Trials@uspto.gov
`571-272-7822
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`Paper 17
`Date: May 19, 2021
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`
`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.
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`571-272-7822
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`
`
`
`Paper 17
`Date: May 19, 2021
`
`
`
`
`
`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.
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`IPR2021-00186
`Patent 8,524,365 B2
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`
`I. INTRODUCTION
`Samsung Electronics Co., Ltd. and Samsung Electronics America,
`Inc. (collectively, “Petitioner”) filed a Petition requesting an
`inter partes review of claims 1–23 of U.S. Patent No. 8,524,365 B2
`(Ex. 1001, “the ’365 patent”). Paper 1 (“Petition” or “Pet.”). Nanoco
`Technologies Ltd. (“Patent Owner”) filed a Preliminary Response to the
`Petition. Paper 12 (“Prelim. Resp.”). With our authorization, Petitioner filed
`a Reply (Paper 14, “Pet. Reply”), and Patent Owner filed a Sur-reply
`(Paper 15, “Sur-reply”). For purposes of this Decision, we accept the parties’
`contentions regarding real parties in interest.
`We have authority to determine whether to institute an inter partes
`review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2020). The
`standard for instituting an inter partes review is set forth in 35 U.S.C.
`§ 314(a), which provides that an inter partes review may not be instituted
`unless “there is a reasonable likelihood that the petitioner would prevail with
`respect to at least 1 of the claims challenged in the petition.” For reasons
`explained below, we determine that Petitioner shows a reasonable likelihood
`of prevailing with respect to at least one challenged claim. Accordingly, we
`institute inter partes review of all challenged claims based on all grounds
`asserted in the Petition. See SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1354,
`1359–60 (2018); Patent Trial and Appeal Board Consolidated Trial Practice
`Guide (Nov. 2019)1 (“The Board will not institute on fewer than all claims
`or all challenges in a petition.”).
`
`
`1 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
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`2
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`At this preliminary stage of the proceeding, we have not made a final
`determination as to the patentability of any challenged claim or any factual
`or legal issue underlying the patentability inquiry. Any final determination
`shall be based on the full trial record. Any argument not raised by Patent
`Owner in a timely filed response to the Petition, or as permitted in another
`manner during trial, shall be deemed waived, even if it was presented in the
`Preliminary Response. Nothing in this Decision represents an invitation for
`Petitioner to supplement the information presented in the Petition.
`A. 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.
`Patent No. 7,588,828, 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.
`
`B. 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
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`precursor species containing a second ion to be incorporated into the core
`semiconductor material.” Id. at 20:54–62.
`The Specification 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
`Specification 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.
`The Specification describes the preparation of two different molecular
`cluster compounds. Id. at 15:5–31. The Specification further 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.
`
`C. Challenged Claims
`Petitioner challenges independent claim 1 and dependent claims 2–23
`of the ’365 patent. Independent claim 1, set forth below, is illustrative of the
`claimed subject matter.
` 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.
`
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`D. Asserted Grounds of Unpatentability
`Petitioner asserts the following grounds of unpatentability:
`
`
`
`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)3
`103(a)
`103(a)
`103(a)
`103(a)
`
`Reference(s)
`Banin2
`Banin
`Banin, Herron4
`Banin, Treadway5
`Zaban,6 Farneth,7 Yu8
`Lucey,9 Ahrenkiel10
`
`
`2 Banin et al., WO 03/097904 A1, published Nov. 27, 2003 (“Banin,”
`Ex. 1005).
`3 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 287–88 (2011), amended 35 U.S.C. § 103, effective March 16,
`2013. Because the application from which the ’365 patent issued has an
`effective filing date prior to March 16, 2013, the pre-AIA version of § 103
`applies.
`4 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).
`5 Treadway et al., U.S. Patent No. 6,815,064 B2, issued Nov. 9, 2004
`(“Treadway,” Ex. 1015).
`6 Zaban et al., Photosensitization of Nanoporous TiO2 Electrodes with InP
`Quantum Dots, 14 Langmuir 3153–3156 (1998) (“Zaban,” Ex. 1006).
`7 Farneth et al., Bulk Semiconductors from Molecular Solids: A Mechanistic
`Investigation, 4 CHEM. MATER. 916–922 (1992) (“Farneth,” Ex. 1009).
`8 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).
`9 Lucey et al., US 7,193,098 B1, issued Mar. 20, 2007 (“Lucey,” Ex. 1011).
