UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioners,
`
`v.
`
`NANOCO TECHNOLOGIES LTD.,
`Patent Owner.
`
`Case No. IPR2021-00184
`U.S. Patent No. 7,803,423
`
`PATENT OWNER’S SUR-REPLY
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioners,
`
`v.
`
`NANOCO TECHNOLOGIES LTD.,
`Patent Owner.
`
`Case No. IPR2021-00184
`U.S. Patent No. 7,803,423
`
`PATENT OWNER’S SUR-REPLY
`
`
`
`Case No. IPR2021-00184
`U.S. Patent No. 7,803,423
`
`TABLE OF CONTENTS
`Petitioner incorrectly assumes that a renewed motion to stay will be
`granted ............................................................................................................. 1
`Petitioner’s new and belated stipulation does not meaningfully alter
`the Fintiv analysis ............................................................................................ 4
`
`I.
`
`II.
`
`i
`
`
`
`Case No. IPR2021-00184
`U.S. Patent No. 7,803,423
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Arbor Global Strategies LLC v. Samsung Electronics Co.,
`C.A. No. 2:19-cv-00333, 2021 U.S. Dist. LEXIS 2434 (E.D. Tex.
`Jan. 7, 2021) ...................................................................................................... 2, 3
`Intellectual Ventures I LLC v. T Mobile USA, Inc.,
`No. 2:17-CV-00577-JRG, 2018 U.S. Dist. LEXIS 239587 (E.D.
`Tex. Dec. 13, 2018) .............................................................................................. 3
`Oyster Optics, LLC v. Infinera Corp.,
`No. 2:19-CV-00257-JRG, Dkt. 87 (E.D. Tex. Jul. 17, 2020) ............................... 3
`Sand Revolution II, LLC v. Cont’l Intermodal Grp.-Trucking LLC,
`IPR2019-01393, Paper 24 (PTAB June 16, 2020) ............................................... 4
`Seven Networks, LLC v. Apple Inc.,
`No. 2:19-cv-00115-JRG, Dkt. 313 (Sept. 22, 2020)............................................. 3
`Sotera Wireless, Inc. v. Masimo Corp.,
`IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) ............................................. 4, 5
`
`ii
`
`
`
`Case No. IPR2021-00184
`U.S. Patent No. 7,803,423
`
`Exhibit
`2001
`2002
`2003
`2004
`
`2005
`
`2006
`
`2007
`
`2008
`
`2009
`
`2010
`
`2011
`
`2012
`
`2013
`
`2014
`
`TABLE OF EXHIBITS
`
`Description
`Declaration of Michael C. Newman
`Declaration of Thomas H. Wintner
`Declaration of Matthew S. Galica
`Periodic table of the elements, Encyclopaedia Britannica, Inc.,
`available at https://www.britannica.com/science/periodic-table (last
`visited Feb. 23, 2021)
`Samsung Global Newsroom. Quantum Dot Artisan: Dr. Eunjoo Jang,
`Samsung Fellow, November 30, 2017
`ACS Energy Lett. 2020, 5, 1316-1327. “Environmentally Friendly
`InP-Based Quantum Dots for Efficient Wide Color Gamut Displays”
`Wang, F., Dong, A. and Buhro, W.E., Solution–liquid–solid
`synthesis, properties, and applications of one-dimensional colloidal
`semiconductor nanorods and nanowires. Chemical Reviews,
`116(18):10888-10933 (2016)
`Wang, F., et al., Solution− liquid− solid growth of semiconductor
`nanowires. Inorganic chemistry, 45(19):7511-7521 (2006).
`Madkour, L.H., Synthesis Methods For 2D Nanostructured
`Materials, Nanoparticles (NPs), Nanotubes (NTs) and Nanowires
`(NWs). In Nanoelectronic Materials (pp. 393-456). Springer, Cham.
`(2019)
`Mushonga, P., et al., Indium phosphide-based semiconductor
`nanocrystals and their applications. Journal of Nanomaterials, 1-11
`(2012)
`Luo, H., Understanding and controlling defects in quantum confined
`semiconductor systems, Doctoral dissertation, Kansas State
`University (2016).
