Trials@uspto.gov
`571-272-7822
`
`
`
`Paper 47
`Entered: May 16, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SAMSUNG ELECTRONICS CO., LTD. and
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioner,
`v.
`NANOCO TECHNOLOGIES LTD.,
`Patent Owner.
`
`IPR2021-00184
`Patent 7,803,423 B2
`
`
`
`
`
`
`
`
`
`Before ERICA A. FRANKLIN, GRACE KARAFFA OBERMANN, and
`CHRISTOPHER M. KAISER, Administrative Patent Judges.
`FRANKLIN, Administrative Patent Judge.
`
`JUDGMENT
`Final Written Decision
`Determining No Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`
`
`571-272-7822
`
`
`
`Paper 47
`Entered: May 16, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SAMSUNG ELECTRONICS CO., LTD. and
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioner,
`v.
`NANOCO TECHNOLOGIES LTD.,
`Patent Owner.
`
`IPR2021-00184
`Patent 7,803,423 B2
`
`
`
`
`
`
`
`
`
`Before ERICA A. FRANKLIN, GRACE KARAFFA OBERMANN, and
`CHRISTOPHER M. KAISER, Administrative Patent Judges.
`FRANKLIN, Administrative Patent Judge.
`
`JUDGMENT
`Final Written Decision
`Determining No Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`
`
`
`IPR2021-00184
`Patent 7,803,423 B2
`
`I.
`INTRODUCTION
`This is a Final Written Decision in an inter partes review of claims
`1–16 and 21–25 (“the challenged claims”) of U.S. Patent No. 7,803,423 B2
`(Ex. 1001, “the ’423 patent”). We have jurisdiction under 35 U.S.C. § 6 and
`enter this Decision pursuant to 35 U.S.C. § 318(a). For the reasons set forth
`below, we determine that Samsung Electronics Co., Ltd. and Samsung
`Electronics America, Inc. (collectively, “Petitioner”) have not shown, by a
`preponderance of the evidence, that the challenged claims are unpatentable.
`A.
`Procedural History
`Petitioner filed a Petition requesting an inter partes review of the
`challenged claims. Paper 1 (“Petition” or “Pet.”). Petitioner supported the
`Petition with the Declaration of Mark A. Green, Ph.D. (Ex. 1002). Nanoco
`Technologies Ltd. (“Patent Owner”) filed a Preliminary Response to the
`Petition. Paper 12. Pursuant to our authorization, Petitioner filed a Reply
`(Paper 14) and Patent Owner filed a Sur-reply (Paper 15).
`On May 19, 2021, pursuant to 35 U.S.C. § 314(a), we instituted trial
`to determine whether any challenged claim of the ’423 patent is unpatentable
`based on the grounds raised in the Petition. Paper 17 (“Inst. Dec.”). The
`following table sets forth the grounds asserted for the challenged claims:1
`
`
`
`1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 287–88 (2011), amended 35 U.S.C. §§ 102 and 103, effective
`March 16, 2013. Because the application from which the ’423 patent issued
`has an effective filing date prior to March 16, 2013, the pre-AIA version of
`§§ 102 and 103 applies.
`
`2
`
`
`
`IPR2021-00184
`Patent 7,803,423 B2
`Claims Challenged
`1–3, 10, 11, 13, 22–24
`1–6, 10–14, 21–25
`7–9
`1, 10–16, 21–24
`4–6, 25
`7–9
`1, 4, 11–16, 21, 25
`
`35 U.S.C. §
`102
`103(a)
`103(a)
`103(a)
`103(a)
`103(a)
`103(a)
`
`Reference(s)
`
`Banin2
`Banin
`Banin, Bawendi3
`Zaban,4 Ptatschek5
`Zaban, Ptatschek, Yu6
`Zaban, Ptatschek, Bawendi
`Lucey,7 Ahrenkiel8
`
`After institution of trial, Patent Owner filed a Patent Owner Response
`to the Petition. Papers 25, 26 (collectively, “PO Resp.”).9 Patent Owner
`
`
`2 Banin et al., WO 03/097904 A1, published Nov. 27, 2003 (“Banin,”
`Ex. 1005).
`3 Bawendi et al., US 6,576,291 B2, issued June 10, 2003 (“Bawendi,”
`Ex. 1014).
