Trials@uspto.gov
`571-272-7822
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`Paper 47
`Date: May 16, 2022
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________________
`
`SAMSUNG ELECTRONICS CO., LTD. and
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioner,
`v.
`NANOCO TECHNOLOGIES LTD.,
`Patent Owner.
`
`IPR2021-00186
`Patent 8,524,365 B2
`
`
`Before ERICA A. FRANKLIN, GRACE KARAFFA OBERMANN, and
`CHRISTOPHER M. KAISER, Administrative Patent Judges.
`
`OBERMANN, Administrative Patent Judge.
`
`
`
`
`JUDGMENT
`Final Written Decision
`Determining No Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`571-272-7822
`
`
`
`
`Paper 47
`Date: May 16, 2022
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________________
`
`SAMSUNG ELECTRONICS CO., LTD. and
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioner,
`v.
`NANOCO TECHNOLOGIES LTD.,
`Patent Owner.
`
`IPR2021-00186
`Patent 8,524,365 B2
`
`
`Before ERICA A. FRANKLIN, GRACE KARAFFA OBERMANN, and
`CHRISTOPHER M. KAISER, Administrative Patent Judges.
`
`OBERMANN, Administrative Patent Judge.
`
`
`
`
`JUDGMENT
`Final Written Decision
`Determining No Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`IPR2021-00186
`Patent 8,524,365 B2
`
`
`I. INTRODUCTION
`This is a Final Written Decision in an inter partes review of claims 1–
`
`23 of U.S. Patent No. 8,524,365 B2 (Ex. 1001, “the ’365 patent”). We have
`jurisdiction under 35 U.S.C. § 6 and enter this Decision pursuant to
`35 U.S.C. § 318(a). For the reasons that follow, we determine that
`Petitioner1 does not establish by a preponderance of the evidence that any
`challenged claim is unpatentable.
`A. Procedural History
`Petitioner filed a Petition requesting review of the challenged claims.
`Paper 1 (“Pet.”). With the Petition, Petitioner filed the Declaration of Mark
`A. Green, Ph.D., in support of the challenges stated in the Petition. Ex. 1002.
`Patent Owner2 filed a Preliminary Response to the Petition (Paper 12).
`Pursuant to our authorization, Petitioner filed a Reply (Paper 14) and Patent
`Owner filed a Sur-reply (Paper 15).
`Based on that preliminary record, we instituted an inter partes review
`of all challenged claims based on all grounds of unpatentability asserted in
`the Petition. Paper 17 (“Dec.”). The following table sets forth the grounds.3
`
`
`1 “Petitioner” refers collectively to Samsung Electronics Co., Ltd. and
`Samsung Electronics America, Inc. See Paper 38, 1 (identification of
`Petitioner’s real parties-in-interest).
`2 “Patent Owner” refers to Nanoco Technologies Ltd. Paper 6, 1. See
`Paper 6, 1 (identification of Patent Owner’s real party-in-interest).
`3 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 287–88 (2011), amended 35 U.S.C. §§ 102 and 103, effective
`March 16, 2013. Because the ’365 patent application has an effective filing
`date prior to March 16, 2013, the pre-AIA versions of §§ 102 and 103 apply.
`
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`2
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`Claims Challenged
`1, 7–12, 17, 22, 23
`1, 7–12, 15–17, 22,
`23
`2–6, 18–21
`13, 14
`1–9, 17–23
`1, 2, 4, 7–12, 17, 18,
`22, 23
`
`35 U.S.C. §
`102
`103(a)
`
`103(a)
`103(a)
`103(a)
`103(a)
`
`References
`Banin4
`Banin
`
`Banin, Herron5
`Banin, Treadway6
`Zaban,7 Farneth,8 Yu9
`Lucey,10 Ahrenkiel111
`
`
`4 Banin et al., WO 03/097904 A1, published Nov. 27, 2003 (“Banin,”
`Ex. 1005).
`5 Herron et al., Crystal Structure and Optical Properties of
`Cd32S14(SC6H5)36∙DMF4, a Cluster with a 15 Angstrom CdS Core, 259
`SCIENCE 1426–1428 (1993) (“Herron,” Ex. 1016).
