Trials@uspto.gov
`571-272-7822
`
`Paper 6
`Entered: July 27, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`NANOCO TECHNOLOGIES, LTD.,
`Petitioner,
`
`V.
`
`MASSACHUSETTS INSTITUTE OF TECHNOLOGY,
`Patent Owner.
`
`Case IPR2015-00528 -
`Patent 6,322,901 Cl
`
`Before DONNA M.PRAISS, LYNNE E. PETTIGREW,and
`JO-ANNE M. KOKOSKI, Administrative Patent Judges.
`
`PRAISS, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 CFR. § 42.108
`
`
`571-272-7822
`
`Paper 6
`Entered: July 27, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`NANOCO TECHNOLOGIES, LTD.,
`Petitioner,
`
`V.
`
`MASSACHUSETTS INSTITUTE OF TECHNOLOGY,
`Patent Owner.
`
`Case IPR2015-00528 -
`Patent 6,322,901 Cl
`
`Before DONNA M.PRAISS, LYNNE E. PETTIGREW,and
`JO-ANNE M. KOKOSKI, Administrative Patent Judges.
`
`PRAISS, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 CFR. § 42.108
`
`
`
`IPR2015-00528
`Patent 6,322,901 Cl
`
`Nanoco Technologies, Ltd. (“Petitioner”) filed a Petition (Paper 2,
`“Pet.”) to institute an interpartes review of claims 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. A Preliminary Response (Paper 5, “Prelim. Resp.”)
`
`wasfiled by Massachusetts Institute of Technology (“Patent Owner’’).
`
`Wehavejurisdiction under 35 U.S.C. § 314, which provides that an
`interpartes review may be authorized onlyif“the informationpresented in
`the petition ... and any [preliminary] response .
`.
`. showsthat there is a
`
`reasonablelikelihood that the petitioner would prevail with respectto at
`
`least 1 of the claims challengedin the petition.” 35 U.S.C. § 314(a).
`
`Petitioner challenges claims 1-13, 15—21, 24, 31-33, 35-45, and 47—
`50 under 35 U.S.C. § 102(b), claims 1-20, 24, 31-33, 35-45, and 47-50
`under 35 U.S.C. 102(a), and claims 1-3, 6-21, 24, 31-33, 35-39, and 41-43 7
`under 35 U.S.C. § 103(a). Pet. 11-12. Weinstitute an interpartes review as
`
`to claims 1, 2, 4, 6-14, 16, 18-20, 24, 31-33, 35-44, and 47-50 as discussed
`
`below.
`
`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. Wisc.), which was voluntarily dismissed with prejudice. Pet. 5; Paper
`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
`
`' The Petition excludes claim 14 from thelist of claims challenged on page
`1, but includes claim 14 in the bodyof the Petition. See, e.g., Pet. 11-12.
`
`2
`
`
`
`IPR2015-00528
`Patent 6,322,901 Cl
`
`certificate issued June 5, 2012, confirming claims 1-31 and adding claims
`32-50. Pet. 5; 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 of light
`emission known as semiconductor nanocrystallites or quantum dots.
`Ex. 1001, Abstr., 1:18-28. More particularly, the invention relates to capped
`quantum dots having a narrowparticle size distribution, andis described as
`“highly luminescent ZnS-capped CdSe ((CdSe)ZnS) nanocrystallites having
`a narrow particle size distribution.” Jd. at 4:9-12, 4:35-56. Thecore of the
`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 “monodisperse particles deviate less than 10% in rms”
`
`diameterin the core, and preferably less than 5% in the core.” Jd. at 4:16—
`22.
`|
`
`The overcoating of the nanocrystallites may comprise one or two
`
`monolayers of ZnY,“where Y=S,Se, and mixtures thereof uniformly
`
`deposited thereon,” and “mayfurther comprise an organic layer on the
`nanocrystal outer surface.” Jd. at 2:49-50, 2:65—3:1. “The organic layer
`
`> We understand “rms”to refer to root mean square or square rootof the
`mean squared deviations of each measurement from the average diameter.
`See Ex. 2005, 27.
