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 LIMITED,
`Patent Owner.
`
`____________________________________________
`
`IPR2021-00184 (Patent 7,803,423 B2)
`____________________________________________
`
`
`
`PETITIONER’S RESPONSE TO PATENT OWNER’S MOTION TO
`SEAL AND TO ENTER DEFAULT PROTECTIVE ORDER PURSUANT
`TO 37 C.F.R. § 42.54
`
`
`
`
`
`
`
`
`
`
`
`

`

`
`
`I.
`
`INTRODUCTION
`Petitioners Samsung Electronics Co., Ltd. and Samsung Electronics America,
`
`Inc. (collectively, “Petitioner”) respectfully submit this response to Patent Owner
`
`Nanoco Technologies Ltd.’s (“Patent Owner”) Motion to Seal and to Enter Default
`
`Protective Order Pursuant to 37 C.F.R. § 42.54 (“Motion”). That motion seeks to
`
`seal portions of Patent Owner’s Response, portions of Exhibit 2030 (Declaration of
`
`Brandi Cossairt Ph.D.), and the entirety of Exhibits 2032 (Excerpts of the June 10,
`
`2021 Rebuttal Expert Report of Moungi Bawendi, Ph.D.) and 2034 (Excerpts of the
`
`June 16, 2021 Deposition Transcript of Moungi G. Bawendi, Ph.D.). See Paper 27
`
`at 1 (P.T.A.B. Aug. 12, 2021).
`
`Patent Owner based its Motion on the incorrect premise that Petitioner never
`
`responded to Patent Owner’s communications regarding the confidentiality of these
`
`exhibits. See Paper 27 at 1-2, 4. However, Patent Owner did respond to Petitioner’s
`
`communications. Indeed, Patent Owner admits that Petitioner “did respond
`
`promptly to [Petitioner’s] request to de-designate. [Patent Owner is] looking into
`
`why this correspondence did not reach any of the attorneys working on the IPR, but
`
`assume that the problem was on our [i.e., Patent Owner’s] side.” App. 1.
`
`In any event, the parties have now conferred and agreed upon a plan of action
`
`that moots this Motion. Specifically, the parties have agreed that (1) Patent Owner’s
`
`Response and Exhibits 2030 and 2034 do not contain confidential information and
`
`2
`
`

`

`
`
`therefore do not need to be sealed; and (2) that the parties jointly request that the
`
`Board replace existing Exhibit 2032 with an agreed-upon redacted version that can
`
`be filed publicly. See id.; App. 2. This obviates the need for a protective order to
`
`be entered in this case or any information to be sealed and thus moots Patent Owner’s
`
`Motion. Therefore, Petitioner respectfully requests that the Board (1) deny the
`
`Motion as moot if it agrees to expunge and replace existing Exhibit 2032 with a
`
`redacted version, or (2) grant the Motion as to Exhibit 2032, enter the modified
`
`default protective order attached as Appendix A to this response, and deny the
`
`remainder of the Motion as moot.
`
`II. THE MOTION SHOULD BE DENIED AS MOOT
`The parties agree that Patent Owner’s Response and Exhibits 2030 and 2034
`
`do not contain confidential information and do not need to be sealed. Therefore, the
`
`Board should deny Patent Owner’s motion as moot as it relates to those documents.
`
`Patent Owner also relied on Exhibit 2032, which was designated “Confidential—
`
`Outside Attorneys’ Eyes Only” during the related district court proceeding, Nanoco
`
`Technologies Ltd. v. Samsung Electronics Co., Ltd., No. 2:20-cv-00038-JRG (E.D.
`
`Tex.), pursuant to the protective order entered in that litigation. While Exhibit 2032
`
`contains some confidential business information, Patent Owner does not rely on the
`
`confidential portion in its Patent Owner’s Response and neither does the declaration
`
`of Dr. Cossairt (Exhibit 2030). Therefore, the parties have agreed that the originally-
`
`
`
`3
`
`

