REDACTED VERSION
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioner,
`
`v.
`
`NANOCO TECHNOLOGIES LTD.,
`Patent Owner.
`
`Case No. IPR2021-00184
`U.S. Patent No. 7,803,423
`
`PATENT OWNER’S RESPONSE
`PURSUANT TO 37 C.F.R. § 42.120
`
`

`

`REDACTED VERSION
`
`TABLE OF CONTENTS
`
`Case No. IPR2021-00184
`U.S. Patent No. 7,803,423
`
`B.
`
`Page(s)
`INTRODUCTION AND SUMMARY OF ARGUMENT .............................. 1
`I.
`OVERVIEW OF QUANTUM DOT NANOPARTICLES ............................. 5
`II.
`IDENTIFICATION OF INSTITUTED GROUNDS .................................... 11
`III.
`IV. OVERVIEW OF NANOPARTICLE SYNTHESIS METHODS ................. 11
`A.
`Nanorods and Nanowires .................................................................... 13
`1.
`The Vapor-Liquid-Solid Method .............................................. 13
`2.
`The Solution-Liquid-Solid Method .......................................... 16
`Quantum Dots ...................................................................................... 19
`1.
`The Hot-Injection Method ........................................................ 19
`2.
`The Heat-Up Method ................................................................ 22
`3.
`The Molecular Cluster-Assisted Method .................................. 23
`THE CHALLENGED ’423 PATENT ........................................................... 25
`V.
`VI. CLAIM CONSTRUCTION .......................................................................... 26
`A. Molecular Cluster Compound ............................................................. 27
`VII. PETITIONER HAS NOT SHOWN THAT THE CHALLENGED
`CLAIMS ARE UNPATENTABLE .............................................................. 29
`A.
`Ground 1: Claims 1-3, 10-11, 13, and 22-24 Are Not
`Anticipated by Banin ........................................................................... 29
`1.
`Banin Does Not Disclose a Molecular Cluster Compound ...... 31
`2.
`Dr. Green’s testimony that an ordinarily skilled artisan
`would have recognized Banin’s gold clusters as
`comprising a molecular cluster compound is refuted by
`
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`3.
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`2.
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`B.
`
`C.
`
`D.
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`E.
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`Case No. IPR2021-00184
`U.S. Patent No. 7,803,423
`his own deposition testimony, and the testimony of
`Samsung’s other witnesses. ...................................................... 36
`Banin Teaches Away From Using Conditions Permitting
`Seeding and Growth in SLS Reactions ..................................... 41
`Ground 2: No Claims are Rendered Obvious by Banin ...................... 44
`1.
`Claim 4 Is Not Obvious In Light of Banin ............................... 44
`2.
`Claims 5 and 6 Are Not Obvious in Light of Banin ................. 45
`Ground 3: No Claims are Rendered Obvious by Banin in View
`of Bawendi .......................................................................................... 46
`1.
`Claims 7-9 are Not Rendered Obvious by Banin in View
`of Bawendi ................................................................................ 46
`Grounds 4-6: Zaban in View of Ptatschek Does Not Render
`Obvious Any Claims of the ’423 Patent ............................................. 48
`1.
`A Person of Skill in the Art Would Not Combine Zaban’s
`Group III-V Quantum Dot Process with Ptatschek’s
`Group II-VI Precursors ............................................................. 48
`A Person of Skill in the Art Would Not Swap Zaban’s
`Zinc Acetate for Ptatschek’s 10-Zinc Precursor Because
`It Would Change the Nature of Zaban’s Quantum Dots .......... 50
`Ground 7: Lucey in View of Ahrenkiel Does Not Render
`Obvious Any Claims of the ’423 Patent. ............................................ 54
`1.