`4 Zaban et al., Photosensitization of Nanoporous TiO2 Electrodes with InP
`Quantum Dots, 14 LANGMUIR 3153–3156 (1998) (“Zaban,” Ex. 1006).
`5 Ptatschek et al., Quantized Aggregation Phenomena in II-VI-
`Semiconductor Colloids, 102 PHYS. CHEM. 85–95 (1998) (“Ptatschek,”
`Ex. 1008).
`6 Yu et al., Heterogeneous Seeded Growth: A Potentially General Synthesis
`of Monodisperse Metallic Nanoparticles, 123 J. AM. CHEM. SOC. 9198–9199
`(2001) (“Yu,” Ex. 1010).
`7 Lucey et al., US 7,193,098 B1, issued Mar. 20, 2007 (“Lucey,” Ex. 1011).
`8 Ahrenkiel et al., Synthesis and Characterization of Colloidal InP Quantum
`Rods, 3 (6) NANO LETTERS 833–837 (2003) (“Ahrenkiel,” Ex. 1012).
`9 Patent Owner filed Paper 25 (unredacted Patent Owner Response) under
`seal and Paper 26 (redacted Patent Owner Response) in the public record.
`Patent Owner filed a Motion to Seal directed, in part, to Paper 25. Paper 27.
`Petitioner filed a Response to that motion. Paper 29. Thereafter, the parties
`filed a joint motion to withdraw the motion to seal based, in part, on their
`agreement that the Patent Owner Response does not need to be sealed
`because it does not contain confidential information. Paper 30. We granted
`
`3
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`IPR2021-00184
`Patent 7,803,423 B2
`supported the Patent Owner Response with the Declaration of Brandi
`Cossairt, Ph.D. Ex. 2030.
`Petitioner filed a Reply to the Patent Owner Response, Paper 32 (“Pet.
`Reply”), along with a Second Declaration of Mark A. Green, Ph.D.
`(Ex. 1093). Patent Owner filed a Sur-reply to Petitioner’s Reply. Paper 39
`(“PO Sur-reply”).
`On February 23, 2022, the parties presented arguments at an oral
`hearing. Paper 43.10 The hearing transcript has been entered in the record.
`Paper 46 (“Tr.”).
`
`Real Parties-in-Interest
`B.
`Petitioner identifies Samsung Electronics Co., Ltd. and Samsung
`Electronics America, Inc. as real parties-in-interest. Pet. 69. Patent Owner
`identifies Nanoco Technologies Ltd. as a real party-in-interest. Paper 6, 2.
`C.
`Related Matters
`Petitioner and Patent Owner provide notice of a district court litigation
`involving the ’423 patent: Nanoco Technologies Ltd. v. Samsung
`Electronics Co., Ltd., No. 2:20-cv-00038 (E.D. Tex.) (the “District Court
`case”). Pet. 66; Paper 6, 2. The parties further identify petitions for the four
`other patents asserted in the District Court case: IPR2021-00182 for U.S.
`Patent No. 9,680,068, IPR2021-00183 for U.S. Patent No. 7,588,828,
`IPR2021-00185 for U.S. Patent No. 7,867,557, and IPR2021-00186 for U.S.
`Patent No. 8,524,365. Pet. 69; Paper 6, 2–3.
`
`
`the motion. Paper 42. Therefore, the unredacted Patent Owner Response
`(Paper 25) is unsealed and part of the public record of this proceeding.
`10 Although we held a consolidated hearing for this case, IPR2021-00182,
`IPR2021-00183, IPR2021-00185, and IPR2021-00186, these cases are not
`consolidated. See Papers 43, 46.
`
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`4
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`IPR2021-00184
`Patent 7,803,423 B2
`
`The ’423 Patent
`D.
