Trials@uspto.gov
`$71-272-7822
`
`Paper 17
`Entered: July 5, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`NANOCO TECHNOLOGIES, LTD.,
`Petitioner,
`
`v.
`
`MASSACHUSETTSINSTITUTE OF TECHNOLOGY,
`Patent Owner.
`
`Case IPR2015-00528
`Patent 6,322,901 Cl
`
`Before DONNAM.PRAISS, LYNNE E. PETTIGREW,and
`JO-ANNE M. KOKOSKLI,Administrative Patent Judges.
`
`PRAISS, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 CFR. § 42.73
`
`
`$71-272-7822
`
`Paper 17
`Entered: July 5, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`NANOCO TECHNOLOGIES, LTD.,
`Petitioner,
`
`v.
`
`MASSACHUSETTSINSTITUTE OF TECHNOLOGY,
`Patent Owner.
`
`Case IPR2015-00528
`Patent 6,322,901 Cl
`
`Before DONNAM.PRAISS, LYNNE E. PETTIGREW,and
`JO-ANNE M. KOKOSKLI,Administrative Patent Judges.
`
`PRAISS, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 CFR. § 42.73
`
`
`
`IPR2015-00528
`Patent 6,322,901 Cl
`Nanoco Technologies, Ltd. (“Petitioner”) filed a Petition (Paper2,
`“Pet.”) to institute an inter partes review ofclaims 1—21,! 24, 31-33, 35-45,
`
`and 47-50 of U.S. Patent No. 6,322,901 C1 (“the ’901 patent’) pursuant to
`
`35 U.S.C. §§ 311-319. Massachusetts Institute of Technology (‘Patent
`
`Owner”) timely filed a Preliminary Response (Paper5, “Prelim. Resp.”).
`
`Taking into account the arguments presented in Patent Owner’s Preliminary
`
`Response, we determined that the information presented in the Petition
`
`established a reasonable likelihood that Petitioner would prevail in
`
`challenging claims 1, 2, 4, 6-14, 16, 18-20, 24, 31-33, 35-44, and 47-50 of
`
`the ?901 patent under 35 U.S.C. §§ 102(a) and 102(b). Pursuant to 35
`
`U.S.C. § 314, weinstituted this proceeding on July 27, 2015 as to these
`
`claims of the 901 patent. Paper 6 (“Dec. on Inst.”).
`
`Patent Ownertimely filed a Patent Owner Response (Paper 9, “PO
`
`Resp.”) and Petitioner timely filed a Reply to the Patent Owner Response
`
`(Paper 10, “Pet. Reply”). An oral hearing was held on April 20, 2016, and a
`
`transcript of the hearing is included in the record. Paper 16 (“Tr.”).
`
`Wehavejurisdiction under 35 U.S.C. § 6(c). This decisionis a Final
`Written Decision under 35 U.S.C. § 318(a) as to the patentability of claims
`
`1, 2, 4, 6-14, 16, 18-20, 24, 31-33, 35-44, and 47-50 of the ’901 patent.
`
`I.
`
`BACKGROUND
`
`A. Related Proceedings
`
`The ’901 patent was the subject of Nanosys, Inc. v. Nanoco
`
`Technologies Ltd. and Sigma-Aldrich Co., Civil Action No. 3:9-cv-258-DF
`
`(W.D. Wis.), which was voluntarily dismissed with prejudice. Pet. 5; Paper
`
`' The Petition excludes claim 14 from thelist of claims challenged on page
`1, but includes claim 14 in the body of the Petition. See, e.g., Pet. 11-12.
`
`2
`
`
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`IPR2015-00528
`Patent 6,322,901 Cl
`
`3, 2; Ex. 2001, 191. It was also the subject of Reexamination Control No.
`
`90/010,736, filed November 11, 2009, which resulted in a reexamination
`
`certificate issued June 5, 2012, confirming claims 1-31 and adding claims
`
`32-50. Pet. 3-4; Paper 3, 3; Ex. 1001, Reexam Cert. In addition,
`
`Reexamination Control No. 95/001,248 was assigned to a request for
`
`reexamination of the ’901 patent submitted on October 16, 2009 that was
`
`deemed incomplete. See Paper3, 3.
`
`B.
`The ’901 Patent (Ex. 1001)
`The ’901 patent,titled “Highly Luminescent Color-Selective Nano-
`
`Crystalline Materials,” is directed to coated nanocrystals capable oflight
`
`emission known as semiconductor nanocrystallites or quantum dots.