`10 Ahrenkiel et al., Synthesis and Characterization of Colloidal InP
`5
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`Patent 8,524,365 B2
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`Claims Challenged
`12–16
`
`35 U.S.C. §
`103(a)
`
`Reference(s)
`Lucey, Ahrenkiel, Treadway
`
`
`Petitioner advances the Declaration of Mark A. Green, Ph.D, in
`support of the challenges stated in the Petition. Ex. 1002.
`II. ANALYSIS
`A. Discretion to Institute Under 35 U.S.C. § 314(a)
`Institution of inter partes review is discretionary:
`The Director may not authorize an inter partes review to be
`instituted unless the Director determines that the information
`presented in the petition filed under section 311 and any response
`filed under section 313 shows that there is a reasonable
`likelihood that the petitioner would prevail with respect to at least
`1 of the claims challenged in the petition.
`35 U.S.C. § 314(a). This language provides the Director with discretion to
`deny institution of a petition. See Cuozzo Speed Techs., LLC v. Lee, 136 S.
`Ct. 2131, 2140 (2016) (“[T]he agency’s decision to deny a petition is a
`matter committed to the Patent Office’s discretion.”); Patent Trial and
`Appeal Board Consolidated Trial Practice Guide (“CTPG”) at 55 (November
`2019), available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`The Director has delegated his authority under § 324(a) to the Board. 37
`C.F.R. § 42.4(a) (“The Board institutes the trial on behalf of the Director.”).
`The Leahy-Smith America Invents Act was “designed to establish a
`more efficient and streamlined patent system that will improve patent quality
`and limit unnecessary and counterproductive litigation costs.” H.R. Rep.
`No. 112−98, pt. 1, at 40 (2011), 2011 U.S.C.C.A.N. 67, 69 (reviews were
`
`
`Quantum Rods, 3 (6) NANO LETTERS 833–837 (2003) (“Ahrenkiel,” Ex.
`1012).
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`meant to be “quick and cost effective alternatives to litigation”); see also
`S. Rep. No. 110−259, at 20 (2008); CTPG 56. The Board recognized these
`goals, but also “recognize[d] the potential for abuse of the review process by
`repeated attacks on patents.” General Plastic Co. v. Canon Kabushiki
`Kaisha, IPR2016-01357, Paper 19, 16−17 (PTAB Sept. 6, 2017)
`(precedential).
`In NHK Spring Co. v. Intri-Plex Technologies, Inc., IPR2018-00752,
`Paper 8 (PTAB Sept. 12, 2018) (precedential), the Board determined that the
`advanced state of a parallel proceeding is an additional factor weighing in
`favor of denying institution under 35 U.S.C. § 314(a). Id. at 19–20. In Apple
`Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020)
`(precedential) (“Fintiv”), the Board articulated a list of factors that we
`consider in determining whether to exercise discretion to deny institution
`based on an advanced stage of a parallel proceeding:
`1. whether the court granted a stay or evidence exists that one
`may be granted if a proceeding is instituted;
`2. proximity of the court’s trial date to the Board’s projected
`statutory deadline for a final written decision;
`3. investment in the parallel proceeding by the court and the
`parties;
`4. overlap between issues raised in the petition and in the parallel
`proceeding;
`5. whether the petitioner and the defendant in the parallel
`proceeding are the same party; and
`6. other circumstances that impact the Board’s exercise of
`discretion, including the merits.
`Fintiv, Paper 11, 5–6. “These factors relate to whether efficiency, fairness,
`and the merits support the exercise of authority to deny institution in view of
`an earlier trial date in the parallel proceeding.” Id. In evaluating these
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`factors, we take “a holistic view of whether efficiency and integrity of the
`system are best served by denying or instituting review.” Id. (citing
`CTPG 58).
`Patent Owner has asserted the ’365 patent against Petitioner in the
`District Court case. Pet. 71; Paper 6, 1. Petitioner contends that because
`Fintiv factors 3, 4, and 6 weigh in favor of institution and because Fintiv
`factors 1, 2, and 5 do not outweigh the strength of factors 3, 4, and 6, the
`Fintiv factors weigh against discretionary denial. Pet. 67–70; Reply 1–5.
`Patent Owner contends the advanced stage of the related District Court case
`presents a particularly strong case for exercising discretion to deny
`institution of review under 35 U.S.C. § 314(a). Prelim. Resp. 4–11. In our
`analysis below, we address each Fintiv factor in turn.