`The ’423 patent is directed to the conversion of a nanoparticle
`precursor composition into nanoparticles, where “[t]he conversion is
`effected in the presence of a molecular cluster compound under conditions
`permitting seeding and growth of the nanoparticles.” Ex. 1001, [57]. The
`Specification discloses that “[t]here has been substantial interest in the
`preparation and characterisation, because of their optical, electronic and
`chemical properties, of compound semiconductors consisting of particles
`with dimensions in the order of 2-100 nm” and such particles are “[o]ften
`referred to as quantum dots and/or nanocrystals.” Id. at 1:11–15. The
`Specification explains that this interest in quantum dots is “mainly due to
`their size-tuneable electronic, optical and chemical properties and the need
`for the further miniaturization of both optical and electronic devices.” Id. at
`1:15–22. The Specification describes prior “bottom up techniques” to
`produced quantum dot but states that “early routes applied conventional
`colloidal aqueous chemistry, with more recent methods involving the
`kinetically controlled precipitation of nanocrystallites, using organometallic
`compounds.” Id. at 1:23–29, 2:52–56.
`With regard to its invention, the Specification describes
`a method of producing nanoparticles comprising effecting
`conversion of a nanoparticle precursor composition to the
`material of the nanoparticles, said precursor composition
`comprising a first precursor species containing a first ion to be
`incorporated into the growing nanoparticles and a separate
`second precursor species containing a second ion to be
`incorporated into the growing nanoparticles, wherein said
`conversion is effected in the presence of a molecular cluster
`compound under conditions permitting seeding and growth of
`the nanoparticles.
`
`5
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`IPR2021-00184
`Patent 7,803,423 B2
`Id. at 4:36–46. The Specification explains that “[a] nanoparticle may have a
`size falling within the range 2-100 nm” and that an important feature is that
`conversion of the precursor composition “is effected in the presence of a
`molecular cluster compound (which will be other than the first or second
`precursor species),” which “act as a template to direct nanoparticle growth.”
`Id. at 4:57–61, 5:2–3.
`The Specification states:
`“Molecular cluster” is a term which is widely understood in the
`relevant technical field but for the sake of clarity should be
`understood herein to relate to clusters of 3 or more metal or
`nonmetal atoms and their associated ligands of sufficiently well
`defined chemical structure such that all molecules of the cluster
`compound possess the same relative molecular mass. Thus the
`molecular clusters are identical to one another in the same way
`that one H2O molecule is identical to another H2O molecule.
`Id. at 5:3–12. According to the Specification, molecular cluster compounds
`(“MCC”) can provide an essentially monodisperse population of
`nanoparticles and a “significant advantage of the method of the present
`invention is that it can be more easily scaled-up for use in industry than
`current methods.” Id. at 5:14–21.
`The Specification explains that “any suitable molar ratio of the first
`precursor species compared to the second precursor species may be used.”
`Id. at 5:55–57. For example, approximately equal amounts of first and
`second precursor species can be used or approximately twice the number of
`moles of one precursor species can be used relative to another. Id. at 5:63–
`6:4.
`
`In addition, the Specification explains that “[t]he conversion of the
`precursor composition to the material of the nanoparticles can be conducted
`in any suitable solvent” but “it is important to ensure that when the cluster
`
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`IPR2021-00184
`Patent 7,803,423 B2
`compound and precursor composition are introduced in to the solvent the
`temperature of the solvent is sufficiently high to ensure satisfactory
`dissolution and mixing of the cluster compound and precursor composition.”
`Id. at 6:28–35. The Specification discloses that after the precursor
`composition and cluster compound are dissolved in the solvent, the
`temperature of the solution is raise “to a temperature, or range of
`temperatures, which is/are sufficiently high to initiate nanoparticle growth”
`and the temperature of the solution can be maintained at that temperature or
`range of temperatures “for as long as required to form nanoparticles
`possessing the desired properties.” Id. at 6:35–42.
`E.
`Illustrative Claims
`Petitioner challenges independent claims 1 and 25 and dependent
`claims 2–16 and 21–24 of the ’423 patent. Independent claims 1 and 25, set
`forth below, are illustrative of the claimed subject matter.
` 1. A method of producing nanoparticles comprising:
`effecting conversion of a nanoparticle precursor composition
`to a material of the nanoparticles, said precursor composition
`comprising a first precursor species containing a first ion to be
`incorporated into the nanoparticles and a separate second
`precursor species containing a second ion to be incorporated into
`the nanoparticles,
`wherein said conversion is effected in the presence of a
`molecular cluster compound different from the first precursor
`species and the second precursor species under conditions
`permitting seeding and growth of the nanoparticles.