`Lucey Uses the Hot-Injection Method to make Quantum
`Dots, While Ahrenkiel Uses the SLS Method to Make
`Quantum Rods ........................................................................... 54
`Even Replacing Lucey’s Single Precursor with
`Ahrenkiel’s Multiple Precursors Would Not Practice the
`Claims of the ’423 Patent Because Both of Ahrenkiel’s
`Precursors Provide the Same Ions ............................................ 55
`Lucey’s Expressly Teaches Away from Ahrenkiel’s
`Chlorine-Based Precursors ........................................................ 56
`
`2.
`
`3.
`
`ii
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`REDACTED VERSION
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`Case No. IPR2021-00184
`U.S. Patent No. 7,803,423
`There Is No Motivation to Combine Lucey and
`Ahrenkiel, and No Reasonable Expectation of Success ........... 57
`VIII. CONCLUSION .............................................................................................. 60
`
`4.
`
`iii
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`REDACTED VERSION
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`Case No. IPR2021-00184
`U.S. Patent No. 7,803,423
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`In re Fine,
`837 F.2d 1071 (Fed. Cir. 1988) .......................................................................... 53
`In re Fritch,
`972 F.2d 1260 (Fed. Cir. 1992) .......................................................................... 53
`Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co.,
`868 F.3d 1013 (Fed. Cir. 2017) .......................................................................... 27
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc) .......................................................... 26
`Sanofi-Synthelabo v. Apotex, Inc.,
`550 F.3d 1075 (Fed. Cir. 2008) .......................................................................... 53
`Statutes and Regulations
`U.S.C. §102 .............................................................................................................. 11
`U.S.C. §103 .............................................................................................................. 11
`37 C.F.R. § 42.100(b) .............................................................................................. 26
`
`iv
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`REDACTED VERSION
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`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., )63<;265B 328<2-B :632- 096>;1 6/ :.42,65-<,;69
`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)
`
`v
`
`

`

`Exhibit
`2015
`
`2016
`
`2017
`
`2018
`
`2019
`
`2020
`
`2021
`
`2022
`
`2023
`
`2024
`
`2025
`
`REDACTED VERSION
`
`Case No. IPR2021-00184
`U.S. Patent No. 7,803,423
`
`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.,
`(4796=.- :?5;1.:2: 6/ :4*33 "- ,69.A &%’ 54# 716:7125.$:;*+232@.-
`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 phosphide quantum dots:doping and surface
`passivation, Beilstein J Nanotechnol. 2015; 6: 1237-1246
`
`vi
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`REDACTED VERSION
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`Case No. IPR2021-00184
`U.S. Patent No. 7,803,423
`
`Exhibit
`2026
`
`2027
`
`2028
`
`2029
`
`2030
`2031
`2032
`
`2033
`
`2034
`
`2035
`2036
`
`2037
`
`2038
`
`2039
`
`2040
`
`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).
`Declaration of Brandi Cossairt Ph.D. Aug. 12, 2021
`July 29, 2021 Deposition of Mark A. Green, Ph.D.
`Excerpts from June 10, 2021 Rebuttal Expert Report of Moungi
`Bawendi, Ph.D.
`Xie, L., et al., Characterization of Indium Phosphide Quantum Dot
`Growth Intermediates Using MALDI-TOF Mass Spectrometry.
`Journal of the American Chemical Society, 138:13469-13472 (2016).
`Excerpts from June 16, 2021 Deposition of Moungi G. Bawendi,
`Ph.D.
`Definition of Monodisperse by The Free Dictionary, Aug. 10, 2021
`Yossef E. Panfil, et al., Colloidal Quantum Nanostructures:
`Emerging Materials for Display Applications, Angew. Chem. Int.
