UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioners,
`
`v.
`
`NANOCO TECHNOLOGIES LTD.,
`Patent Owner.
`
`Case No. IPR2021-00184
`U.S. Patent No. 7,803,423
`
`PATENT OWNER’S SUR-REPLY
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioners,
`
`v.
`
`NANOCO TECHNOLOGIES LTD.,
`Patent Owner.
`
`Case No. IPR2021-00184
`U.S. Patent No. 7,803,423
`
`PATENT OWNER’S SUR-REPLY
`
`
`
`Case No. IPR2021-00184
`U.S. Patent No. 7,803,423
`
`I.
`II.
`
`b.
`
`TABLE OF CONTENTS
`INTRODUCTION ........................................................................................... 1
`PETITIONER HAS NOT PROVED THAT THE CHALLENGED
`CLAIMS ARE UNPATENTABLE ................................................................ 1
`A.
`Grounds 1: No Claims Are Anticipated by Banin ................................ 1
`1.
`All Factual Issues Resolve in Patent Owner’s Favor .................. 1
`2.
`Banin’s SLS Gold Catalyst Is Not a MCC ................................. 4
`a.
`Banin’s polydisperse gold catalysts are not further
`size-selected ...................................................................... 5
`It is improper to ignore that Banin uses
`Hutchison’s process ........................................................ 10
`Petitioner’s remaining critiques are unavailing .............. 10
`c.
`Ground 2: No Claims Are Rendered Obvious by Banin .................... 15
`Ground 3: Claims 7-9 Are Not Rendered Obvious by Banin of
`Bawendi ............................................................................................... 17
`Ground 4-6: No Claims Are Rendered Obvious by Zaban in
`View of Ptatschek Plus Yu or Bawendi. ............................................. 18
`Ground 7: No Claims Are Rendered Obvious by Lucey in View
`of Ahrenkiel ......................................................................................... 22
`III. CONCLUSION .............................................................................................. 23
`
`B.
`C.
`
`D.
`
`E.
`
`i
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`Case No. IPR2021-00184
`U.S. Patent No. 7,803,423
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`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Amgen Inc. v. Hoechst Marion Roussel,
`314 F.3d 1313 (Fed. Cir. 2003) ............................................................................ 9
`Chem. Separation Tech., Inc. v. United States,
`51 Fed. Cl. 771 (Fed. Cl. 2002) .......................................................................... 15
`Colas Sols., Inc. v. Blacklidge Emulsions, Inc.,
`759 Fed. Appx. 986 (Fed. Cir. 2019) .................................................................. 16
`Dynamic Drinkware, LLC v. Nat'l Graphics, Inc.,
`800 F.3d 1375 (Fed. Cir. 2015) .......................................................................... 16
`FanDuel, Inc. v. Interactive Games LLC,
`966 F.3d 1334 (Fed. Cir. 2020) ............................................................................ 4
`Husky Injection Molding Sys. v. Athena Automation Ltd.,
`838 F.3d 1236 (Fed. Cir. 2016) .......................................................................... 10
`In re Magnum Oil Tools Int'l, Ltd.,
`829 F.3d 1364 (Fed. Cir. 2016) ...................................................................... 4, 23
`In re Warsaw Orthopedic, Inc.,
`832 F.3d 1327 (Fed. Cir. 2016) .......................................................................... 10
`Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd.,
`821 F.3d 1359 (Fed. Cir. 2016) ...................................................................... 6, 21