`
`
`7
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`IPR2021-00184
`Patent 7,803,423 B2
` 25. A method of producing nanoparticles comprising
`effecting conversion of a nanoparticle precursor composition to
`a material of the nanoparticles, said precursor composition
`comprising a first precursor species containing a first ion to be
`incorporated into the nanoparticles and a separate second
`precursor species containing a second ion to be incorporated into
`the nanoparticles, said conversion being effected in the presence
`of a molecular cluster compound different from the first
`precursor species and the second precursor species under
`conditions permitting seeding and growth of the nanoparticles,
`wherein the molecular cluster compound and nanoparticle
`precursor composition are dissolved in a solvent at a first
`temperature to form a solution and the temperature of the
`solution is then increased to a second temperature which is
`sufficient to initiate seeding and growth of the nanoparticles on
`the molecular clusters of said compound.
`
`Ex. 1001, 19:65–20:9, 22:9–24.
`II. ANALYSIS
`A.
`Principles of Law
`To prevail in this inter partes review, Petitioner must demonstrate by
`a preponderance of the evidence that the challenged claims are unpatentable.
`35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d) (2019). “In an [inter partes review],
`the petitioner has the burden from the onset to show with particularity why
`the patent it challenges is unpatentable.” Harmonic Inc. v. Avid. Tech., Inc.,
`815 F.3d 1356, 1363 (Fed. Cir. 2016); see also 35 U.S.C. § 312(a)(3) (2012)
`(requiring inter partes review petitions to identify “with particularity . . . the
`evidence that supports the grounds for the challenge to each claim”). That
`burden of persuasion never shifts to Patent Owner. Dynamic Drinkware,
`LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015); see also
`In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1375–78 (Fed. Cir. 2016)
`(discussing the burden of proof in inter partes review).
`
`8
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`IPR2021-00184
`Patent 7,803,423 B2
`“A claim is anticipated only if each and every element as set forth in
`the claim is found, either expressly or inherently described, in a single prior
`art reference.” Schering Corp. v. Geneva Pharms, 339 F.3d 1373, 1379
`(Fed. Cir. 2003) (quoting Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814
`F.2d 628, 631 (Fed. Cir. 1987)). It is well settled that “a reference can
`anticipate a claim even if it ‘d[oes] not expressly spell out’ all the limitations
`arranged or combined as in the claim, if a person of skill in the art, reading
`the reference, would ‘at once envisage’ the claimed arrangement or
`combination.” Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d
`1376, 1381 (Fed. Cir. 2015) (quoting In re Petering, 301 F.2d 676, 681
`(1962)).
`A claim is unpatentable for obviousness if, to one of ordinary skill in
`the pertinent art, “the differences between the subject matter sought to be
`patented and the prior art are such that the subject matter as a whole would
`have been obvious at the time the invention was made.” 35 U.S.C. § 103(a)
`(2006); see also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007).
`The question of obviousness is resolved on the basis of underlying
`factual determinations including the scope and content of the prior art, any
`differences between the claimed subject matter and the prior art, the level of
`ordinary skill in the art, and objective evidence of nonobviousness.11
`Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). “An obviousness
`determination requires finding both ‘that a skilled artisan would have been
`motivated to combine the teachings of the prior art references to achieve the
`claimed invention, and that the skilled artisan would have had a reasonable
`
`
`11 Patent Owner does not assert or rely on objective evidence of
`nonobviousness in this case.
`
`9
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`IPR2021-00184
`Patent 7,803,423 B2
`expectation of success in doing so.’” CRFD Research, Inc. v. Matal, 876
`F.3d 1330, 1340 (Fed. Cir. 2017) (quoting Intelligent Bio-Sys., Inc. v.
`Illumina Cambridge Ltd., 821 F.3d 1359, 1367–68 (Fed. Cir. 2016)).
`We analyze Petitioner’s asserted grounds of unpatentability in
`accordance with the above-stated principles.
`B.
`Person of Ordinary Skill in the Art
`The level of skill in the art is a factual determination that provides a
`primary guarantee of objectivity in an obviousness analysis. Al-Site Corp. v.
`VSI Int’l Inc., 174 F.3d 1308, 1324 (Fed. Cir. 1999) (citing Graham v. John
`Deere Co., 383 U.S. 1, 17–18 (1966); Ryko Mfg. Co. v. Nu-Star, Inc., 950
`F.2d 714, 718 (Fed. Cir. 1991)).