`Sinatra, L., et al. Methods of synthesizing monodisperse colloidal
`quantum dots. Material Matters, 12:3-7 (2017)
`Pu, Y., et al., Colloidal synthesis of semiconductor quantum dots
`toward large-scale production: a review. Industrial & Engineering
`Chemistry Research, 57(6):1790-1802 (2018)
`Rao, C. N. R.; Gopalakrishnan, J., Chapter 3: Preparative Strategies
`from New Directions in Solid State Chemistry; Cambridge University
`Press: Cambridge, UK (1986)
`
`iii
`
`
`
`Case No. IPR2021-00184
`U.S. Patent No. 7,803,423
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`Exhibit
`2015
`
`2016
`
`2017
`
`2018
`
`2019
`
`2020
`
`2021
`
`2022
`
`2023
`
`2024
`
`2025
`
`Description
`Glossary of Common Wafer Related Terms, BYU Electrical &
`Computer Engineering Integrated Microfabrication Lab, definition of
`degenerate semiconductor, available at
`https://cleanroom.byu.edu/ew_glossary (last visited Feb. 19, 2021)
`October 22, 2006 email between Eunjoo Jang and Nigel Pickett Re:
`Cd free quantum dots
`Weare, W.W., Reed, S.M., Warner, M.G. and Hutchison, J.E.,
`Improved synthesis of small (d core≈ 1.5 nm) phosphine-stabilized
`gold nanoparticles. Journal of the American Chemical
`Society, 122(51):12890-12891 (2000).
`Samsung’s Motion to Stay Pending Inter Partes Review of the
`Asserted Patents in Case 2:20-cv-00038-JRG, filed on November 30,
`2020
`Order denying Samsung’s Motion to Stay Pending Inter Partes
`Review in Case 2:20-cv-00038-JRG, filed on January 8, 2021
`Standing Order Regarding the Novel Coronavirus (Covid-19) for the
`Eastern District of Texas Marshall Division, signed March 3, 2020
`Standing Order Regarding Pretrial Procedures In Civil Cases
`Assigned to Chief District Judge Rodney Gilstrap During the Present
`Covid-19 Pandemic, signed April 20, 2020
`Samsung’s Preliminary Invalidity Contentions and Disclosures
`Pursuant To Patent Rules 3-3 and 3-4 (served November 9, 2020)
`Merriam-Webster Dictionary, online edition. Definition of
`“Halogen”, available at https://www.merriam-
`webster.com/dictionary/halogen (last visited Feb. 23, 2021)
`Illustrated Glossary of Organic Chemistry, UCLA. Illustration of
`Halide, available at
`http://www.chem.ucla.edu/~harding/IGOC/H/halide.html (last
`visited Feb. 23, 2021)
`Mortvinova, N.E., Vinokurov, A.A., Lebedev, O.I., Kuznetsova,
`T.A., and Dorofeev, S.G., Addition of Zn during the phosphine-based
`synthesis of indium phospide quantum dots:doping and surface
`passivation, Beilstein J Nanotechnol. 2015; 6: 1237-1246
`
`iv
`
`
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`Case No. IPR2021-00184
`U.S. Patent No. 7,803,423
`
`Exhibit
`2026
`
`2027
`
`2028
`
`2029
`
`Description
`Samsung’s Proposed Claim Constructions (served December 11,
`2020)
`He, Z., Yang, Y., Liu, J.W. and Yu, S.H., Emerging tellurium
`nanostructures: controllable synthesis and their applications.
`Chemical Society Reviews, 46(10): 2732-2753 (2017)
`INTENTIONALLY LEFT BLANK
`
`Makkar, M. and Viswanatha, R., Frontier challenges in doping
`quantum dots: synthesis and characterization. Rsc
`Advances, 8(39):22103-22112 (2018)
`
`v
`
`
`
`Case No. IPR2021-00184
`U.S. Patent No. 7,803,423
`
`Pursuant to the Board’s email authorization of March 8, 2021, Patent Owner
`
`Nanoco Technologies Ltd. files this sur-reply responding to Petitioner Samsung
`
`Electronics Co., Ltd., and Samsung Electronics America, Inc.’s Reply to Patent
`
`Owner’s Preliminary Response.
`
`In the Reply, Petitioner contends that Fintiv factors 1 and 4 weigh in favor of
`
`the Board not exercising its discretion to deny institution and that “neither factor 2
`
`nor other factors should alter that conclusion.” Reply at 5. Not so. Factors 1 and 4
`
`do not favor institution because a renewed motion to stay remains unlikely to
`
`succeed and overlapping issues persist. The Reply concedes that factor 2 is at best
`
`neutral and that factor 3 favors Patent Owner. And the Reply ignores factors 5 and
`
`6 entirely. Under the Board’s holistic view of the Fintiv factors, a discretionary
`
`denial is appropriate. The Board should not reduce its Fintiv analysis to a
`
`consideration of Petitioner’s stipulation, particularly in view of the substantive
`
`weaknesses identified in the proposed grounds, weaknesses which need not be
`
`repeated here. See generally POPR at 13-14 and 36-51.
`
`I.