`
`Ex. 1001, Abstr., 1:18-28. Moreparticularly, the invention is described as
`
`“highly luminescent ZnS-capped CdSe ((CdSe)ZnS)nanocrystallites having
`
`a narrow particlesize distribution.” Jd. at 4:9-12, 4:35-56. The synthesis of
`
`the (CdSe)ZnS quantum dots “may be applied in the preparation ofa variety
`
`of known semiconductor materials” and “used to obtain monodisperse
`
`overcoated quantum dots with various combinations of nanocrystallite core
`
`and overcoating.” Jd. at 4:5U-52, 8:45—-49. ‘Ihe core ofthe nanocrystallites
`
`is said to be “substantially monodisperse.” The Specification describes
`
`“monodisperse”as “a colloidal system in which the suspendingparticles
`
`have substantially identical size and shape” and, more specifically, the
`“monodisperseparticles deviate less than 10% in rms? diameterin the core,
`
`and preferably less than 5% in the core.” Jd. at 4:16—22.
`
`* We understand “rms”to refer to root mean square or square root of the
`mean squared deviations of each measurement from the average diameter.
`See Ex. 2005, 27.
`
`
`
`IPR2015-00528
`Patent 6,322,901 Cl
`
`The overcoating of the nanocrystallites may comprise ZnY,“where
`
`Y=S, Se, and mixtures thereof uniformly deposited thereon,” and “may
`further comprise an organic layer on the nanocrystal outer surface.” Id. at
`2:49-50, 2:65-3:1. “The organic layer may be comprised of moieties
`
`selected to provide compatibility with a suspension medium,suchasa short-
`
`chain polymerterminating in a moiety having affinity for a suspending
`
`medium, and moieties which demonstrate an affinity to the quantum dot
`
`surface.” Jd. at 3:1-6. The affinity for the nanocrystal surfaceis said to
`
`promote “coordination of the organic compoundto the quantum dot outer
`
`surface,” while the affinity for the suspension mediumissaid to “stabilize[]
`
`the quantum dot suspension.” Jd. at 3:6—9.
`
`C.
`
`Illustrative Claim
`
`Independentclaim 1 is illustrative of the claimsat issue:
`
`1. A coated nanocrystal capable of light emission, comprising:
`
`a core comprising a first semiconductor material, said core
`being a member of a monodisperseparticle population; and
`
`an overcoating uniformly deposited on the core comprising a
`second semiconductor material,
`
`wherein the first semiconductor material and the second
`semiconductor material are the sameordifferent,
`
`is
`population
`particle
`the monodisperse
`and wherein
`characterized in that whenirradiated the population emits light
`in a spectral range of no greater than about 60 nm full width at
`half max (FWHM).
`
`Ex. 1001, 11:9-21.
`
`Each of independent claims 10, 32, and 44 also recites, inter
`
`alia, “an overcoating uniformly deposited on the core comprising a
`
`second semiconductor material” and that “the first semiconductor
`
`4
`
`
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`IPR2015-00528
`Patent 6,322,901 Cl
`
`material and the second semiconductor material are the same or
`
`different.”
`
`The claimed “monodisperse particle population”is
`
`characterized in claim 10 “in that it exhibits no more than about a
`
`10% rms deviation in the diameter of the core.” Claims 32 and 44
`| require that “the coated nanocrystal emits light in a narrow spectral
`range selected from bluelight, green light, yellow light, orange light,
`
`or red light.” Ex. 1001, Reexam Cert. 1:33-36. Claim 44 also
`
`requires that “the coated nanocrystal exhibits photoluminescence
`
`having a quantum yield of greater than 30%[.]” Jd. at Reexam Cert.
`
`2:27-29.
`
`D. The Grounds
`
`Weinstituted this proceeding based on the asserted grounds of
`
`102(a)
`102(b)
`
`unpatentability (“grounds”) set forth in the table below. Dec.on Inst. 32.
`
`|
`
`
`1, 2,4, 6, 13, 14,16, 24, 31, 32,
`35-41, 43, 44, and 47-50
`
`1, 2, 6-14, 16, 18-20, 24, 31-33,
`35-39, and 41-43
`
`
`3
`
`,
`
`
`
`
`
`
`E. Claim Interpretation
`
`Asa first step in our analysis, we determine the meaning of the claims
`
`using the “broadest reasonable construction in light of the specification of
`
`3 Penget al., Epitaxial Growth ofHighly Luminescent CdSe/CdS Core/Shell
`Nanocrystals with Photostability and Electronic Accessibility, 119 J. AM.
`CHEM.SOc. 7019-29 (1997) (Ex. 1010) (“Peng”).