`
`
`
`IPR2015-00528
`‘Patent 6,322,901 Cl
`
`may be comprised of moieties selected to provide compatibility with a
`suspension medium,suchas a short-chain polymer terminating in a moiety |
`having affinity for a suspending medium, and moieties which demonstrate
`
`an affinity to the quantum dotsurface.” Jd. at 3:1-6. Theaffinity for the
`
`nanocrystal surface is said to promote “coordination of the organic
`
`compoundto the quantum dotouter surface,” while the affinity for the
`
`suspension medium is said to “stabilize[] the quantum dot suspension.” Jd.
`
`at 3:69.
`
`C.
`
`Illustrative Claim
`
`Independent claim 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 memberof 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 sameor different,
`
`is
`population
`particle
`the monodisperse
`and wherein
`characterized in that when irradiated 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 independentclaims 10, 32, and 44 alsorecites, inter
`
`alia, “an overcoating uniformly deposited on the core comprising a
`
`second semiconductor material” and that “the first semiconductor
`
`material and the second semiconductor material are the same or
`
`’ different.”
`
`
`
`IPR2015-00528
`Patent 6,322,901Cl
`
`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%.” Id. atReexam Cert.
`2:27-29.
`
`D.
`
`The Prior Art
`
`Petitioner relies on the followingpriorart:
`
`
`
`Hineset al.,
`“Synthesis and
`
`Characterization of Strongly
`
`
`1996|1005
`Luminescing ZnS-Capped CdSe
`
`
`Nanocrystals,” Journal of Physical
`
`
`Chemistry, 1996, 100, 468-471
`Daneketal. “Preparation ofII-VI
`quantum dot composites by
`electrospray organometallic chemical
`vapor deposition,” J. Cryst. Growth,
`1994, 145, 714-720
`
`
`
`Murrayetal. “Synthesis and
`Characterization of Nearly
`1993|1007
`Murray
`Monodisperse CdE (E = S,Se, Te)
`
`
`
`
`Semiconductor Nanocrystallites,” J.
`
`
`Am. Chem.Soc. 1993, 115, 8706—15
`
`= Communications,Vol.96, 1995, eye
`Tischchenko,et al., Solid State
`795-798
`
`Rodriquez-Viejo|Rodriguez-Viejo et al.,
`
`“Cathodoluminescence and
`
`
`
`Photoluminescence of Highl
`
`
`
`
`
`
`
`
`Tischenko
`
`1995
`
`1008
`
`
`
`
`
`3
`
`7
`
`
`
`
`
`1997
`|
`
`1010 |
`
`IPR2015-00528
`Patent 6,322,901 Cl
`
` Retenee.[ag Ublicationt
`
`Peng
`
`Kortan
`
`
`
`
`
`
`
`
`
`oo ea
`Luminescent CdSe/ZnS Quantum Dot
`Composites,” App. Phys. Let., 1997,
`70, 2132-2134
`Penget al., “Epitaxial Growth of
`Highly Luminescent CdSe/CdS
`Core/Shell Nanocrystals with
`Photostability and electronic
`Accessibility,” J. Am. Chem.Soc.
`1997 (119) 7019—29
`Kortan et al. “Nucleation and Growth |
`of CdSe on ZnS Quantum Crystallite
`Seeds, and Vice Versa, in Inverse
`Micelle Media,” J. Am.
`Chem.Soc. 1990, 112, 1327-32
`
`Enzymatic Synthesis of Thiol-
`Containing Polymers to Prepare
`Polymer-CdS Nanocomposites,”
`Chem.Mater., 1997, 1342-47
`Cofferet al., “Characterization of
`quantum-confined CdS
`nanocrystallites stabilized by
`deoxyribonucleic acid (DNA),”
`Nanotechnology 1992, 69-76
`
`1990
`
`1011
`
`.
`
`‘
`
`
`
`
`Premachandran|Premachandranetal., “The 1997 1012
`
`
`
`
`
`
`
`Coffer
`
`
`
`
`
`
`.
`
`1992
`
`1013
`
`
`
`
`Petitioner also relies on the Declaration of Margaret A. Hines, Ph.D., dated
`
`January 5, 2015(Ex. 1002, “Hines Declaration”).
`
`E.
`
`The Asserted Grounds
`
`Petitioner challenges claims 1—21, 24, 31-33, 35-45, and 47-50 ofthe
`
`’901 patent on the following grounds:
`
`
`
`[Besis||Reference(s)_|
`C!
