Trials@uspto.gov
`571-272-7822
`
`
`
`Paper 17
`Entered: May 19, 2021
`
`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.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`571-272-7822
`
`
`
`Paper 17
`Entered: May 19, 2021
`
`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.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`
`IPR2021-00184
`Patent 7,803,423 B2
`
`I.
`INTRODUCTION
`Samsung Electronics Co., Ltd. and Samsung Electronics America,
`Inc. (collectively, “Petitioner”) filed a Petition requesting an inter partes
`review of claims 1–16 and 21–25 of U.S. Patent No. 7,803,423 B2 (Ex.
`1001, “the ’423 patent”). Paper 1 (“Petition” or “Pet.”). Nanoco
`Technologies Ltd. (“Patent Owner”) filed a Preliminary Response to the
`Petition. Paper 12 (“Prelim. Resp.”). Pursuant to our authorization,
`Petitioner filed a Reply (Paper 14, “Reply”), and Patent Owner filed a Sur-
`reply (Paper 15, “Sur-reply”).
`We have authority to determine whether to institute an inter partes
`review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2020). The
`standard for instituting an inter partes review is set forth in 35 U.S.C.
`§ 314(a), which provides that an inter partes review may not be instituted
`unless “there is a reasonable likelihood that the petitioner would prevail with
`respect to at least 1 of the claims challenged in the petition.” Upon
`considering the arguments and evidence presented in the Petition and
`Preliminary Response, we determine that Petitioner has established a
`reasonable likelihood that it would prevail in showing the unpatentability of
`at least one claim challenged in the Petition. Accordingly, we institute an
`inter partes review of claims 1–16 and 21–25 of the ’423 patent.
`A.
`Real Parties-in-Interest
`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.
`B.
`Related Proceedings
`Petitioner and Patent Owner provide notice of a district court litigation
`involving the ’423 patent: Nanoco Technologies Ltd. v. Samsung
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`IPR2021-00184
`Patent 7,803,423 B2
`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 this 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.
`C.
`The ’423 Patent
`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
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`Patent 7,803,423 B2
`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.
`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
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`Patent 7,803,423 B2
`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
`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.
`D.
`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.
` 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
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`Patent 7,803,423 B2
`species and the second precursor species under conditions
`permitting seeding and growth of the nanoparticles.
`
` 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.
`E.
`Asserted Grounds of Unpatentability
`Petitioner asserts that claims 1–16 and 21–25 would have been
`unpatentable on the following grounds.
`Claims Challenged
`35 U.S.C. §
`1–3, 10, 11, 13, 22–24
`102
`1–6, 10–14, 21–25
`103(a)2
`
`Banin1
`Banin
`
`Reference(s)
`
`
`1 Banin et al., WO 03/097904 A1, published Nov. 27, 2003 (“Banin,” Ex.
`1005).
`2 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 287–88 (2011), amended 35 U.S.C. § 103, effective March 16,
`2013. Because the application from which the ’828 patent issued has an
`effective filing date prior to March 16, 2013, the pre-AIA version of § 103
`applies.
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`Patent 7,803,423 B2
`Claims Challenged
`7–9
`1, 10–16, 21–24
`4–6, 25
`7–9
`1, 4, 11–16, 21, 25
`
`Petitioner also relies on the Declaration of Mark A. Green, Ph.D.
`(Ex. 1002).
`
`Reference(s)
`Banin, Bawendi3
`Zaban,4 Ptatschek5
`Zaban, Ptatschek, Yu6
`Zaban, Ptatschek, Bawendi
`Lucey,7 Ahrenkiel8
`
`35 U.S.C. §
`103(a)
`103(a)
`103(a)
`103(a)
`103(a)
`
`II. ANALYSIS
`A. Discretion to Institute under 35 U.S.C. § 314(a)
`Institution of inter partes review is discretionary:
`The Director may not authorize an inter partes review to be
`instituted unless the Director determines that the information
`presented in the petition filed under section 311 and any response
`filed under section 313 shows that there is a reasonable
`likelihood that the petitioner would prevail with respect to at least
`1 of the claims challenged in the petition.