`1. First Fintiv Factor: Existence or Likelihood of Stay
`Patent Owner argues that this factor weighs in favor of denying
`institution because Petitioner’s motion to stay the District Court case was
`denied. Prelim. Resp. 6–7. Petitioner counters that the District Court’s denial
`of the motion to stay “was in accordance with that court’s ‘consistent
`practice of denying motions to stay when the PTAB has yet to institute post-
`grant proceedings,’” and that Petitioner will have an opportunity to renew its
`motion to stay after our institution decision. Reply 1–2 (quoting Ex. 2019,
`2). Patent Owner notes that a renewed motion to stay may not be granted,
`particularly given the effort the parties and the District Court have put into
`the District Court case. Sur-Reply 1–4.
`The District Court case has not been stayed, so Petitioner’s argument
`with respect to this factor rests on the mere possibility that a stay may be
`granted. Quantifying that possibility is difficult. The District Court’s denial
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`of Petitioner’s motion to stay decreases the likelihood of a stay, but not very
`much, given that the denial was based on the District Court’s policy of
`waiting for an institution decision before considering a stay. Petitioner’s plan
`to pursue a renewed stay motion may increase the likelihood of a stay, but
`perhaps not by very much, given the effort the parties and the District Court
`have invested in resolving the infringement litigation. Accordingly, we
`conclude that the first Fintiv factor is neutral with respect to exercising our
`discretion to deny.
`2. Second Fintiv Factor: Proximity of Anticipated
`Trial Date and Statutory Deadline for Final Written Decision
`Patent Owner contends this factor also weighs in favor of denial,
`because the presently scheduled trial date in the District Court case, that is,
`October 4, 2021, is “more than seven months earlier than the projected
`statutory deadline for a final written decision of the requested IPR, which
`would issue sometime in May 2022.” Prelim. Resp. 7. Patent Owner further
`contends the facts of the present proceeding compare favorably to both NHK
`and Fintiv, in which the Board ultimately denied institution. Id. at 7–8
`(citing NHK, Paper 8, 20; Apple Inc. v. Fintiv, Inc., IPR2020-00019,
`Paper 15 at 13 (PTAB May 13, 2020) (informative) (“Fintiv II”)).
`Petitioner contends that “this factor is neutral or weighs at most only
`slightly in favor of” Patent Owner, because the trial judge has “six other
`trials scheduled . . . the same day,” and “because of the ongoing COVID-19
`pandemic.” Pet. 67. Petitioner also argues that the scheduled trial date
`should be given little weight because the District Court case may be stayed if
`we institute the present proceeding. Reply 3–4.
`This factor favors exercising discretion to deny, because the amount
`of time between the District Court’s trial date and our likely issuance of a
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`final written decision is so long that any change to the trial date is unlikely to
`result in the final written decision being issued before the trial of the District
`Court case. Although there may be some chance that the District Court case
`will be stayed, that possibility was accounted for in Fintiv factor 1, discussed
`above, and considering it here would give it more weight than deserved.
`Thus, we determine that the second Fintiv factor weighs in favor of
`exercising our discretion to deny institution under § 314(a).
`3. Third Fintiv Factor: Investment in Parallel Proceeding
`Under this factor, we first consider Petitioner’s timing in filing the
`Petition. If a petitioner, “faced with the prospect of a looming trial date,
`waits until the district court trial has progressed significantly before filing a
`petition,” that decision “may impose unfair costs to a patent owner.”
`Fintiv, 11. On the other hand, “[i]f the evidence shows that the petitioner
`filed the petition expeditiously, such as promptly after becoming aware of
`the claims being asserted, this fact has weighed against exercising the
`authority to deny institution.” Id.
`Petitioner asserts that it “filed its Petition before serving its invalidity
`contentions, less than two months after [Patent Owner] served its
`infringement contentions identifying the asserted claims, and less six months
`after Petitioner was served with the complaint in the” District Court case.
`Pet. 69 (citing Ex. 1018; Ex. 1020). Patent Owner disagrees, arguing that
`Petitioner filed the Petition “on the same day that Petitioner served its
`Invalidity Contentions.” Prelim. Resp. 11 (citing Ex. 2022, 204). The record
`supports Patent Owner’s view that service of the Petition and the invalidity
`contentions occurred on the same day (namely, November 9, 2020), but the
`record does not reflect which document was served first on that day.