`
`Petitioner incorrectly assumes that a renewed motion to stay will be
`granted
`The District Court denied Petitioner’s motion to stay without providing any
`
`indication that a future, renewed motion would be favored should an inter partes
`
`review be instituted. See generally, Ex. 2019. While Petitioner now embraces the
`
`1
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`Case No. IPR2021-00184
`U.S. Patent No. 7,803,423
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`reality that such a denial was entirely predictable and unsurprising given the
`
`motion’s premature posture and standard practices in the Eastern District of Texas,
`
`the Petition conspicuously ignored all of those factors. See Pet. at 65. Petitioner also
`
`neglects to mention its prior representations, made to the district court, arguing that
`
`since the Board would institute this and other IPR petitions, a pre-institution stay
`
`was appropriate and would “simplify issues” so long as upcoming phases, such as
`
`the Markman hearing taking place on March 26, 2001, were suspended. See Ex. 2018
`
`at 8-9. None of that has happened—indeed, the Markman hearing is proceeding as
`
`planned, just four days from the date of this filing.
`
`Petitioner assumes the likelihood of a successful motion to stay, but fails to
`
`mention, let alone analyze, the multiple factors that the district court must consider
`
`in deciding whether to stay a case pending an IPR. One factor that Petitioner will
`
`need to prove is that all of the challenged claims are likely to be cancelled. See Arbor
`
`Global Strategies LLC v. Samsung Electronics Co., C.A. No. 2:19-cv-00333, 2021
`
`U.S. Dist. LEXIS 2434 at *7 (E.D. Tex. Jan. 7, 2021)) (“Post-SAS, however,
`
`Samsung must point to more than a successful petition to show ‘that the Board is
`
`likely to invalidate every asserted claim.’”). That is, Samsung needs to show the
`
`district court that it has a particularly meritorious IPR petition—a tall order in light
`
`of the weaknesses not only with this Petition, but also the others (i.e., IPR2021-
`
`00182, -183, -185, and -186). Yet the Reply did not even address the merits of the
`
`2
`
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`U.S. Patent No. 7,803,423
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`petitions as they relate to Fintiv factor 6. And Petitioner’s promises of issue
`
`simplification fails to consider that Petitioner did not identify a single claim term for
`
`the Board to construe in any of its petitions, but asked the district court to construe
`
`multiple terms in each of the patents asserted by Patent Owner.
`
`Petitioner’s cited case law is also unpersuasive. As discussed, Arbor Global
`
`Strategies involved different facts, as did Seven Networks, LLC v. Apple Inc., No.
`
`2:19-cv-00115-JRG, Dkt. 313 at 2 (Sept. 22, 2020). In similarly situated cases, the
`
`Eastern District of Texas has denied renewed motions to stay, even where only one
`
`claim remained. See e.g., Oyster Optics, LLC v. Infinera Corp., No. 2:19-CV-00257-
`
`JRG, Dkt. 87 at 6 (E.D. Tex. Jul. 17, 2020) (rejecting arguments related to issue
`
`simplification where “no matter the outcome of the IPR,” an asserted claim would
`
`remain in the case); see also Intellectual Ventures I LLC v. T Mobile USA, Inc., No.
`
`2:17-CV-00577-JRG, 2018 U.S. Dist. LEXIS 239587 (E.D. Tex. Dec. 13, 2018)
`
`(denying motion to stay pending completion of various instituted IPRs). Indeed, in
`
`Oyster Optics, the court held that despite the plaintiff’s status as a non-practicing
`
`entity, the prejudice that would result if that proceeding were suspended “weighs
`
`heavily against a stay.” Id. at 4. Judge Gilstrap also specifically noted that with claim
`
`construction and fact discovery nearing completion and a trial 6 months out, “the
`
`late stage of this case weighs against granting a stay.” Id. at 5. The same is true here.
`
`By the time the Board renders an institution decision, the procedural posture in the
`
`3
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`
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`Case No. IPR2021-00184
`U.S. Patent No. 7,803,423
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`district court will counsel even more strongly against a stay since claim construction
`
`and fact discovery will be complete, and trial will be a mere 5 months away. See Ex.
`
`1019 at 1 (trial date). Thus, Fintiv factor 1 does not favor Petitioner.
`
`II.
`
`Petitioner’s new and belated stipulation does not meaningfully alter the
`Fintiv analysis
`Attempting to leverage the Board’s precedential decision in Sotera Wireless,
`
`Inc. v. Masimo Corp., IPR2020-01019, Paper 12 at 18-19 (PTAB Dec. 1, 2020),
`
`Petitioner replaced its conditional stipulation (Ex. 1021) with one more properly
`
`aligned with the full scope of the statutory estoppel that applies after a final written
`
`decision. Reply at 4-5. While the Board designated Sotera more than two months
`
`ago, and while Petitioner should have understood the import of a limited scope
`
`stipulation well before Sotera,1 Petitioner deliberately waited to offer its second
`
`stipulation until after it studied Patent Owner’s Preliminary Response. That speaks
`
`volumes. In any event, Petitioner’s heavy reliance on the new stipulation should not
`
`meaningfully alter the Fintiv factor 4 analysis.