`

`
`
`filed version of Exhibit 2032 should be expunged and it should be replaced with an
`
`agreed-upon redacted version. The parties have already made this joint request to
`
`the Board. App. 2. If the Board grants that request or a subsequent motion to
`
`expunge and replace Exhibit 2032, that action will obviate the need for a protective
`
`order to be entered in this case and for any information to be sealed and thus moot
`
`Patent Owner’s Motion.
`
`III. ALTERNATIVELY, THE MOTION SHOULD BE GRANTED AS TO
`EXHIBIT 2032 UNDER A MODIFIED PROTECTIVE ORDER
`However, if the Board does not allow Exhibit 2032 to be expunged and
`
`replaced with a redacted version, then Petitioner respectfully requests that Patent
`
`Owner’s Motion to seal be granted as to that exhibit only. “The Board may, for good
`
`cause, issue an order to protect a party or person from disclosing confidential
`
`information.” 37 C.F.R. § 42.54(a); see also Trial Practice Guide at 48,760. The
`
`Trial Practice Guide requires that the parties “identify confidential information in a
`
`manner consistent with Federal Rule of Civil Procedure 26(c)(1)(G), which provides
`
`for protective orders for trade secret or other confidential research, development, or
`
`commercial information.” Trial Practice Guide at 48,760.
`
`Good cause exists for sealing Exhibit 2032. Exhibit 2032 contains
`
`confidential information of Petitioner and a third-party manufacturer of certain
`
`quantum dots, Hansol Chemical. Specifically, Exhibit 2032 contains confidential
`
`technical information and details regarding the trade-secret recipes used by Hansol
`
`
`
`4
`
`

`

`
`
`to make certain quantum dots for Petitioner Samsung Electronics Co., Ltd.,
`
`including ingredients used in those trade-secret recipes. The confidential
`
`information in Exhibit 2032 has not previously been published or made public.
`
`Public disclosure of the confidential information increases the likelihood of harm to
`
`Petitioner and Hansol, including by exposing this information to their competitors,
`
`would give those competitors an unfair advantage in knowing certain details about
`
`Hansol’s quantum dot recipes even though Petitioner and Hansol did not have
`
`corresponding information about their competitors.
`
`Moreover, the public’s interest in maintaining a complete and understandable
`
`record in this proceeding is not harmed by preserving the confidential information
`
`in Exhibit 2032 under seal. Because none of the parties rely on the confidential
`
`portion of Exhibit 2032, full disclosure of that exhibit to the public is unnecessary
`
`to the issues in this case. Indeed, the parties agreed on a version of Exhibit 2032 that
`
`redacts the confidential information, which Petitioner will file as a separate exhibit
`
`if Patent Owner’s Motion is granted as to Exhibit 2032 to ensure the public interest
`
`will be served through the complete and understandable record of the allegations in
`
`this proceeding.
`
`Finally, to the extent Exhibit 2032 is not simply expunged and replaced with
`
`a redacted version, Petitioner respectfully requests that the Board enter its Default
`
`Protective Order, as modified and attached as Appendix A, to govern confidential
`
`
`
`5
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`

`

`
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`Exhibit 2032. Exhibit 2032 was first produced in the related district court litigation
`
`pursuant to the protective order entered in that case. See Nanoco Techs. Ltd. v.
`
`Samsung Elecs. Co., Ltd., No. 2:20-cv-00038, Dkt. 49 (E.D. Tex. Oct. 15, 2020).
`
`The protective order attached as Appendix A aligns with the scope of protections
`
`under the District Court’s protective order and would adequately protect the
`
`confidentiality of Exhibit 2032. The parties have met and conferred, and Patent
`
`Owner is unopposed to the protective order in Appendix A.
`
`IV. CONCLUSION
`For the foregoing reasons, Petitioner respectfully requests that the Board
`
`expunge Exhibit 2032, replace it with the redacted version agreed-upon by the
`
`parties, and deny as moot Patent Owner’s Motion. Otherwise, the Board should
`
`grant the motion to seal as to Exhibit 2032, grant the protective order proposed by
`
`Petitioner, and deny the remainder of Patent Owner’s Motion.1
`
`
`
`
`1 Petitioner maintains its written objections to Exhibits 2030, 2032, and 2034, and
`
`nothing herein shall be construed as a waiver or forfeiture of those objections.
`
`See Paper 28 at 1-2 (Aug. 19, 2021).
`
`
`
`6
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`