`Girallle
`
`1, 2, 4-20, 24,
`31-33, 35-37, 39-42, 44, 45,
`
`102(b)|Hines
`and 47-49
`
`
`
`
`
`
`1-3, 6-20, 24, 31-33, 35-39, and 41-43
`102(b)|Danek
`
`
`
`IPR2015-00528
`Patent 6,322,901 Cl
`
`Murra
`
`1-14, 16, 18-20, 24, 31-33, 35-45, and 47-50
`
`Premachandran
`103(a)|Coffer
`1
`Premachandran
`
`urra
`
`S49
`
`Premachandran
`and Danek
`
`
`
`
`
`and Hinespst
`1-20,24,31-33,35-45,and47-50
`102(a) Vigo
`102(b) as
`so 16, 18-20,24,31-33,35-45,and
`
`
`1-3, 6-20, 24, 31-33, 35-39, and 41-43|103¢a)| Kortan and
`
`
`
`
`Toe Premachandran
`
`
`——_:—_—|
`
`2
`
`
`
`Premachandran
`1 103(a)|and Rodriguez-
`Viejo
`Premachandran
`and Peng
`
`2
`
`2
`
`and Murra
`Premachandran,
`21 103(a)|Murray, and
`
`Kortan
`
`
`
`F. Claim Interpretation
`Asa first step in our analysis, for purposes ofthis decision, we
`
`determine the meaning of the claims using the “broadest reasonable
`
`construction in light of the specification of the patent in which [they]
`appear|}.” 37 C.F.R. § 42.100(b). Under that standard, claim termsare
`given their ordinary and customary meaning, as would be understood by one
`
`
`
`IPR2015-00528
`Patent 6,322,901 Cl
`
`of ordinary skill in the art in the context of the entire disclosure. Jn 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 and second semiconductor material
`
`are the sameor different,” and “an overcoating uniformly deposited on the
`
`core,” which are recited in the independent claims, as well as “short-chain
`
`polymer terminating in a moiety havingaffinity for a suspension or
`dispersion medium,” whichis recited in dependent claim 21. Pet. 6-10.
`Patent Ownerproposesalternate constructions. Prelim. Resp. 4-10.
`
`Monodisperse Particle Population
`Petitioner proposes the broadest reasonable interpretation of
`
`“monodisperse particle population,” as recited in all of the independent
`
`claims, includes “nearly monodisperse”particle populations in order to be
`
`consistent with the claim construction in a related patent, and to encompass
`
`numerical limitations recited in dependent claims. Pet. 6-7. In support,
`Petitioner directs us to the claim construction of the term “monodisperse”in
`the reexamination file history ofU.S. Patent 6,861,155 (‘the ’155 patent’),
`whichclaimspriority to the 901 patent. Jd. at 7 (citing Ex. 1003, 1459-60).
`
`Petitioner further directs us to dependent claims 7 and 8 of the ’901 patent,
`
`which require the “monodisperse particle population” recited in claim 1 to
`
`- have core diameters “no more than about 10% rms” and “no more than about
`
`5% rms,” respectively. Id. at 7-8; Ex. 1001, 11:40, 11:44.
`
`’ Patent Ownerasserts that Petitioner’s proposed construction is
`
`incorrect because it disregards “particle population,” it improperly reads
`
`“nearly” into the construction from the Specification, and that the term
`
`should be construed within the context of the claim languagereciting
`
`
`
`IPR2015-00528
`Patent 6,322,901 Cl
`
`‘“‘wherein the monodisperse particle population is characterized in that when
`
`_the population emits light in a spectral range of no greater than about 60 nm
`
`full width at half max (FWHM).” Prelim. Resp. 5—7. Patent Ownerasserts
`
`that.“‘nearly monodisperse”is used in the Specification with respect to a
`
`single embodiment. Jd. at 6. Patent Owneralso contends that no
`
`construction of the term was required by the PTO during reexamination of
`
`the ’901 patent. Jd. at 7. Patent Owner does not proposean alternate
`
`construction for the term “monodisperse particle population.”
`
`For purposesofthis decision, we determine that the claim term
`
`“monodisperse particle population” does not require construction becauseit
`
`is defined within the context of the independent claimsas “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
`“characterized in that it exhibits no more than about a 10% rmsdeviation in
`
`the diameter of the core” (claims 10, 32, and 44).
`
`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. at 9. In
`
`support, Petitioner directs us to the claim construction of the same term
`
`during reexamination of the ’155 patent. Jd. (citing Ex. 1003, 1100-1101).
