is not basal plane carbon.
`
`Patent Owner again glosses over the intrinsic record to bring in unnecessary
`
`and irrelevant extrinsic references submitted with the Response, alleging that
`
`“certain forms of silicon carbide (amorphous or not)…include basal plane carbon.”
`
`Paper 22 at 15. But Patent Owner ignores the Specification of the ‘218 Patent,
`
`which explains that “amorphous carbon fibers or nanowires,” which “can comprise
`
`carbon, for example in the form of carbide…will be substantially devoid of any
`
`13
`
`
`
`
`
`basal plane carbon.” Ex. 1001, 20:51–59. And Chow discloses an amorphous-
`
`phase-carbide nanowire coating. Ex. 1001, 20:11–16.
`
`Patent Owner also blatantly mischaracterizes testimony by Dr. Blomgren,
`
`alleging that he admits that silicon carbides could include nanographitic plates.
`
`Paper 22 at 15. But the cited testimony is inapposite. Patent Owner’s first citation
`
`is to Dr. Blomgren’s discussion of disclosure by the ‘218 Patent that higher
`
`temperatures can enhance the deposition of nanographitic plates onto a carbide
`
`layer. Paper 22 at 15; Ex. 2011, 26:14–28:13. Dr. Blomgren was asked
`
`specifically about “optional step 512”
`
`
`
`(Ex. 1001, Fig. 5), which “increases the temperature of the…interfacial carbide
`
`layers” to facilitate deposition of graphitic carbon. Ex. 1001, 24:4–6. This is not
`
`disclosure that carbides include basal plane carbon.
`
`Patent Owner’s second citation is to nothing more than the entry of Patent
`
`Owner’s Exhibit 2005 (another extrinsic reference) into Dr. Blomgren’s
`
`14
`
`
`
`
`
`deposition. Paper 22 at 15; Ex. 2011, 56:23–57:3 (“Deposition Exhibit Number
`
`2005…marked for identification, as of this date.”). In subsequent uncited
`
`testimony, Patent Owner questioned Dr. Blomgren regarding disclosure of the
`
`reference related to carbon black. Ex. 2011, 58:3–5 (“Q. Do you agree that the
`
`structure of noncrystalline black carbons bear some relation to that of graphite?”),
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`58:9–11 (“And are – do you agree that there are graphite-like structures present in
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`noncrystalline carbon?”). Carbon black is irrelevant to Patent Owner’s assertion,
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`and moreover irrelevant to Chow’s disclosure of an amorphous-phase carbide
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`coating.
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`Patent Owner finally cites to testimony by Dr. Blomgren explaining that the
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`temperatures required to convert non-graphitic carbons into graphitic carbon are
`
`between 1,700 °C and 3,000 °C. Paper 22 at 15; Ex. 2011, 59:19–61:3. This
`
`testimony is again irrelevant to Patent Owner’s assertion and to Chow’s disclosure
`
`of an amorphous-phase carbide coating.
`
`Patent Owner misapplied the principles of anticipation. Chow discloses the
`
`deposition of an amorphous-phase carbide layer onto a nanowire, which provides a
`
`nanowire comprising a carbon-based layer substantially devoid of basal plane
`
`carbon—how the Specification of the ‘218 Patent describes forming the claimed
`
`material is entirely irrelevant to Chow’s disclosure. And the fact that extreme heat
`
`might convert Chow’s amorphous-phase carbide layer to something no longer
`
`15
`
`
`
`
`
`devoid of basal plane carbon is no more relevant to anticipation than is the fact that
`
`pulverization might convert Chow’s nanowires to a material that is no longer
`
`nanowires.
`
`Patent Owner finally argues that “‘amorphous phase’ materials may include
`
`another material ‘phase’, such as, for example, a crystalline phase.” Paper 22 at
`
`14. This is plainly incorrect. Patent Owner cites to a Chemistry textbook, arguing:
`
`An “amorphous phase” material is a portion of a material that is
`amorphous – it does not necessarily mean that the entire material must
`be “amorphous.”
`
`Paper 22 at 14 (citing Ex. 2012 at 229). But any material described as amorphous
`
`must be amorphous—the principle of expressio unius est exclusio alterius, or
`
`negative implication, compels such a conclusion. See, e.g., Cook v. Principi, 318
`
`F.3d 1334, 1339 (Fed. Cir. 2002) (interpreting congressional statute by “[a]pplying
`
`the familiar canon of expressio unius est exclusio alterius,” concluding that
`
`Congress did not intend to allow exceptions in addition to those expressly created);
`
`Markman v. Westview Instruments, Inc., 52 F.3d 967, 987 (Fed. Cir. 1995) (“The
`
`more appropriate analogy for interpreting patent claims is the statutory
`
`interpretation analogy.”).
`
`Chow discloses an amorphous-phase carbide layer. Ex. 1006, 20:11–16.
`
`Certainly, “amorphous carbide layer” does not mean that the nanowire below that
`
`layer be amorphous, nor does it mean that the air surrounding the coated nanowire
`
`16
`
`
`
`
`
`be amorphous. But it does mean, for purposes of the ‘218 Patent, that the layer is
`
`amorphous. Id.