`Samsung Elecs. Co. v. Infobridge Pte. Ltd.,
`IPR2017-00099, 2020 Pat. App. Lexis 12824, (PTAB Nov. 13,
`2020) ..................................................................................................................... 5
`Statutes
`35 U.S.C. § 316(e) ..................................................................................................... 4
`
`ii
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`
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`Case No. IPR2021-00184
`U.S. Patent No. 7,803,423
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`Other Authorities
`37 CFR § 42.24(d) ................................................................................................... 25
`
`iii
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`Case No. IPR2021-00184
`U.S. Patent No. 7,803,423
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`Exhibit
`2001
`2002
`2003
`2004
`
`2005
`
`2006
`
`2007
`
`2008
`
`2009
`
`2010
`
`2011
`
`2012
`
`2013
`
`2014
`
`TABLE OF EXHIBITS
`
`Description
`Declaration of Michael C. Newman
`Declaration of Thomas H. Wintner
`Declaration of Matthew S. Galica
`Periodic table of the elements, Encyclopaedia Britannica, Inc.,
`available at https://www.britannica.com/science/periodic-table (last
`visited Feb. 23, 2021)
`Samsung Global Newsroom. Quantum Dot Artisan: Dr. Eunjoo Jang,
`Samsung Fellow, November 30, 2017
`ACS Energy Lett. 2020, 5, 1316-1327. “Environmentally Friendly
`InP-Based Quantum Dots for Efficient Wide Color Gamut Displays”
`Wang, F., Dong, A. and Buhro, W.E., Solution–liquid–solid
`synthesis, properties, and applications of one-dimensional colloidal
`semiconductor nanorods and nanowires. Chemical Reviews,
`116(18):10888-10933 (2016)
`Wang, F., et al., Solution− liquid− solid growth of semiconductor
`nanowires. Inorganic chemistry, 45(19):7511-7521 (2006).
`Madkour, L.H., Synthesis Methods For 2D Nanostructured
`Materials, Nanoparticles (NPs), Nanotubes (NTs) and Nanowires
`(NWs). In Nanoelectronic Materials (pp. 393-456). Springer, Cham.
`(2019)
`Mushonga, P., et al., Indium phosphide-based semiconductor
`nanocrystals and their applications. Journal of Nanomaterials, 1-11
`(2012)
`Luo, H., Understanding and controlling defects in quantum confined
`semiconductor systems, Doctoral dissertation, Kansas State
`University (2016).
`Sinatra, L., et al. Methods of synthesizing monodisperse colloidal
`quantum dots. Material Matters, 12:3-7 (2017)
`Pu, Y., et al., Colloidal synthesis of semiconductor quantum dots
`toward large-scale production: a review. Industrial & Engineering
`Chemistry Research, 57(6):1790-1802 (2018)
`Rao, C. N. R.; Gopalakrishnan, J., Chapter 3: Preparative Strategies
`from New Directions in Solid State Chemistry; Cambridge University
`Press: Cambridge, UK (1986)
`
`iv
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`
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`Case No. IPR2021-00184
`U.S. Patent No. 7,803,423
`
`Exhibit
`2015
`
`2016
`
`2017
`
`2018
`
`2019
`
`2020
`
`2021
`
`2022
`
`2023
`
`2024
`
`2025
`
`Description
`Glossary of Common Wafer Related Terms, BYU Electrical &
`Computer Engineering Integrated Microfabrication Lab, definition of
`degenerate semiconductor, available at
`https://cleanroom.byu.edu/ew_glossary (last visited Feb. 19, 2021)
`October 22, 2006 email between Eunjoo Jang and Nigel Pickett Re:
`Cd free quantum dots
`Weare, W.W., Reed, S.M., Warner, M.G. and Hutchison, J.E.,
`Improved synthesis of small (d core≈ 1.5 nm) phosphine-stabilized
`gold nanoparticles. Journal of the American Chemical
`Society, 122(51):12890-12891 (2000).