`Ed. 2018, 57, 4274 –4295
`Solid State Synthesis, Millipore Sigma,
`https://www.sigmaaldrich.com/US/en/applications/materials-science-
`and-engineering/solid-state-synthesis, August 10, 2021
`J.P. Fackler, Jr., et al., Cf Plasma Desorption Mass Spectrometry as
`a Tool for Studying Very Large Clusters. Evidence for Vertex-
`Sharing Icosahedra as Components of Au67(Pph3)14Cl8, 1989
`American Chemical Society
`Nan Xia and Zhikun Wu, Controlling ultrasmall gold nanoparticles
`with atomic precision, Chem. Sci., 2021, 12, 2368–2380
`David P. Anderson, et al., Chemically synthesised atomically precise
`gold clusters deposited and activated on titania. Part II, Phys. Chem.
`Chem. Phys., 2013, 15, 14806
`
`vii
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`REDACTED VERSION
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`Case No. IPR2021-00184
`U.S. Patent No. 7,803,423
`
`Exhibit
`2041
`
`2042
`
`2043
`
`2044
`
`2045
`
`2046
`
`Description
`Rodolphe Antoine, Atomically precise clusters of gold and silver: A
`new class of nonlinear optical nanomaterials, Frontier Research
`Today 2018; 1:1001 doi: 10.31716/frt.201801001
`Itzhak Shweky, et al., Seeded growth of InP and InAs quantum rods
`using indium acetate and myristic acid, Materials Science and
`Engineering C 26 (2006) 788 – 794
`Compound Summary – Cadmium sulfide (CdS), PubChem,
`https://pubchem.ncbi.nlm.nih.gov/compound/Cadmium-sulfide, July
`20, 2021
`Chris Shaw, Nanoparticles manufacturer receives $600,000 boost,
`August 5, 2010
`Kangyong Kim, et al., Zinc Oxo Clusters Improve the Optoelectronic
`Properties on Indium Phosphide Quantum Dots, Chem. Mater. 2020,
`32, 2795-2802. (Bawendi Depo. Exhibit 8)
`Redacted Version of the Declaration of Brandi Cossairt Ph.D. Aug.
`12, 2021
`
`viii
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`REDACTED VERSION
`
`Case No. IPR2021-00184
`U.S. Patent No. 7,803,423
`
`I.
`
`INTRODUCTION AND SUMMARY OF ARGUMENT
`Samsung’s Petition fails to establish that any challenged claim of Nanoco’s
`
`U.S. Patent No. 7,803,423 (Ex. 1001) (the “’423 patent”) is unpatentable. The ’423
`
`patent claims methods of producing semiconductor nanoparticles called quantum
`
`dots, which can emit light at very particular wavelengths. Quantum dots were
`
`traditionally made of compounds such as cadmium selenide (CdSe). But cadmium
`
`is highly toxic, so there was a push to create cadmium-free quantum dots out of
`
`material such as indium phosphide (InP). While it is difficult to make any quantum
`
`dot in commercially viable quantities, these problems are compounded when
`
`cadmium is not used. The methods claimed by the ’423 patent are useful in making
`
`commercial quantities of quantum dots, including cadmium-free indium phosphide
`
`quantum dots.
`
`The claimed method involves creating a quantum dot by using multiple
`
`precursors. Precursors are compounds that contain atoms to be incorporated into the
`
`quantum dot. For example, the ’423 patent claims require a first precursor species
`
`that contains a first ion (such as indium), and a separate second precursor species
`
`that contains a second ion (such as phosphorus), with each precursor providing a
`
`different ion to be incorporated into the growing quantum dot core (such as indium
`
`phosphide). See Ex. 1001, 4:36-43. An important feature of the invention is that this
`
`conversion takes place in the presence of a molecular cluster compound (“MCC”).
`
`1
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`REDACTED VERSION
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`Case No. IPR2021-00184
`U.S. Patent No. 7,803,423
`Id. at 4:57-61. As defined by the District Court, A MCC is a small cluster 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. Ex. 1001, 5:3-9; Ex. 1091, 18. These “clusters are defined
`
`identical molecular entities, as compared to ensembles of small nanoparticles.” Ex.
`
`1001, 7:34-38.