`Petitioner asserts that a person of ordinary skill in the art at the time of
`the invention would have had “at least a Ph.D. in chemistry, physics,
`chemical engineering, material science, or equivalent technical degree or
`equivalent work experience, with knowledge regarding nanoparticles and
`methods of synthesizing them” and “[a]dditional education might
`supplement practical experience and vice-versa.” Pet. 18–19 (citing
`Ex. 1002 ¶ 70). Patent Owner neither addresses Petitioner’s description of
`the level of ordinary skill in the art nor provides its own description. See PO
`Response.
`Accordingly, we adopt Petitioner’s definition as we find it is
`unopposed and consistent with the level of skill in the art at the time of the
`invention as reflected by the prior art in this proceeding.
`Based on their respective statements of qualifications and curricula
`vitae, which are not contested, we determine that both Dr. Green and
`
`10
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`IPR2021-00184
`Patent 7,803,423 B2
`Dr. Cossairt are qualified to provide opinions about the knowledge and
`understanding of a person of ordinary skill in the art at the time of the
`invention. Ex. 1002 ¶¶ 20–33; Ex. 1003; Ex. 2030 ¶¶ 5–21, Appendix A.
`C.
`Claim Construction
`The Board applies the same claim construction standard that would be
`used to construe the claim in a civil action under 35 U.S.C. § 282(b).
`37 C.F.R. § 42.100(b) (2020). Under that standard, claim terms “are
`generally given their ordinary and customary meaning” as understood by a
`person of ordinary skill in the art at the time of the invention. Phillips v.
`AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). “In
`determining the meaning of the disputed claim limitation, we look
`principally to the intrinsic evidence of record, examining the claim language
`itself, the written description, and the prosecution history, if in evidence.”
`DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014
`(Fed. Cir. 2006) (citing Phillips, 415 F.3d at 1312–17). Extrinsic evidence is
`“less significant than the intrinsic record in determining ‘the legally
`operative meaning of claim language.’” Phillips, 415 F.3d at 1317.
`Petitioner asserts that
`[w]hile the full scope of the term “molecular cluster
`compound” is unclear—the ’423 patent states that the term “is
`widely understood in the relevant technical field” as relating to
`“clusters of 3 or more metal or nonmetal atoms and their
`associated ligands,” but related U.S. Patent No. 7,588,828 (“the
`’828 patent”) states that the same term is widely understood as
`being limited to “clusters of 3 or more metal atoms and their
`associated ligands” (compare Ex. 1001, 5:3-9 with Ex. 1054,
`3:29-35)—this issue need not be resolved because the grounds
`relied on in this Petition disclose molecular cluster compounds
`with three or more metal atoms.
`Pet. 19–20 (footnote omitted).
`
`11
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`IPR2021-00184
`Patent 7,803,423 B2
`Petitioner acknowledges that the Specification states also that the
`molecular clusters are “of sufficiently well-defined chemical structure such
`that all molecules of the cluster compound possess the same relative
`molecular mass.” Id. at 20 n.7 (quoting Ex. 1001, 5:3–9).
`Patent Owner contends that the ’423 patent expressly defines
`“molecular cluster compound” by stating:
`“Molecular cluster” is a term which is widely understood in the
`relevant technical field but for the sake of clarity should be
`understood herein to relate to clusters of 3 or more metal or
`nonmetal atoms and their associated ligands of sufficiently well
`defined chemical structure such that all molecules of the cluster
`compound possess the same relative molecular mass.
`PO. Resp. 27 (quoting Ex. 1001, 5:3–9). Patent Owner notes that “the
`District Court resolved the parties’ dispute by construing the term
`‘molecular cluster compound’ to mean ‘clusters of three or more metal
`atoms and their associated ligands of sufficiently well-defined chemical
`structure such that all molecules of the cluster compound possess the same
`relative molecular formula.’” Id. at 28 (quoting Ex. 1091, 18). Patent
`Owner agrees with Petitioner that “the parties’ dispute over the meaning of
`the term need not be resolved here.” Id. According to Patent Owner,
`“[r]esolution of the Petition does not revolve around any disputed aspects of
`the term ‘molecular cluster compound.’” Id.