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`Compare Ex. 2022, 204 (Certificate of Service), with Paper 4, 1 (filing date
`accorded Petition). In any event, we find no unreasonable delay in
`Petitioner’s filing of the Petition.
`Second, we consider “the amount and type of work already completed
`in the parallel litigation by the court and the parties at the time of the
`institution decision.” Fintiv, 9. “Specifically, if, at the time of the institution
`decision, the District Court has issued substantive orders related to the patent
`at issue in the petition, this fact favors denial.” Id. at 9–10.
`Petitioner contends this factor weighs in favor of institution, because
`although “[t]he Markman hearing is scheduled for approximately one month
`before the institution decision” falls due, “the deadlines for completing fact
`discovery, exchanging expert reports, and filing dispositive motions all
`occur after the anticipated deadline for the institution decision.” Pet. 68
`(citing Ex. 1018, which identifies March 26, 2021, as the date scheduled for
`the Markman hearing). Patent Owner responds that, in addition to having
`conducted the Markman hearing, “by the time the Board issues its decision
`on whether to institute the requested IPR, the parties will have served initial
`expert reports, fact discovery will have closed, and dispositive motions will
`be a month out,” requiring “immense time and effort for both sides.” Prelim.
`Resp. 11 (citing Ex. 1018). After pre-institution briefing was complete in
`this proceeding, the parties jointly informed the Board that the District Court
`had entered, on May 10, 2021, a memorandum opinion and order on claim
`construction. See Ex. 1091, 39 (District Court’s order).
`At this time, the parties have completed fact discovery, served initial
`expert reports, and completed Markman briefing and an associated hearing.
`Ex. 1018. In addition, the District Court has issued its Markman order on
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`claim construction. See Ex. 1091. Thus, significant work has been done in
`the District Court case. On the other hand, much work remains, including the
`preparation and service of rebuttal expert reports, expert discovery,
`dispositive motions, and pretrial motions and disclosures. Ex. 1018, 1–3.
`The level of investment of time and resources in the District Court
`case is substantial and somewhat mitigated by Petitioner’s diligence in filing
`the Petition. Accordingly, we find this factor weighs somewhat in favor of
`exercising our discretion to deny institution under § 314(a).
`4. Fourth Fintiv Factor: Overlap Between
`Issues Raised in Petition and in Parallel Proceeding
`Patent Owner contends this factor favors denial of institution, because
`there is “nearly complete overlap between the invalidity issues raised in the
`Petition and in the [District Court case],” and because “[a]ll of the ground
`raised in the Petition are being raised, or are reserved to be raised, in the
`[District Court case].” Prelim. Resp. 12.
`Petitioner argues that it has proposed a Sotera-type stipulation that
`obviates any concerns of duplicative efforts between the District Court and
`the Board. Reply 4–5 (citing Sotera Wireless, Inc. v. Masimo Corp.,
`IPR2020-01019, Paper 12, 18–19 (PTAB Dec. 1, 2020) (precedential as to
`§ II.A) (“Sotera”)). Petitioner stipulates that,
`for those patents for which the Board institutes IPR, [Petitioner]
`will not pursue in the [District Court case] the specific grounds
`asserted in the IPR or ‘any other ground . . . that was raised or
`could have been reasonably raised in an IPR (i.e., any ground that
`could be raised under §§ 102 or 103 on the basis of prior art
`patents or printed publications).’
`Id. Patent Owner responds that Petitioner waited too long to file its Sotera
`stipulation and that, even with the stipulation, there still may be overlap with
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`the invalidity arguments in the District Court case unless we institute in the
`present proceeding and all four related inter partes reviews. Sur-Reply 4–5.
`Concerns about the degree of overlap may be mitigated where a
`petitioner agrees not to pursue in the parallel District Court litigation the
`grounds advanced in the petition. Sand Revolution II, LLC v. Continental
`Intermodal Group – Trucking LLC, Case IPR2019-01393, Paper 24, 11
`(PTAB June 16, 2020). A petitioner stipulating not to pursue “any ground
`raised or that could have been raised” weighs strongly in favor of not
`exercising discretionary denial. Sotera, Paper 12, 18–19. Petitioner
`unequivocally stipulates that, if the Board institutes this inter partes review,
`it will not pursue in the District Court case “the specific grounds asserted in
`the” Petition, nor any other ground “that was raised or that could have been
`reasonably raised” in any inter partes review proceeding. Reply 4. Petitioner
`makes clear that this stipulation extends to “any ground that could be raised
`under §§ 102 or 103 on the basis of prior art patents or printed publications.”