`

`
`
`DATED: September 13, 2021
`
`
`
`
`
`
`Respectfully submitted,
`/s/ F. Christopher Mizzo, P.C.
`F. Christopher Mizzo, P.C. (No. 73,156)
`W. Todd Baker (No. 45,265)
`KIRKLAND & ELLIS LLP
`1301 Pennsylvania Ave., N.W.
`Washington, D.C. 20004
`P: 202.389.5000; F: 202.389.5200
`chris.mizzo@kirkland.com
`todd.baker@kirkland.com
`
`Gregory S. Arovas, P.C. (No. 38,818)
`Stefan Miller (No. 57,623)
`Jeremy Wilson (pro hac vice)
`KIRKLAND & ELLIS LLP
`601 Lexington Avenue
`New York, NY 10022
`P: 212.446.4800; F: 212.446.4900
`greg.arovas@kirkland.com
`stefan.miller@kirkland.com
`jeremy.wilson@kirkland.com
`
`
`Attorneys for Petitioner
`Samsung Electronics Co., Ltd. and
`Samsung Electronics America, Inc.
`
`
`
`
`7
`
`

`

`
`
`CERTIFICATE OF SERVICE
`The undersigned certifies that the above-captioned “PETITIONER’S
`
`OPPOSITION TO PATENT OWNER’S MOTION TO SEAL AND TO ENTER
`
`DEFAULT PROTECTIVE ORDER PURSUANT TO 37 C.F.R. § 42.54” was
`
`served in its entirety on September 13, 2021, via electronic service on lead and back-
`
`up counsel:
`
`WAMeunier@mintz.com
`
`PJCuomo@mintz.com
`
`MCNewman@mintz.com
`
`TWintner@mintz.com
`
`MSGalica@mintz.com
`
`NanocoIPRs@mintz.com
`
`
`
`
`
`
`
`/s/ F. Christopher Mizzo, P.C.
`F. Christopher Mizzo, P.C.
`
`
`
`
`
`

`

`
`
`
`
`Appendix A
`A
`Appendix
`
`2
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`

`

`
`
`
`
`
`
`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 LIMITED,
`Patent Owner.
`
`____________________________________________
`
`IPR2021-00184 (Patent 7,803,423 B2)
`____________________________________________
`
`
`
`[PROPOSED] PROTECTIVE ORDER
`
`
`
`
`
`

`

`
`
`[Proposed] Protective Order
`This protective order governs the treatment and filing of confidential
`
`information, including documents and testimony.
`
`1.
`
`Confidential information shall be clearly marked “PROTECTIVE
`
`ORDER MATERIAL.” Such information shall also include additional designations
`
`as follows:
`
`
`
`“Confidential Information” designation for documents that
`
`contain trade secrets or commercial information not publicly known, which trade
`
`secrets or commercial information is of technical or commercial advantage to its
`
`possessor, in accordance with Fed. R. Civ. P. 26(c)(1)(G), or other information
`
`required by law or agreement to be kept confidential.
`
`
`
`“Highly Confidential Information” designation for documents
`
`that contain information that the producing party deems especially sensitive, which
`
`may include, but is not limited to, confidential research and development, financial,
`
`technical, marketing, customer lists, the identity of prospective customers, the
`
`identity of current customers, and any other sensitive trade secret information, or
`
`information capable of being utilized for the preparation or prosecution of a patent
`
`application dealing with such subject matter.
`
`2.
`
`Access to “Confidential Information” is limited to the following
`
`individuals who have executed the acknowledgment appended to this order:
`
`2
`
`

`

`
`
`the proceeding.
`
` Party Representatives. Outside counsel of record for a party in
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` Experts. Retained experts or consultants of a party in the
`
`proceeding who further certify in the Acknowledgement that they are not a
`
`competitor to any party, or a consultant for, or employed by, such a competitor with
`
`respect to the subject matter of the proceeding.
`
`
`
`In-house counsel. Three in-house counsel of a party who are
`
`identified by the receiving party.
`
` Other Employees of a Party. Three employees or other persons
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`performing work for a party, other than in-house counsel and in-house counsel’s
`
`support staff, who are required in good faith to provide assistance in the conduct of
`
`this proceeding,
`
`including any
`
`settlement discussions, who
`
`sign
`
`the
`
`Acknowledgement shall be extended access to confidential information only upon
`
`agreement of the parties or by order of the Board upon a motion brought by the party
`
`seeking to disclose confidential information to that person. The party opposing
`
`disclosure to that person shall have the burden of proving that such person should be
`
`restricted from access to confidential information.
`
` The Office. Employees and representatives of the Office who
`
`have a need for access to the confidential information shall have such access without
`
`the requirement to sign an Acknowledgement. Such employees and representatives
`
`3
`
`