`
`Petitioner asserts in the Reply that the challenged claims are
`unpatentable “under any possible construction.” Pet. Reply 1 n.1.
`
`Based on our consideration of the record as a whole, we find that the
`Specification expressly defines the term “molecular cluster” in a manner that
`refers to the cluster compound. According to the Specification,
`“Molecular cluster” is a term which is widely understood in the
`relevant technical field but for the sake of clarity should be
`
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`Patent 7,803,423 B2
`understood herein to relate to clusters of 3 or more metal or
`nonmetal atoms and their associated ligands of sufficiently well
`defined chemical structure such that all molecules of the cluster
`compound possess the same relative molecular mass.
`Ex. 1001, 5:3–9. We note that the District Court determined that “the term
`‘molecular formula’ as opposed to ‘molecular mass’ is most appropriate. By
`necessity, a compound with the same molecular formula will necessarily
`have the same molecular mass.” Ex. 1091, 16. The District Court explained
`also, “it appears that the difference between a molecular formula and a
`molecular mass, at least for purposes of this claim construction, in
`inconsequential.” Id. We agree and do not find any dispute on the current
`record from the parties on this matter. Accordingly, for purposes of this
`Decision, we agree with the District Court that the term “molecular cluster
`compound” means “clusters of 3 or more metal atoms and their associated
`ligands of sufficiently well-defined chemical structure such that all
`molecules of the cluster compound possess the same relative molecular
`formula.” Id. at 18.
`Additionally, we find that express construction of any remaining
`claim terms is unnecessary for purposes of rendering this Decision. See
`Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011)
`(“[C]laim terms need only be construed ‘to the extent necessary to resolve
`the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc.,
`200 F.3d 795, 803 (Fed. Cir. 1999))).
`D.
`Anticipation by Banin
`Petitioner asserts that claims 1–3, 10, 11, 13, and 22–24 are
`anticipated by Banin. Pet. 20–28; Pet. Reply 2–11. Patent Owner disagrees.
`PO Resp. 29–44; PO Sur-reply 1–15.
`
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`
`Banin
`1.
`Banin “relates to a method for synthesizing rod-shaped semiconductor
`nanocrystals, inter alia rod shaped Group III-V semiconductor
`nanocrystals.” Ex. 1005, 1:2–4. Banin describes “introducing nanoparticles
`of a metal catalyst that serve as starting nanocrystals from which nanorods
`of inorganic semiconductors grow in solution while stopping the growth to
`obtain rods.” Id. at 6:3–6. Banin discloses that “[t]he metal catalyst can be
`made, for example, of a transition metal, e.g. Zn [zinc], Cd [cadmium], Mn
`[manganese], etc., a Group IIIa metal, e.g. In [indium], Ga [gallium], Al
`[aluminum], alloys of such metals such as for example Au-In [gold-indium],
`or core/shell layered metal particle.” Id. at 7:9–11.
`An embodiment of Banin’s process is depicted in Figure 1, set forth
`below.
`
`
`Figure 1 illustrates the growth mechanism of InAs nanorods for Banin’s
`invention. Id. at 10:11–12. Banin describes, for example, that “InAs
`nanorods were synthesized via the reaction of tris(trimethylsilyl)arsenine
`((TMS)3As) and InCl3 in trioctylphosphine-oxide (TOPO), using metallic
`indium or gold as the catalyst.” Id. at 134:9–11. Banin explains that the
`metal catalyst M forms a starting nanocrystal from which a semiconductor
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`nanorod grows, with the left end of the III-V semiconductor nanorod grown
`first and then moved away from the catalyst M during growth of the
`nanorod. Id. at 13:11–16.
`Banin also discloses “[t]he use of small Au clusters (1.4 nm in mean
`diameter) instead of Au particles (2 nm in mean diameter)” and describes an
`experiment in which “triphenylphosphine coated Au clusters with a diameter
`of 1.4 nm and the suggested formula Au101(PPh3)21Cl5” were used to prepare
`InAs rods. Id. at 13:12–17. Banin further discloses that its metal catalyst
`can be “Fe [iron], Zn, Pd [palladium], Pt [platinum], Ni [nickel], Co [cobalt],
`Mn, Ag [silver], Cd or alloys and layered particles thereof.” Id. at claim 30.
