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
`
`
`U.S. PATENT NO. 8,524,365
`Case IPR2021-00186
`
`
`PETITIONER’S REPLY TO
`PATENT OWNER’S PRELIMINARY RESPONSE
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`____________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________________________________
`
`
`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC.
`Petitioner
`
`v.
`
`NANOCO TECHNOLOGIES LIMITED,
`Patent Owner
`
`
`U.S. PATENT NO. 8,524,365
`Case IPR2021-00186
`
`
`PETITIONER’S REPLY TO
`PATENT OWNER’S PRELIMINARY RESPONSE
`
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`I.
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`II.
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`III.
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`TABLE OF CONTENTS
`PATENT OWNER MISCHARACTERIZES THE DISTRICT
`COURT’S ORDER ON PETITIONER’S MOTION TO STAY. ................... 1
`THE RELATIVE TIMING OF THE DISTRICT COURT CASE AND
`THIS IPR DOES NOT MANDATE DISCRETIONARY DENIAL. ............. 3
`PETITIONER’S UPDATED STIPULATION ELIMINATES
`POSSIBLE OVERLAP. .................................................................................. 4
`
`
`
`i
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`IPR2021-00186: Petitioner’s Reply to Patent Owner’s Preliminary Response
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`Petitioner submits this Reply to Patent Owner’s Preliminary Response
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`pursuant to the Board’s March 8, 2021 email granting Petitioner leave to file a reply.
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`I.
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`Patent Owner Mischaracterizes The District Court’s Order On
`Petitioner’s Motion To Stay.
`As promised in its Petition, Petitioner promptly filed a motion to stay in the
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`related district court proceeding once a notice of filing date had been accorded to the
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`petition. Paper 1 at 67; Paper 4 (notice of filing date accorded dated November 24,
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`2020); Ex. 2018 (motion to stay filed November 30, 2020). In its Preliminary
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`Response, Patent Owner emphasizes that this motion was denied, but fails to
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`acknowledge that Petitioner’s motion was “DENIED WITHOUT PREJUDICE to
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`refiling the same, which shall be permitted within fourteen (14) days following the
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`PTAB’s institution decision regarding the last of the patents-in-suit to be acted upon
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`by the PTAB.” Ex. 2019 at 3 (emphasis in original). This decision was in
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`accordance with that court’s “consistent practice of denying motions to stay when
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`the PTAB has yet to institute post-grant proceedings.” Id. at 2. Thus, contrary to
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`Patent Owner’s argument, the district court’s order denying Petitioner’s motion to
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`stay without prejudice and with express leave to refile does not tip Fintiv factor 1,
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`“whether the court granted a stay or evidence exists that one may be granted if a
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`proceeding is instituted,” in favor of the Board exercising its discretion to deny
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`institution in this case.
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`
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`1
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`IPR2021-00186: Petitioner’s Reply to Patent Owner’s Preliminary Response
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`Further, the district court has shown its willingness to stay cases pending
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`instituted IPRs, even on the eve of trial. As explained in the Petition, the same
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`district court has severed and stayed claims “pending a resolution in the inter partes
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`review proceedings,” despite the case being less than six weeks away from jury
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`selection. Seven Networks, LLC v. Apple Inc., C.A. No. 2:19-cv-00115-JRG, Dkt.
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`313 (Sept. 22, 2020) (Ex. 1017).
`
`Even more recently, that same court granted a renewed motion to stay pending
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`IPR for a party similarly situated to Petitioner. In Arbor Global Strategies LLC v.
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`Samsung Electronics Co., Samsung filed a motion to stay a month after filing IPR
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`petitions, which the court denied because IPR had not been instituted against any
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`asserted claims. C.A. No. 2:19-cv-00333, Dkt. 175 at 1-2 (E.D. Tex. Jan. 7, 2021).
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`While the institution decisions were pending, the court issued its Markman order and
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`the parties completed fact discovery and exchanged opening expert reports. Id. at 2.
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`After the Board instituted Samsung’s petitions, Samsung renewed its motion to stay,
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`at which time “expert discovery was still ongoing, dispositive and Daubert motions
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`were not yet due, the pretrial conference was less than three months away, and trial
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`was less than four months away.” Id. The district court granted the renewed motion
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`to stay, finding that a stay would simplify the issues. Id. at 5-6. There is no reason
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`to believe the court would act differently in the case related to this IPR.