`

`
`
`shall include the Director, members of the Board and their clerical staff, other
`
`support personnel, court reporters, and other persons acting on behalf of the Office.
`
`
`
`Support Personnel. Administrative assistants, clerical staff, court
`
`reporters and other support personnel of the foregoing persons who are reasonably
`
`necessary to assist those persons in the proceeding shall not be required to sign an
`
`Acknowledgement, but shall be informed of the terms and requirements of the
`
`Protective Order by the person they are supporting who receives confidential
`
`information.
`
` Agreed Disclosure. Any person who is not already allowed to
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`access such information if counsel for the party designating the material agrees that
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`the material may be disclosed to the person.
`
`3.
`
`Access to “Highly Confidential Information” is limited to those
`
`individuals identified in paragraph 2(A), (B), and (E)-(G) above who have executed
`
`the acknowledgment appended to this order.
`
`4.
`
`Persons receiving confidential information shall use reasonable efforts
`
`to maintain the confidentiality of the information, including:
`
` Maintaining such information in a secure location to which
`
`persons not authorized to receive the information shall not have access;
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` Otherwise using
`
`reasonable
`
`efforts
`
`to maintain
`
`the
`
`confidentiality of the information, which efforts shall be no less rigorous than those
`
`4
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`

`

`
`
`the recipient uses to maintain the confidentiality of information not received from
`
`the disclosing party;
`
` Ensuring that support personnel of the recipient who have access
`
`to the confidential information understand and abide by the obligation to maintain
`
`the confidentiality of information received that is designated as confidential; and
`
` Limiting the copying of confidential information to a reasonable
`
`number of copies needed for conduct of the proceeding and maintaining a record of
`
`the locations of such copies.
`
`5.
`
`Persons receiving confidential information shall use the following
`
`procedures to maintain the confidentiality of the information:
`
` Documents and Information Filed With the Board.
`
`(i) A party may file documents or information with the Board
`
`under seal, together with a non-confidential description of the
`
`nature of the confidential information that is under seal and the
`
`reasons why the information is confidential and should not be
`
`made available to the public. The submission shall be treated as
`
`confidential and remain under seal, unless, upon motion of a
`
`party and after a hearing on the issue, or sua sponte, the Board
`
`determines that the documents or information do not to qualify
`
`for confidential treatment.
`
`5
`
`

`

`
`
`(ii) Where confidentiality is alleged as to some but not all of
`
`the information submitted to the Board, the submitting party shall
`
`file confidential and non-confidential versions of its submission,
`
`together with a Motion to Seal the confidential version setting
`
`forth the reasons why the information redacted from the non-
`
`confidential version is confidential and should not be made
`
`available to the public. The nonconfidential version of the
`
`submission shall clearly indicate the locations of information that
`
`has been redacted. The confidential version of the submission
`
`shall be filed under seal. The redacted information shall remain
`
`under seal unless, upon motion of a party and after a hearing on
`
`the issue, or sua sponte, the Board determines that some or all of
`
`the redacted information does not qualify for confidential
`
`treatment.
`
` Documents and Information Exchanged Among the Parties.
`
`Information designated as confidential that is disclosed to another party during
`
`discovery or other proceedings before the Board shall be clearly marked as
`
`“PROTECTIVE ORDER MATERIAL” and “Confidential Information” or “Highly
`
`Confidential Information,” as appropriate, and shall be produced in a manner that
`
`maintains its confidentiality.
`
`6
`
`

`

`
`
`6. Within 60 days after the final disposition of this action, including the
`
`exhaustion of all appeals and motions, each party receiving confidential information
`
`must return, or certify the destruction of, all copies of the confidential information
`
`to the producing party.
`
`
`
`7
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`

`

`
`
`
`
`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 LIMITED,
`Patent Owner.
`____________________________________________
`
`IPR2021-00184 (Patent 7,803,423 B2)
`
`STANDARD ACKNOWLEDGEMENT FOR ACCESS TO PROTECTIVE
`ORDER MATERIAL
`
`I _______________________, affirm that I have read the Protective Order;
`
`that I will abide by its terms; that I will use the confidential information only in
`
`connection with this proceeding and for no other purpose; that I will only allow
`
`access to support staff who are reasonably necessary to assist me in this proceeding;
`
`that prior to any disclosure to such support staff I informed or will inform them of
`
`the requirements of the Protective Order; that I am personally responsible for the
`
`requirements of the terms of the Protective Order and I agree to submit to the
`
`jurisdiction of the Office and the United States District Court for the Eastern District
`
`of Virginia for purposes of enforcing the terms of the Protective Order and providing
`
`remedies for its breach.
`
`
`
`