`2.
`Discussion
`Each of claims 1–3, 10, 11, 13, and 22–24 is directed to a method of
`producing nanoparticles comprising “effecting conversion of a nanoparticle
`precursor composition to a material of the nanoparticles . . . wherein said
`conversion is effected in the presence of a [MCC].” Petitioner’s challenge
`of each claim relies, in part, on its assertion that Banin’s Au-based clusters
`(also referred to herein as Banin’s “Au-based clusters,” “gold clusters,”
`“metal catalyst” and “gold metal catalyst”) are MCCs. Because the parties
`dispute this contention and we consider the issue dispositive, we focus our
`following discussion on this matter.
`For purposes of this proceeding, both parties agree that the MCC
`recited in independent claim 1 refers to, at least, clusters of 3 or more metal
`atoms and their associated ligands of sufficiently well-defined chemical
`structure (either by molecular formula or molecular mass). Ex. 1001, 5:3–9;
`Pet. 19–20; Pet. Reply 7; Ex. 1093 ¶ 26; PO Resp. 28–29. According to
`Petitioner, based on that description, Banin’s small Au clusters are MCCs.
`Pet. 22–24; Pet. Reply 7; Ex. 1002 ¶¶ 89–92; Ex. 1093 ¶ 26.
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`In particular, Petitioner relies on Banin’s example, wherein the first
`precursor species, InCl3 and the second precursor species, (TMS)3As, are
`converted into InAs nanorods in the presence of small Au clusters having the
`suggested formula Au101(PPh3)21Cl5. Pet. 23 (citing Ex. 1005, 6:3–8, 17:22–
`25, 20:12–27; Ex. 1002 ¶ 90). According to Petitioner and Dr. Green, a
`skilled artisan would have recognized those small Au clusters as MCCs
`because they would have understood them to be “‘clusters of 3 or more
`metal’ atoms with ‘associated ligands’ that ‘are identical to one another’ and
`‘act[] as a seed or nucleation point upon which nanoparticle growth can be
`initiated.’” Id. (quoting Ex. 1001, 4:61–5:12) (emphasis added) (citing
`Ex. 1002 ¶ 90). Dr. Green testifies that a person of ordinary skill in the art
`would have understood that the gold clusters having a suggested formula
`Au101(PPh3)21Cl5 are “‘clusters of 3 or more metal’ atoms (i.e., because they
`contain 101 gold atoms),” and that “each cluster is ‘identical to one
`another.’” Ex. 1002 ¶ 90 (citing Ex. 1001, 4:61–5:12). In other words, Dr.
`Green considers the gold cluster to have a “sufficiently well-defined
`chemical structure such that all molecules of the cluster compound possess
`the same relative molecular formula” because each cluster is identical. At
`the petition stage, that is the extent of Petitioner and Dr. Green’s explanation
`for their position that Banin’s gold clusters are MCCs.
`
`Patent Owner asserts that Petitioner has not demonstrated that any
`challenged claim is anticipated by Banin because Banin does not disclose an
`MCC. PO Resp. 29. Patent Owner begins by asserting that Banin’s process
`for creating nanoparticles uses the Solution-Liquid-Solid (“SLS”) method,
`which uses “a metal nanoparticle as a catalyst for rod growth.” Id. at 31
`(quoting Ex. 1005, 14) (emphasis omitted). Patent Owner asserts that
`because the metal catalyst acts as a solvent in the SLS method, it must melt
`
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`into droplets so that the precursors can dissolve to form the solution that
`precipitates to form a nanorod. Id. (citing Ex. 1005, 6; Ex. 2030 ¶¶ 25, 30,
`83, 100). Patent Owner contends that Banin’s gold particles are not MCCs,
`but instead are “molten metal SLS catalyst droplets that lack the sufficiently
`well-defined chemical structure of MCCs.” Id. (citing Ex. 2030 ¶¶ 84, 99–
`100, 103; Ex. 1001, 5:7–12).
`In particular, Patent Owner emphasizes that Banin describes the
`formula Au101(PPh3)21Cl5 for the Au clusters as only a “suggested formula.”