`Samsung’s Motion to Stay Pending Inter Partes Review of the
`Asserted Patents in Case 2:20-cv-00038-JRG, filed on November 30,
`2020
`Order denying Samsung’s Motion to Stay Pending Inter Partes
`Review in Case 2:20-cv-00038-JRG, filed on January 8, 2021
`Standing Order Regarding the Novel Coronavirus (Covid-19) for the
`Eastern District of Texas Marshall Division, signed March 3, 2020
`Standing Order Regarding Pretrial Procedures In Civil Cases
`Assigned to Chief District Judge Rodney Gilstrap During the Present
`Covid-19 Pandemic, signed April 20, 2020
`Samsung’s Preliminary Invalidity Contentions and Disclosures
`Pursuant To Patent Rules 3-3 and 3-4 (served November 9, 2020)
`Merriam-Webster Dictionary, online edition. Definition of
`“Halogen”, available at https://www.merriam-
`webster.com/dictionary/halogen (last visited Feb. 23, 2021)
`Illustrated Glossary of Organic Chemistry, UCLA. Illustration of
`Halide, available at
`http://www.chem.ucla.edu/~harding/IGOC/H/halide.html (last
`visited Feb. 23, 2021)
`Mortvinova, N.E., Vinokurov, A.A., Lebedev, O.I., Kuznetsova,
`T.A., and Dorofeev, S.G., Addition of Zn during the phosphine-based
`synthesis of indium phosphide quantum dots:doping and surface
`passivation, Beilstein J Nanotechnol. 2015; 6: 1237-1246
`
`v
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`
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`Case No. IPR2021-00184
`U.S. Patent No. 7,803,423
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`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
`
`vi
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`
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`Case No. IPR2021-00184
`U.S. Patent No. 7,803,423
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`Exhibit
`2041
`
`2042
`
`2043
`
`2044
`
`2045
`
`2046
`
`2047
`
`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
`Deposition Transcript of Mark A. Green, Ph.D., December 8, 2021
`
`vii
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`Case No. IPR2021-00184
`U.S. Patent No. 7,803,423
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`I.
`
`INTRODUCTION
`In instituting this and related IPRs, the Board identified relevant issues for
`
`trial. Patent Owner embraced this guidance and directly addressed the Board’s
`
`questions, identifying fatal deficiencies in the Petition. Petitioner’s reply ignores that
`
`guidance despite its relation to Petitioner’s overall burden. With the issues resolved
`
`in Patent Owner’s favor, Petitioner asserts new theories that fail on the facts and law.
`
`First and foremost, Petitioner asks the Board to ignore the Banin reference’s
`
`disclosure that its gold catalysts are made via Hutchison’s process, which cannot
`
`produce the claimed MCCs, and instead to consider new unsupported arguments.
`
`These newly crafted arguments strain credulity and demonstrate the weakness of the
`
`Banin-based grounds and the Petition overall. Similarly, without addressing
`
`deficiencies the Board identified, Petitioner tries to resuscitate grounds the Board
`
`already rejected. Petitioner’s arguments fail to respond to the Board’s questions at
`
`institution, lack merit, and fail to bridge the divide between the teachings of the prior
`
`art and the challenged claims.
`
`II.
`
`PETITIONER HAS NOT PROVED THAT THE CHALLENGED
`CLAIMS ARE UNPATENTABLE
`A.
`Grounds 1: No Claims Are Anticipated by Banin
`1.
`All Factual Issues Resolve in Patent Owner’s Favor
`Petitioner’s reply does not address the salient factual issues identified by the
`
`Board. In instituting this IPR, the Board acknowledged Patent Owner’s arguments
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`1
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`that Banin’s gold clusters made by the Hutchison process have a wide size
`
`distribution that precludes them being considered molecular cluster compounds (i.e.,
`
`“clusters of three or more metal atoms and their associated ligands of sufficiently
`
`well-defined chemical structure such that all molecules of the cluster compound
`
`possess the same relative molecular formula.”). See Paper 17 (“InstDec.”), 23-25;
`
`Ex. 1091, 18. The Board indicated that there was merit to this argument, but
`
`concluded at that time that “[w]hether a person of ordinary skill in the art would
`
`have understood Banin’s disclosure of small Au clusters having the suggested
`
`formula Au101(PPh3)21Cl5 teaches “a molecular cluster compound,” as recited by
`
`claim 1, is best considered in view of expert testimony.” InstDec. 24-26, 28. Based
`
`on the testimony of, Dr. Brandi Cossairt, who fully considered the methods taught
`
`by the Hutchison reference (Ex. 2017) that Banin employed, the answer is clear.