`
`Patent Ownerdoesnot dispute the proposed construction ofthis claim term.
`For purposesof this decision, we determinethe plain meaningof the
`claim term “whereinthefirst .
`.
`. and the second semiconductor material are
`
`the same” encompasses nanocrystals comprising only a single
`
`semiconductor material.
`
`
`
`IPR2015-00528
`Patent 6,322,901 Cl
`
`An Overcoating Uniformly Deposited on the Core
`
`Petitioner proposes that “uniformly deposited” should be construed to
`“encompass any overcoating” because dependent claims 26 and 27 limit the.
`overcoating recited in both independent claims 1 and 10 to “0 to about 5.3
`
`monolayers” and “less than about one monolayer,” respectively. Pet. 9-10.
`
`Patent Owner contendsthat Petitioner’s proposed construction
`“improperly reads out ‘uniformly’ from ‘an overcoating uniformly deposited
`on the core.’” Prelim. Resp. 10. Patent Ownerasserts that “[e]ven if the
`
`coating is less than a monolayer,the claimed structural uniformity is tied to
`
`this function [of emitting light in a light in a narrow spectral range], and as
`
`such cannot be disregarded.” Jd. at 9-10 (citing Ex. 1001, 2:50—54).
`
`Weare not persuaded byPetitioner that the phrase “overcoating
`
`uniformly deposited,” whichis recited in each independentclaim of the ’901
`
`patent, has no structural meaning and encompasses any overcoating.
`
`Dependent claim 26 doesnotlimit “uniformly deposited” to a coating of
`zero as asserted by Petitioner. Cf Pet. 9 (“claims 26 and 27 . .. further limit
`the overcoating to ‘0 to about 5.3 monolayers’ (Claim 26). . .”); Ex. 1001,
`
`43-45 (“wherein the overcoating comprises greater than about 0 to about
`
`5.3 monolayers of the second semiconductor material.”) (emphasis added).
`
`In addition, Petitioner does not direct us to any support for the assertion that
`
`an overcoating which is greater than about 0 but less than aboutone
`monolayer of ZnS (as required by dependentclaim 27) “does not completely
`cover the core.” Pet. 10. Therefore, for purposes of this decision, we adopt
`the ordinary definition of “uniformly,” in construing this claim term,
`
`10
`
`
`
`IPR2015-00528
`Patent 6,322,901 Cl
`namely, “identical or consistent, as from example to example, place to place,
`or moment to moment,” and “without variations in detail.”
`Short-Chain Polymer Terminating in a Moiety Having Affinity
`for a Suspension or Dispersion Medium
`
`Petitioner proposesthat “short-chain polymer terminating in a moiety
`
`having affinity for a suspensionor dispersion medium,”as recited in
`
`dependentclaim 21, should be construed as it was during the reexamination
`
`of the ’155 patent to mean “any polymer-coated nanocrystal having an
`
`affinity for a suspending medium.”Pet. 8 (citing Ex. 1003, 1461-62).
`
`Patent Ownercontendsthat the claim term should be construed to
`
`mean“any polymer capable of coating a nanocrystal having an affinity for a
`suspending medium.” Prelim. Resp. 8. Patent Owner asserts that
`Petitioner’s inclusion of “polymer-coated nanocrystal”in its proposed
`
`interpretation is incorrect because it would “rewrite the claim,” and that
`Patent Owner’s proposed construction is consistent with the Specification’s
`
`description that “the moiety with affinity for the suspension medium
`
`stabilizes the semiconductor nanocrystal suspension.” Jd. at 8-9 (citing Ex.
`1001, 3:8-9).
`.
`We are unable to discern any practical difference between the
`proposed claim constructions for this term. Claim 18, from which claim 21
`indirectly depends, requires that “the nanocrystal further comprises an
`organic layer on the nanocrystal outer surface” (Ex. 1001, 12:20-22), and
`
`claim 20, from which claim 21 directly depends, requires that “the organic
`layer comprises a moiety selected to exhibit affinity for the outer surface of
`the nanocrystal” (id. at 12:26—28). Thus, the polymer required by claim 21
`
`3 http://dictionary.reference.com/browse/unifom. Ex. 3001.
`
`1]
`
`
`
`IPR2015-00528
`_ Patent 6,322,901 Cl
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`is a componentof the organic layer or coating on the outer surface ofthe
`nanocrystal. Therefore, for purposes of this decision, we adopt Petitioner’s
`proposed claim construction for this term.
