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
`
`SECOND DECLARATION OF MARK A. GREEN, PH.D.
`
`Samsung Ex. 1093
`IPR2021-00186
`Samsung Electronics Co., Ltd. et al. v. Nanoco Technologies, Ltd.
`
`
`____________________________________________
`
`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
`
`SECOND DECLARATION OF MARK A. GREEN, PH.D.
`
`Samsung Ex. 1093
`IPR2021-00186
`Samsung Electronics Co., Ltd. et al. v. Nanoco Technologies, Ltd.
`
`
`
`TABLE OF CONTENTS
`
`INTRODUCTION ........................................................................................... 1
`I.
`QUALIFICATIONS ........................................................................................ 2
`II.
`III. UNDERSTANDING OF PATENT LAW ...................................................... 2
`IV. OVERVIEW OF THE TECHNOLOGY AND ’365 PATENT ...................... 2
`V.
`LEVEL OF ORDINARY SKILL IN THE ART ............................................. 2
`VI. CLAIM CONSTRUCTION ............................................................................ 3
`VII. OVERVIEW OF THE PRIOR ART ............................................................... 3
`VIII. RESPONSE TO PO’S AND DR. COSSAIRT’S ARGUMENTS .................. 3
`A.
`Ground 1: Claims 1, 7-12, 17, 22, and 23 Are Anticipated by
`Banin...................................................................................................... 3
`1.
`Banin Discloses a MCC .............................................................. 4
`
`2.
`
`Yu Provides Additional Evidence Why Banin Renders
`the Challenged Claims of Ground 1 Unpatentable ...................17
`
`3.
`
`Banin Discloses Conditions Permitting Seeding and
`Growth.......................................................................................18
`Ground 2: Claims 1, 7-12, 17, 22, and 23 Are Rendered
`Obvious By Banin ...............................................................................19
`Ground 3: Claims 2-6 and 18-21 Are Rendered Obvious by
`Banin in View of Herron .....................................................................20
`Ground 4: Claims 13 and 14 Are Rendered Obvious by Banin
`in View of Treadway ...........................................................................27
`Ground 5: Claims 1-9 and 17-23 Are Rendered Obvious by
`Zaban in View of Farneth and Yu .......................................................28
`
`B.
`
`C.
`
`D.
`
`E.
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`F.
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`IX.
`
`Grounds 6-7: Claims 1, 2, 4, 7-18, and 22-23 Are Rendered
`Obvious by Lucey in View of Ahrenkiel, Plus Treadway,
`Collectively .........................................................................................36
`PO’S BACKGROUND SECTIONS ARE NOT RELEVANT TO
`THE ISSUES IN THIS PROCEEDING ........................................................39
`NO SECONDARY CONSIDERATIONS ....................................................40
`X.
`XI. CONCLUSION ..............................................................................................41
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`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”)
`
`Exhibit No.
`1001
`1002
`
`1003
`1004
`1005
`
`1006
`
`1007
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`1008
`
`1009
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`1010
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`1011
`1012
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`1013
`1014
`1015
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`Exhibit No.
`1016
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`1017
`
`1018
`
`1019
`
`1020
`
`1021
`
`1022
`
`1023
`1024
`1025
`1026
`1027
`1028
`1029
`1030
`1031
`1032
`1033
`1034
`1035
`
`Description
`N. Herron et al., Crystal Structure and Optical Properties of
`Cd32S14(SC6H5)36·DMF4, a Cluster with a 15 Angstrom CdS
`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)
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`Exhibit No.
`1036
`1037
`
`1038
`
`1039
`
`1040
`1041
`
`1042
`1043
`1044
`
`1045
`
`1046
`
`1047
`
`1048
`
`1049
`
`Description
`U.S. Patent App. No. 2003/0106488 to Huang et al.
`NANOPARTICLES: FROM THEORY TO APPLICATION (Günter Schmid
`ed., March 2004)
`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)
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`Exhibit No.