`4 Murrayet al. Synthesis and Characterization ofNearly Monodisperse CdE
`(E =S, Se, Te) Semiconductor Nanocrystallites, 115 J. AM. CHEM. SOC.
`8706-15 (1993) (Ex. 1007) (“Murray”).
`
`5
`
`
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`IPR2015-00528
`Patent 6,322,901 Cl
`
`the patent in which [they] appear[].” 37 C.F.R. § 42.100(b); see also Cuozzo
`
`Speed Techs., LLC v. Lee, No. 15-446, 2016 WL 3369425 at *12 (U.S. June
`
`20, 2016) (“Weconclude that [37 C.F.R. § 42.100(b)] represents a
`
`reasonable exercise of the rulemaking authority that Congress delegated to
`
`the Patent Office.”). Under that standard, claim terms generally are given
`
`their ordinary and customary meaning, as would be understood by one of
`
`ordinary skill in the art? in the context ofthe entire disclosure. In re
`
`Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
`
`Petitioner proposes constructions for the claim terms “monodisperse
`
`particle population,” “wherein the first semiconductor material and the
`
`second semiconductor material are the same ordifferent,” and “‘an
`
`overcoating uniformly deposited on the core,” which are recited in the
`
`independentclaims, as well as “short-chain polymer terminating in a moiety
`
`having affinity for a suspension or dispersion medium,” whichis recited in
`
`dependent claim 21. Pet. 6-10. Patent Ownerproposesto adopt the Board’s
`
`interpretations of these terms in the Decision on Institution (PO Resp. 6) and
`
`contendsthat the “spectral range selected from blue light, green light, orange
`light or red light” recited in claims 32 and 44 is not a Markush grouping as
`
`Petitioner contends, but, rather, “a recitation of species that have to be
`
`available for selection.” Jd. at 7-8. We address each of the proposed claim
`
`constructions below.
`
`> It is undisputed that a person of ordinary skill in the art “would typically
`have an advanced degree(i.e., a Masters or Ph.D.) in chemistry, materials
`science, or a related discipline.” Pet. 10 (citing Ex. 1002 § 6); PO Resp. 6.
`
`6
`
`
`
`IPR2015-00528
`Patent 6,322,901 Cl
`
`1. Monodisperse Particle Population
`In our Decision to Institute, we determined that the claim term
`“monodisperse particle population” does not require construction becauseit
`is defined within the context of the independent claims. Dec. onInst. 8-9.
`
`Specifically, we determined that the term is defined as “characterized in that
`
`whenirradiated the population emits light in a spectral range of no greater
`than about 60 nm full width at half max (FWHM)”(claim 1) or
`“characterizedin that it exhibits no more than abouta 10% rmsdeviation in
`the diameter ofthe core” (claims 10, 32, and 44). Jd. at9. We remain of the
`view, based on the record developedattrial, that the term does not require a’
`construction.
`.
`|
`2. Wherein the First and Second Semiconductor Material are the Same
`
`Petitioner proposes that whenthe first and second semiconductor,
`materials are the same, the claim term is “properly construed as including
`nanocrystals comprising only a single semiconductor material.” Pet. 9. In
`support, Petitioner directs us to the claim construction of the same term _
`during reexamination ofU.S. Patent No. 6,861,155 Cl (“the ’?155 patent”).6
`Id. (citing Ex. 1003, 1100-01). Patent Ownerdoes not dispute the proposed
`construction ofthis claim term. PO Resp. 6. In the Decision on Institution,
`
`we determined the plain meaning of the claim term “wherein the first .
`
`and the second semiconductor material are the same” encompasses
`nanocrystals comprising only a single semiconductor material. Dec. on Inst.
`9. Wesee no reason, based onthetrial record, to modify the interpretation
`
`of this term.
`
`6 The 7155 patent claimspriority to the ’901 patent through «continuation and
`continuation-in-part applications. Ex. 1003, 1.
`
`7
`
`
`
`IPR2015-00528
`Patent 6,322,901 Cl
`3. An Overcoating Uniformly Deposited on the Core
`Petitioner proposesthat “uniformly deposited”should be construedto
`“encompass any overcoating” because dependent claims :26 and 27 limit the
`overcoating recitedin both independent claims 1 and 10 to “0 to about 5.3
`monolayers” and “less than about one monolayer,” respectively. Pet. 9-10.