`
`Il.
`ANALYSIS
`A. Real Parties in Interest
`
`Webegin with Patent Owner’s assertion that the Petition is defective
`
`for failing to identify Dow Chemical Corporation (“Dow”) as a real party in
`
`interest. A petition for inter partes review “may be consideredonly if...
`
`the petition identifies all real parties in interest.” 35 U.S.C. § 312(a)(2).
`
`Thus, we addressfirst this threshold issue.
`
`In accordance with 37 C.F.R. § 42.8(b)(1), Petitioner identifies
`“Nanoco Technologies Ltd.” as the sole real party in interest. Pet. 4.
`Patent Ownerasserts that Petitioner “failed to notify the Office ofall
`required real-parties-in-interest” (Prelim. Resp. 28), and if a non-party is
`
`determined to constitute a real party in interest, “the Petition is incomplete,
`and trial cannotbeinstituted”(id. at 30).
`
`The Office Patent Trial Practice Guide provides guidance regarding
`
`factors to consider in determining whethera party is a real party in interest.
`77 Fed. Reg. 48,756, 48,759—-60 (Aug. 14, 2012). Considerations may
`.
`include: whether a non-party “funds and directs and controls” an IPR
`petition or proceeding; the non-party’s relationship with the petitioner; the
`
`non-party’s relationship to the petition itself, including the nature and/or
`degree of involvementin the filing: and the nature ofthe entity filing the
`petition. Id. at 48,760. Generally, a party does not becomea “real party-in- -
`interest” merely through association with anotherparty in an unrelated
`endeavor. /d. A party also is not considered a real party in interest in an
`
`12
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`IPR2015-00528
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`inter partes review solely becauseit is a joint defendant with a petitioner in
`
`a patent infringementsuit, or is part of a joint defense group with a petitioner
`
`in the suit. Id.
`
`Whethera party whois not a namedparticipantin a given proceeding
`is a “real party-in-interest” to that proceeding “is a highly fact-dependent
`question.” Jd. at 48,759. There is no “brightline test.” Jd. Courts invoke
`
`the term “real party-in-interest” to describe relationships and considerations
`sufficient to justify applying conventional principles of estoppel and
`
`.
`preclusion. Jd.
`The non-party’s participation with a petitioner may be overt or covert,
`and the evidence may bedirect or circumstantial, but the evidence as a
`whole must showthat the non-party possessed effective control over the
`
`petitioner relating to the inter partes review. Zoll Lifecor Corp. v. Philips
`
`Elecs. N. Am. Corp., Case IPR2013-00609,slip op. at 10 (PTAB Mar.20,
`
`2014) (Paper 15). Accordingly, we look to the evidence as a whole on
`
`which Patent Ownerrelies to determine the fact dependent issue of whether
`
`Petitioner identified all real parties-in-interest in this proceeding.
`In support ofits position, Patent Ownercites press release
`announcements that Dow Electronic Materials, a business unit of Dow,
`
`entered a global licensing agreementfor Petitioner’s cadmium-free
`
`semiconductor nanocrystal technology under which DowElectronic
`
`Materials will have exclusive worldwiderights for the sale, marketing, and
`
`manufacture of Petitioner’s cadmium-free semiconductor nanocrystals for-
`
`use in electronic displays. Prelim. Resp. 28 (citing Exs. 2002, 2003). Patent
`
`Ownerasserts the exclusive license “is directed to the same technologyas
`
`that of the °901 patent, the use of semiconductor nanocrystals in modern
`
`13
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`
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`IPR2015-00528:
`Patent 6,322,901 Cl
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`display technology.” Jd. at 29. Patent Owneralso asserts “it is likely that
`Dow and Nanoco mustact in unison forall purposes regarding this inter
`
`partes review proceeding.” Jd. Patent Ownerfurtherasserts “because Dow
`
`likely has an opportunity to control this inter partes review proceeding based
`
`on its relationship with Petitioner Nanoco, Dow likely constitutes a real-
`party-in-interest.” Id.
`.
`Based on these arguments, Patent Owner concludes that:
`Asthe exclusive licensee for the sale, marketing and
`manufacture of Petitioner’s cadmium-free semiconductor
`nanocrystals for use in electronic displays, Dowis likely to
`havea financially controlling interest in Petitioner and the
`outcomeof this proceeding,as it is directed to the same
`technology thatis at the heart of the exclusive license
`agreement.