`1050
`
`1051
`1052
`1053
`1054
`1055
`1056
`
`1057
`
`1058
`
`1059
`
`1060
`
`1061
`
`1062
`1063
`1064
`1065
`
`Description
`Nigel L. Pickett et al., Syntheses of Semiconductor Nanoparticles
`Using Single-Molecular Precursors, 1 CHEMICAL REC. 467 (2001)
`INTENTIONALLY OMITTED
`INTENTIONALLY OMITTED
`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”)
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`Exhibit No.
`1066
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`1067
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`1068
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`1069
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`1070
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`1071
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`1072
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`1073
`1074
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`1075-1089
`1090
`1091
`
`1092
`
`1093
`
`Description
`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)
`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
`May 11, 2021 Claim Construction Order from Nanoco
`Technologies Ltd. v. Samsung Electronics Co., Ltd., No. 2:20-cv-
`00038 (E.D. Tex.)
`Declaration of Jeremy Wilson in Support of Petitioners’
`Unopposed Motion for Pro Hac Vice Admission of Jeremy
`Wilson
`Second Declaration of Mark A. Green Concerning U.S. Patent
`No. 8,524,365
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`Exhibit No.
`1094
`1095
`1096
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`1097
`
`1098
`
`1099
`
`Description
`INTENTIONALLY OMITTED
`INTENTIONALLY OMITTED
`J. Leeb et al., Colloidal Synthesis and Electroluminescence
`Properties of Nanoporous MnIIZnS Films, 103 J. PHYSICAL
`CHEMISTRY B 7839 (1999)
`Excerpt from RONALD W. MISSEN ET AL., INTRODUCTION TO
`CHEMICAL REACTION ENGINEERING AND KINETICS (1999)
`Zheng Wei Pan et al., Germanium-Catalyzed Growth of Zinc
`Oxide Nanowires: A Semiconductor Catalyst for Nanowire
`Synthesis, 44 ANGEWANDTE CHEMIE INT’L ED. 274 (2005)
`October 28, 2021 Deposition Transcript of Brandi Cossairt, Ph.D.
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`I, Mark A. Green, Ph.D., declare as follows:
`
`I.
`
`INTRODUCTION
`1. My name is Mark A. Green. I have been retained as an expert witness
`
`on behalf of Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc.
`
`(collectively, “Samsung”) for the above-captioned Petition for Inter Partes Review
`
`(“IPR”) of U.S. Patent No. 8,524,365 (“the ’365 Patent”) (Ex. 1001).
`
`2.
`
`For my time working on this matter, I am being compensated at my
`
`standard rate of $260 per hour. I have no financial interest in this matter and my
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`compensation is not contingent on my opinions or affected by the outcome of this
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`matter. I am not, nor have I ever been, an employee of Samsung and I have no
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`financial interest in Samsung.
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`3.
`
`On November 9, 2020, I submitted a declaration that provided my
`
`opinions that claims 1, 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 15, 16, 17, 18, 19, 20,
`
`21, 22, and 23 (the “Challenged Claims”) of the ’365 patent are unpatentable. Since
`
`that time, Patent Owner (“PO”) submitted a response brief that provides counter-
`
`arguments that the Challenged Claims are patentable. See Paper 25. In addition,
`
`PO’s expert Dr. Cossairt provided a declaration setting forth his opinions about the
`
`patentability of the Challenged Claims of the ’365 patent. See Ex. 2030.
`
`4.
`
`I have been asked to provide my opinions in reply to the PO’s response
`
`and Dr. Cossairt’s declaration.
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`5.
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`In forming the opinions expressed herein, I have relied upon my
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`education and experience in the field and considered the viewpoint of a person
`
`having ordinary skill in the art (POSITA) at the time of the alleged invention. I have
`
`also considered the materials cited herein, including the ’365 patent and its file
`
`history as well as the other documents listed on the exhibit list for this petition.
`
`6.
`
`It remains my opinion that the Challenged Claims of the ’365 patent are
`
`invalid over the prior art cited herein and in the petition.