`
`Petitioner admits that a skilled artisan would not have understood Hutchison
`
`Figure 1(a) to have suggested a monodisperse population by prominently labeling
`
`Figure 1(a) as “Hutchison – Polydisperse Clusters.” Reply, 3.1 This is consistent
`
`with testimony from Patent Owner’s Expert, Dr. Cossairt. Ex. 2030, ¶116 (“A
`
`dispersity that varies by 25% is not considered monodisperse in the art.”). Therefore,
`
`1 Unless otherwise indicated, all emphases have been added.
`
`2
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`Hutchison’s “narrowly disperse” gold particles are polydisperse, not monodisperse,
`
`and certainly not identical MCCs.
`
`Second, the Board noted that “[a]ccording to Patent Owner, the Hutchison
`
`process “creates gold particle agglomerations of many different sizes,” ranging from
`
`0.75 nm to 2.25 nm. … Patent Owner contends that those ‘different sizes are
`
`averaged out, and based on this average it is estimated that the average number of
`
`gold atoms is approximately 101,” which leads to the estimated formula
`
`Au101(PPh3)21Cl5.’” InstDec., 23-24. Petitioner now admits that Hutchison’s
`
`disclosure of Au101(PPh3)21Cl5 (denoted as Au101) is a distribution of gold clusters of
`
`different sizes as opposed to identical MCCs. See Reply, 3 (“…those [Au101] shown
`
`in Hutchison are consistent with a size distribution of clusters”); see also id., 5
`
`(acknowledging “the 25% size distribution of Hutchison’s gold particles”). Thus, it
`
`is undisputed that Hutchison’s process used by Banin produces differently sized gold
`
`clusters which are averaged to assign a “suggested” formula of Au101. Therefore,
`
`these particles do not have the sufficiently well-defined structure of a MCC.
`
`The Board was not persuaded on the institution record that Banin’s gold
`
`clusters are akin to ensembles of small nanoparticles expressly distinguished by the
`
`’423 patent. InstDec., 23-24. Petitioner does not dispute that Banin’s gold catalysts
`
`aggregate but instead argues that subparts of the aggregates are MCCs. Reply, 7. But
`
`this argument is contrary to Petitioner’s own expert’s testimony that aggregates
`
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`cannot be MCCs because they span a distribution of masses, and therefore do not
`
`have molecular formulae that are the same relative to one another. Ex. 2034, 120:3-
`
`13 (Dr. Bawendi testifying that “aggregates of indium and phosphorus [that] span a
`
`distribution of masses” do not meet the Court’s construction of “molecular cluster
`
`compound”); see also id., 123:1-7; POR, 3, 37-40. Thus, the gold aggregates
`
`described in Banin are not MCCs. See Ex. 1001, 7:33-38. With these issues of fact
`
`resolved in Patent Owner’s favor, Petitioner fails to meet its burden under 35 U.S.C.
`
`§ 316(e). See FanDuel, Inc. v. Interactive Games LLC, 966 F.3d 1334, 1341 (Fed.
`
`Cir. 2020) (“the burden of proving invalidity in an IPR remains on the petitioner
`
`throughout the proceeding”). In re Magnum Oil Tools Int'l, Ltd., 829 F.3d 1364,
`
`1376 (Fed. Cir. 2016) (there is a “significant difference” between the lower standards
`
`of proof at institution and the higher standard for trial during an IPR).
`
`Banin’s SLS Gold Catalyst Is Not a MCC
`2.
`Banin’s gold catalyst is not a MCC. As the Board correctly noted in its
`
`Institution Decision in a related IPR involving the same issue, “Banin prepares the
`
`gold clusters by the ‘Hutchison process.’” IPR2021-00186, Paper 17 at 19 (citing
`
`Ex. 1005, 2:25-26; 20:14-16). Petitioner now admits that Hutchison’s disclosure of
`
`Au101(PPh3)21Cl5 (denoted as Au101) is a distribution of gold clusters of different sizes
`
`as opposed to identical MCCs. See Reply, 3 (“…those [Au101] shown in Hutchison
`
`are consistent with a size distribution of clusters”); see also id., 5 (acknowledging
`
`4
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`“the 25% size distribution of Hutchison’s gold particles”). This comports with Dr.