`
`Td.at 30.
`
`Wefind Patent Owner’s evidence and arguments speculative and
`unpersuasive. On the record before us, we are not persuadedthat the
`
`evidence establishes that Dow is an involved and controlling party in this
`proceeding.
`.
`
`In RPX Corp. v. Virnetx, Inc., Case IPR2014-00171, slip op. at 6-10
`
`-(PTAB June 23, 2014) (Paper 52), the Board discussed a numberoffactors
`to determine whether petitioner RPX was a proxy for a non-party. Those
`factors included whetherthe petitioneris compensated by the non-party for
`
`filing the petition; whether the petitioner was authorized, explicitly or
`
`implicitly, by the non-party to file the petition or to represent the non-party
`
`in the inter partes review; and whetherthe petitioner is a “nominalplaintiff”
`
`‘with “no substantial interest” in the IPR challenge. Jd. at 7-10. Unlike the
`
`14
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`IPR2015-00528
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`facts in RPX, based on the record before us, there is no persuasive evidence
`that Petitioner is acting as a proxy for any otherentity.
`In Denso Corp. v. Beacon Navigation GmbH, Case IPR2013-00026,
`slipop. at 10-11 (PTAB Mar. 14, 2014) (Paper 34), the Board determined
`that the mere fact that parties are co-defendants or concurrent defendants in
`
`litigation does not make them real parties-in-interest. In Denso,as here,
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`there was no persuasive evidencethat the non-party engagedin strategic
`
`_ planning, preparation, and review ofthe interpartes reviewpetition.
`Thetotality of the evidence before us does not establish a relationship
`
`sufficient to make any unnamedparty identified by Patent Ownera real
`
`party-in-interest in this inter partes review. The evidence on whichPatent
`Ownerrelies does not establish or suggest that an unnamed party funds,
`
`directs, or controls the IPR petition or proceeding,or that Petitioner is a
`proxy for an unnamed party. There is no persuasive evidence that the
`unnamed party has control overthe petition itself or over Petitioner’s role in
`this proceeding. Accordingly, based onthetotality of the evidence before
`us, Patent Ownerfails to establish that any unidentified party should have
`
`been identified as a real party-in-interest in this proceeding.
`
`Weturn nowto Petitioner’s asserted groundsof unpatentability under
`35 U.S.C. §§ 102(a), 102(b), and 103(a) to determine whetherPetitioner has
`met the threshold standard of 35 U.S.C. § 314(a).
`B. Anticipation by Hines
`
`Hines describes ZnS-capped CdSe semiconductor nanocrystals
`“containing a core of nearly monodisperse CdSe of 27-30A diameter with a
`ZnS capping 6+3A thick.” Ex. 1005, Abstr. Petitioner contends that Hines
`therefore discloses a range of core diameters between 27 and 30A with a
`
`15
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`IPR2015-00528
`Patent 6,322,901 Cl
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`median of 28.5A andasize distribution of only +5% that meets the
`monodisperse particle population required by claims 1, 2, 4-20, 24, 31-33,
`35-37, 39-42, 44, 45, and 47-49. Pet. 12—22. Petitioner asserts that “the
`
`PTAB haspreviously decided that Hines teaches a monodisperseparticle
`
`population that has no greater than 5% rmsdeviation in core size.” Jd. at 13
`
`(citing Ex. 1003, 1071-1112). Petitioner asserts that any coating meets the
`
`requirementthat the overcoating be uniformly deposited on the core. Jd. at
`
`14. Petitioner also asserts that Figure 3 of Hinesillustrates an emission
`
`spectrum of CdSe core nanocrystals and ZnS-coated'CdSe nanocrystals that
`
`is 394+2nm FWHM according to Dr. Hines(id. at 15 (citing Ex. 1002, 13—
`
`14)), or 40£1nm FWHM according to Dr. Murray (id.(citing Ex. 1003,
`
`1319)).