`In the Decision on Institution,we indicated we were not persuaded by
`Petitioner’s argument that the phrase “overcoating uniformly deposited,”
`whichis recited in each independentclaim of the 901 patent, has no
`
`structural meaning. Dec. on Inst. 10. We found that dependent claim 26
`does notlimit “uniformly deposited”to a coating of zero as asserted by
`Petitioner. Id.; comparePet. 9 (“claims 26 and 27... . further limit the
`overcoating to ‘0 to about 5.3 monolayers’ (Claim 26). . .”) with Ex. 1001,
`12:43-45 (“wherein the overcoating comprises greater than about0 to about
`5.3 monolayers ofthe second semiconductor material.”) (emphasis added).
`‘We also adopted the ordinary definition of “uniformly” in construing this
`claim term, namely, “identical or consistent, as from example to example,
`place to place, or momentto moment,” and “withoutvariationsin detail.”
`Dec. on Inst. 10-11 (citing Ex. 3001). Based on thetrial record, we see no
`
`reason to modify our claim construction of “an overcoating uniformly
`deposited on the core” as a Structural componentthat is deposited on the
`core uniformly,i.e., without variation in detail.
`4. Short-Chain Polymer Terminating in a Moiety Having Affinity
`for a Suspension or Dispersion Medium
`Petitioner proposes that “short-chain polymer terminating in a moiety
`
`having affinity for a suspension or dispersion medium,” asrecited in
`
`dependent claim 21, should be construed as it was during the reexamination
`
`of the ’155 patent to mean “any polymer-coated nanocrystal having an
`
`8
`
`
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`IPR2015-00528
`Patent 6,322,901 Cl
`
`affinity for a suspending medium.” Pet. 8 (citing Ex. 1003, 1461-62). In
`
`the Decision on Institution, we adopted Petitioner’s proposed claim
`
`construction that “short-chain polymer terminating in a moiety having
`
`affinity for a suspension or dispersion medium” means“any polymer-coated
`
`nanocrystal having an affinity for a suspending medium.” Dec. on Inst. 11—
`
`12. On the complete record after trial, we see no reason to modify the claim
`
`construction ofthis term.
`
`5. The Coated Nanocrystal Emits Light ina Narrow
`Spectral Range Selected From Blue Light, Green Light, Yellow
`Light, Orange Light, or Red Light
`Patent Ownerasserts that “the coated nanocrystal emits light in a
`
`narrow spectral range selected from bluelight, green light, yellow light,
`
`orange light, or red light,” as recited in independent claims 32 and 44,“is a
`
`recitation of species that have to be available for selection.” PO Resp.8.
`
`Patent Owner’s reasoningis that a spectral range “can only be ‘selected’
`
`among‘bluelight, green [light,] orange light or red light’ if the entire
`
`spectral range includesblue light, green light, orange light or redlight [as]
`
`available options.” Jd. at 7-8. Patent Ownerasserts “the claim language
`
`does notrefer to a Markush grouping.” Jd. at 8 (citing MPEP § 803.02 (“A
`
`Markush-typeclaim recites alternatives in a format such as ‘selected from
`
`the group consisting of A, B and C.””)). Patent Owner further asserts that its
`
`claim construction is consistent with the ’901 patent specification because
`
`“the claimed nanocrystal must belong to a monodisperse particle population
`
`such that when the population is irradiated, the coated nanocrystalis able to
`
`emit a spectral range including blue, green, yellow, orangeorred light.” Id.
`
`at 9 (quoting Ex. 1001, 8:3-6 (“Asthe size of the CdSe core increased, the
`
`
`
`IPR2015-00528
`Patent 6,322,901 Cl
`
`.
`
`,
`
`"
`
`. color of the luminescence shows a continuousprogression from the blue
`
`through the green, yellow, orange to red.”’)).
`Petitioner respondsthat“the claim recitesa list ofalternatives which,
`if it is not a formal Markush group, has the same meaning as a Markush
`
`group.” Pet. Reply 4; id. at 6 (quoting MPEP § 2173.05(h) (“Alternative
`
`Limitations . .. Alternative expressions are permitted if they present no
`uncertainty or ambiguity with respect to the question ofscopeorclarity 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 thatrecites a list of alternatively useable species regardless of
`format.”) (internalcitations omitted)). Petitioner also asserts that the plain
`and ordinary meaningof the claim languageisa list of alternatives because
`" no specialized meaning was attributed to it. Id. at 5-11 (citing Abbott Labs.