`
`Cossairt’s testimony. Ex. 2030, ¶¶106-109 (“Hutchison’s use of an ‘average’ gold
`
`particle size to ‘estimate’ a molecular formula is very different from a situation
`
`where all of the molecules of the molecular cluster compound necessarily ‘possess
`
`the same relative molecular formula’”). Therefore, Banin’s gold particles do not
`
`have the sufficiently well-defined structure of a MCC.
`
`With Hutchison’s process not making MCCs, Petitioner tries two new
`
`arguments. First, Petitioner alleges that, even though Banin makes its gold catalysts
`
`using Hutchison’s method, Banin further size-selects its gold catalysts until they are
`
`all exactly 1.4 nm with a formula of exactly Au101(PPh3)21Cl5. Reply, 3. Second,
`
`Petitioner suggests that we should simply ignore the fact that Banin’s gold catalysts
`
`are made by Hutchison’s process, and instead read Banin in a vacuum. Reply, 2-3
`
`(“Regardless of whether Hutchison’s gold particles are MCCs…”) (emphasis in
`
`original). These new arguments fail on the facts and the law.
`
`a.
`
`Banin’s polydisperse gold catalysts are not further
`size-selected
`Petitioner’s first new argument is that while Banin makes polydisperse gold
`
`catalysts using the Hutchison process, it further size-selects the catalysts to make
`
`them have the exact same size and molecular formula. This is “a new argument or
`
`theory … that was not raised in the Petition and, therefore, is waived.” Samsung
`
`5
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`Elecs. Co. v. Infobridge Pte. Ltd., IPR2017-00099, 2020 Pat. App. Lexis 12824,
`
`(PTAB Nov. 13, 2020) (citing Ariosa Diagnostics v. Verinata Health, Inc., 805 F.3d
`
`1359, 1367 (Fed. Cir. 2015)); see also Intelligent Bio-Sys., Inc. v. Illumina
`
`Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016) (“It is of the utmost
`
`importance that petitioners in the IPR proceedings adhere to the requirement that the
`
`initial petition identify ‘with particularity’ the ‘evidence that supports the grounds
`
`for the challenge to each claim.’”) (quoting 35 U.S.C. § 312(a)(3)).
`
`Regardless, this argument fails because it is simply untrue. Nothing in Banin
`
`suggests that gold catalysts are size-selected after being made by Hutchison’s
`
`process. As Banin’s text does not support Petitioner’s position, Petitioner resorts to
`
`comparing two curiously similar TEM images, one from Banin and one from
`
`Hutchison. Reply, 3. Petitioner argues that “from these images” a person of skill in
`
`the art would somehow recognize that “Banin’s MCCs represent purified, size-
`
`selected MCCs, even if they were made starting with Hutchison’s method.” Reply,
`
`3. But Banin and Hutchison’s TEM images are practically indistinguishable. If
`
`anything can be deduced “from these images,” it is that both depict particles of
`
`various sizes as, shown in the cropped and anonymized images below:
`
`6
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`?1 ?2
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`Petitioner inserts a big red “not-equal” sign between these TEM images, and argues
`
`that one of them shows uniform MCCs while the other shows polydisperse clusters.
`
`Reply, 3 (“Banin’s TEM is consistent with uniform Au101(PPh3)21Cl5 MCCs, while
`
`those shown in Hutchison are consistent with a size distribution of clusters”). But
`
`this cannot be correct. Even if Banin did further size-select its gold catalysts (it does
`
`not), Banin’s TEM image depicts gold catalysts “without further size selection.”