`
`II. QUALIFICATIONS
`7. My qualifications were set out in my November 9, 2020 declaration.
`
`Ex. 1002 ¶¶ 20-33.
`
`III. UNDERSTANDING OF PATENT LAW
`Although I am not an attorney, I have been informed about certain legal
`8.
`
`principles. The understanding of the law I applied in forming my opinions in this
`
`matter are set out in my previous declaration executed November 9, 2020. Ex. 1002
`
`¶¶ 34-43.
`
`IV. OVERVIEW OF THE TECHNOLOGY AND ’365 PATENT
`An overview of the technology and ’365 patent was set out in my
`9.
`
`November 9, 2020 declaration. Ex. 1002 ¶¶ 44-71.
`
`V. LEVEL OF ORDINARY SKILL IN THE ART
`10. My opinion regarding the level of ordinary skill in the art was set out
`
`in my November 9, 2020 declaration. Ex. 1002 ¶¶ 72-75.
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`11.
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`I disagree with Dr. Cossairt’s proposed level of ordinary skill in the art.
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`Ex. 2030 ¶ 24. Nevertheless, my opinions would not change even under
`
`Dr. Cossairt’s proposed level of ordinary skill in the art.
`
`VI. CLAIM CONSTRUCTION
`12. My opinions regarding claim construction were set out in my
`
`November 9, 2020 declaration. Ex. 1002 ¶¶ 76-78.
`
`13.
`
`I agree with PO that claim construction, including of the phrase
`
`“molecular cluster compound,” is unnecessary to resolve this IPR. POR 23-25. In
`
`my opinion, the phrase “molecular cluster compound is indefinite.” Regardless, the
`
`Challenged Claims are unpatentable under parties’ alternative constructions, as well
`
`as the District Court’s construction, of “molecular cluster compound.”
`
`VII. OVERVIEW OF THE PRIOR ART
`14. An overview of the prior art was provided in my November 9, 2020
`
`declaration. Ex. 1002 ¶¶ 79-87.
`
`VIII. RESPONSE TO PO’S AND DR. COSSAIRT’S ARGUMENTS
`A. Ground 1: Claims 1, 7-12, 17, 22, and 23 Are Anticipated by
`Banin
`15. PO does not dispute that Banin discloses nearly every limitation of the
`
`Challenged Claims. Instead, PO concentrates on only two limitations: (1) whether
`
`Banin discloses a MCC; and (2) whether Banin discloses conditions permitting
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`seeding and growth. POR 25-42. In my opinion, Banin discloses both of those claim
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`elements. Therefore, the Challenged Claims of Ground 1 are anticipated and
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`unpatentable. Ex. 1002 ¶¶ 88-117.
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`Banin Discloses a MCC
`1.
`16. PO argues that Banin does not disclose a MCC, even though Banin
`
`provides only a single, specific molecular formula for its gold clusters—
`
`Au101(PPh3)21Cl5—for use in the reaction I identified in my original declaration.
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`POR 25-37; Ex. 1005, 20:13-16; see, e.g., Ex. 1002 ¶¶88-92. In my opinion, PO’s
`
`arguments are incorrect and are an improper attempt to change the clear disclosure
`
`in Banin.
`
`17. To begin, while PO points to the Hutchison reference cited in Banin to
`
`argue that the gold clusters disclosed in Banin are not MCCs because they are not
`
`identical to one another, that argument is wrong. See POR 25-32. Regardless of
`
`whether the gold particles in Hutchison are MCCs, a POSITA would recognize that
`
`Banin identifies only one specific cluster—having a single molecular formula (i.e.,
`
`Au101(PPh3)21Cl5) and size (1.4nm) with more than three metal atoms—which a
`
`POSITA would recognize as a MCC. Ex. 1005, 20:13-16; Ex. 1002 ¶90. Figure 10a
`
`of Banin provides further support. Although PO attempts to point to the transmission
`
`electron microscopy (“TEM”) image from Hutchison in support of PO’s argument
`
`(see POR 28 (citing Ex. 2017, Fig. 1(a)), PO overlooks that Banin provides its own
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`TEM image that demonstrates that the “Au101 clusters” in Banin do not have the size
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`distribution that the clusters in Hutchison exhibit. Compare Ex. 1005, 11:15, Fig.