`v. Baxter Pharm. Prods., Inc., 334 F.3d 1274, 1281 (Fed. Cir. 2003);
`Schumerv. Lab. Comput. Sys., 308 F.3d 1304, 1311-12 (Fed. Cir. 2002);
`' Kustom Signals, Inc. v. Applied Concepts, Inc., 264 F.3d 1326, 1330-31
`_ (Fed. Cir. 2001)). Petitioner further asserts that the claimsare directed to a
`nanocrystal, rather than a population of nanocrystals, and that “‘any given
`
`nanocrystal/quantum dot—beingof a specific size—can emit light in only
`one spectral range” becausethe color of the light emitted is a function of ©
`
`|
`size. Id. at 15 (citing Ex. 1001, 8:3-6).
`After fully considering the parties’ arguments andthetrial record, we
`
`agree with Petitioner that the plain meaning of the claim language “the
`
`coated nanocrystal emits light in a narrow spectral range selected from blue
`
`light, green light, yellow light, orange light, or red light”is a list of
`
`10
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`IPR2015-00528
`Patent 6,322,901 Cl
`
`alternatively useable species. Most significant to our analysis is the context
`
`of the claims themselves, namely, (1) a single coated nanocrystal is claimed,
`
`and (2) the spectral range comprisesa list of light colors grouped together
`
`with the alternative contraction “or.” Patent Owner concedes that the claim
`
`is to a single nanocrystal, not to a population of nanocrystals. Tr. 26:7-12.
`
`The Specification is clear that light emission is dependent on the size of a
`
`particle. Ex. 1001, 8:3-6. Therefore, consistent with the Specification, the
`
`claimed single nanocrystal can only emit light in one color spectrum.
`We are not persuadedthat the claims require the recited
`“monodisperse particle population,” of which the single nanocrystal is a
`
`member, to possess the capability of emitting light in each of the spectral
`
`rangeslisted in the claim. The claim language that precedesthelist of
`
`spectral ranges specifies that it is the coated nanocrystal that emits light in
`
`the selected range, not the population of nanocrystals. We also are not
`
`persuadedthat the word “or” should be construed as “and/or” and that such a
`
`construction would mean “the spectral range is for the population of
`
`nanocrystals” as Patent Owner argues. See Tr. 25:8-15. Patent Owner’s
`
`suggestion doesnotalter the language that precedes the list of ranges, it does
`
`not removethe alternative nature of the word “or,” and it would have us
`
`introduce ambiguity by further including the conjunction “and.” See
`William Strunk, Jr. & E. B. White, THE ELEMENTS OF STYLE 40 (4"ed.
`
`2000) (“And/or. A device, or shortcut, that damages a sentence and often
`
`leads to confusion or ambiguity.”’). For the reasons provided by Petitioner
`
`and discussed above, we construe the claim term to mean “a coated
`
`nanocrystal that emits light in a narrow spectral range that is any one of blue
`
`11
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`
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`IPR2015-00528
`Patent 6,322,901 Cl
`light, green light, yellow light, orange light, or red light.” See Pet. Reply 4—
`
`15.
`
`TI.
`
`ANALYSIS
`
`A. Anticipation by Peng
`
`In our Decision to Institute, we instituted trial against claims1, 2, 4,6,
`
`13, 14, 16, 24, 31, 32, 35-41, 43, 44, and 47-50, determining that Petitioner
`
`waslikely to prevail in showing the unpatentability of each of these claims
`
`as anticipated by Peng under 35 U.S.C. § 102(a). Dec. on Inst. 32.
`
`Petitioner must demonstrate by a preponderanceofthe evidence that the
`
`challenged claims are unpatentable to prevail. 35 U.S.C. § 316(e); 37 C.F.R.
`
`§ 42.1(d).
`
`1. Claims 1, 2, 4, 6, 13, 14, 16, 24, 31, 41, and 43
`
`Oncetrial wasinstituted, and after a specified period of discovery,
`
`Patent Ownerwas afforded the opportunity to file a Patent Owner Response
`
`to address “any ground for unpatentability not already denied” by our
`
`Decision on Institution. 37 C.F.R. § 42.120. In its Patent Owner Response,
`
`Patent Owner only addresses this groundasinstituted against claims 32, 44,
`
`and their dependentclaims, andis silent on the ground asinstituted against
`
`claims 1, 2, 4, 6, 13, 14, 16, 24, 31, 41, and 43. PO Resp. 2, 9.
`
`Our Scheduling Order in this case cautioned Patent Owner“that any
`
`arguments for patentability not raised in the [Patent Owner Response] will
`
`be deemed waived.” Paper 7, 3. The Board’s Trial Practice Guide also
`
`states that the Patent Owner Response“should identify all the involved
`
`claims that are believed to be patentable and state the basis for that belief.”