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`
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`2
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`IPR2021-00186: Petitioner’s Reply to Patent Owner’s Preliminary Response
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`II. The Proximity of the Trial Date Should Be Given Little If Any Weight.
`Patent Owner wrongly argues that the trial date in the related district court
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`action, which is currently scheduled to begin seven months before a Final Written
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`Decision would be expected, “should control” and favors the Board exercising its
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`discretion. Patent Owner’s Preliminary Response at 10. On the contrary, the
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`currently scheduled trial date should be given little if any weight as the Board has
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`instituted similarly situated IPRs, and as noted above, the district court is likely to
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`stay the case―and thus trial―if this IPR is instituted.
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`For example, in the Arbor IPRs, trial was scheduled to begin eight months
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`before a Final Written Decision would be expected, yet the Board instituted the IPRs
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`over Patent Owner’s § 314(a) arguments. Arbor, Dkt. 175 at 2; Samsung Elecs. Co.
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`v. Arbor Global Strategies LLC, IPR2020-01020, -01021, Paper 11 (PTAB Dec. 2,
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`2020) (Arbor PTAB I and II); Samsung Elecs. Co. v. Arbor Global Strategies LLC,
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`IPR2020-01022, Paper 12 (PTAB Dec. 2, 2020) (Arbor PTAB III). And, as shown
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`above, in response, the same district court then stayed the litigation.
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`Moreover, in other recent IPR proceedings, the Board has instituted IPRs over
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`Patent Owner’s § 314(a) arguments even though trial was expected to begin seven
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`months before the statutory date for the final written decision. Peag LLC, Audio
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`P’ship LLC, and Audio P’ship PLC v. Varta Microbattery GMBH, IPR2020-01212,
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`Paper 8 at 17, 22-23 (PTAB Jan. 6, 2021) (“seven months”); Samsung Elec. Am. Inc.
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`
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`3
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`
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`IPR2021-00186: Petitioner’s Reply to Patent Owner’s Preliminary Response
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`v. Snik LLC, IPR2020-01428, Paper 10 at 11, 13 (Mar. 9, 2021) (“approximately
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`seven months”). Again, as in the Arbor proceedings, the district court stayed those
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`litigations. Varta Microbattery GMBH v. Peag LLC et al., C.A. No. 2:20-cv-00138-
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`JRG, Dkt. 10 (E.D. Tex. Jan. 12, 2021); Snik LLC v. Samsung Elecs. Co. et al., C.A.
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`No. 2:19-cv-00387, Dkt. 109 (E.D. Tex. Mar. 9, 2021). Thus, under the
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`circumstances, this factor is neutral or weighs at most only slightly in favor of Patent
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`Owner.
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`III. Petitioner’s Updated Stipulation Eliminates Possible Overlap.
`Petitioner’s original stipulation (Ex. 1021) was sufficient to avoid overlap
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`between the district court case and this IPR. Indeed, Petitioner’s original stipulation
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`was identical to the stipulation in the Arbor IPRs, which the Board found would
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`mitigate concerns of duplicative efforts and potentially conflicting decisions. Arbor
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`PTAB I, II & III at 14-15. Nonetheless, to address Patent Owner’s concerns about
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`the alleged overlap between the grounds asserted here and Petitioner’s invalidity
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`contentions in the related district court case, Petitioner has provided an updated,
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`broader stipulation to Patent Owner. Ex. 1090. Petitioner now stipulates that for
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`those patents for which the Board institutes IPR, Samsung will not pursue in the
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`district court case the specific grounds asserted in the IPR or “any other ground …
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`that was raised or could have been reasonably raised in an IPR (i.e., any ground that
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`could be raised under §§ 102 or 103 on the basis of prior art patents or printed
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`
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`4
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`
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`IPR2021-00186: Petitioner’s Reply to Patent Owner’s Preliminary Response
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`publications).” See Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper
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`12 at 18-19 (PTAB Dec. 1, 2020) (precedential).
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`In Sotera, the petitioner broadly stipulated not to raise invalidity grounds in
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`district court using the exact same language as Petitioner’s new stipulation here. Id.