`
`Petitioner’s Grounds 1-3 rely on a primary reference called Banin, which does
`
`not disclose a MCC at all. The “clusters” Petitioner identifies in Banin are melted
`
`gold droplets existing in a range of sizes with a 25% variation in their composition,
`
`and which contain substantial impurities. These metal droplets are not defined
`
`identical molecular entities and thus lack the sufficiently well-defined chemical
`
`structure of a MCC. See Section VII.A infra. All experts in this proceeding and in
`
`the parallel district court proceeding agree that uncharacterized mixtures of clusters
`
`are not sufficiently well-defined, and therefore fail to meet the definition of MCC.
`
`During his deposition, Petitioner’s expert Dr. Green agreed that uncharacterized
`
`mixtures of clusters are not sufficiently well-defined to meet the definition of MCCs.
`
`See Ex. 2031, 68:6-14 (“Q. So if there was a mixture of clusters in your opinion,
`
`could that satisfy this definition [of molecular cluster compound]? A. No, because
`
`they wouldn’t have the same relative molecular formula. Q. So in your opinion,
`
`would the molecular clusters have to be identical in order to satisfy this
`
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`Case No. IPR2021-00184
`U.S. Patent No. 7,803,423
`definition? A. I believe so.”). Petitioner’s expert in the district court, Dr. Bawendi,
`
`also testified that uncharacterized cluster that exist in a range of sizes are not MCCs.
`
`See Ex. 2034
`
`
`
` Petitioner’s Grounds 1-3 fail to show that any challenged claim is
`
`unpatentable at least because Banin does not disclose a MCC.
`
`Petitioner’s Grounds 4-6 rely on Zaban as a primary reference in combination
`
`with Ptatschek. While Zaban makes indium phosphide quantum dots, Petitioner does
`
`not allege that Zaban uses any “clusters” at all. And the cluster disclosed by the
`
`secondary Ptatschek reference is a precursor for making zinc selenide (ZnSe) and
`
`zinc sulfide (ZnS) quantum dots, not indium phosphide. Moreover, using Ptatschek’s
`
`cluster in combination with Zaban would not work. Zaban very deliberately adds a
`
`single zinc atom to each of its quantum dots. Ptatschek’s zinc-based cluster would
`
`result in up to 10 times the amount of zinc in Zaban’s quantum dots, fundamentally
`
`changing their properties. VII.B infra. As the Board correctly noted in its Institution
`
`Decision, “we do not find that Petitioner or Dr. Green have squarely addressed such
`
`differences between Zaban and Ptatschek when discussing their combination.” Paper
`
`17, 32. The Institution Decision in a related IPR involving the same issue put a finer
`
`3
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`Case No. IPR2021-00184
`U.S. Patent No. 7,803,423
`point on it, finding that “Petitioner fails to show sufficiently that an ordinary skilled
`
`artisan would have been led to replace the zinc acetate in Zaban’ process with the
`
`Zn10O4(OAC)12-clusters disclosed in Ptatschek. . . . Accordingly, Petitioner does not
`
`demonstrate a reasonable likelihood of prevailing at trial with respect to any
`
`challenged claim base in either round that asserts Zaban and Ptatschek.” IPR2021-
`
`00185, Paper 17 at 27.
`
`The Petition’s Ground 7 is weaker still. Ground 7 relies upon Lucey as a
`
`primary reference. Petitioner does not allege that Lucey discloses a “first precursor
`
`species containing a first ion and a second precursor species containing a second
`
`ion” as required by all claims. The Ahrenkiel secondary reference that Petitioner
`
`relies upon does not disclose this element either. Ahrenkiel’s two precursors both
`
`provide the same ions. Worse, Ahrenkiel’s precursors have chlorine atoms in them—
`
`expressly what Lucey states should not be used in a precursor. See Section VII.C
`
`infra. Given these differences, the Board properly found that “Petitioner has not
`
`shown a reasonable likelihood of prevailing on any challenge claim base on this
`
`ground.” Paper 17, 35.