`6 Treadway et al., U.S. Patent No. 6,815,064, issued Nov. 9, 2004
`(“Treadway, Ex. 1015).
`7 Zaban et al., Photosensitization of Nanoporous TiO2 Electrodes with InP
`Quantum Dots, 14 LANGMUIR 3153–3156 (1998) (“Zaban,” Ex. 1006).
`8 Farneth et al., Bulk Semiconductors from Molecular Solids: A Mechanistic
`Investigation, 4 CHEM. MATER. 916–922 (1992) (“Farneth,” Ex. 1009).
`9 Yu et al., Heterogeneous Seeded Growth: A Potentially General Synthesis
`of Monodisperse Metallic Nanoparticles, 123 J. AM. CHEM. SOC. 9198–9199
`(2001) (“Yu,” Ex. 1010).
`10 Lucey et al., US 7,193,098 B1, issued Mar. 20, 2007 (“Lucey,” Ex. 1011).
`11 Ahrenkiel et al., Synthesis and Characterization of Colloidal InP
`Quantum Rods, 3 (6) NANO LETTERS 833–837 (2003) (“Ahrenkiel,”
`Ex. 1012).
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`Claims Challenged
`13–16
`
`35 U.S.C. §
`103(a)
`
`References
`Lucey, Ahrenkiel,
`Treadway
`
`After institution of trial, Patent Owner filed a Response (Paper 25,12
`“Resp.”), along with the Declaration of Brandi Cossairt, Ph.D. (Ex. 2030),
`Petitioner filed a Reply (Paper 32, “Reply”), along with the Second
`Declaration of Dr. Green (Ex. 1093), and Patent Owner filed a Sur-reply
`(Paper 39, “Sur-reply”).13 The parties presented oral arguments during a
`hearing held by video on February 23, 2022.14 Paper 46 (“Tr.”).
`B. Related Matters
`The parties identify litigation involving the ’365 patent as a related
`
`matter: Nanoco Technologies Ltd. v. Samsung Electronics Co., Ltd.,
`No. 2:20-cv-00038 (E.D. Tex.) (“District Court case”). Pet. 71; Paper 6, 1.
`The parties also identify, as related matters, petitions for review filed
`in connection with four other patents asserted in the District Court case:
`IPR2021-00182 for U.S. Patent No. 9,680,068, IPR2021-00183 for U.S.
`
`
`12 Patent Owner filed Paper 25 (unredacted Response) under seal and
`Paper 26 (redacted Response) in the public record. Thereafter, “the parties
`agreed that” the Response does “not contain confidential information and”
`does “not need to be sealed.” Paper 30, 1.
`13 Based on their respective statements of qualifications and curricula vitae,
`which are not contested, we determine that both Dr. Green and Dr. Cossairt
`are qualified to provide opinions about the knowledge and understanding of
`a person of ordinary skill in the art at the time of the invention. Ex. 1002
`¶¶ 17–30; Ex. 1003; Ex. 2030 ¶¶ 5–21, Appendix A.
`14 A consolidated hearing was conducted in IPR2021-00182, IPR2021-
`00183, IPR2021-00184, IPR2021-00185, and this proceeding, however, the
`cases are not consolidated. See Paper 43 (Order, setting oral argument).
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`Patent No. 7,588,828 (“IPR183”), IPR2021-00184 for U.S. Patent
`No. 7,803,423, and IPR2021-00185 for U.S. Patent No. 7,867,557. Pet. 71;
`Paper 6, 1–2. Concurrently with this Decision, we enter final written
`decisions in those administrative proceedings.
`
`C. The ’365 Patent (Ex. 1001)
`The ’365 patent relates to “[a] nanoparticle comprising a molecular
`cluster compound and a core semiconductor material disposed on the
`molecular cluster compound.” Ex. 1001, 20:9–13. The semiconductor
`material, in turn, “comprises one or more elements not comprised within the
`molecular cluster compound.” Id. The nanoparticle may be prepared by a
`process that employs at least two precursor species in a nanoparticle
`precursor composition – “a first precursor species containing a first ion to be
`incorporated into the core semiconductor material and a separate second
`precursor species containing a second ion to be incorporated into the core
`semiconductor material.” Id. at 20:54–62.