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`10a, with Ex. 2017, Fig. 1(a).
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`
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`18. Contrasting the Figure 10a from Banin with the figure from Hutchison
`
`relied on by PO in its response (shown above), it is evident that Banin’s TEM is
`
`consistent with uniform Au101(PPh3)21Cl5 MCCs, while the gold particles illustrated
`
`in Hutchison are consistent with a size distribution of clusters. Based on these
`
`images, a POSITA would recognize that the MCCs in Banin are purified and size
`
`selected, even if those MCCs in Banin were made starting with the production
`
`method disclosed in Hutchison.
`
`19. This becomes more apparent when you understand how to interpret
`
`these TEM images. Banin’s MCCs, like most MCCs, are not perfectly spherical. A
`
`POSITA would have understood that a non-spherical MCC will look different when
`
`viewed from different angles. As a result, a POSITA would have understood that
`
`the profiles of Banin’s non-spherical Au101(PPh3)21Cl5 MCCs as shown in the TEM
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`will vary from MCC to MCC because each MCC will be oriented differently even
`
`though those MCCs are in fact identical. This is illustrated in panels (a) and (b) of
`
`the figure below, which show the effect of TEM imaging a number of identical non-
`
`spherical MCCs, where (a) shows a three-dimensional rendering of the MCCs, and
`
`(b) illustrates the two-dimensional (and finite resolution) TEM, which if interpreted
`
`out of context may look like some particles are smaller than others. However, this
`
`is not the end of the story. MCCs can aggregate next to one another, which due to
`
`the two-dimensional nature of the TEM and its finite resolution, can make two
`
`MCCs appear as one. I have further illustrated this in panels (c) and (d) below.
`
`20. Turning back to Figure 10a of Banin, through this lens a POSITA would
`
`understand that this TEM is showing a population of uniform MCCs. And this
`
`becomes even more striking when this is contrasted with the TEM figure from
`
`Hutchison, which looks different and further confirms that Banin’s MCCs do not
`
`have Hutchison’s size distribution.
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`21.
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`In my opinion, this improvement over Hutchison’s gold particles is
`
`common and expected in the field. An initial paper that describes a synthesis of a
`
`molecule will often have byproducts, and subsequent papers that employ the same
`
`molecule will use a purified form.
`
`22.
`
`In my opinion, contrary
`
`to PO’s argument
`
`that Banin’s
`
`Au101(PPh3)21Cl5 clusters are not MCCs, the other disclosures in Banin confirm that
`
`its Au101(PPh3)21Cl5 clusters are identical to one another. As an example, with
`
`respect to the TEM image in Banin’s Figure 10a, Banin discloses that the MCCs are
`
`shown “without further size selection,” which means size selection was previously
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`used to obtain a particular size particle. Ex. 1005, 22:26-28 (emphasis added).
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`Indeed, techniques for selecting uniform nanoparticle sizes from a size-distributed
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`set were known before the time of the alleged invention, including the centrifugation
`
`technique taught in Banin. Ex. 1005, 7:4-5, 20:24-25, 21:29-22:2; see also Ex. 1045,
`
`1579 (discussing size-selective precipitation); Ex. 1037, 83 (same); id., 57-58
`
`(applying size-selective precipitation to cluster solution). As a result, a POSITA
`
`would have understood that, when Banin discloses “triphenylphosphine coated Au
`
`clusters with diameter of 1.4 nm and the suggested formula Au101(PPh3)21Cl5,” Banin
`
`teaches using a MCC that has the specific molecular formula of Au101(PPh3)21Cl5
`
`rather than some size distribution as argued by PO. Ex. 1005, 20:13-16. In fact,
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`while Banin states Au101(PPh3)21Cl5 is a “suggested formula,” it is also the only
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`formula Banin discloses for the specific reaction relied upon in my original
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`declaration, and Banin notes those Au101(PPh3)21Cl5 clusters were narrowly size
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`selected. Ex. 1005, 20:13-16.