`
`Because Petitioner’s Banin grounds fail to disclose critical claim elements,
`
`and because there is no reason to combine Zaban with Ptatschek or Lucey with
`
`Ahrenkiel other than Petitioner’s improper hindsight effort to assemble portions of
`
`divergent references to create something that might approximate the invention of the
`
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`REDACTED VERSION
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`Case No. IPR2021-00184
`U.S. Patent No. 7,803,423
`’423 patent, Petitioner has not proven that any challenged claims of the ’423 patent
`
`are invalid.
`
`II. OVERVIEW OF QUANTUM DOT NANOPARTICLES
`The challenged claims are directed to semiconductor nanoparticles including
`
`quantum dots. Quantum dots are man-made semiconductors that can emit light at
`
`very particular wavelengths. They are tiny, ranging in size from 2-100 nanometers
`
`(nm), and it is their size that dictates the wavelength, and thus the color, of light
`
`being emitted—moving across the traditional visible spectrum from violet to red as
`
`the dots grow larger in diameter. Ex. 1001, 1:11-22; Ex. 2030 ¶34.
`
`Ex. 2013, 1792. To achieve color precision, it is vital that all of the quantum dots in
`
`a particular batch are sufficiently uniform in size (i.e., “monodisperse quantum
`
`dots”). Monodisperse quantum dots are useful in televisions because of their fine-
`
`tunable color-generating properties. Ex. 2030 ¶35; see also Ex. 1001, 1:15-22. When
`
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`REDACTED VERSION
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`Case No. IPR2021-00184
`U.S. Patent No. 7,803,423
`such quantum dots are added to a film that sits in front of a television’s backlight,
`
`they reveal a wider and more saturated range of colors than would otherwise be
`
`possible. Ex. 2030 ¶35. Nanoco, an early pioneer in the manufacture of quantum
`
`dots, developed ways to manufacture monodisperse quantum dots in large quantities,
`
`and developed ways to make quantum dot films for use in displays.1 Id.
`
`At the time of the invention, the most studied quantum dot material was
`
`cadmium selenide (CdSe). Ex. 2030 ¶36. This is because one can precisely control
`
`the size of CdSe quantum dots, and thus fine-tune the color they emit over the visible
`
`spectrum. Id.; Ex. 1001, 1:30-33. These CdSe quantum dots are made up of elements
`
`from columns 12 and 16 of the periodic table (also known as group II-VI quantum
`
`dots). Ex. 2030 ¶36.
`
`1 In separate IPRs Samsung challenges Nanoco’s U.S. Patent Nos. 7,588,828,
`
`7,867,557, 8,524,365, and 9,680,068, which are also directed toward these
`
`inventions.
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`Case No. IPR2021-00184
`U.S. Patent No. 7,803,423
`
`See Ex. 2004 (annotated).
`
`But cadmium is incredibly toxic and is banned from use in consumer
`
`electronics in many countries. Ex. 2030 ¶37. So a need arose for methods to make
`
`commercial amounts of cadmium-free quantum dots that could be fine-tuned to
`
`specific uniform sizes and color emissions across the visible spectrum. Id. Nanoco,
`
`in particular, focused its attention on the less toxic elements from columns 13 and
`
`15 of the period table (group III-V), such as indium phosphide (InP). Ex. 1001, 8:4-
`
`9. However, group III-V quantum dots are far more covalent in nature and more
`
`difficult and time consuming to prepare using prior art methods as a result. Ex. 1001,
`
`3:57-60; Ex. 2030 ¶¶39, 59.
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`REDACTED VERSION
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`Case No. IPR2021-00184
`U.S. Patent No. 7,803,423
`Prior to Nanoco’s innovations, quantum dots made up of group III-V materials
`
`could not be produced in commercial quantities with the necessary size precision.