`
`1 Sand Revolution II, LLC v. Cont’l Intermodal Grp.-Trucking LLC, IPR2019-01393,
`
`Paper 24 (PTAB June 16, 2020), a decision repeatedly cited by Petitioner, predates
`
`Sotera and clearly explains the shortcomings of Petitioner’s original stipulation. See
`
`Pet. at 65-68.
`
`4
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`Case No. IPR2021-00184
`U.S. Patent No. 7,803,423
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`By “adopting the same stipulation used in Sotera here,” Petitioner contends
`
`that it has “eliminated any overlap with the parallel district court litigation.” Reply
`
`at 5. That would only be the case, however, if the Board were to determine that an
`
`institution is appropriate in this proceeding, as well as in each of Case Nos.
`
`IPR2021-00182, IPR2021-00183, IPR2021-00185, and IPR2021-00186. Petitioner
`
`served extensive invalidity contentions in the district court with “exemplary
`
`combinations of references,” but for all of the asserted patents, Petitioner included
`
`vague and self-serving catch-all language stating that those exemplary combinations
`
`“may be read in conjunction with the state-of-the-art and/or background prior art
`
`identified in Appendix B.” See Ex. 2022 at 36, 90, 129, 161 and 189. In other words,
`
`even with Petitioner’s new stipulation filed in this and the other IPR proceedings, it
`
`is highly likely the district court will need to consider many, if not most of the same
`
`prior art references as the Board, absent institutions in all five IPRs and a successful
`
`motion by Samsung to stay the district court proceeding.
`
`In sum, factor 4 does not strongly favor Petitioner and even if it did, under the
`
`Board’s holistic view of the Fintiv factors, efficiency and integrity would still be
`
`best served by denying institution for the reasons previously presented in Patent
`
`Owner’s Preliminary Response. See POPR at 4-14; Sotera Wireless, IPR2020-
`
`01019, Paper 12 at 12.
`
`5
`
`
`
`Dated: March 22, 2021
`
`Respectfully submitted,
`
`Case No. IPR2021-00184
`U.S. Patent No. 7,803,423
`
`Nanoco Technologies Ltd.,
`By its attorneys,
`
`/William A. Meunier/
`William A. Meunier (Reg. No. 41,193)
`Peter J. Cuomo (Reg. No. 58,481)
`Michael C. Newman (pro hac vice)
`Thomas A. Wintner (pro hac vice)
`Matthew S. Galica (pro hac vice)
`MINTZ, LEVIN, COHN, FERRIS,
`GLOVSKY AND POPEO, P.C.
`One Financial Center
`Boston, MA 02111
`Telephone: 617-348-1845
`Facsimile: 617-542-2241
`E-mails: WAMeunier@mintz.com
` PJCuomo@mintz.com
` MCNewman@mintz.com
` TWintner@mintz.com
` MSGalica@mintz.com
` NanocoIPRs@mintz.com
`
`6
`
`
`
`Case No. IPR2021-00184
`U.S. Patent No. 7,803,423
`
`CERTIFICATE OF SERVICE
`
`I certify that a copy of Patent Owner’s Sur-reply is being served by
`
`electronic mail on the following counsel of record:
`
`Lead Counsel
`F. Christopher Mizzo, P.C.
`Reg. No. 73,156
`chris.mizzo@kirkland.com
`KIRKLAND & ELLIS LLP 1301
`Pennsylvania Ave., N.W.
`Washington, D.C. 20004
`Telephone: (202) 389-5000
`Facsimile: (202)389-5200
`
`Dated: March 22, 2021
`
`Back-Up Counsel
`Gregory S. Arovas, P.C.
`Reg. No. 38,818
`greg.arovas@kirkland.com
`Stefan Miller
`Reg. No. 57,623
`stefan.miller@kirkland.com
`KIRKLAND & ELLIS LLP
`601 Lexington Avenue
`New York, N.Y. 10022
`Telephone: (212) 446-4800
`Facsimile: (212) 446-4900
`
`W. Todd Baker
`Reg. No. 45,265
`todd.baker@kirkland.com
`KIRKLAND & ELLIS LLP 1301
`Pennsylvania Ave., N.W. Washington,
`D.C. 20004 Telephone: (202) 389-5000
`Facsimile: (202)389-5200
`
`/William A. Meunier/
`William A. Meunier (Reg. No. 41,193)
`MINTZ, LEVIN, COHN, FERRIS,
`GLOVSKY & POPEO, P.C.
`
`7
`
`
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