`Id. at 32 (citing Ex. 2030 ¶¶ 103–108; Ex. 1005, 20). In that regard, Patent
`Owner notes that Banin discloses that the Au clusters were “synthesized by
`the published procedures” in Hutchison.12 Id. at 32–36 (citing Ex. 2017).
`According to Patent Owner, “[t]he Hutchison process used by Banin creates
`gold particles of many different sizes,” ranging from 0.75 nm to 2.25 nm.
`Id. at 32–33 (citing Ex. 2017, 12891). Patent Owner contends that those
`“different sizes are averaged out, and then using the average size of the
`particle, it is estimated that the average number of gold atoms is
`approximately 101,” which leads to the estimated formula Au101(PPh3)21Cl5.
`Id. at 33 (citing Ex. 2017, 12891; Ex. 2030 ¶¶ 105–106). Additionally,
`Patent Owner asserts that the particles created by Hutchison’s process have
`significant impurities. Id. at 35 (citing Ex. 2017, 12890–12891; Ex. 2030
`¶ 112).
`Further, Patent Owner contends that the diameter of the nanorods
`created by Banin is dictated by the size of the gold particle and, therefore,
`since Banin discloses that the diameter of its nanorods vary up to 25%, then
`
`12 Weare et al., Improved Synthesis of Small (dCORE ≈ 1.5nm) Phosphine-
`Stabilized Gold Nanoparticles, 122 J. AM. CHEM. SOC. 12890–12891 (2000)
`(“Hutchison,” Ex. 2017).
`
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`Patent 7,803,423 B2
`the diameter of the gold particles varies similarly. See id. at 35–36 (citing
`Ex. 1005, 7, 23; Ex. 2030 ¶ 116). According to Patent Owner, such a wide
`size distribution in diameter of the nanorods reflects the wide size
`distribution of the gold clusters taught by Hutchison and demonstrates that
`Banin’s gold clusters are not MCCs. Id. at 36 (citing Ex. 2030 ¶¶ 109, 119,
`124).
`Patent Owner asserts also that Petitioner’s expert, Dr. Green, agreed,
`during his deposition, that uncharacterized mixtures of clusters are not
`MCCs “because they wouldn’t have the same relative molecular formula”
`and would not be identical. PO Resp. 37–38 (citing Ex. 2031, 68:6–14).
`According to Patent Owner, because the gold clusters in Banin are made by
`the Hutchison process which creates cluster mixtures with a range of sizes,
`and the average molecular formula is estimated based on an average size,
`Banin’s gold clusters/metal catalysts are not MCCs as required by the
`challenged claims. Id. at 40.
`In the Reply, Petitioner maintains that “Banin discloses clusters with a
`single molecular formula (Au101(PPh3)21Cl5) and size (1.4 nm), which is
`sufficient to inform a POSITA that those clusters are MCCs.” Pet. Reply 6–
`7. Moreover, Petitioner asserts that Patent Owner’s assertion that Banin
`does not disclose an MCC is unsupported. Id. at 2. To that end, Petitioner
`asserts again that “a POSITA would recognize that Banin identifies only one
`specific cluster—having a single formula (i.e., Au101(PPh3)21Cl5) and size
`(1.4 nm) with more than three metal atoms—which a POSITA would
`recognize as a[n] MCC.” Id. at 3 (emphasis omitted).
`Additionally, Petitioner alleges that Banin’s TEM image “shows that
`Banin’s ‘Au101 clusters’ do not have the size distribution that the clusters in
`Hutchison do.” Id. (comparing Ex. 1005, 11:15, Fig. 10(a), with Ex. 2017,
`
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`Fig. 1(a)). Petitioner’s side by side comparison of Banin’s TEM and
`Hutchison’s TEM is set forth below:
`
`
`
`Pet. Reply 3; Ex. 1093 ¶ 18. Petitioner’s side-by-side comparison of
`Banin’s Figure 10A (“a TEM image of the Au101 clusters without further size
`selection,” Ex. 1005, 22:26–27) and Hutchison’s Figure 1(a) (a
`“representative TEM” image of Hutchison’s “disperse nanoparticles,”
`Ex. 2017, 12890) includes annotations by Petitioner labeling Banin’s figure
`as allegedly showing “Uniform MCCs” and Hutchison’s figure allegedly
`showing “Polydisperse Clusters,” along with a “≠” (not equal to) sign
`betwee
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