`Id. at 4–5.
`We are not persuaded that Petitioner delayed in filing its stipulation
`under Sotera, as that decision was not designated as precedential until after
`the Petition was filed. Considering that Petitioner has agreed to be bound by
`a stipulation that is substantively the same as the stipulation addressed in
`Sotera, we follow the Sotera precedent in finding that this factor weighs
`strongly against exercising discretion to deny. Sotera, Ex. 1038, 7–8.
`5. Fifth Fintiv Factor: Whether Petitioner and
`Parallel Proceeding Defendant Are the Same
`The parties do not dispute that the same parties involved in the present
`proceeding are also involved in the District Court case. Pet. 70 (“[T]he
`Petitioner here and the defendant in the District Court case” are the same
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`party.); Prelim. Resp. 14. Thus, this factor weighs in favor of exercising our
`discretion to deny institution under § 314(a).
`
`6. Sixth Fintiv Factor: Other Circumstances (Including Merits)
`Patent Owner argues that “the Petition’s grounds are weak and do not
`justify instituting on the merits.” Prelim. Resp. 14. Petitioner responds that
`“the merits of the grounds of this Petition are strong.” Pet. 70.
`Petitioner presents six obviousness grounds and one anticipation
`ground. Pet. 14–15. For reasons that follow, we find that Petitioner
`establishes a likelihood of prevailing with respect to all challenged claims
`based on the grounds that assert Banin. As discussed in more detail below,
`we find the evidence and arguments presented by Petitioner persuasive on
`this preliminary record and sufficient to meet our standard for instituting an
`inter partes review. The question of whether the challenged claims are
`unpatentable remains open for determination at trial, however, and the
`present record shows that there may be merit to Patent Owner’s substantive
`arguments. Thus, we find the strength of the merits is neutral with respect to
`exercising our discretion to deny institution under § 314(a).
`7. Conclusion on the Factors
`Because the analysis is fact-driven, no single factor is determinative
`of whether we exercise our discretion to deny institution under 35 U.S.C.
`§ 314(a). On this record, after weighing all of the factors and taking a
`holistic view, we determine that the facts in this case that weigh against
`exercising discretion outweigh the facts that favor exercising discretion.
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`Accordingly, we determine that the circumstances presented weigh against
`exercising our discretion to deny institution under § 314(a).
`B. Person of Ordinary Skill in the Art
`The level of skill in the art is an issue of fact. 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)). Petitioner submits that 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
`experience and vice-versa.” Pet. 20–21 (citing Ex. 1002 ¶ 72–75). Patent
`Owner does not address Petitioner’s view or propose a counter definition.
`On this record, 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, at this stage, and
`consistent with the disclosures of the ’365 patent and prior art. Patent Owner
`may advance a different definition in a timely filed response to the Petition.
`C. Claim Construction
`In an inter partes review, we construe a claim in an unexpired patent
`“in accordance with the ordinary and customary meaning of such claim as
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`understood by one of ordinary skill in the art and the prosecution history
`pertaining to the patent.” 37 C.F.R. § 42.100(b) (2020). “[T]he ordinary and
`customary meaning of a claim term is the meaning that the term would have
`to a person of ordinary skill in the art in question at the time of the
`invention.” Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en
`banc). “Importantly, the person of ordinary skill in the art is deemed to read
`the claim term not only in the context of the particular claim in which the
`disputed term appears, but in the context of the entire patent, including the
`specification.” Id. “[W]e need only construe terms ‘that are in controversy,
`and only to the extent necessary to resolve the controversy.’” Nidec Motor
`Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed.
`Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d
`795, 803 (Fed. Cir. 1999)).
`We agree with the parties that no claim term requires express
`construction for purposes of this Decision. Pet. 21; Prelim. Resp. 35–37; 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.’”)). We take note, however, that the District Court
`construed the term “molecular cluster compound” in the challenged claims
`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.” Ex. 1091,
`17. To the extent this or any other claim term requires further discussion for
`purposes of trial institution, we provide it in our analysis of the asserted
`grounds. We invite the parties to address at trial, to the extent permissible
`under our rules, our preliminary findings in that regard.