`
`See Ex. 1001, 3:57-4:35; Ex. 2030 ¶39. The existing commercial methods included
`
`taking a solution of precursors—i.e., chemicals that contribute, e.g., the indium
`
`and/or the phosphorus ions to an InP quantum dot core—and rapidly injecting them
`
`into a hot solvent. Ex. 1001, 3:57-4:35; Ex. 2030 ¶39 This “hot injection” method
`
`worked well enough for small-scale productions of quantum dots, where the amounts
`
`of each solution were small enough that when the cool precursors were added, the
`
`entire solution immediately changed to the lower temperature. Ex. 1001, 4:4-14; Ex.
`
`2030 ¶39. However, it did not work for larger scale productions because injecting
`
`large volumes of cool precursors into large volumes of hot solutions creates
`
`immediate temperature differentials throughout the solution. Ex. 1001, 4:14-18; Ex.
`
`2030 ¶39. These temperature differentials result in an undesirable assortment of
`
`quantum dots of different sizes. Ex. 1001, 4:14-18; Ex. 2030 ¶39; see also Ex. 1001,
`
`3:40-42 (“For all the above methods rapid particle nucleation followed by slow
`
`particle growth is essential for a narrow particle size distribution.”). As discussed
`
`above, a large range of size distribution defeats the purpose of quantum dots by
`
`eliminating the ability to fine-tune their optical properties.
`
`Nanoco solved the problem of non-uniform nanoparticle size distribution by
`
`converting precursors (such as an indium-containing precursor and a phosphorus-
`
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`Case No. IPR2021-00184
`U.S. Patent No. 7,803,423
`containing precursor) into a quantum dot core (such as indium phosphide) in the
`
`presence of a molecular cluster compound. Ex. 1001, 4:57-61; Ex. 2030 ¶40.
`
`Nanoco’s “cluster assisted” growth methods enable the large-scale synthesis of high-
`
`quality, uniformly-sized, cadmium-free quantum dots. Ex. 2030 ¶40.
`
`Notably, at the time of Nanoco’s invention, Petitioner was still trying to solve
`
`the problems associated with producing cadmium-free quantum dots, but was not
`
`having much success. Petitioner was able to create cadmium-containing quantum
`
`dots, but not cadmium-free ones. Indeed, Samsung’s research lead, Dr. Eunjoo Jang,
`
`expressed publicly that Samsung found developing cadmium-free quantum dot
`
`technology “to be quite a challenge” and needed to spend extended time working on
`
`production methods. Ex. 2005, 3. As she further stated:
`
`At first, we could not even imagine a Cd-free quantum dot, but in
`Samsung’s commitment to being a globally responsible manufacturer,
`the vision was to make it work. I was able to relatively quickly complete
`a cadmium-containing quantum dot, but I wanted to do something that
`no one else had. So, I worked another three years on Cd-free quantum
`dot.
`
`Id. According to Samsung, the development of cadmium-free quantum dots was not
`
`as straightforward as optimizing existing synthesis methods. See Ex. 2006, 1316
`
`(noting that “optimization of synthesis methods of InP QDs has been relatively
`
`difficult compared to II–VI QDs”) (emphasis added).
`
`9
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`REDACTED VERSION
`
`Case No. IPR2021-00184
`U.S. Patent No. 7,803,423
`Unable to make quality cadmium-free quantum dots, Dr. Jang looked to
`
`Nanoco. In October, 2006 she emailed Nanoco’s inventor Nigel Pickett (an inventor
`
`on the challenged patent) to learn about Nanoco’s cadmium-free quantum dot
`
`technology Ex. 2016, 2 (“We are interested in your Cd-free quantum dots.”). This
`
`was approximately four years after Dr. Jang began trying. Ex. 2005, 2 (noting that
`
`“she started the project at SAIT in 2002”). Dr. Jang sought a technical discussion
`
`with Nanoco concerning cadmium-free quantum dot synthesis methods, as well as
`
`protocols for manufacturing quantum dots containing epoxy resins. Samsung and
`
`Nanoco subsequently signed a non-disclosure agreement in 2007. After many years
`
`of detailed technical discussions regarding Nanoco’s cadmium-free quantum dots,
`
`Samsung, through Dr. Jang, was finally able to produce cadmium-free quantum dots.