`
`Patent Owner is essentially arguing that inclusive characterizations of a
`
`material (e.g., amorphous) are meaningless absent accompanying exclusive
`
`characterizations (e.g., amorphous and not crystalline). This is impracticable.
`
`Disclosure of “a block of ice” is not disclosure of “a block, partially of ice and
`
`partially of steam.” Disclosure of “a solid iron coating” is not disclosure of “a
`
`coating, partially of solid iron and partially of molten iron.”
`
`The crystalline phase is separate and distinct from other phases. Ex. 2012 at
`
`230 (“The crystal possesses definite order and symmetry.”). Chow’s disclosure
`
`that the carbide layer is amorphous is implicit disclosure that the carbide layer is
`
`not crystalline.
`
`Patent Owner concludes by arguing that “Petitioner has only asserted that
`
`Chow discloses that the carbon-based layer is a carbide.” Paper 22 at 16. But
`
`Chow’s disclosure that “[c]arbides and nitrides can be applied as coatings” to
`
`nanowires, and can be grown with “a random grain orientation and/or amorphous
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`phase” is uncontested. Id.; Ex. 1006, 20:11–16; Paper 22 at 13–14. The mutual
`
`exclusivity of Chow’s amorphous carbide and the ‘218 Patent’s “basal plane
`
`carbon” is readily apparent in Patent Owner’s own references:
`
`17
`
`
`
`
`
` The characteristic bonded, crystalline structure found in carbides is
`
`tetragonally arranged carbon atoms, four-fold bonded to non-carbon
`
`atoms. Ex. 2001 at 6.
`
` The characteristic bonded, crystalline structure found in graphite is
`
`hexagonally arranged carbon atoms, three-fold bonded to other
`
`carbon atoms. Ex. 2004 at 22.
`
`And, more importantly, in the ‘218 Patent itself:
`
` Amorphous materials lack a distinct crystalline structure, and instead
`
`have a random arrangement of atoms. Ex. 1001, 19:47–50.
`
` “Basal plane carbon” describes the characteristic bonding and
`
`crystalline order of carbon in graphite. Id. at 19:55–58.
`
` Amorphous carbide materials are substantially devoid of basal plane
`
`carbon. Id. at 20:50–59.
`
`Because Chow discloses a nanowire comprising a carbon-based layer that,
`
`by the definition set forth in the ‘218 Patent, is substantially devoid of basal plane
`
`carbon, Chow anticipates claim 1 of the ‘218 Patent.
`
`B. Claim 2
`
`Patent Owner alleges that Petitioner “has not demonstrated that the silicon
`
`carbide layer described in Chow has less than about 0.5% basal plane carbon.”
`
`Patent Owner misrepresents Chow—Chow discloses an amorphous carbide layer.
`
`18
`
`
`
`
`
`As discussed above, “basal plane carbon” is exclusive of amorphous carbides—
`
`because Chow’s amorphous carbide layer is only amorphous carbide, i.e. 0.0%
`
`basal plane carbon, Chow anticipates claim 2 of the ‘218 Patent.
`
`C. Claims 3–11
`
`Patent Owner did not argue separate grounds of patentability for any of
`
`dependent claims 3–11. Accordingly, Chow anticipates claims 3–11 of the ‘218
`
`Patent for the reasons provided above, as well as for the reasons set forth in the
`
`Petition.
`
`
`
`IV. Conclusion
`
`For the foregoing reasons, Petitioner requests that the Board find the
`
`challenged claims of the ‘218 Patent unpatentable.
`
`
`
`Dated: March 28, 2018
`
`
`
`
`
`Respectfully Submitted,
`
`/Scott M. Dyar/
`Scott M. Dyar
`Reg. No. 73,407
`
`S. Richard Carden
`Reg. No. 44,588
`
`James V. Suggs
`Reg. No. 50,419
`
`
`
`19
`
`
`
`
`
`
`
`
`
`
`CERTIFICATE OF COMPLIANCE
`
`I hereby certify that the foregoing REPLY IN SUPPORT OF PETITION
`
`FOR INTER PARTES REVIEW contains 3,831 words as measured by the word
`
`processing software used to prepare the document, in compliance with 37 C.F.R.
`
`§ 42.24(d).
`
`
`
`Dated: March 28, 2018
`
`
`
`
`
`Respectfully Submitted,
`
`/Scott M. Dyar/
`Scott M. Dyar
`Reg. No. 73,407
`
`
`
`
`20
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`
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`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of the accompanying REPLY
`
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW was served by
`
`sending via electronic mail on March 28, 2018, to Lead Counsel for Patent Owner
`
`at the following correspondence address:
`
`Jennifer Hayes
`Nixon Peabody LLP
`2 Palo Alto Square
`3000 El Camino Real, Suite 500
`Palo Alto, CA 94306-2106
`Phone: (213) 629-6179
`Fax: (866) 781-9391
`jenhayes@nixonpeabody.com
`
`
`
`Respectfully Submitted,
`
`/Scott M. Dyar/
`Scott M
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