`
`
`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).
`
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`Patent 7,803,423 B2
`35 U.S.C. § 314(a). This language provides the Director with discretion to
`deny institution of a petition. See Cuozzo Speed Techs., LLC v. Lee, 136 S.
`Ct. 2131, 2140 (2016) (“[T]he agency’s decision to deny a petition is a
`matter committed to the Patent Office’s discretion.”); Patent Trial and
`Appeal Board Consolidated Trial Practice Guide (“CTPG”) at 55 (November
`2019), available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`The Director has delegated his authority under § 324(a) to the Board. 37
`C.F.R. § 42.4(a) (“The Board institutes the trial on behalf of the Director.”).
`The Leahy-Smith America Invents Act was “designed to establish a
`more efficient and streamlined patent system that will improve patent quality
`and limit unnecessary and counterproductive litigation costs.” H.R. Rep.
`No. 112−98, pt. 1, at 40 (2011), 2011 U.S.C.C.A.N. 67, 69 (reviews were
`meant to be “quick and cost effective alternatives to litigation”); see also
`S. Rep. No. 110−259, at 20 (2008); CTPG 56. The Board recognized these
`goals, but also “recognize[d] the potential for abuse of the review process by
`repeated attacks on patents.” General Plastic Co. v. Canon Kabushiki
`Kaisha, IPR2016-01357, Paper 19, 16−17 (PTAB Sept. 6, 2017)
`(precedential).
`In NHK Spring Co. v. Intri-Plex Technologies, Inc., IPR2018-00752,
`Paper 8 (PTAB Sept. 12, 2018) (precedential), the Board determined that the
`advanced state of a parallel proceeding is an additional factor weighing in
`favor of denying institution under 35 U.S.C. § 314(a). Id. at 19–20. In
`Apple Inc. v. Fintiv, Inc., IPR2020-00019 (“Fintiv”), Paper 11 (PTAB Mar.
`20, 2020) (precedential), the Board articulated a list of factors that we
`consider in determining whether to exercise discretion to deny institution
`based on an advanced stage of a parallel proceeding:
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`1. whether the court granted a stay or evidence exists that one
`may be granted if a proceeding is instituted;
`2. proximity of the court’s trial date to the Board’s projected
`statutory deadline for a final written decision;
`3. investment in the parallel proceeding by the court and the
`parties;
`4. overlap between issues raised in the petition and in the parallel
`proceeding;
`5. whether the petitioner and the defendant in the parallel
`proceeding are the same party; and
`6. other circumstances that impact the Board’s exercise of
`discretion, including the merits.
`Fintiv, Paper 11, 5–6. “These factors relate to whether efficiency, fairness,
`and the merits support the exercise of authority to deny institution in view of
`an earlier trial date in the parallel proceeding.” Id. In evaluating these
`factors, we take “a holistic view of whether efficiency and integrity of the
`system are best served by denying or instituting review.” Id. (citing
`CTPG 58).
`Patent Owner has asserted the ’423 patent against Petitioner in the
`District Court case. Pet. 69; Paper 6, 2; Prelim. Resp. 4. Petitioner contends
`that because Fintiv factors 3, 4, and 6 weigh against discretionary denial
`under § 314(a) and because Fintiv factors 1, 2, and 5 do not outweigh the
`strength of factors 3, 4, and 6, the Fintiv factors weigh against discretionary
`denial. Pet. 64–68; Reply 1–5. Patent Owner contends that all of the factors
`considered under Fintiv, especially the advanced stage of the related District
`Court case, support exercising discretion to deny institution of inter partes
`review under 35 U.S.C. § 314(a). Prelim. Resp. 4–14. In our analysis
`below, we address each of the Fintiv factors in turn.
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`Patent 7,803,423 B2
`1.