`The written description states, “There has been substantial interest in
`the preparation and characterization” of compound semiconductors that
`include “particles with dimensions in the order of 2–100 [nanometers]
`(nm).” Id. at 1:21–25. That interest “mainly” may be “due to their size-
`tunable electronic, optical, and chemical properties and the need for the
`further miniaturization of both optical and electronic devices.” Id. at 1:26–
`28. The written description further indicates that such nanoparticles may be
`useful in a “range” of “commercial applications,” including “biological
`labelling, solar cells, catalysts, biological imaging, [and] light-emitting
`diodes.” Id. at 1:29–31.
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`The written description discusses the preparation of two different
`molecular cluster compounds. Id. at 15:5–31. The description includes nine
`examples for preparing nanoparticles; eight involve a core that comprises
`cadmium and selenium, and one involves a core that comprises cadmium
`and tellurium. Id. at 15:33–19:4.
`
`D. Challenged Claims
`We reproduce below claim 1, which is the sole independent
`challenged claim and illustrates the subject matter of the invention.
` 1. A nanoparticle comprising a molecular cluster compound
`and a core semiconductor material disposed on the molecular
`cluster compound, wherein
`the semiconductor material
`comprises one or more elements not comprised within the
`molecular cluster compound.
`Ex. 1001, 20:9–13. The other challenged claims inherit the above limitations
`through direct or indirect dependence on claim 1. See id. at 31:18–56 (claims
`2–6), 32:37–54 (claims 16 and 17).
`
`II. ANALYSIS
`Our analysis is centered on explaining why we determine that
`Petitioner does not carry its burden of proving the unpatentability of claim 1
`based on any ground asserted in the Petition. Petitioner advances no
`information, in connection with any other challenged claim, that cures the
`deficiencies that we identify below in the context of claim 1. See Pet 24–42,
`49–54, 58–66. Accordingly, the challenges asserted in the Petition rise and
`fall with the sufficiency of Petitioner’s showing made as to claim 1, and our
`analysis of claim 1 applies with equal force to each challenged claim.
`
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`A. Principles of Law
`To prevail in this proceeding, Petitioner must demonstrate by a
`preponderance of the evidence that the challenged claims are unpatentable.
`35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d) (2019). “In an [inter partes review],
`the petitioner has the burden from the onset to show with particularity why
`the patent it challenges is unpatentable.” Harmonic Inc. v. Avid. Tech., Inc.,
`815 F.3d 1356, 1363 (Fed. Cir. 2016); see also 35 U.S.C. § 312(a)(3) (2012)
`(requiring inter partes review petitions to identify “with particularity . . . the
`evidence that supports the grounds for the challenge to each claim”). That
`burden of persuasion never shifts to Patent Owner. Dynamic Drinkware,
`LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015); see also
`In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1375–78 (Fed. Cir. 2016)
`(discussing the burden of proof in inter partes review proceedings).
`A claim is unpatentable for obviousness if, to one of ordinary skill in
`the pertinent art, “the differences between the subject matter sought to be
`patented and the prior art are such that the subject matter as a whole would
`have been obvious at the time the invention was made.” 35 U.S.C. § 103(a)
`(2006); see also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007).
`The question of obviousness is resolved on the basis of underlying
`factual determinations including the scope and content of the prior art, any
`differences between the claimed subject matter and the prior art, the level of
`ordinary skill in the art, and objective evidence of nonobviousness.15
`
`
`15 Although Patent Owner does not expressly argue that any objective
`evidence of nonobviousness undercuts Petitioner’s challenges in this case,
`Patent Owner does assert that Petitioner tried, without success, “to solve the
`
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`Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). “An obviousness
`determination requires finding both ‘that a skilled artisan would have been
`motivated to combine the teachings of the prior art references to achieve the
`claimed invention, and that the skilled artisan would have had a reasonable
`expectation of success in doing so.’” CRFD Research, Inc. v. Matal, 876
`F.3d 1330, 1340 (Fed. Cir. 2017) (quoting Intelligent Bio-Sys., Inc. v.
`Illumina Cambridge Ltd., 821 F.3d 1359, 1367–68 (Fed. Cir. 2016)).