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`23. PO also argues that Banin’s Au101(PPh3)21Cl5 clusters are not MCCs
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`because the gold seeds disclosed in Hutchison reportedly “contain significant
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`impurities.” POR 31. I disagree. PO’s argument is a repackaged version of the
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`same argument it made before—that Hutchison discloses a size distribution of
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`clusters. For example, PO argues that 3.7% of Hutchison’s gold seeds were
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`AuCl(PPh3), which is a gold seed within Hutchison’s size distribution of clusters
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`that is smaller than the Au101(PPh3)21Cl5 clusters. See Ex. 2017, 12890-91. This is
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`irrelevant because as I explained above, a POSITA would have understood that
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`Banin does not have a size distribution of gold clusters, but instead has uniform
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`MCCs.
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`24. PO also argues that Banin’s statement that its InAs nanorods “vary [in
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`size] by up to 25%” demonstrates that Banin’s Au101(PPh3)21Cl5 clusters are not
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`“sufficiently well-defined” chemical structures. POR 31-32. I disagree. There is
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`no evidence in Banin or otherwise that the size distribution in the width of nanorods
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`disclosed in Banin is due to an alleged size distribution of Banin’s Au101(PPh3)21Cl5
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`clusters. The evidence is to the contrary. Although PO attempts to correlate the
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`25% width in the size distribution of Banin’s gold nanorods with the 25% size
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`distribution of Hutchison’s gold particles, PO overlooks that Banin’s MCCs
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`illustrated in Fig. 10a of Banin demonstrate that there is no such size distribution in
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`Banin’s MCCs. See Ex. 1005, Fig. 10A. Additionally, Banin expressly discloses
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`that there could be a number of reasons for a size distribution of nanorods that are
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`not related to the size of the gold cluster, including without limitation “the type of
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`the metal catalyst, the reaction temperature, duration of the reaction and
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`concentration of precursors.” Ex. 1005, 7:9-12. Dr. Cossairt testified consistent
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`with Banin’s disclosure, agreeing that factors other than the size of the MCCs (such
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`as the “surface chemistry” of the nanoparticles, “the processing conditions,” and
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`handling techniques) were known to cause size distributions in nanoparticles. Ex.
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`1099, 64:6-65:9. I agree with Dr. Cossairt’s testimony. Therefore, in light of Dr.
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`Cossairt’s testimony and the clear disclosures of Banin (including but not limited to
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`Figure 10A of Banin that demonstrates that there is no size distribution in Banin’s
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`Au101(PPh3)21Cl5 MCCs), a POSITA would not understand that the size distribution
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`of nanorod diameters was due to an alleged size distribution of gold clusters as PO
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`incorrectly contends.
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`25. PO also argues Banin’s Au101(PPh3)21Cl5 clusters are not MCCs
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`because “none of Hutchison, Banin or Yu are able to actually chemically
`
`characterize the gold clusters produced by the Hutchison process.” POR 30-31. I
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`disagree. A POSITA would not require chemical characterization data in order to
`
`conclude that the Au101(PPh3)21Cl5 clusters disclosed in Banin are well-defined
`
`chemical structures all possessing the same relative molecular formula. Indeed, Dr.