`First Fintiv Factor: Existence or Likelihood of Stay
`Patent Owner argues that this factor weighs in favor of denying
`institution because Petitioner’s motion to stay the District Court case was
`denied. Prelim. Resp. 5–6. Petitioner counters that the District Court’s
`denial of the motion to stay “was in accordance with that court’s ‘consistent
`practice of denying motions to stay when the PTAB has yet to institute post-
`grant proceedings,’” and that Petitioner will have an opportunity to renew its
`motion to stay after our institution decision. Reply 1–2 (quoting Ex. 2019,
`2). Patent Owner notes that a renewed motion to stay may not be granted,
`particularly given the effort the parties and the District Court have put into
`the District Court case. Sur-reply 1–4.
`The District Court case has not been stayed, so Petitioner’s argument
`with respect to this factor rests on the mere possibility that a stay may be
`granted. Quantifying that possibility is difficult. The District Court’s denial
`of Petitioner’s motion to stay decreases the likelihood of a stay, but not very
`much, given that the denial was based on the District Court’s policy of
`waiting for an institution decision before considering a stay. Petitioner’s
`plan to pursue a renewed stay motion may increase the likelihood of a stay,
`but perhaps not by very much, given the effort the parties and the District
`Court have invested in resolving the infringement litigation. Accordingly,
`we conclude that the first Fintiv factor is neutral with respect to exercising
`our discretion to deny.
`2.
`Second Fintiv Factor: Proximity of Anticipated Trial Date
` and Statutory Deadline for Final Written Decision
`Patent Owner contends this factor also weighs in favor of denial,
`because the presently scheduled trial date in the District Court case—
`October 4, 2021—is “more than seven months earlier than the projected
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`IPR2021-00184
`Patent 7,803,423 B2
`statutory deadline for a final written decision of the requested IPR, which
`would issue sometime in May 2022.” Prelim. Resp. 6. Patent Owner further
`contends the facts of the present proceeding compare favorably to both NHK
`and Fintiv, in which the Board ultimately denied institution. Id. at 6–7
`(citing NHK, Paper 8, 20; Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper
`15, 13 (PTAB May 13, 2020) (informative)).
`Petitioner contends that “this factor is neutral or weighs at most only
`slightly in favor of Patent Owner,” because the trial judge has “six other
`trials scheduled . . . the same day,” and “because of the ongoing COVID-19
`pandemic.” Pet. 65–66. Petitioner also argues that the scheduled trial date
`should be given little weight because the District Court case may be stayed if
`we institute the present proceeding. Reply 3–4.
`This factor favors exercising discretion to deny, because the amount
`of time between the District Court’s trial date and our likely issuance of a
`final written decision is so long that any change to the trial date is unlikely to
`result in the final written decision being issued before the trial of the District
`Court case. Although there may be some chance that the District Court case
`will be stayed, that possibility was accounted for in Fintiv factor 1, discussed
`above, and considering it here would give it more weight than deserved.
`Thus, we determine that the second Fintiv factor weighs in favor of
`exercising our discretion to deny institution under § 314(a).
`3.
`Third Fintiv Factor: Investment in Parallel Proceeding
`Under this factor, we first consider Petitioner’s timing in filing the
`Petition. If a petitioner, “faced with the prospect of a looming trial date,
`waits until the district court trial has progressed significantly before filing a
`petition,” that decision “may impose unfair costs to a patent owner.”
`Fintiv, 11. On the other hand, “[i]f the evidence shows that the petitioner
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`IPR2021-00184
`Patent 7,803,423 B2
`filed the petition expeditiously, such as promptly after becoming aware of
`the claims being asserted, this fact has weighed against exercising the
`authority to deny institution.” Id.
`Petitioner asserts that it “filed its Petition before serving its invalidity
`contentions, less than two months after Patent Owner served its infringement
`contentions, and less [than] six months after Petitioner was served with the
`complaint in the District Court case.” Pet. 67 (citing Ex. 1018; Ex. 1019).