`
`We analyze Petitioner’s challenges according to the above-stated principles.
`B. Person of Ordinary Skill in the Art
`The level of skill in the art is a factual determination that provides a
`primary guarantee of objectivity in an obviousness analysis. Al-Site Corp. v.
`VSI Int’l Inc., 174 F.3d 1308, 1324 (Fed. Cir. 1999) (citing Graham v. John
`Deere Co., 383 U.S. 1, 17–18 (1966); Ryko Mfg. Co. v. Nu-Star, Inc., 950
`F.2d 714, 718 (Fed. Cir. 1991)). In Petitioner’s view, an ordinarily skilled
`artisan would have had “at least a Ph.D. in chemistry, physics, chemical
`engineering, material science, or equivalent technical degree or equivalent
`work experience, with knowledge regarding nanoparticles and methods of
`synthesizing them” and “[a]dditional education might supplement practical
`
`
`problems associated with producing cadmium-free quantum dots” and,
`further, that Petitioner’s “research lead” considered “developing cadmium-
`free quantum dot technology ‘to be quite a challenge.’” Paper 12, 20
`(quoting Ex. 2005, 3). To the extent Patent Owner asserts that these factual
`contentions are secondary indicia of non-obviousness, the contentions are
`not developed adequately. Id. In any event, even if we set aside those
`contentions, for reasons explained in our analysis of the challenges, we
`determine that Petitioner fails to show by a preponderance of the evidence
`that the prior art supports a finding of obviousness.
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`experience and vice-versa.” Pet. 20–21 (citing Ex. 1002 ¶¶ 76–75). Patent
`Owner does not address Petitioner’s view or propose a counter definition.
`We determine that the level of ordinary skill is reflected in the prior
`art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir.
`2001) (specific findings on the ordinary skill level are not required “where
`the prior art itself reflects an appropriate level and a need for testimony is
`not shown” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755
`F.2d 158, 163 (Fed. Cir. 1985))). To the extent a more specific definition is
`required, we adopt Petitioner’s definition for purposes of this Decision,
`because that definition is unopposed and consistent with the disclosures of
`the asserted prior art references.
`
`C. Claim Construction
`The Board applies the same claim construction standard that would be
`used to construe the claim in a civil action under 35 U.S.C. § 282(b).
`37 C.F.R. § 42.100(b) (2020). Under that standard, claim terms “are
`generally given their ordinary and customary meaning” as understood by a
`person of ordinary skill in the art at the time of the invention. Phillips v.
`AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). “In
`determining the meaning of the disputed claim limitation, we look
`principally to the intrinsic evidence of record, examining the claim language
`itself, the written description, and the prosecution history, if in evidence.”
`DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014
`(Fed. Cir. 2006) (citing Phillips, 415 F.3d at 1312–17). Extrinsic evidence is
`“less significant than the intrinsic record in determining ‘the legally
`operative meaning of claim language.’” Phillips, 415 F.3d at 1317.
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`Petitioner asserts that:
`While the full scope of the term “molecular cluster
`compound” is unclear––the ’365 patent states that the term “is
`widely understood in the relevant technical field” as relating to
`“clusters of 3 or more metal or nonmetal atoms and their
`associated ligands,” but related U.S. Patent No. 7,588,828 [at
`issue in related IPR183] “clusters of 3 or more metal atoms and
`their associated ligands”(compare Ex. 1001, 5:19–25, with
`Ex. 1054, 3:29–35)–this issue need not be resolved because the
`grounds relied on in this Petition disclose molecular cluster
`compounds with three or more metal atoms.
`Pet. 21 (footnote omitted) (Petitioner’s emphasis).
`Patent Owner responds that the written description of the invention
`provided in the ’365 patent informs:
`“Molecular cluster” is a term which is widely understood in the
`relevant technical field but for the sake of clarity should be
`understood herein to relate to clusters of 3 or more metal or
`nonmetal atoms and their associated ligands of sufficiently well
`defined chemical structure such that all molecules of the cluster
`compound possess the same relative molecular mass.
`Resp. 24. Patent Owner contends that the parties’ dispute about the scope of
`the term “molecular cluster compound” was resolved in the parallel
`litigation and “the District Court construed the term ‘molecular cluster
`compound’ to mean ‘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.’” Resp. 24–25 (quoting Dec. 16 (citing Ex. 1091, 18)).