`
`Petitioner does not adequately show that the overcoating disclosed in
`Hinesis uniformly deposited on the core as required by eachofthe
`challenged claims of the 901 patent. Petitioner asserts in its claim chart for
`each of independentclaims 1, 10, 32, and 44 that Hines’s coating “is
`
`‘uniformly deposited’ because any coating on the particles meets that
`limitation as defined in the 901 Patent.” Pet. 14, 17, 20,22. For the same
`reasons set forth above with respect to Petitioner’s contention that the claim
`term “an overcoating uniformly deposited on the core” meansany coating,
`
`wealso are not persuadedthat Petitioner has established a reasonable
`
`likelihood that it would prevail in challenging claims 1, 2, 4-20, 24, 31-33,
`
`35-37, 39-42, 44, 45, and 47-49 as anticipated by Hines. See Section I.F,
`supra. Therefore, we do notinstitute an interpartes review proceeding on
`the groundthat claims 1, 2, 4-20, 24, 31-33, 35-37, 39-42, 44, 45, and 47-
`
`49 are anticipated by Hines.
`
`16
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`IPR2015-00528
`Patent 6,322,901 Cl
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`C. Anticipation by Danek
`
`Based on ourreview ofthe Petition and Preliminary Response, we are
`
`not persuadedthat Petitioner has shownthat there is a reasonable likelihood
`
`that it would prevail in-its anticipation challenge to claims 1-3, 6—20, 24,
`31-33, 35-39, and 41-43 over Danek.
`Oo
`Petitioner asserts that Danek’s nanocrystals are prepared using the
`method described in Murray, whichis the same process described in the
`
`901 patent. Pet. 23. Petitioner presents in its claim chart where all of the
`
`limitations of claims 1-3, 6-20, 24, 31-33, 35-39, and 41-43 allegedly are
`
`disclosed in Danek.
`
`/d..at 23-30. Regarding the requirementrecited in
`
`independent claims 1, 10, and 32 that the overcoating be “uniformly
`
`deposited on the core,” Petitioner asserts that Danek discloses the
`
`overcoating is uniform because “transmission electron microscopy (TEM)
`
`showsa high degreeof crystallinity of the composite nanocrystals with
`relatively few structure defects, indicating the overcoating is uniform.”
`
`Pet. 24, 27, 29. Petitioner directs us to page 2 of Danek and paragraph 22 of
`
`the Hines Declaration to support its contention that Danek’s nanocrystals
`have a uniform overcoating. /d. (citing Ex. 1006, 2; Ex. 1002 422). The
`' Hines Declaration refers to the statement in Danek regarding the high degree
`
`of crystallinity quoted above and concludes “[t]hat indicates the overcoating
`is uniform.” Ex. 1002 § 22.
`
`Weare not persuadedby Petitioner’s arguments that Danek discloses
`an overcoating uniformly deposited onthe core as required bythe claims.
`
`Neither Danek nor the Hines Declaration explains how the presence of
`
`“relatively few structure defects” discloses a coating that is uniform as
`
`required by the claims. The presence of defects would seem to indicate that
`
`17
`
`
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`IPR2015-00528
`Patent 6,322,901 Cl
`
`the coating does not.have identical crystallinity throughout. The Hines
`
`Declaration does not elucidate for us the statements in Danek.
`In sum, Petitioner does not show sufficiently on this record that there
`is a reasonable likelihood it would prevail in showing that claims 1-3, 6—20,
`24, 31-33, 35-39, and 41-43 are anticipated by Danek. Therefore, we do
`not institute an inter partes review proceeding onthis ground.
`C.
` Obviousness over Danek
`Based on ourreview ofthe Petition and the Preliminary Response, we
`are not persuadedthat Petitioner has shown sufficiently that there is a
`reasonablelikelihood that it would prevail in its obviousness challenge to
`claims 3 and 7 over Danek in combination with Murray, and claim 16 over
`Danekin view ofthe knowledge of oneofordinary skill in the art. See Pet.
`
`11 n.2.
`
`The question of obviousnessis resolved on the basis of underlying
`factual determinations including (1) the scope and contentof the priorart,
`
`(2) any differences between the claimed subject matter andtheprior art, and
`(3) the level of skill in the art. Graham v. John Deere Co., 383 U.S. 1, 17—
`
`18 (1966). Petitioner identifies the difference between Danek and the claims
`at issue as the emission FWHM ofabout33 nmratherthan about 30 nm as
`recited in claim 3 (Pet. 25), core distribution deviations of less than 5% rms
`rather than less than about 10% rmsdeviation as recited in claim 7 (id. at
`26), and an overcoating of almost 4 monolayers thick rather than about one
`to about two monolayersas recited in claim 16 (id. at 28). Each ofclaims3,
`
`7, and 16 dependsdirectly or indirectly from independent claims 1 or 10,
`
`which require an overcoating uniformly deposited on the core. As discussed
`
`above, weare not persuadedbyPetitioner’s arguments that Danek discloses
`
`18
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`IPR2015-00528
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`
`an overcoating uniformly deposited on the core. Because Petitioner does not
`
`_
`
`argue that Murray or the knowledgeofoneofordinary skill in the art cures.