`Patent Owner disagrees, arguing that Petitioner filed the Petition “on the
`same day that Petitioner served its Invalidity Contentions.” Prelim. Resp.
`10–11 (citing Ex. 2022, 204). In any event, we find no unreasonable delay
`in Petitioner’s filing.
`Second, we consider “the amount and type of work already completed
`in the parallel litigation by the court and the parties at the time of the
`institution decision.” Fintiv, 9. “Specifically, if, at the time of the
`institution decision, the district court has issued substantive orders related to
`the patent at issue in the petition, this fact favors denial.” Id. at 9–10.
`Petitioner contends this factor weighs in favor of institution, because
`although a Markman hearing was scheduled for March 26, 2021, much work
`remains to be completed, including some fact discovery, the exchange of
`expert reports, and the filing of dispositive motions. Pet. 66 (citing
`Ex. 1018). Patent Owner responds that, in addition to having conducted the
`Markman hearing, “by the time the Board issues its decision on whether to
`institute the requested IPR, the parties will have served initial expert
`[reports], fact discovery will have closed, and dispositive motions will be a
`month out,” requiring “immense time and effort for both sides.” Prelim.
`Resp. 10 (citing Ex. 1018). After briefing was completed in this proceeding,
`the parties jointly informed us that the District Court had entered a
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`memorandum opinion and order on claim construction on May 10, 2021.
`See Ex. 1091, 39.
`At this time, Patent Owner is correct that the parties have completed
`fact discovery, served initial expert reports, and completed Markman
`briefing and an associated hearing. Ex. 1018, 3. In addition, the District
`Court has issued its Markman order on claim construction. See Ex. 1091.
`Thus, significant work has been done in the District Court case. On the
`other hand, Petitioner is correct that much work remains, including the
`preparation and service of rebuttal expert reports, expert discovery,
`dispositive motions, and pretrial motions and disclosures. Ex. 1018, 1–3.
`The level of investment of time and resources in the District Court
`case is substantial and somewhat mitigated by Petitioner’s diligence in filing
`the Petition. Accordingly, we find this factor weighs somewhat in favor of
`exercising our discretion to deny institution under § 314(a).
`4.
`Fourth Fintiv Factor: Overlap Between Issues Raised in
` Petition and in Parallel Proceeding
`Patent Owner contends this factor favors denial of institution, because
`there is “nearly complete overlap between the invalidity issues raised in the
`Petition and in the [District Court case],” and because “[a]ll of the grounds
`raised in the Petition are being raised, or are reserved to be raised, in the
`[District Court case].” Prelim. Resp. 11.
`Petitioner argues that it has proposed a Sotera-type stipulation that
`obviates any concerns of duplicative efforts between the District Court and
`the Board. Reply 4–5 (citing Sotera Wireless, Inc. v. Masimo Corp.,
`IPR2020-01019, Paper 12, 18–19 (PTAB Dec. 1, 2020) (precedential as to
`§ II.A) (“Sotera”)). Petitioner stipulates that,
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`for those patents for which the Board institutes IPR, [Petitioner]
`will not pursue in the [District Court case] the specific grounds
`asserted in the IPR or “any other ground . . . that was raised or
`could have been reasonably raised in an IPR (i.e., any ground that
`could be raised under §§ 102 or 103 on the basis of prior art
`patents or printed publications).”
`Id. at 4–5. Patent Owner responds that Petitioner waited too long to file its
`Sotera stipulation and that, even with the stipulation, there still may be
`overlap with the invalidity arguments in the District Court case unless we
`institute in the present proceeding and all four related inter partes reviews.
`Sur-reply 4–5.