`
`Ex. 1005, 22. Petitioner emphasizes the word “further” to conclude that “size
`
`selection was previously employed” on the gold catalysts (Reply, 4), but ignores that
`
`Hutchison’s process which results in a dispersity of small gold particles with an
`
`“average” assigned value is already a form of size selection “previously employed”
`
`by Banin. Ex. 2017, 12891 (“the synthesis allows size control”). Because Banin’s
`
`TEM depicts gold catalysts made by Hutchison’s process without further size
`
`selection, one would expect the two TEM images to be similar, which of course they
`
`are. And if Banin’s TEM really showed “uniform” clusters, there would be no need
`
`for “further size selection.”
`
`7
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`For the record, the anonymized images above are taken from cropped portions
`
`of Petitioner’s reply.
`
`Reply, 3 (annotated).
`
`The truth is that Banin never further size selects its gold catalysts. Banin’s
`
`only disclosure of size selection
`
`involves centrifuging
`
`the rod-shaped
`
`semiconductor end products, not the gold catalysts. See Ex. 1005, 7 (“The
`
`purification is carried out by centrifugation that affords purified nanorods having
`
`selected size”); id., 8 (“at least one centrifugal step as to obtain Group III-V
`
`semiconductor nanocrystals having substantially rod-like shape and selected size.”);
`
`id. at 9 (“at least one centrifugal step so as to obtain InAs semiconductor nanocrystals
`
`having rod-like shape and selected size”); id., 14 (“The rods were purified and size-
`
`selected by centrifugation.”); id., 18 (“The rods were purified and size-selected by
`
`centrifugation”); id., 20 (same); id., 21 (same); id., 28 (“purification in step (ii)
`
`[purifying said reaction product so as to obtain semiconductor nanocrystals having
`
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`substantially rod-like shape] is carried out by centrifugation, thereby affording size-
`
`selected inorganic semiconductor nanocrystals having a rod-like shape”); id., 30
`
`(“at least one centfugal step so as to obtain size-select Group III-V semiconductor
`
`nanocrystals having substantially rod-like shape.”) (emphases added). There is not
`
`a single instance in Banin describing a process for size-selecting the gold catalysts.
`
`Petitioner’s argument that Banin selects identical MCCs is completely
`
`discredited by the fact that Banin’s nanorods still vary by 20-25% even after they
`
`are size-selected. Ex. 1005, 24:15-23. Centrifugation is the only size-selection
`
`process Petitioner identifies (Reply, 4, fn.3), but Banin reports that even after size-
`
`selection by centrifugation, its nanorods have a “diameter distribution [of] 20-25%,
`
`while the length distribution is 15-20%.”) Ex. 1005, 24:15-23. Banin’s size selection
`
`methods are no more precise than Hutchison’s. Ex. 2017, Fig.1(a) (showing a 25%
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`size difference). Because Banin does not enable further size-selection, and certainly
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`does not enable size-selecting gold particles with the precision required to produce
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`MCCs, the reference cannot anticipate any challenged claim. Amgen Inc. v. Hoechst
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`Marion Roussel, 314 F.3d 1313, 1355 (Fed. Cir. 2003) (“If a patentee presents
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`evidence of nonenablement that a trial court finds persuasive, the trial court must
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`then exclude that particular prior art patent in any anticipation inquiry.”) Thus, even
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`if Banin size-selected its gold catalysts (it does not), the size-selection could not
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`produce MCCs with sufficiently well-defined structure.
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`9
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`Case No. IPR2021-00184
`U.S. Patent No. 7,803,423
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`b.
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`It is improper to ignore that Banin uses Hutchison’s
`process
`Since Au101 gold particles made by Hutchison’s process are not MCCs,
`
`Petitioners asks the Board to ignore Hutchison altogether. Reply, 2-3. This is
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`improper. To ignore Hutchison, which is expressly cited by Banin as describing its
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`method of manufacturing its gold clusters, “would be to undervalue the knowledge
`
`of a skilled artisan.” Husky Injection Molding Sys. v. Athena Automation Ltd., 838
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`F.3d 1236, 1249, (Fed. Cir. 2016) (remanding and instructing court to consider
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`information in a reference cited by an alleged anticipating reference). When “the
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`PTAB examines the scope and content of prior art … it must consider the prior art
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`‘in its entirety, i.e., as a whole.’” In re Warsaw Orthopedic, Inc., 832 F.3d 1327,
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`1332 (Fed. Cir. 2016) (citing Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561,
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`1568 (Fed. Cir. 1987)).