`Based on our consideration of the record as a whole, we agree with
`the District Court that the molecular cluster compound of the claimed
`invention must have “sufficiently well-defined chemical structure such that
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`all molecules of the cluster compound possess the same relative molecular
`formula.” Ex. 1091, 18. To the extent that this or any other claim term
`requires further discussion, we provide it in our analysis of the challenges.
`No further express claim construction is necessary for purposes of this
`Decision. See Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361
`(Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to the extent
`necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am.
`Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).
`
`D. Overview of the Asserted Prior Art References
`1. Banin
`Banin “relates to a method for synthesizing rod-shaped semiconductor
`nanocrystals, inter alia rod-shaped Group III-V semiconductor
`nanocrystals.” Ex. 1005, 2:2–4.16 Banin describes “introducing nanoparticles
`of a metal catalyst that serve as starting nanocrystals from which nanorods
`of inorganic semiconductors grow in solution while stopping the growth to
`obtain rods.” Id. at 7:3–6. Banin discloses that “[t]he metal catalyst can be
`made, for example, of a transition metal, e.g. Zn, Cd, Mn, etc., a Group IIIa
`metal, e.g. In, Ga, Al, alloys of such metals such as for example Au-In, or
`core/shell layered metal particle.” Id. at 7:9–11.
`We reproduce below Banin’s Figure 1.
`
`
`16 We refer to original page numbers in Exhibit 1005, not page numbers
`added by Petitioner.
`
`11
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`Figure 1 illustrates the growth mechanism of indium-arsenic (“InAs”)
`nanorods for Banin’s invention. Id. at 11:11–12. Banin describes, for
`example, that “InAs nanorods were synthesized via the reaction of
`tris(trimethylsilyl)arsenine ((TMS)3As) and InCl3 in trioctylphosphine-oxide
`(TOPO), using metallic indium or gold as the catalyst.” Id. at 14:9–11. Metal
`catalyst M forms a starting nanocrystal from which a semiconductor nanorod
`grows, with the left end of the III-V semiconductor nanorod grown first and
`then moved away from the catalyst M during growth of the nanorod. Id.
`at 14:11–16.
`Banin also uses “small Au clusters (1.4 nm in mean diameter) instead
`of Au particles (2 nm in mean diameter)” and describes an experiment that
`uses “triphenylphosphine coated Au clusters with a diameter of 1.4 nm and
`the suggested formula Au101(PPh3)21Cl5” to prepare InAs rods. Id. at 21:12–
`17. Banin further discloses that its metal catalyst can be “Fe, Zn, Pd, Pt, Ni,
`Co, Mn, Ag, Cd or alloys and layered particles thereof.” Id. at claim 30.
`
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`2. Herron
`Herron is a journal article describing the formation of a
`Cd32S14(SC6H5)36·DMF4 cluster from a solution of pyridine and N,N-di-
`methylformamide (DMF). Ex. 1016, 1426, Abstract. According to Herron,
`the cluster consists of an 82 atom CDS core that is approximately 12
`angstroms in diameter. Id. Herron discloses that the “cluster dissolves intact
`in tetrahydrofuran.” Id.
`Herron further describes the use of “very small molecular clusters as
`synthetic precursors to bulk, extended solids” as interesting for
`semiconductor materials and that the solubility of Herron’s cluster may be
`used in the production of polymer films having good photoconductor
`properties, “which points to a real utility for such soluble semiconductor
`clusters in the preparation of materials that go into electronic devices made
`for this and other thin-film applications.” Id. at 1426, 1428.
`3. Zaban
`Zaban is a paper titled “Photosensitization of Nanoporous TiO2
`
`Electrodes with InP Quantum Dots.” Ex. 1006, 3153. Zaban describes a
`method for synthesizing quantum dots from precursors in a solution that
`includes zinc acetate as a dopant. Id. at 3154; see Pet. 38; Reply 20
`(acknowledging that Zaban relates to a “Zn-doped” nanoparticle synthesis).