`
`Cossairt testified consistent with my opinion, admitting that x-ray crystallography
`
`data is not required to identify a MCC. Ex. 1099, 128:7-129:3. Banin discloses
`
`clusters with a single molecular formula (Au101(PPh3)21Cl5) and size (1.4nm), which
`
`is sufficient to inform a POSITA that those Au101(PPh3)21Cl5 clusters disclosed in
`
`Banin are MCCs. Ex. 1005, 20:13-16. If such data was necessary, then a POSITA
`
`would not understand any single alleged MCC in the ’365 patent to be chemically
`
`characterizable because no such data is provided in the patent either. See Ex. 1001,
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`12:1-39; Ex. 1099, 35:10-14, 37:17-38:2 (Dr. Cossairt admits the patent provides no
`
`characterization data for its MCCs). Just like Banin’s disclosure of a single formula
`
`for its gold MCC, the ’365 patent relies exclusively on singular formulae as the sole
`
`basis for describing its numerous contemplated MCCs. Ex. 1001, 12:1-39.
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`Moreover, PO and its expert Dr. Cossairt have provided no evidence that, as of the
`
`date of alleged invention, it was not possible to chemically characterize Banin’s
`
`Au101(PPh3)21Cl5 clusters. See POR 34-35; Ex. 2030 ¶111.
`
`26. PO also argues that the Au101(PPh3)21Cl5 clusters disclosed in Banin are
`
`not MCCs because they “melt” during the seeded growth reaction taught by Banin.
`
`POR 26-27. I disagree. The ’365 patent does not limit the claimed MCC to a
`
`particular phase of matter. A POSITA would have understood that a phase change
`
`does not alter the molecular formula of the Au101(PPh3)21Cl5 clusters disclosed in
`
`Banin, which establishes their well-defined chemical structure (either by molecular
`
`formula or molecular mass). Ex. 2031, 111:10-13 (confirming a molecule does not
`
`change its chemical structure when it melts). Indeed, Dr. Cossairt testified
`
`consistently, admitting that “a chemical will have the same molecular formula
`
`whether it’s in solid form or liquid form.” Ex. 1099, 126:12-18. As an example,
`
`even though water is a liquid and ice is a solid, both water and ice have the same
`
`well-defined molecular formula (i.e., H2O). PO’s expert Dr. Cossairt admitted that
`
`fact. Ex. 1099, 125:14-126:18.
`
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`27. PO also argues that the Au101(PPh3)21Cl5 clusters disclosed in Banin
`
`cannot be MCCs because those clusters “are actually agglomerations of … gold
`
`particles” and thus do not have a precise size or formula. POR 33, 40-42. I disagree.
`
`A POSITA would have understood that “agglomeration” is a physical rather than
`
`chemical act, and therefore each portion of the alleged “agglomeration” in Banin is
`
`still a well-defined Au101(PPh3)21Cl5 molecule that satisfies any proposed
`
`construction of MCC. Indeed, Banin does not state that its MCCs undergo any
`
`chemical change when they aggregate, and a POSITA would not have understood
`
`Banin to suggest such a chemical change. See Ex. 1005, 23:23-24:2. A POSITA
`
`thus would have understood that each of Banin’s Au101(PPh3)21Cl5 clusters remain
`
`identical even if they physically aggregate. For example, a POSITA would have
`
`understood that marbles may physically interact with one another and group together
`
`to act as a collective unit, but that no individual marble would change; instead, each
`
`individual marble would remain a distinct entity chemically separate from the other
`
`marbles of the set. Additionally, because the Challenge Claims are open-ended
`
`“comprising” claims, it is irrelevant whether a single MCC or a group (or
`
`“agglomeration”) of MCCs seed growth of Banin’s InAs nanorods.