`
`Petitioner’s remaining critiques are unavailing
`c.
`Petitioner sets forth seven unavailing critiques of Patent Owner’s Response.
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`First, Petitioner makes the unsupported claim that “Banin’s MCCs represent
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`purified, size-selected MCCs, even if they were made starting with Hutchison’s
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`method.” Reply, 3. Petitioner argues that all of Banin’s gold catalysts have the exact
`
`same size of 1.4nm “and not some size distribution as PO argues.” Reply, 4-5. A
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`closer look at the portion of Banin to which Petitioner cites for this proposition
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`10
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`Case No. IPR2021-00184
`U.S. Patent No. 7,803,423
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`discloses the “use of small Au clusters (1.4 nm in mean diameter)” Ex. 1005, 20:12-
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`16. A “mean diameter” is the same thing as an “average diameter” and thus indicates
`
`a size dispersion. While citations seem hardly necessary for this point, Dr. Bawendi
`
`did used the term “mean” consistently with the meaning of “average.” Ex. 2034 (not
`
`a MCC if “a mixture of a bunch of things, a bunch of clusters that happen to have a
`
`mean around 10 kilodalton.”). Dr. Green, on the other hand, did not seem to know
`
`that a “mean” and an “average” are the same, which may explain why Petitioner
`
`missed this key point. Ex. 2047, 6:5-10:24 (Dr. Green struggling to answer questions
`
`about what a “mean” is). Further, as discussed above, Banin size-selects its nanorod
`
`end-products, not its gold catalysts. Regardless, Banin’s purported size selection
`
`process achieves no better size-selection than Hutchison. Ex. 1005, 24:15-23 (even
`
`after size-selection by centrifugation, Banin’s nanorods have a “diameter
`
`distribution [of] 20-25%, while the length distribution is 15-20%”).
`
`Second, Petitioner contends that while Hutchison’s gold particles contain
`
`significant impurities, “these alleged ‘impurities’ are simply smaller seeds within
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`Hutchison’s size distribution [and that] Banin—the reference Petitioner actually
`
`relies upon—has uniform MCCs, not gold clusters of varying sizes.” Reply, 5.
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`Again, nothing in Banin suggests that its gold catalysts are any different from those
`
`described in Hutchison, and Petitioner’s admission that the impurities in Hutchison
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`11
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`are part of a size distribution supports Patent Owner’s position that the particles are
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`not well-defined.
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`Third, while admitting that Banin’s nanorod diameters vary by up to 25%,
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`Petitioner argues “there is no evidence that distributed nanorod size is due to an
`
`alleged size distribution of Banin’s clusters.” Reply, 5-6. On the contrary, there is
`
`overwhelming evidence that nanorod diameter is dictated by gold catalyst size. Ex.
`
`1005, 7 (“The rod-shaped nanocrystals prepared by the method of the invention
`
`possess diameters that depend on the diameter of the catalyst nanoparticles used in
`
`their growth”); id., 4 (“the diameters of the nanowires could be tuned by changing
`
`the size of the catalyst clusters”); Id., 20 (“changing the diameter of the rod, which
`
`can easily be controlled…by defining a desired diameter of the metallic
`
`catalyst…”) (emphases added). Petitioner’s other references confirm that catalyst
`
`size dictates nanorod diameter in SLS and VLS reactions. See Ex. 1098 (“…metal-
`
`catalyzed nanowire growth, in which the diameter of the nanowires is mainly
`
`determined by the size of the catalyst particles…”); Ex. 2008 (“…the diameters of
`
`the wires should depend on the diameters of the catalyst particles from which they
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`grew…”) (emphases added). Because the diameter of the nanowire depends on the
`
`diameter of the catalyst, it is no coincidence that the diameters of Banin’s nanonrods
`
`show the same size distribution as Hutchison’s gold particles. Ex. 2030, ¶116; Ex.