`In Zaban’s synthetic method, zinc acetate is employed as a dopant “in a
`ratio” to produced doped quantum dots of indium phosphide that “contain on
`average one Zn2+ ion per particle.” Ex. 1006, 3154.
`4. Farneth
`Farneth is a journal article regarding the mechanism of the solid-state
`conversion of II/VI precursors having the general formula
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`(R4N+)4[S4M10(SPh)16]4-, where “(R = Me, Et; M = Cd, Zn).” Ex. 1009, 916,
`Abstract. Farneth describes heating the molecular cluster
`[(CH3)4N+]4[S4Cd10-(SPh)16]4- in an inert atmosphere to cause a first reaction
`in which 4(NMe4SPh) is lost to produce the intermediate solid Cd10S16Ph12.
`Id. at 918. A second reaction cause by the loss of S6Ph12 leaves a solid
`residue of CdS. Id. Farneth discloses that “the structural integrity of the
`clusters appears to be maintained in the solid.” Id. at 920.
`5. Yu
`Yu is a journal article that is directed to heterogeneous seeded growth
`of monodisperse metallic nanoparticles, particularly the “growth of nearly
`monodisperse Bi [bismuth], Sn [tin], and In nanoparticles of various sizes
`upon 1.5-nm Au seeds.” Ex. 1010, 9198. Yu explains that growth can be
`accomplished by decomposing the precursors Bi-[N(SiMe3)2]3, Sn(NMe2)2,
`or In(C5H5) in solutions containing Au seeds and polymers that were added
`to stabilize the nanoparticles. Id. Yu discloses thermally decomposing the Bi
`and Sn precursors at 150 and 140°C, respectively, and decomposing the In
`precursor at room temperature by adding methanol in the presence of
`poly(vinylpyrrolidinone). Id. Yu proposes a mechanism for the formation of
`the monodisperse colloid or nanoparticles by describing the growth as
`“seeded growth” in which “preformed seeds provide the nuclei for
`subsequent growth of metallic nanoparticles.” Id.
`6. Treadway, Lucey, and Ahrenkiel
`Petitioner asserts Treadway, Lucey, and Ahrenkiel in one or more
`
`grounds advanced in the Petition. Pet. 14–15. We make no findings
`pertaining to these references because none is necessary to our analysis.
`
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`E. Grounds that Assert Banin
`Petitioner asserts that the subject matter of claim 1, and claims
`
`depending directly or indirectly therefrom, would have been anticipated by
`or obvious over the disclosure of Banin alone. Pet. 14. In connection with
`other dependent claims, Petitioner asserts obviousness grounds based on
`Banin in combination with Herron or Treadway. Id. at 14–15.
`We organize our analysis into five subparts, addressing, in turn, (1)
`whether Petitioner shows by a preponderance of the evidence that Banin’s
`small gold clusters are MCCs; (2) an alternative theory of unpatentability
`raised for the first time in the Reply, based on the disclosure of Banin alone,
`that an ordinarily skilled artisan would have replaced Banin’s gold clusters
`with known MCCs not identified with particularity by Petitioner; (3) the
`ground based on Banin and Herron; (4) the ground based on Banin and
`Treadway; and (5) our conclusions on the grounds that assert Banin.
`1. Whether Banin’s “small Au clusters” are MCCs
`Our analysis focuses on the claim 1 limitation that requires “[a]
`nanoparticle comprising a molecular cluster compound.” Ex. 1001, 20:9–13.
`Our analysis of independent claim 1 applies with equal force to each of the
`other challenged claims, because each depends directly or indirectly from
`claim 1 and, thereby, inherits the limitation requiring a molecular cluster
`compound (“MCC”). Id. at 20:9–21:18 (claims).
`Petitioner asserts that Banin discloses small gold clusters that are
`MCCs. Pet. 22. For reasons that follow, we find Petitioner does not show
`persuasively that Banin’s “small Au clusters” (also referred to herein as
`Banin’s “Au-based clusters,” “gold clusters,” “gold cluster catalysts,” and
`“metal catalysts”) are MCCs.
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`IPR2021-00186
`Patent 8,524,365 B2
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`For reasons explained in our claim construction analysis, we apply the
`construction assigned by the District Court, under which MCCs are “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 approximately the same relative molecular formula.”