`Concerns about the degree of overlap may be mitigated where a
`petitioner agrees not to pursue in the parallel district court litigation the
`grounds advanced in the petition. Sand Revolution II, LLC v. Continental
`Intermodal Group – Trucking LLC, Case IPR2019-01393, Paper 24, 11
`(PTAB June 16, 2020). A petitioner stipulating not to pursue “any ground
`raised or that could have been raised” weighs strongly in favor of not
`exercising discretionary denial. Sotera, Paper 12, 18–19. Petitioner
`unequivocally stipulates that, if the Board institutes this inter partes review,
`it will “not pursue in the parallel proceeding any ground raised or that could
`have been reasonably raised.” Reply 4–5. Moreover, Petitioner makes clear
`that this stipulation extends to “any ground that could be raised under §§ 102
`or 103 on the basis of prior art patents or printed publications.” Id.
`We are not persuaded that Petitioner delayed in filing its stipulation
`under Sotera, as that decision was not designated as precedential until after
`the Petition was filed. Considering that Petitioner has agreed to be bound by
`a stipulation that is substantively the same as the stipulation addressed in
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`Sotera, we follow the Sotera precedent in finding that this factor weighs
`strongly against exercising discretion to deny. Sotera, Ex. 1038, 7–8.
`5.
`Fifth Fintiv Factor: Whether Petitioner and Parallel
` Proceeding Defendant Are Same
`The parties do not dispute that the same parties involved in the present
`proceeding are also involved in the District Court case. Pet. 65; Prelim.
`Resp. 13. Thus, this factor weighs in favor of exercising our discretion to
`deny institution under § 314(a).
`6.
`Sixth Fintiv Factor: Other Circumstances (Including Merits)
`Patent Owner argues that “the Petition’s grounds are weak and do not
`justify instituting on the merits.” Prelim. Resp. 14. Petitioner argues to the
`contrary that “the merits of the grounds of this Petition are strong.” Pet. 68.
`As we describe in more detail below, we find the evidence and
`arguments presented by Petitioner on this preliminary record sufficiently
`meet our standard for instituting an inter partes review. The question of
`whether the challenged claims are unpatentable remains open for
`determination at trial, however, and the present record shows that there may
`be merit to Patent Owner’s substantive arguments. Thus, we find the
`strength of the merits is neutral with respect to exercising our discretion to
`deny under § 314(a).
`Conclusion on the Factors
`7.
`Because the analysis is fact-driven, no single factor is determinative
`of whether we exercise our discretion to deny institution under 35 U.S.C.
`§ 314(a). On this record, after weighing all of the factors and taking a
`holistic view, we determine that the facts in this case that weigh against
`exercising discretion outweigh the facts that favor exercising discretion.
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`Accordingly, we determine that the circumstances presented weigh against
`exercising our discretion to deny institution under § 314(a).
`
`Person of Ordinary Skill in the Art
`B.
`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 in the
`Preliminary Response.
`At this stage of the proceeding, 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. See Okajima v. Bourdeau,
`261 F.3d 1350, 1355 (Fed. Cir. 2001).
`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
`
`16
`
`
`
`IPR2021-00184
`Patent 7,803,423 B2
`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).
`Patent Owner contends that the ’423 patent 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.
`Prelim. Resp. 34 (quoting Ex. 1001, 5:3–12). Patent Owner asserts that
`“[t]he parties’ dispute over the meaning of the term need not be resolved”
`
`17
`
`
`
`IPR2021-00184
`Patent 7,803,423 B2
`and “both parties’ definitions, as shown above, require that that the
`molecular cluster compound possess ‘of sufficiently well-defined chemical
`structure such that all molecules of the cluster compound possess the same
`relative molecular mass.’” Id. at 35 (citing Ex. 1001, 5:3–13) (emphasis
`omitted).
`At this stage of the proceeding, we agree with the parties that express
`construction of 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. Patent Owner disagrees. Prelim. Resp.
`36–41.
`
`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, Cd, Mn, etc., a Group IIIa
`metal[], e.g. In, Ga, Al, alloys of such metals such as for example Au-In, or
`core/shell layered metal particle.” Id. at 7:9–11.
`
`18
`
`
`
`IPR2021-00184
`Patent 7,803,423 B2
`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
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