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`at 18-19. The Board found that such a broad stipulation was sufficient to mitigate
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`any concerns of duplicative efforts and ensured that the IPR was a true alternative to
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`district court proceedings. Id. Accordingly, the Board found that Fintiv factor 4
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`weighed “strongly in favor of not exercising discretion to deny institution.” Id. at
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`19. Indeed, in a recent case where the Petitioner adopted a stipulation matching the
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`one in Sotera, the Board found that Fintiv factor 4 weighed in favor of not exercising
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`discretion to deny institution. Ability Opto-Elecs. Tech. Co. v. Largan Precision
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`Co., IPR2020-01345, Paper 11 at 11-12 (Feb. 22, 2021). In adopting the same
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`stipulation used in Sotera here, Petitioner has eliminated any overlap with the
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`parallel district court litigation. Thus, Fintiv factor 4 strongly weighs in favor of not
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`exercising discretion to deny institution.
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`In summary, Fintiv factors 1 and 4 weigh in favor of the Board not exercising
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`its discretion to deny institution (strongly in the case of factor 4), and neither factor
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`2 nor other factors should alter that conclusion. For the reasons stated above and in
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`its Petition, Petitioner respectfully requests that the Board institute this Petition.
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`5
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`IPR2021-00186: Petitioner’s Reply to Patent Owner’s Preliminary Response
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`DATED: March 15, 2021
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`
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`
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`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)
`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
`
`Attorneys for Petitioners
`Samsung Electronics Co., Ltd. and
`Samsung Electronics America, Inc.
`
`
`
`6
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`
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`IPR2021-00186: Petitioner’s Reply to Patent Owner’s Preliminary Response
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`Exhibit No.
`1001
`1002
`
`1003
`1004
`1005
`
`1006
`
`1007
`
`1008
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`1009
`
`1010
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`1011
`1012
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`1013
`1014
`1015
`1016
`
`LIST OF EXHIBITS
`Description
`U.S. Patent No. 8,524,365 (“the ’365 patent”)
`Declaration of Mark A. Green in Support of Petition for Inter
`Partes Review of U.S. Patent No. 8,524,365
`Curriculum Vitae for Mark A. Green
`Prosecution History of U.S. Patent No. 8,524,365
`International Patent Publication No. WO 03/097904 to Banin et
`al. (“Banin”)
`A. Zaban et al., Photosensitization of Nanoporous TiO2
`Electrodes with InP Quantum Dots, 14 LANGMUIR 3153 (1998)
`(“Zaban”)
`Olga I. Mićić et al., Synthesis and Characterization of InP
`Quantum Dots, 98 J. PHYSICAL CHEMISTRY 4966 (1994) (“Mićić”)
`V. Ptatschek et al., Quantized Aggregation Phenomena in II–VI-
`Semiconductor Colloids, 102 BERICHTE DER BUNSEN–
`GESELLSCHAFT FÜR PHYSIKALISCHE CHEMIE 85 (1998)
`(“Ptatschek”)
`W. E. Farneth et al., Bulk Semiconductors from Molecular Solids:
`A Mechanistic Investigation, 4 CHEMISTRY OF MATERIALS 916
`(1992) (“Farneth”)
`Heng Yu et al., Heterogeneous Seeded Growth: A Potentially
`General Synthesis of Monodisperse Metallic Nanoparticles, 123 J.
`AM. CHEMICAL SOC’Y 9198 (2001) (“Yu”)
`U.S. Patent No. 7,193,098 to Lucey et al. (“Lucey”)
`S.P. Ahrenkiel et al., Synthesis and Characterization of Colloidal
`InP Quantum Rods, 3 NANO LETTERS 833 (2003) (“Ahrenkiel”)
`INTENTIONALLY OMITTED
`INTENTIONALLY OMITTED
`U.S. Patent No. 6,815,064 to Treadway et al. (“Treadway”)
`N. Herron et al., Crystal Structure and Optical Properties of
`Cd32S14(SC6H5)36·DMF4, a Cluster with a 15 Angstrom CdS
`
`
`
`
`
`
`
`IPR2021-00186: Petitioner’s Reply to Patent Owner’s Preliminary Response
`
`1017
`
`1018
`
`1019
`
`1020
`
`1021
`
`1022
`
`1023
`1024
`1025
`1026
`1027
`1028
`1029
`1030
`1031
`1032
`1033
`1034
`1035
`
`1036
`1037
`
`Core, 259 SCIENCE 1426 (1993) (“Herron”)
`Seven Networks, LLC v. Apple Inc., C.A. No. 2:19-cv-00115-JRG,
`Dkt. 313 (Sept. 22, 2020)
`Docket Control Order, Nanoco Technologies Ltd. v. Samsung
`Electronics Co., Ltd., No. 2:20-cv-00038 (E.D. Tex.)