`Ex. 1091, 18. According to Petitioner, Banin’s Au-based clusters are MCCs.
`Pet. 22–23; Ex. 1002 ¶ 90. To support that position, Petitioner directs us to
`Banin’s disclosure that the Au-based clusters have “the suggested formula
`Au101(PPh3)21Cl5” (Ex. 1005, 20:12–16) and the testimony of Dr. Green
`(Ex. 1002 ¶ 90). Pet. 22–23.
`Dr. Green testifies, “It is my opinion that a [person of ordinary skill in
`the art] would have understood that the gold clusters Au101(PPh3)21Cl5” in
`Banin’s process “are ‘clusters of 3 or more metal’ atoms (i.e., because the
`other atoms of the clusters, (PPh3)21Cl5, are the ligands), and their associated
`ligands’ and that each cluster is ‘identical to one another.’” Ex. 1002 ¶ 90
`(citing Ex. 1001, 5–25; Ex. 1005, 20:12–16). Dr. Green continues, “That is
`supported by Banin’s disclosure that the Au clusters ‘provid[e] large seeds
`for rapid InAs [nanoparticle] growth.’” Id. (citing Ex. 1005, 23:24–27).
`Dr. Green considers the gold clusters to have a “sufficiently well-defined
`chemical structure such that all molecules of the cluster compound possess
`approximately the same relative molecular formula” because each cluster is
`identical and promotes Banin’s seeded synthetic reaction. At the petition
`stage, that is essentially the extent of Petitioner’s and Dr. Green’s
`explanation for their view that Banin’s gold clusters are MCCs. Pet. 22–23.
`Patent Owner counterargues that Banin “does not disclose [an] MCC.”
`Resp. 25; see Ex. 2030 ¶¶ 99–131 (Dr. Cossairt’s opinions, and citations to
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`supporting evidence, explaining why Banin’s gold clusters are not MCCs).
`According to Patent Owner, Banin’s gold clusters “do not have a sufficiently
`well-defined chemical structure such that all molecules of the cluster
`compound possess the same relative molecular formula,” as required for
`MCCs. Resp. 25. On that point, Patent Owner states that Banin does not
`describe its gold clusters as “identical to one another,” as Petitioner contends
`and, further, “Petitioner points to the formula Au101(PPh3)21Cl5,” which
`“Banin itself describes as “merely a ‘suggested formula.’” Id. at 27 (citing
`Ex. 1005, 20:13–16; Ex. 2030 ¶¶ 101–102; Pet. 22). In Patent Owner’s view,
`Banin’s clusters range in size, and “different sizes are averaged out” to
`estimate “that the average number of gold atoms is approximately 101.” Id.
`at 28 (citing Ex. 2017, 12891; Ex. 2030 ¶¶ 107–108).
`
`A preponderance of the evidence supports Patent Owner’s position.
`Compare Ex. 1002 ¶ 90 (Dr. Green’s testimony and cited evidence), with
`Ex. 2030 ¶¶ 99–131 (Dr. Cossairt’s testimony and cited evidence). Banin
`discloses that the Au clusters are “synthesized by the published procedures”
`in Hutchison.17 Resp. 27–28; Ex. 1005, 2:25–26, 20:13–16; Ex. 2030
`¶¶ 105–110. As Dr. Cossairt points out, the gold cluster catalysts in Banin’s
`process are not well-defined and the molecular formula Au101(PPh3)21Cl5 is
`assigned based on a calculation that relies on the average of a range of
`particle sizes that result from the method of Hutchison. Ex. 2030 ¶¶ 106–
`108, 111 (citing Ex. 2017, 12891). Based on Dr. Cossairt’s comprehensive
`
`
`17 Weare et al., Improved Synthesis of Small (dCORE ≈ 1.5nm)Phosphine-
`Stabilized Gold Nanoparticles, 122 J. A J. AM. CHEM. SOC. 12890–12891
`(2000) (“Hutchison,” Ex. 2017).
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`examination of Hutchison’s disclosure and other supporting evidence, Patent
`Owner provides detailed reasons why the clusters that Banin prepares
`according to Hutchison’s process do not qualify as MCCs within the scope
`of claim 1. Ex. 2030 ¶¶ 99–131; Resp. 27–37.