`
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14,
`
`2012). Furthermore, as the Board has stated, our governing statute and
`
`12
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`IPR2015-00528
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`Rules “clearly place some onuson the patent owner, oncetrial is instituted,
`to address the material facts raised by the petition as jeopardizing [the]
`
`patentability of the challenged claims.” Johnson Health Tech Co.Ltd.v.
`
`ICON Health & Fitness, Inc., Case IPR2013-00463, slip op. at 12 (PTAB
`
`Jan. 29, 2015) (Paper 41).
`Here, Patent Ownerdoesnot articulate in the Patent Owner Response
`
`any reasons supporting the patentability of claims 1, 2, 4, 6, 13, 14, 16, 24,
`
`31, 41, and 43 over Peng on which weinstituted trial. See PO Resp. 2, 7—10.
`
`In the absence ofany response addressing the patentability of claims 1, 2, 4,
`
`6, 13, 14, 16, 24, 31, 41, and 43, Patent Ownereffectively precluded
`
`Petitioner from replying any further to the merits of those eleven claims.
`
`See 37 C.F.R. § 42.23(b) (“A reply may only respond to argumentsraised in
`
`the corresponding opposition or patent owner’s response.”). Petitioner relied
`
`on Patent Owner’s silence with respect to the unaddressed claims, andin its
`
`Reply only addresses “the issues Patent Ownerraised in its Response.” Pet.
`
`Reply 2; see also Tr. 6:12—18 (Petitioner argues that “Patent Owner’s
`
`response only addressed independentclaims 32 and 44 and their dependent
`
`claims. Therefore, the Patent Ownerneverrais[ed] the arguments as to any
`
`of the other claims as to Peng” and “has waived its argumentas to those
`
`claimsit did not address in the Patent Owner’s response.””). Nevertheless,
`
`Patent Ownerasserts in the last sentence of its Responsethat “the Board
`
`should find that the challenged claims ofthe ’901 Patent are patentable.”
`
`PO Resp.13.
`Byinstituting trial, we determined that Petitioner presented credible
`
`evidence pointing towards the unpatentability of claims 1, 2, 4, 6, 13, 14, 16,
`
`24, 31, 41, and 43. Dec. on Inst. 21-23. Rather than address the evidence
`
`13
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`IPR2015-00528
`Patent 6,322,901 Cl
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`applied against those challenged claims, Patent Owner chose to forego the
`
`opportunity, provided by statute, to present rebuttal evidence and/or
`
`argumentonthe issue of the patentability of those claims. Absent any
`
`rebuttal, we will not scour the record to locate evidence supporting
`
`patentability. Perfunctory or undeveloped arguments are waived. Thus, we
`
`are left to consider only the evidence of record as presented in the Petition.
`
`See Pet. 36-41. After considering Petitioner’s evidence with respect to
`
`claims 1, 2, 4, 6, 13, 14, 16, 24, 31, 41, and 43, we find that Petitioner has
`
`shown, by a preponderance ofthe evidence,that these claims are
`
`unpatentable for the reasons providedin the Petition and below. Id.
`
`Regarding claim 1, Petitioner contends that Peng discloses the
`
`synthesis of nanocrystals having “nearly monodisperse” cores of CdSe and
`
`an overcoating of CdS that “was shown to be uniform andepitaxial by X-ray
`
`photoelectron spectroscopy (XPS).” Jd. at 37 (citing Ex. 1010, Abstr., 2).
`
`According to Petitioner, Figure 3 of Pengillustrates the photoluminescence
`
`of the nanoparticles and that the “curve has a FWHM ofabout 33 nm.” Jd.
`
`(citing Ex. 1010, Fig. 3; Ex. 1002 931). Paragraph 31 of the Hines
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`Declaration describes the relationship between nanometers (nm) as used in
`
`claim 1, and electron volts (eV) as used in Figure of 3 of Peng,to illustrate
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`photoluminescenceof the nanocrystals. Using that relationship between eV
`
`and nm in the method for calculating FWHM,Dr. Hines “determined that
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`the top photoluminescence curve of Figure 3A has a FWHM ofabout33
`
`nm.” Ex. 1002 J 31; see Ex. 1002 4 13.
`
`Wedetect no defect in the calculations presented by Dr. Hines in the
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`cited paragraph and, given Dr. Hines’s qualifications and experience
`
`(Ex. 1002 fj 3-4, Appendix A), we credit her testimony on the issue ofthe
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`14
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`photoluminescenceof the nanocrystals disclosed by Peng. Therefore, the
`
`Petition adequately shows that Peng teaches nanocrystals with a uniform
`
`coating that functions within the narrow spectral range required by claim 1.
`
`See Ex. 1001, 2:50-54 (“an overcoating .