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`1005, 23:17-18 (20-25% distribution); Ex. 2017, Fig.1(a) (25% distribution).
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`12
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`Case No. IPR2021-00184
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`Fourth, Petitioner argues that it is irrelevant2 that Hutchison, Banin, or Yu are
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`unable to chemically characterize their gold clusters because, “PO’s expert admits
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`that x-ray crystallography data is not required to identify a MCC,” and “the ’423
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`patent
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`relies exclusively on singular
`
`formulae
`
`(without any chemical
`
`characterization data) as the sole basis for identifying its MCCs.” Reply, 6-7. First,
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`Petitioner’s argument is misleading. Dr. Cossairt testified that “A person of skill in
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`the art would understand that the claimed molecular cluster compound would, at the
`
`very least, need to be able to be chemically characterized to be considered
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`‘sufficiently well-defined.’” Ex. 2030, ¶ 109. At her deposition, Dr. Cossairt testified
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`that “X-ray crystallography is a great technique; it’s kind of the gold standard, but
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`it’s not absolutely required to identify a [MCC].” Ex. 1099, 128:20-129:3. This is
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`because there are other methods that can be used to characterize MCCs to determine
`
`that “all the molecules of the compound are identical to one another,” such as “NMR,
`
`nuclear magnetic resonance spectroscopy, gives unambiguous identification that
`
`there is one species in solution. Mass spectrometry corroborates that.” Ex. 1099,
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`18:7-19:1. And while the ’423 patent lists MCCs without including all of the
`
`2 Because Petitioner cannot contest the facts set forth by Patent Owner, Petitioner
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`repeatedly argues the facts are irrelevant, using the term “irrelevant” twelve times
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`in its reply.
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`13
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`Case No. IPR2021-00184
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`characterization data, characterization “data exists for many of these compounds, if
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`not all of them.” Ex. 1099, 37:17-38:2. The fact remains that there is no evidence
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`that the gold particles identified by Hutchison, Banin, and Yu are able to be
`
`characterized, and they are not therefore sufficiently well-defined MCCs.
`
`Fifth, Petitioner alleges that “PO argues that Banin’s Au101(PPh3)21Cl5
`
`clusters are not MCCs because they ‘melt’…” Reply, 7. Patent Owner never made
`
`this argument. Still, Petitioner argues that melting does not alter the molecular
`
`formula of the gold catalysts. Even if melting does not change the chemical structure
`
`of the catalysts the fact remains that the gold catalysts lack the sufficiently well-
`
`defined chemical structure of MCCs, either in solid or molten form.
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`Sixth, Petitioner argues that, while Banin’s gold clusters agglomerate, the
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`“‘agglomeration’ is a physical rather than chemical act” and Banin does not state
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`that its catalysts “undergo any chemical changes when they aggregate.” Reply, 7-8.
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`But Petitioner’s own expert testified that aggregates do not meet the district court’s
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`construction of a MCC. Ex. 2034, 120:3-13. Dr. Bawendi is correct on this point.
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`Aggregates are expressly distinguished by the ’423 patent. See Ex. 1001 at 7:36-39
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`(noting that molecular clusters may be collections of identical molecules rather than
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`ensembles of small nanoparticles); Ex. 2030, ¶124. Further, the agglomerations in
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`Banin are aggregates of “already ill-defined gold droplets.” POR, 42; Ex. 2030 ¶124
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`(testifying that aggregates are “ensembles of small nanoparticles”).
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`14
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`Case No. IPR2021-00184
`U.S. Patent No. 7,803,423
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`Seventh, Petitioner argues that it is “inapposite and unsupported” that its own
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`experts admit that compou
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