`the deficiency of an overcoating uniformly deposited onthe core, Petitioner
`does not adequately demonstrate a reasonable likelihood thatit would
`prevail in its obviousness challenge to claims 3, 7, and 16 based on Danek
`
`and the recitedpriorart.
`Therefore, wedo notinstitute an interpartes review proceeding on .
`the grounds that claims 3 and 7would have been obvious over Danek and
`- Murray and claim 16 would have been obvious over Danek in view of the
`knowledge of one ofordinary skill in theart.
`
`D.
`
`Anticipation by Rodriquez-Viejo
`
`Based on ourreview of the Petition and the Preliminary Response, we
`
`are not persuaded that Petitioner has shown that there is a reasonable
`
`likelihood that it would prevail in its anticipation challenge to claims 1—20,
`
`24, 31-33, 35—45, and 47-50 over Rodriguez-Viejo.
`
`Regarding independentclaims 1, 10, 32, and 44, Petitioner asserts that
`Rodriguez-Viejo discloses nanocrystals of CdSethat are overcoated with
`
`ZnSand that “[t]he overcoating is uniformly deposited based on the broadest
`
`reasonable construction of that term.” Pet. 31, 33, 35, 36. For the reasons
`
`discussed above, we do not adopt Petitioner’s proposed construction that an
`
`overcoating uniformly deposited on the core means any overcoating. See id.
`
`at 10. Therefore, the Petition does not adequately show that Rodriguez-
`
`Viejo discloses an overcoating uniformly deposited on the core, whichis a
`
`limitation required by each of the challenged claims.
`
`
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`IPR2015-00528
`Patent 6,322,901 Cl
`
`In sum, the Petition does not demonstrate a reasonable likelihood that
`
`any of claims 1—20, 24, 31-33, 35-45, and 47-50 is anticipated by
`
`Rodriguez-Viejo.
`
`E. Anticipation by Peng
`Petitioner asserts that claims 1-14, 16, 18-20, 24, 31-33, 35-45, and
`
`47-50 are unpatentable as anticipated by Peng. Based on ourreview ofthe
`
`Petition and Preliminary Response, we are persuadedthat Petitioner has
`
`shownsufficiently, on the current record, that there is a reasonable
`
`likelihood that claims 1, 2, 4, 6, 13, 14, 16, 24, 31, 32, 35-41, 43, 44, and
`47-50 are anticipated byPeng.
`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).” Pet. 37 (citing Ex. 1010, Abstr., 2).
`Petitioner further asserts that Figure 3 of Pengillustrates the
`
`photoluminescenceof the nanoparticles and that the “curve has a FWHM of
`
`about 33 nm.” /d. (citing Ex. 1010, Fig. 3; Ex. 1002 931). Paragraph 31 of
`the Hines 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 photoluminescenceof the nanocrystals. Using that relationship
`
`between eV and nm in the method for calculating FWHM,Dr. Hines
`“determinedthat the top photoluminescence curve ofFigure 3A has a
`FWHM ofabout 33 nm.” Ex. 1002 4 31; see Ex. 1002 { 13.
`Patent Ownerdoesnot dispute Dr. Hines’s calculations regarding
`Peng’s disclosures. Instead, Patent Ownerasserts that Dr. Hinesis not a
`disinterested third party because she is an employee of Petitioner and
`
`20
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`IPR2015-00528
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`therefore her testimony should be afforded “little—orat least diminished—.
`
`weight.” Prelim. Resp. 21-22. Patent Owneralso asserts that Peng
`
`qualifies that [the disclosed] ‘uniform’ shell growth relates [to]
`the shell having a uniform thickness.
`[Ex. 1010] at2. A
`uniform thickness does not inherently relate to the function of
`emitting light in a narrow spectral range to which the claimed
`term is dire
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