`
`.
`
`. uniformly deposited thereon,
`
`said coated core characterized in that whenirradiated the particles emit light
`
`in a narrow spectral range of no greater than about 40 nm” at FWHM).
`
`Regarding dependent claims 2, 4, 6, and 43, Peng discloses the
`
`emission of light at 33 nm at FWHM,whichis not greater than about 40 nm
`
`FWHM asrequired by claim 2 and not greater than about 37 nm FWHM as
`
`required by claim 43. See Pet. 37-38 (citing Ex. 1010, Fig. 3; Ex. 1002
`
`{ 31); id. at 41. Peng also discloses a quantum yield of at least 50%, which
`
`is a quantum yield greater than 30% as required by claim 4. Jd. at 38 (citing
`Ex. 1010, Abstr., Fig. 3, 4). In addition, Peng discloses photoluminescence
`spectra that the Hines Declaration correlates to a range overlapping the range
`
`of about 470 nm to about 620 nm required by claim 6.
`
`/d.(citing Ex. 1010,
`
`Fig. 3; Ex. 1002 § 31).
`
`Regarding dependent claims 13, 14, and 16, Figure 3 of Peng
`
`discloses the claimed number of monolayers of the second semiconductor
`
`material. /d. at 39. Peng further discloses CdS as the overcoating or second
`
`semiconductor material as required by claim 24. Jd. at 40 (citing back to
`
`contentions for claim 1 and Ex. 1010, Abstr.). Because the coated
`
`nanocrystal of Peng meets the requirements for a monodisperseparticle
`
`population as discussed above in connection with claim 1, it also meets the
`
`requirements of claim 31. Jd. Peng also discloses nanocrystals that are
`
`crystalline and, therefore, meets the requirements of claim 41. Jd. at 41
`
`(citing Ex. 1010, 9).
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`2. Claims 32, 35—40, 44, and 47-50
`
`Claims 32 and 44 are independentand includeall of the limitations of
`claim 1. Compare Ex. 1001, 11:9+21, with id., Reexam Cert. 1:21-33,
`
`2:16-28. Claims 32 and 44recite the additional limitation “and the coated
`nanocrystal emits light in a.narrow spectral range selected from bluelight,
`green light, yellow light, orange light, or red light.” Ex. 1001, Reexam Cert.
`
`1:33—36, 2:30-33. Petitioner asserts that Peng discloses photoluminescence
`| spectra that range from 560 nm to 650nm, which wavelengths theHines _—
`Declarationexplains are green light and red light, respectively, as required
`by claim 32. Pet. 40; Ex. 1010, Fig. 3; Ex. 1002 YJ 31, 19. Claim 44 further
`recites “wherein the coatednanocrystal exhibits photoluminescence having a
`
`quantumyield of greater than30%.” Ex. 1001, Reexam Cert. 2:28-30.
`Petitioner directs us to Peng’s reported quantum yield ofat least 50%, which
`is a quantum yield greater than 30% as required by claim 44. Pet. 41, 37-38
`(citing Ex. 1010, Abstr., Fig. 3, 4).
`oo
`Patent Owner contendsthat claims 32 and 44 are only met“if the
`
`entire spectral range includ[ing] blue light, green light, orange light or red
`light are available options.” PO Resp. 7-8 (citations omitted). Patent
`Owner argues that the claim language is not a Markushgroup,but, rather, “a
`
`recitation of species that have to be available for selection.” Jd. at 8. Patent
`Ownerreferences Figure 3 and the associated descriptionto illustrate this
`point. Id. at 8-9; Ex. 1001, 7:63-8:11. Patent Owner does not separately
`| argue for the patentability of claims 35-40 and 47-50, which depend from ~
`claims 32 and 44, respectively. See PO Resp. 7-10.
`¢ |
`Petitioner respondsthat the limitation “the coated nanocrystal emits
`light in a narrow spectral range selected from bluelight, green light, yellow
`
`16
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`IPR2015-00528
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`light, orange light, or red light” is either a Markush grouporhas “exactly the
`same meaning.” Pet. Reply 5-9. Petitioner cites Abbott Labs., 334 F.3d at
`1280, as authority that the “alternative” phrasing in claims 32 and 44
`constitutes a proper Markushgroupandasserts that anyoneofthe colors in
`the prior art anticipates the claim. Jd. at 5-7. Petitioner also contendsthat
`even if the languageis not interpreted as a formal Markush group,the plain
`and ordinary meaning ofthe language is the same because it is simply alist -
`of alternatives. /d. at 7-9. Petitioner further argues, “each of the samples in
`
`Figure 3 represents a different size core, with each sample accordingly
`emitting in only a single spectral range.” Jd. at 15. The °901 specification
`notes that the frequency of the emitted light correspondsto the band gap of
`the semiconductor material, which is a function ofcrystal size. ‘Id. at 14-15
`(citing Ex. 1001, 4:23-29). Because the claimsare directedto a single
`
`_ coated nanocrystal and not multiple different nanocrystals of differing sizes,
`the claimed nanocrystal can emit light in only onecolor. Id. Petitioneralso
`characterizes Patent Owner’s discussion of claims 32 and 44 as requiring a
`product-by-process interpretation. Id. at 16—-1'/.