`
`Samsung then terminated the relationship with Nanoco and introduced its first
`
`cadmium-free quantum dot TV in January 2015.
`
`After all of this, Samsung awarded Dr. Jang with the Samsung Award of
`
`Honor, “also referred to as ‘Samsung’s Nobel Prize,’” in recognition of the
`
`challenges she had overcome in making cadmium-free quantum dots. Ex. 2005, 1.
`
`Nanoco believes that Samsung misappropriated its patented quantum dot technology
`
`to supply its expanding QLED television lineup, which led Nanoco to file a lawsuit
`
`for patent infringement against Samsung asserting the same patent that is challenged
`
`in this IPR. See, e.g., Ex. 1019.
`
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`REDACTED VERSION
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`Case No. IPR2021-00184
`U.S. Patent No. 7,803,423
`IDENTIFICATION OF INSTITUTED GROUNDS
`Petitioner alleges that challenged claims of the ’423 Patent are unpatentable
`
`III.
`
`on the following grounds:
`
`Ground
`
`Basis
`
`1
`
`2
`3
`4
`
`5
`
`6
`
`7
`
`35. U.S.C. §102
`
`35. U.S.C. §103
`35. U.S.C. §103
`35. U.S.C. §103
`
`35. U.S.C. §103
`
`35. U.S.C. §103
`
`35. U.S.C. §103
`
`Challenged
`Claim
`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
`
`Reference(s)
`
`Banin
`
`Banin
`Banin, Bawendi
`Zaban2, Ptatschek
`Zaban, Ptatschek,
`Yu
`Zaban, Ptatschek,
`Bawendi
`Lucey, Ahrenkiel
`
`IV. OVERVIEW OF NANOPARTICLE SYNTHESIS METHODS
`There are many different ways to manufacture many different kinds of
`
`nanoparticles with many different characteristics. Petitioner mixes and matches
`
`components from these various methods in its efforts to challenge the ’423 patent
`
`2 Petitioner also proposes alternatives for Grounds 4 and 5 arguing that because
`4565A CGDCBDF98?J =A7BDCBD5F9E 1=T=TPE CD9C5D5F=BA 89F5=?E 6J D9:9D9A79# N0DBGA8
`(5 =E 65E98 BA 4565A =A H=9I B: 1=T=T 5A8 2F5FE7<9>+ 0DBGA8 )5 =E 65E98 BA 4565A
`=A H=9I B: 1=T=T# 2F5FE7<9># 5A8 3G+ 5A8 0DBGA8 *5 =E 65E98 BA 4565A =A H=9I B:
`1=T=T# 2F5FE7<9># 5A8 -5I9A8=$O 29F=F=BA 5F &’$ /H9A I=F< F<=E 588=F=BA5?
`reference, Grounds 4a and 5a are deficient for the same reasons discussed below in
`relation to Grounds 4 and 5.
`
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`Case No. IPR2021-00184
`U.S. Patent No. 7,803,423
`claims. But each method has its own set of highly specific conditions, reagents, and
`
`other conditions required to achieve highly specific objectives. Ex. 2030 ¶41. For
`
`example, some reactions produce spherical nanoparticles (quantum dots). Id. Other
`
`reactions produce rod-shaped nanoparticles (nanorods). Id. Still others produce
`
`quantum wires, ribbons, tubes, or sheets. Id.; Ex. 2031, 22:24-24:13. Representative
`
`pictures of these differing structures are shown below:
`
`See Ex. 2036, 4276.