`October 2021 Calendar for Judge Rodney Gilstrap, Eastern
`District of Texas
`Return of summons to Samsung Electronics Co. and Samsung
`Electronics America, Nanoco Technologies Ltd. v. Samsung
`Electronics Co., Ltd., No. 2:20-cv-00038 (E.D. Tex.)
`Letter dated November 9, 2020 from M. Pearson to M. Newman
`re stipulation about invalidity grounds
`Infringement contentions, Nanoco Technologies Ltd. v. Samsung
`Electronics Co., Ltd., No. 2:20-cv-00038 (E.D. Tex.)
`Cover material for Zaban
`Cover material for Mićić
`INTENTIONALLY OMITTED
`Cover material for Farneth
`Cover material for Yu
`Cover material for Ahrenkiel
`INTENTIONALLY OMITTED
`Cover material for Herron
`Declaration of Chris Lowden
`Declaration of David Smorodin
`INTENTIONALLY OMITTED
`Declaration of Rachel Watters
`Catherine J. Murphy, Optical Sensing with Quantum Dots, 74
`ANALYTICAL CHEMISTRY 520A (2002)
`U.S. Patent App. No. 2003/0106488 to Huang et al.
`NANOPARTICLES: FROM THEORY TO APPLICATION (Günter Schmid
`ed., March 2004)
`
`
`
`
`
`
`
`IPR2021-00186: Petitioner’s Reply to Patent Owner’s Preliminary Response
`
`1038
`
`1039
`
`1040
`1041
`
`1042
`1043
`1044
`
`1045
`
`1046
`
`1047
`
`1048
`
`1049
`
`1050
`
`1051
`1052
`
`Victor I. Klimov, Nanocrystal Quantum Dots, 28 LOS ALAMOS
`SCI. 214 (2003)
`David J. Norris, Electronic Structure in Semiconductor
`Nanocrystals, in SEMICONDUCTOR AND METAL NANOCRYSTALS 65
`(Victor I. Klimov ed., 2003)
`U.S. Patent App. Pub. No. 2004/0036130 to Lee et al. (“Lee”)
`Andy Watson et al., Lighting Up Cells with Quantum Dots, 34
`BIOTECHNIQUES 296 (2003)
`INTENTIONALLY OMITTED
`INTENTIONALLY OMITTED
`Victor K. LaMer et al., Theory, Production and Mechanism of
`Formation of Monodispersed Hydrosols, 72 J. AM. CHEMICAL
`SOC’Y 4847 (1950)
`Scott L. Cumberland et al., Inorganic Clusters as Single-Source
`Precursors for Preparation of CdSe, ZnSe, and CdSe/ZnS
`Nanomaterials, 14 CHEMISTRY OF MATERIALS 1576 (2002)
`C. B. Murray et al., Synthesis and Characterization of Nearly
`Monodisperse CdE (E = S, Se, Te) Semiconductor
`Nanocrystallites, 115 J. AM. CHEMICAL SOC’Y 8706 (1993)
`David Battaglia et al., Formation of High Quality InP and InAs
`Nanocrystals in a Noncoordinating Solvent, 2 NANO LETTERS
`1027 (2002)
`Tobias Hanrath et al., Nucleation and Growth of Germanium
`Nanowires Seeded by Organic Monolayer-Coated Gold
`Nanocrystals, 124 J. AM. CHEMICAL SOC’Y 1424 (2002)
`Jennifer A. Hollingsworth et al., “Soft” Chemical Synthesis and
`Manipulation of Semiconductor Nanocrystals, in
`SEMICONDUCTOR AND METAL NANOCRYSTALS 1 (Victor I. Klimov
`ed., 2003)
`Nigel L. Pickett et al., Syntheses of Semiconductor Nanoparticles
`Using Single-Molecular Precursors, 1 CHEMICAL REC. 467 (2001)
`INTENTIONALLY OMITTED
`INTENTIONALLY OMITTED
`
`
`
`
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`
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`IPR2021-00186: Petitioner’s Reply to Patent Owner’s Preliminary Response
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`1053
`1054
`1055
`1056
`
`1057
`
`1058
`
`1059
`
`1060
`
`1061
`
`1062
`1063
`1064
`1065
`1066
`
`1067
`
`U.S. Patent No. 7,056,471 to Han et al.