`For the reasons discussed in Section I.E.5., supra, we are persuaded
`that the broadest reasonable interpretation of the claimed narrow spectral
`range consistent with the specification is a list of alternatives. Even if the
`
`language in claims 32 and 44 does not constitute a proper Markush group,it
`lists a variety ofnarrowspectral rangesas colors that can be emitted by the
`claimed single nanocrystal; however, a particular nanocrystal is a particular
`
`size and, thus, emits only oneof these alternative colors.
`
`During the oral hearing, Patent Ownerargued that the claimed
`
`nanocrystalis part of a population of nanocrystals. Tr. 25:8—27:5. In
`
`17
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`particular, Patent Ownerstated, “this nanocrystal is part of that population,
`
`and the population languageis in the claim”and “the claim does include...
`
`monodisperse particle populations .
`
`.
`
`. [which] gives characteristics of the
`
`emission of the population.” Jd. at 25:13-15, 26:9-16. The population to
`
`whichthe core in claims 32 and 44 belongsis “a monodisperse particle
`
`population.” Ex. 1001, Reexam Cert. 1:24-25. However, this population
`
`includes monodisperseparticles of largely the same size that all emit one
`
`color of light in a narrow spectral range. “The core of the nanocrystallitesis
`
`substantially monodisperse. By monodisperse, as that term is used herein,it
`
`is meant a colloidal system in which the suspendedparticles have
`
`substantially identical size and shape.” Ex. 1001, 4:16—20. As such,
`
`because claims 32 and 44 are directed towards a nanocrystal (from a
`
`population of similarly sized and shaped nanocrystals) which emits light in a
`
`single narrow spectral range of one ofthe listed colors, we are not persuaded
`
`that claims 32 and 44 require all of the alternative spectral ranges, and,
`
`implicitly, different nanocrystal sizes. Rather, the nanocrystals that
`
`comprise the claimed monodisperse particle population emit light of one
`color correspondingto oneofthe alternative narrow spectral rangeslisted in
`
`the claim.
`
`Further, we are not persuaded that the claims are product-by-process
`
`claims. The claimsare directed to a nanocrystal that emits light in one of the
`
`alternative narrow spectral ranges. As noted above, weinterpret the claim to
`
`indicate analternative set of spectral ranges of light emitted by the
`
`nanocrystal, any one of which anticipates the claim. Evenif the spectral
`
`range claim limitation introduces a processstep into the claim, we are
`
`persuaded,for the reasons provided by Petitioner, that the product produced
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`thereby is anticipated by Peng. Pet. Reply 16-17 (citing Amgen Inc. v. F
`Hoffmann-La Roche, Ltd., 580 F.3d 1340, 1366 (Fed. Cir. 2009) (“Ifthe
`product in a product-by-process claim is the same as or obvious from a
`
`productofthe prior art, the claim is unpatentable even though the prior
`
`product was made bya difference process.”’)).
`
`In addition to disclosing the elements of claim 1, as discussed in
`
`Section II.A.1., supra, Peng discloses photoluminescence spectra that range
`
`from 560 nm to 650 nm, which wavelengths the Hines Declaration explains
`
`are green light and red light, respectively, as required by claim 32. Pet. 40;
`
`Ex. 1010, Fig. 3; Ex. 1002 94 31, 19. Because the coated nanocrystal of
`
`Peng has photoluminescencespectra that include the particular colors of
`
`light required by claims 35-38 and 47—S0O,it meets the requirements of those
`
`claims as well. Pet. 41-42. Peng’s coated nanocrystal also meetsall of the
`
`requirements of claims 40 and 44 because it has a quantum yield greater than
`
`30%, as shown in the Petition with respect to claim 4. Id. at 41. The
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`requirements of claim 39 also are met by Peng because Peng discloses
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`nanocrystals that are crystalline. /d. (citing Ex. 1010, 9).
`
`After consideringall of Petitioner’s and Patent Owner
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