`

`
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`
`
`_______________________________
`
`Signature
`
`_______________________________
`
`Date
`
`2
`
`

`

`Appendix 1
`|
`Appendix
`
`

`

`From:
`Sent:
`To:
`Cc:
`Subject:
`
`Peter,
`
`Wilson, Jeremy
`Wednesday, September 1, 2021 2:29 PM
`Cuomo, Peter; Meunier, William; Newman, Michael; Wintner, Thomas; Galica, Matthew
`#Samsung_Nanoco_IPR
`RE: Samsung v. Nanoco, IPR2021-00182, -00183, -00184, -00185, -00186
`
`You are correct that Samsung agrees that Ex. 2034 may be filed publicly.
`
`Best regards,
`Jeremy
`
`Jeremy D. Wilson
`-----------------------------------------------------
`KIRKLAND & ELLIS LLP
`601 Lexington Avenue, New York, NY 10022
`T +1 212 446 5946
`F +1 212 446 4900
`-----------------------------------------------------
`jeremy.wilson@kirkland.com
`
`From: Cuomo, Peter <PJCuomo@mintz.com>
`Sent: Wednesday, September 1, 2021 2:23 PM
`To: Wilson, Jeremy <jeremy.wilson@kirkland.com>; Meunier, William <WAMeunier@mintz.com>; Newman, Michael
`<MCNewman@mintz.com>; Wintner, Thomas <TWintner@mintz.com>; Galica, Matthew <MSGalica@mintz.com>
`Cc: #Samsung_Nanoco_IPR <Samsung_Nanoco_IPR@kirkland.com>
`Subject: RE: Samsung v. Nanoco, IPR2021-00182, -00183, -00184, -00185, -00186
`
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`Jeremy,
`
`Thank you for attaching your response to Mr. Newman’s email to Mr. Pearson. We did not see this response until just
`now. Reviewing your email, it appears that you did respond promptly to our request to de-designate. We are looking
`into why this correspondence did not reach any of the attorneys working on the IPR, but assume that the problem was
`on our side.
`
`In any event, we think your proposal is a good one. While Nanoco does not concede that the proposed redacted
`portions of Ex. 2032 constitute confidential business information, you are correct that Nanoco does not rely on
`information in the proposed redactions. Therefore, we agree to expunge the existing Ex. 2032 and replace it with
`Samsung’s version of Ex. 2032 with your proposed redactions. As this exhibit can now be filed publicly in its redacted
`form, it partially moots Nanoco’s motion to seal and for entry of a protective order. However, Nanoco’s motion also
`sought to seal Ex. 2034. If Samsung agrees that Ex. 2034 can also be filed publicly, we agree that our motion to seal and
`for entry of a protective order is moot.
`
`Regards,
`
`1
`
`