`U.S. Patent No. 7,588,828
`INTENTIONALLY OMITTED
`Olga I. Mićić et al., Core–Shell Quantum Dots of Lattice-Matched
`ZnCdSe2 Shells on InP Cores: Experiment and Theory, 104 J. OF
`PHYSICAL CHEMISTRY B 12149 (2000)
`Michael L. Steigerwald, Clusters as Small Solids, 13
`POLYHEDRON 1245 (1994)
`M.L. Steigerwald et al., Application of Phosphine Tellurides to
`the Preparation of Group II-VI (2-16) Semiconductor Materials, 7
`ORGANOMETALLICS 245 (1988)
`Uri Banin et al., Tunneling and Optical Spectroscopy of
`Semiconductor Nanocrystal Quantum Dots: Single-Particle and
`Ensemble Properties, in SEMICONDUCTOR AND METAL
`NANOCRYSTALS 327 (Victor I. Klimov ed., 2003)
`Arthur J. Nozik, et al., III-V Quantum Dots and Quantum Dot
`Arrays: Synthesis, Optical Properties, Photogenerated Carrier
`Dynamics, and Applications to Photon Conversion, in
`SEMICONDUCTOR AND METAL NANOCRYSTALS 327 (Victor I.
`Klimov ed., 2003)
`Yong Han et al., Synthesis and Characterization of Zinc
`Sulfide/Gallium Phosphide Nanocomposite Powders, 77 J. AM.
`CERAMICS SOC’Y 3153 (1994)
`INTENTIONALLY OMITTED
`INTENTIONALLY OMITTED
`U.S. Patent No. 6,864,626 to Weiss et al. (“Weiss”)
`U.S. Patent No. 7,147,712 to Zehnder et al. (“Zehnder ’712”)
`M. A. Olshavsky, Organometallic Synthesis of GaAs Crystallites
`Exhibiting Quantum Confinement, 112 J. AM. CHEM. SOC. 9438
`(1990)
`A. R. Kortan et al, Nucleation and Growth of CdSe on ZnS
`Quantum Crystallite Seeds, and Vice Versa, in Inverse Micelle
`Media, 112 J. AM. CHEM. SOC. 1327 (1990)
`
`
`
`
`
`
`
`IPR2021-00186: Petitioner’s Reply to Patent Owner’s Preliminary Response
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`1068
`
`1069
`
`1070
`
`1071
`
`1072
`
`1073
`1074
`
`1075-1089
`1090
`
`Holger Borchert et al., Investigation of ZnS Passivated InP
`Nanocrystals by XPS, 2 NANO LETTERS 151 (2002)
`Gregory A. Khitrov, Synthesis, Characterization and Formation
`Mechanisms of Inorganic Nanomaterials, University of California
`Santa Barbara (1993)
`Frederic V. Mikulec, Organometallic Synthesis and Spectroscopic
`Characterization of Manganese-Doped CdSe Nanocrystals, 122 J.
`AM. CHEM. SOC. 2532 (2000)
`Stephan Haubold, Strongly Luminescent InP/ZnS Core-Shell
`Nanoparticles, 2 CHEMPHYSCHEM 331 (2001)
`Huheey et al., INORGANIC CHEMISTRY: PRINCIPLES OF STRUCTURE
`AND REACTIVITY (4th ed. 1993)
`Linus Pauling, GENERAL CHEMISTRY (3d ed. revised 1988)
`Richard L. Wells et al., Tris(trimethylsilyl)arsine and Lithium
`Bis(trimethylsilyl)arsenide, 31 INORGANIC SYNTHESES 150 (Alan
`H. Cowley ed., 1997)
`INTENTIONALLY OMITTED
`March 2, 2021 Letter M. Pearson to M. Newman
`
`
`
`
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`
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`IPR2021-00186: Petitioner’s Reply to Patent Owner’s Preliminary Response
`
`CERTIFICATE OF SERVICE
`The undersigned certifies that the above-captioned “PETITIONER’S REPLY
`
`TO PATENT OWNER’S PRELIMINARY RESPONSE” and accompanying
`
`Exhibit 1090 were served in their entirety on March 15, 2021, via electronic service
`
`on lead and back-up counsel, as consented to by the parties:
`
`jcaplan@kramerlevin.com
`
`jhannah@kramerlevin.com
`
`jprice@kramerlevin.com
`
`KLArborSamsung@KRAMERLEVIN.com
`
`/s/ F. Christopher Mizzo, P.C.
`F. Christopher Mizzo, P.C.
`
`
`
`
`
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