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`D. Asserted Anticipation by Banin
`Petitioner asserts that Banin anticipates the subject matter of claims 1,
`
`7–12, 17, 22 and 23. Pet. 14. Petitioner directs us to information that shows
`sufficiently, for purposes of trial institution, that Banin anticipates those
`claims. See id. at 22–31; cf. Prelim. Resp. 37–42. Petitioner explains
`adequately how and why Banin teaches every limitation of claim 1. Pet. 22–
`31 (mapping the claim limitations to disclosures in Banin).
`Patent Owner’s counterarguments do not undercut the sufficiency of
`Petitioner’s showing for purposes of trial institution. See Prelim. Resp. 37–
`42. Further, Patent Owner raises no arguments specific to any dependent
`challenged claim. See id. Accordingly, we find Petitioner has demonstrated a
`reasonable likelihood of prevailing at trial with respect to claims 1, 7–12, 17,
`22 and 23 based on anticipation by Banin. Pet. 22– 31.
`To provide guidance to the parties and streamline the trial, we address
`in detail Patent Owner’s argument that Petitioner fails to show adequately
`that Banin discloses a molecular cluster compound. Prelim. Resp. 37–42. In
`Patent Owner’s view, Banin’s “gold droplet,” in a solution-liquid-solid
`method, is not a molecular cluster compound. Id. at 38. Patent Owner points
`out that Banin’s “method uses ‘a metal nanoparticle as a catalyst for rod
`growth.’” Id. at 37–38 (citing Ex. 1005, 14:3–4).11 Banin states, “In the case
`of in-situ formation, InCl3 is reduced by NaBH4 to form metallic indium
`nanodroplets that direct one-dimensional rod growth.” Ex. 1005, 4–6.
`We find these teachings do not undercut the sufficiency of Petitioner’s
`showing for purposes of trial institution. See Prelim. Resp. 37–42 (Patent
`
`11 We refer to original page numbers, or column and line numbers, rather
`than page numbers added by a party to the exhibits.
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`Owner’s argument on this point). We discern no claim language that
`excludes a nanoparticle, produced under Banin’s solid-liquid-solid
`conditions, from the scope of any challenged claim. Id. (identifying no
`limiting claim language). Furthermore, Petitioner admits that “the main
`idea” in Banin involves the introduction of “nanoparticles of a metal catalyst
`that serve as starting nanocrystals from which nanorods of inorganic
`semiconductors grow in solution.” Pet. 28; Ex. 1005, 6:3–8. Petitioner relies
`on Dr. Green’s declaration testimony, which is unrebutted by opposing
`testimony at this stage, indicating that an ordinarily skilled artisan would
`have recognized Banin’s gold clusters as comprising a molecular cluster
`compound. Compare Prelim. Resp. 37–42 (asserting attorney argument that
`Banin’s solid-liquid-solid method cannot employ a molecular cluster
`compound), with Pet. 22–23, and Ex. 1002 ¶ 90 (Dr. Green’s testimony).
`Dr. Green’s opinions on this particular point (Ex. 1002 ¶ 90) are
`consistent with Banin’s disclosure of “‘small Au[gold] clusters’ having ‘the
`suggested formula Au101(PPh3)21Cl5.’” Pet. 22; Ex. 1005, 6:3–8, 17:22–25,
`20:12–27. Although we agree with Patent Owner that Banin describes that
`formula as “suggested,” the formula itself is specific enough for purposes of
`trial institution. Prelim. Resp. 39; Ex. 1005, 20:15. Accordingly, we find
`Petitioner shows sufficiently that Banin’s gold clusters comprise “clusters
`of 3 or more metal’ atoms with ‘associated ligands’ that ‘are identical to one
`another.’” Pet. 22 (citing Ex. 1002 ¶ 90).12
`
`
`12 Petitioner further asserts that Banin’s gold cluster compound acts “as a
`seed or nucleation point upon which nanoparticle growth can be initiated.”
`Pet. 22. We need not adopt or accept that factual proposition at this stage of
`the proceeding. We note only, “Nothing in the claim requires the molecular
`cluster compound to be the seed or template itself.” Ex. 1091, 22. “The
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`Petitioner also shows sufficiently that Banin discloses a “core
`semiconductor material” (specifically, indium arsenide (“InAs”)) “with an
`attached” gold-based molecular cluster compound (id. at 23) “obtained by
`using Au101 clusters as the catalyst particles” (Ex. 10
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