`
`28. PO also cites to testimony from Dr. Bawendi in the district court
`
`proceedings and myself in this proceeding to argue that a POSITA would have
`
`understood that compounds that are not identical in molecular formula and
`
`
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`molecular mass are not MCCs. POR 32-37. I disagree with PO’s improper reliance
`
`on my testimony and Dr. Bawendi’s testimony. To begin, there is a serious
`
`disconnect between the testimony PO relies on and PO’s erroneous conclusion. The
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`Au101(PPh3)21Cl5 MCCs disclosed in Banin have the same molecular formula and
`
`molecular mass and are therefore MCCs. Neither Dr. Bawendi nor myself testified
`
`or in any way suggested otherwise. Indeed, Dr. Bawendi did not provide any
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`testimony at all regarding Banin’s MCCs, but instead testified regarding “small [InP]
`
`cluster mixtures” that are in no way related to Banin’s MCCs. Additionally, I
`
`concluded in my original declaration that Banin discloses Au101(PPh3)21Cl5 clusters
`
`that are MCCs, each having a single molecular formula. Ex. 1002 ¶90. For those
`
`reasons, I disagree with PO’s statement that “Petitioner’s own witnesses” “prov[ed]
`
`that a POSITA would not have considered particles with a size dispersity like
`
`Banin’s to satisfy the MCC claim limitation.” POR 37. That statement by PO does
`
`not accurately characterize my testimony and misstates my opinions. While
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`Dr. Cossairt disagrees, for the reasons otherwise stated here, Dr. Cossairt’s opinions
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`are inconsistent with a POSITA’s understanding of Banin’s disclosure.
`
`29. Dr. Cossairt includes in her declaration a number of arguments that are
`
`not present in PO’s Response. Ex. 2030 ¶¶ 115-17, 119, 120. I understand that PO
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`has waived those arguments not included in its Response, which includes at least Dr.
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`Cossairt’s statements at paragraphs 115 to 117, 119, and 120. Regardless, I disagree
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`with Dr. Cossairt’s opinions in those paragraphs attempting to alter the disclosure in
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`Banin. For example, Dr. Cossairt states that it “is not completely surprising” that
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`“Hutchison, and by extension, Banin” do not provide specificity for the “suggested
`
`molecular formula” of their gold clusters because “Hutchison used a process that
`
`was meant to improve on a prior art method of Schmid.” Ex. 2030 ¶ 115. I disagree.
`
`As I stated above, regardless of whether Hutchison discloses identical MCCs,
`
`Banin’s gold clusters are MCCs. Indeed, the fact that Dr. Cossairt admits follow-on
`
`papers often improve on the syntheses that came before only supports my opinion
`
`that a POSITA would have understood Banin’s Au101(PPh3)21Cl5 clusters are MCCs
`
`that are size-selected improvements over Hutchison’s gold seeds. Dr. Cossairt’s
`
`reliance on Hutchison’s discussion of the Schmid reference, which discloses an Au55
`
`cluster that is nowhere mentioned in Banin and is different from Banin’s
`
`Au101(PPh3)21Cl5 MCCs, does not alter how a POSITA would read Banin at least for
`
`all the reasons previously stated. Id. (citing Ex. 2017). As a result, Dr. Cossairt’s
`
`reliance on the Fackler publication to describe the gold seeds described in Schmid is
`
`similarly irrelevant to Banin’s disclosure of a different gold seed. Id. (citing Ex.
`
`2038). Similarly, while Dr. Cossairt relies on the Xia publication allegedly to show
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`“the difficulties that exist to this day in trying to produce monodisperse [gold]
`
`nanoparticles,” Xia would not have been available to a POSITA at the time of the
`
`alleged invention, it does not discuss Banin’s size-selected MCCs, and thus it has no
`
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`bearing on how a POSITA would have understood Banin’s disclosure. Id. (citing
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`Ex. 2039).
`
`30. Dr. Cossairt states that “[r]elevant literature discussing the Hutchison
`
`process confirms that POSITAs practicing the Hutchison process of making these
`
`Au101 clusters also saw a distribution of sizes and had to rely on the same estimated
`
`molecular formula,” with citation to the Anderson publication. Ex. 2030 ¶ 116
`
`(citing Ex. 2040). I disagree. Anderson would not have been available to a POSITA
`
`at the time of the alleged invention, it does not discuss Banin’s size-selected MCCs,
`
`and thus it has no bearing on how a POSITA would have understood Banin’s
`
`disclosure. See Ex. 2040. Indeed, Anderson itself cites to Hutchison, not Banin’s
`
`size-selected MCCs, t
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