`Specifically, referring to Hutchison Figure 1(a), reproduced below,
`Dr. Cossairt testifies, “The Hutchison process creates gold particle
`agglomerations of many different sizes.” Ex. 2030 ¶ 106.
`
`
`Ex. 2017, 12891, Fig. 1(a). Dr. Cossairt testifies that Hutchison’s Figure 1(a)
`“is a transmission electron microscopy [TEM] image along with an
`imbedded histogram that shows the size distribution of the gold particles.”
`Ex. 2030 ¶ 106. She also testifies that this figure shows, and the histogram
`confirms with its variety of differently sized black dots, that the sizes of the
`gold clusters prepared by Hutchison’s process vary by “a size difference
`ranging from at least 1.0–2.25 nm.” Id.
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`Dr. Cossairt further testifies that “Hutchison describes the gold
`clusters as ‘narrowly disperse’ nanoparticles 1.5 nm ±0.4 nm in diameter.”
`Id. ¶ 107 (citing Ex. 2017, 12890). In Dr. Cossairt’s view, “What this really
`means is that on average, there is a distribution of sizes from around 1.1–1.9
`nm, but as the histogram of” Hutchison’s Figure 1(a), reproduced above,
`“shows, the overall size variation is much broader.” Id. “Despite that broad
`mix of sizes,” Dr. Cossairt explains, “Hutchison attempted to assign a
`molecular weight formula to the synthesized gold clusters.” Id.
`Dr. Cossairt points out, “As Hutchison explains, Au101(PPh3)21Cl3 is
`‘an average molecular formula’ that was ‘estimated’ in order to assign a
`formula based off of the average 1.5 nm particle size” observed in
`Hutchison’s synthesized clusters. Id. (quoting Ex. 2017, 12891)
`(Dr. Cossairt’s emphasis). Additionally, as Dr. Cossairt observes, Hutchison
`uses the tilde symbol, “~”, when referring to the estimated particle size,
`namely, “~101,” which indicates that the disclosed particle size of 101 is
`only an “approximate formula for an average-sized particle.” Id. ¶ 113. In
`other words, both Banin and Hutchison assign a “suggested” value of 101 to
`the gold in the clusters. Compare Ex. 1005, 2:25–26, 20:13–16 (Banin,
`assigning a “suggested” formula to the gold clusters), with Ex. 2017, 12891
`(Hutchison, assigning the same “estimated” formula as Banin to the gold
`clusters). In Dr. Cossairt’s view, an ordinarily skilled artisan “would not
`confuse assumptions and estimates with a well-defined chemical structure,
`particularly where the data points used to generate that assumption are so
`widely varied.” Ex. 2030 ¶ 109.
`Dr. Cossairt asserts that Hutchison’s Figure 1(a) shows that gold
`clusters prepared according to its process do not “have the same molecular
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`mass.” Id. ¶ 106 (quoting Ex. 2017, 12890). Dr. Cossairt states, “A
`dispersity that varies by 25% is not considered monodisperse in the art.” Id.
`¶ 118 (citing Ex. 1001, 5:28–29). Dr. Cossairt testifies that an ordinarily
`skilled artisan “would understand that the claimed [MCC] would, at the very
`least, need to be able to be chemically characterized,” that Banin does not
`“actually chemically characterize the gold clusters produced by the
`Hutchison process,” and that both “references cite and rely upon an average
`gold droplet size that is then itself used to generate a suggested formula
`without actually characterizing any observed particles.” Id. ¶ 111.
`Dr. Cossairt testifies further, by using “gold particles that are not
`sufficiently well-defined,” Banin’s process cannot achieve the stated goal of
`the ’365 patent, which is to make “a population of nanoparticles that is
`essentially monodisperse.” Id. ¶ 118 (citing Ex. 1001, 5:28–29). Dr. Cossairt
`directs us to disclosures within the four corners of Banin, which indicate that
`“the diameter of the nanorods is dictated by the size of the gold particle” and
`that the diameter of Banin’s “nanorods can vary by up to 25%,” just like the
`gold particles do. Id.; Ex. 1005, 15:2–4, 23:17–18; Ex. 2017,
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