`

`
`Peter
`
`From: Wilson, Jeremy <jeremy.wilson@kirkland.com>
`Sent: Tuesday, August 31, 2021 3:35 PM
`To: wameunier@mitz.com; Cuomo, Peter <PJCuomo@mintz.com>; Newman, Michael <MCNewman@mintz.com>;
`Wintner, Thomas <TWintner@mintz.com>; Galica, Matthew <MSGalica@mintz.com>
`Cc: #Samsung_Nanoco_IPR <Samsung Nanoco IPR@kirkland.com>
`Subject: Samsung v. Nanoco, IPR2021-00182, -00183, -00184, -00185, -00186
`
`Counsel:
`
`Contrary to Nanoco’s representation to the PTAB, Samsung responded to Mr. Newman’s August 10 email the next day
`indicating that Samsung objects to Patent Owner’s use of Exs. 2032 and 2034 in the IPR proceedings (attached
`here). Ignoring Samsung’s objections, Nanoco proceeded to file the documents at the PTAB, which represents a
`violation of the Protective Order entered by the District Court.
`
`To resolve the parties’ dispute over the appropriate designation of the protected materials for purposes of the IPR
`proceedings, we propose that the parties agree to a joint request to expunge the existing Ex. 2032 and replace it with
`the attached version containing a proposed redaction. It does not appear that Nanoco has relied in any of its Patent
`Owner’s Responses on the proposed redacted portion, nor has Dr. Cossairt relied on such information in her
`declarations. If Nanoco agrees to do so, Samsung will inform the Board that Nanoco’s motion to seal and for entry of a
`protective order is moot. For the avoidance of doubt, Samsung maintains the other objections to Exs. 2032 and 2034.
`
`Please confirm Nanoco accepts our proposal. If not, we seek a meet and confer to discuss the next steps, including
`possibly a motion at the district court.
`
`Regards,
`Jeremy
`
`
`Jeremy D. Wilson
`-----------------------------------------------------
`KIRKLAND & ELLIS LLP
`601 Lexington Avenue, New York, NY 10022
`T +1 212 446 5946
`F +1 212 446 4900
`-----------------------------------------------------
`jeremy.wilson@kirkland.com
`
`
`
`The information contained in this communication is confidential, may be attorney-client privileged, may constitute inside information, and is intended only
`for the use of the addressee. It is the property of Kirkland & Ellis LLP or Kirkland & Ellis International LLP. Unauthorized use, disclosure or copying of
`this communication or any part thereof is strictly prohibited and may be unlawful. If you have received this communication in error, please notify us
`immediately by return email or by email to postmaster@kirkland.com, and destroy this communication and all copies thereof, including all attachments.
`
`
`
`
`
`
`STATEMENT OF CONFIDENTIALITY:
`The information contained in this electronic message and any attachments
`to this message are intended for the exclusive use of the addressee(s)
`and may contain confidential or privileged information. If you are not
`the intended recipient, or the person responsible for delivering the
`email to the intended recipient, be advised you have received this
`message in error and that any use, dissemination, forwarding, printing,
`or copying is strictly proh bited. Please notify the Mintz, Levin, Cohn,
`
`2
`
`

`

`Ferris, Glovsky and Popeo sender immediately, and destroy all copies
`of this message and any attachments.
`
`3
`
`

`

`Appendix 2
`2
`Appendix
`
`

`

`From:
`Sent:
`To:
`Cc:
`
`Subject:
`Attachments:
`
`To the Board,
`
`Wilson, Jeremy
`Friday, September 10, 2021 4:12 PM
`'trials@uspto.gov'
`Meunier, William; Newman, Michael; Wintner, Thomas; Galica, Matthew;
`#Samsung_Nanoco_IPR
`Samsung v. Nanoco, IPR2021-00182, -00183, -00184, -00185, -00186
`Ex. 2032 Excerpts of June 10, 2021 Expert Report of Moungi Bawendi_Proposed
`Redaction.pdf
`
`Patent Owner filed a motion to seal with its Patent Owner Response, asking its Patent Owner Response and Exhibits
`2030, 2032, and 2034 be filed under seal. The parties have conferred, and agree that the Patent Owner Response and
`Exhibits 2030 and 2034 do not contain confidential information. Petitioner has asserted that there is third party
`confidential information in Exhibit 2032, but that confidential information is not in the portion of Exhibit 2032 that
`Patent Owner relies upon. The parties have prepared the attached version of Exhibit 2032 that redacts the confidential
`information but leaves the portion of the exhibit that Patent Owner relies upon public.
`
`The parties jointly request that the Board replace existing Exhibit 2032 with the attached redacted version, obviating the
`need for a protective order to be entered in this case or any information to be sealed and mooting Patent Owner’s
`motion to seal. In the alternative, the parties jointly request leave to file a motion to expunge existing Exhibit 2032 and
`replace it with the attached redacted Exhibit. Should the Board wish to discuss this request with the parties, they are
`available on Monday September 13 from 12-6pm eastern.
`
`Respectfully submitted,
`
`Jeremy Wilson
`
`Jeremy D. Wilson
`-----------------------------------------------------
`KIRKLAND & ELLIS LLP
`601 Lexington Avenue, New York, NY 10022
`T +1 212 446 5946
`F +1 212 446 4900
`-----------------------------------------------------
`jeremy.wilson@kirkland.com
`
`1
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`