`
`Reaction conditions for producing nanoparticles vary widely. Some reactions
`
`are performed at extremely high temperatures, while others can be carried out at
`
`room temperature or with mild heat. Ex. 2030 ¶43. Some reactions use single-source
`
`precursors (i.e., precursors that contain all of the atoms that go into the nanoparticle),
`
`while others use multiple precursors each supplying a different atom to the growing
`
`nanoparticle. Id. Some reactions use solid or vaporized precursors while others mix
`
`the precursors in colloidal solutions (a colloid is a mixture in which particles remain
`
`evenly distributed through the solution). Id. All of these different reactions have their
`
`own particular set of requirements—and they are all targeted to obtaining a particular
`
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`Case No. IPR2021-00184
`U.S. Patent No. 7,803,423
`set of characteristics in the resulting nanoparticle, such as the composition of the
`
`nanoparticle, the quantity and purity desired, and so on. Id. ¶44.
`
`Nanorods and Nanowires
`A.
`Nanorods and nanowires are elongated forms of semiconductor nanoparticles.
`
`Id. ¶45. To achieve their elongated shape, nanorods and nanowires grow in one
`
`dimension. Id. Two common ways of achieving this one-dimensional growth are (1)
`
`the Vapor-Liquid-Solid method, and (2) the Solution-Liquid-Solid method. Id.
`
`The Vapor-Liquid-Solid Method
`1.
`The Vapor-Liquid-Solid (“VLS”) method was first discovered when
`
`researchers noticed that silicon (Si) “whiskers” would grow on gold (Au) decorated
`
`silicon substrates when they were subjected to a process called chemical vapor
`
`deposition (“CVD”). Id. ¶46; see also Ex. 2008, 7513. For example, as its name
`
`suggests, CVD uses a vaporized precursor to deposit silicon atoms directly onto a
`
`substrate. Ex. 2030 ¶47. At the high temperatures required for this process, the metal
`
`catalyst (e.g., gold) melts into variously sized droplets. Id.; see also Ex. 2008, 7513.
`
`In the case of the silicon “whiskers,” the liquid gold droplets dissolve silicon atoms
`
`until the droplets become supersaturated, at which point crystalline silicon nanorods
`
`(i.e., whiskers) begin forming at the interface of the gold droplet (the part of the
`
`droplet that is touching the substrate). Ex. 2030 ¶47. Because the growing crystals
`
`form where the droplet is already touching the silicon nanorod, they push the molten
`
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`REDACTED VERSION
`
`Case No. IPR2021-00184
`U.S. Patent No. 7,803,423
`metal droplet upwards as the elongated crystal forms below it. Id. ¶48. Growth like
`
`this in one dimension creates rod-shaped nanoparticles. Id.¶; see also Ex. 2008,
`
`7513. The “whiskers” will continue to grow in this manner until the precursors are
`
`fully depleted. Ex. 2030 ¶48; Ex. 2008, 7513. The researchers who discovered this
`
`process called it “VLS” in light of the three phases involved: Vapor-phase (silicon
`
`precursors), Liquid phase (melted gold droplets, also called the “catalyst”), and Solid
`
`phase (crystalline semiconductor whiskers). Ex. 2030 ¶48; Ex. 2008, 7511. A
`
`rendering of the process is shown below:
`
`Ex. 2008, 7514.
`
`While metals other than gold can be used in VLS, there are very particular
`
`requirements that must be considered when choosing metals that will work. The
`
`requirements include, but are not limited to:
`
`(1)
`
`the liquid metal (e.g., gold) must be able to dissolve the vaporized
`
`substrate (e.g., silicon);
`
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`REDACTED VERSION
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`Case No. IPR2021-00184
`U.S. Patent No. 7,803,423
`the solubility of the substrate must be low enough in the metal that
`
`(2)
`
`supersaturation can be achieved;
`
`(3)
`
`the vapor pressure of the catalyst over the liquid metal must be small
`
`so that the droplet do