`

`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALLDIVISION
`
`
`NANOCO TECHNOLOGIES LTD.,
`
`Vv.
`
`SAMSUNG ELECTRONICSCO., LTD., and
`SAMSUNG ELECTRONICS AMERICA.
`INC.
`
`Civil Action No. 2:20-cv-00038-JRG
`JURY TRIAL DEMANDED
`
`
`
`REBUTTAL EXPERT REPORT OF MOUNGI
`
`BAWENDL,
`
`PH.D.
`
`By:
`Date:
`
`Bawendi, Ph.D.
`June 10, 2021
`
`Samsung Electronics Co., Ltd. et al. v. Nanoco Technologies, Ltd.
`
`Nanoco Exhibit 2032
`
`IPR2021-00184
`1 of 3
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`Page
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`130. At least for the reasons I stated above, it is my opinion that zinc oxo clusters,
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`including those having the general molecular formula Zn4O(O2CR)6, do not form in the processes
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`used by Hansol Chemical to make Samsung’s quantum dots.
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`XIII. SYNTHESIS OF INDIUM PHOSPHIDE-BASED QUANTUM DOTS
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`131. Dr. Cossairt cites to one of my publications as support for “the importance and
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`persistence of InP clusters during the synthesis of InP QDs [i.e., quantum dots] directly from
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`molecular precursors (i.e., indium carboxylate and P(TMS)3).”175 Specifically, Dr. Cossairt states
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`that my research group “showed using MALDI mass spectrometry that InP clusters are persistent
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`during QD growth, even at high temperatures.”176 Dr. Cossairt states that, “[i]n many cases,
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`clusters were present throughout the entire reaction period whether they were formed in a single
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`or two-step synthesis” and that “[t]his observation led to the conclusion that these clusters play an
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`important role ‘as a supply for the formation of larger InP particles’ and that there is a ‘strong
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`dependence of QD formation on the cluster’s existence.’”177
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`132. To begin, Dr. Cossairt overlooks that, while my publication discusses the formation
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`of certain “clusters,” those are not molecular cluster compounds as defined by the Court in this
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`case.178 The publication expressly states that “small cluster mixtures with masses around 10 kDa”
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`may form under certain reaction conditions.179 At least because these “clusters” are not identical
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`175 Cossairt ¶ 67 (citing NANOCO_00097632, Lisi Xie et al, Characterization of Indium
`Phosphide Quantum Dot Growth Intermediates Using MALDI-TOF Mass Spectrometry, 138
`J. AM. CHEM. SOC’Y 13469 (2016) (“Bawendi 2016”)).
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`176 Cossairt ¶ 67.
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`177 Cossairt ¶ 67 (quoting Bawendi 2016).
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`178 See supra § IV.B.
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`179 Bawendi 2016, 13470.
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`53
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`Nanoco Exhibit 2032, Page 2 of 3
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`to one another such that all molecules of the cluster compound possess the same relative molecular
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`formula, the publication is not relevant to the claims of the nanoparticle patents. While the
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`publication discusses “clusters,” this word is used to describe “nuclei” formed in a bottom-up
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`approach that proceeds from molecular precursors to nanoparticles in solution. In other words, the
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`word “clusters” as used in this publication is different than the Court’s construction of the claim
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`term “molecular cluster compound,” and the nuclei referred to in this publication are not molecular
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`cluster compounds under the Court’s construction.180
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`133. Further, the publication expressly notes that, under certain conditions where such
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`“clusters” form, they no longer exist after 8 minutes at 270°C.181 The publication does not indicate
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`the temperature required to form such “clusters” in the first instance. And while it is possible that
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`such “clusters” may form under certain reaction conditions in the formation of InP quantum dots,
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`the studies of this publication did not involve
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`processes that may alter the reaction pathway to quantum dots.
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`134. Finally, the publication recognizes the ability to form cluster-free quantum dots.
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`Specifically, my coauthors and I reported that our study shows “cluster-free InP QDs” can be
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`formed using high temperatures and long reaction times.182 Therefore, it is entirely possible to
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`form InP-based quantum dots without the formation of “clusters” (let alone molecular cluster
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`compounds) by modifying reaction conditions such as temperature, reaction time, and
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`180 See supra § IV.B.
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`181 Bawendi 2016, 13470.
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`182 Bawendi 2016, 13470; see also Bawendi 2016, 13471 (characterizing cluster-free InP QD
`solutions).
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`54
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`Nanoco Exhibit 2032, Page 3 of 3
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