UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioners,
`
`v.
`
`NANOCO TECHNOLOGIES LTD.,
`Patent Owner.
`
`Case No. IPR2021-00186
`U.S. Patent No. 8,524,365
`
`PATENT OWNER’S SUR-REPLY
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioners,
`
`v.
`
`NANOCO TECHNOLOGIES LTD.,
`Patent Owner.
`
`Case No. IPR2021-00186
`U.S. Patent No. 8,524,365
`
`PATENT OWNER’S SUR-REPLY
`
`
`
`Case No. IPR2021-00186
`U.S. Patent No. 8,524,365
`
`I.
`II.
`
`TABLE OF CONTENTS
`INTRODUCTION ........................................................................................... 1
`PETITIONER HAS NOT PROVED THAT THE CHALLENGED
`CLAIMS ARE UNPATENTABLE ................................................................ 2
`A.
`Grounds 1 and 2: No Claims Are Anticipated or Rendered
`Obvious by Banin .................................................................................. 2
`1.
`All Issues Identified for Trial Resolve in Patent Owner’s
`Favor ........................................................................................... 2
`Banin’s SLS Gold Catalyst Is Not a MCC ................................. 4
`a.
`Banin’s polydisperse gold catalysts are not further
`size-selected ...................................................................... 5
`It is improper to ignore that Banin uses
`Hutchison’s process .......................................................... 9
`Petitioner’s remaining critiques are unavailing .............. 10
`c.
`Ground 3: No Claims Are Rendered Obvious by Banin in View
`of Herron ............................................................................................. 16
`Ground 4: Claims 13 and 14 Are Not Rendered Obvious by
`Banin in View of Treadway ................................................................ 20
`Ground 5: No Claims Are Rendered Obvious by Zaban in View
`of Farneth and Yu ................................................................................ 21
`Grounds 6 and 7: No Claims Are Rendered Obvious by Lucey
`in View of Ahrenkiel ........................................................................... 24
`III. CONCLUSION .............................................................................................. 26
`
`B.
`
`C.
`
`D.
`
`E.
`
`2.
`
`b.
`
`i
`
`
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`Case No. IPR2021-00186
`U.S. Patent No. 8,524,365
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Amgen Inc. v. Hoechst Marion Roussel,
`314 F.3d 1313 (Fed. Cir. 2003) ............................................................................ 9
`Apotex Inc. v. Wyeth LLC,
`657 Fed. Appx. 998 (Fed. Cir. 2016) .................................................................. 17
`FanDuel, Inc. v. Interactive Games LLC,
`966 F.3d 1334 (Fed. Cir. 2020) ............................................................................ 4
`Husky Injection Molding Sys. v. Athena Automation Ltd.,
`838 F.3d 1236 (Fed. Cir. 2016) ............................................................................ 9
`In re Magnum Oil Tools Int'l, Ltd.,
`829 F.3d 1364 (Fed. Cir. 2016) ............................................................................ 4
`In re Vaeck,
`947 F.2d 488 (Fed. Cir. 1991) ............................................................................ 17
`In re Warsaw Orthopedic, Inc.,
`832 F.3d 1327 (Fed. Cir. 2016) ............................................................................ 9
`Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd.,
`821 F.3d 1359 (Fed. Cir. 2016) ................................................................ 5, 17, 24
`Kinetic Concepts, Inc. v. Smith & Nephew, Inc.,
`688 F.3d 1342 (Fed. Cir. 2012) .......................................................................... 19
`Plant Genetic Sys. v. DeKalb Genetics Corp.,
`315 F.3d 1335 (Fed. Cir. 2003) .......................................................................... 19
`Samsung Elecs. Co. v. Elm 3DS Innovations, LLC,
`925 F.3d 1373 (Fed. Cir. 2019) .................................................................... 17, 24
`Samsung Elecs. Co. v. Infobridge Pte. Ltd.,
`IPR2017-00099, 2020 Pat. App. Lexis 12824, (PTAB Nov. 13,
`2020) ..................................................................................................................... 5
`
`ii
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`
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`Case No. IPR2021-00186
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`Trivascular, Inc. v. Samuels,
`812 F.3d 1056 (Fed. Cir. 2016) .......................................................................... 20
`Statutes
`35 U.S.C. § 316(e) ..................................................................................................... 4
`Other Authorities
`37 CFR § 42.24(d) ................................................................................................... 27
`
`iii
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`
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`Case No. IPR2021-00186
`U.S. Patent No. 8,524,365
`
`Exhibit
`2001
`2002
`2003
`2004
`
`2005
`
`2006
`
`2007
`
`2008
`
`2009
`
`2010
`
`2011
`
`2012
`
`2013
`
`2014
`
`TABLE OF EXHIBITS
`
`Description
`Declaration of Michael C. Newman
`Declaration of Thomas H. Wintner
`Declaration of Matthew S. Galica
`Periodic table of the elements, Encyclopaedia Britannica, Inc.,
`available at https://www.britannica.com/science/periodic-table (last
`visited Feb. 18, 2021)
`Samsung Global Newsroom. Quantum Dot Artisan: Dr. Eunjoo Jang,
`Samsung Fellow, November 30, 2017
`ACS Energy Lett. 2020, 5, 1316-1327. “Environmentally Friendly
`InP-Based Quantum Dots for Efficient Wide Color Gamut Displays”
`Wang, F., Dong, A. and Buhro, W.E., Solution–liquid–solid
`synthesis, properties, and applications of one-dimensional colloidal
`semiconductor nanorods and nanowires. Chemical
`Reviews, 116(18):10888-10933 (2016).
`Wang, F., et al., Solution− liquid− solid growth of semiconductor
`nanowires. Inorganic chemistry, 45(19):7511-7521 (2006).
`Madkour, L.H., Synthesis Methods For 2D Nanostructured
`Materials, Nanoparticles (NPs), Nanotubes (NTs) and Nanowires
`(NWs). In Nanoelectronic Materials (pp. 393-456). Springer, Cham.
`(2019)
`Mushonga, P., et al., Indium phosphide-based semiconductor
`nanocrystals and their applications. Journal of Nanomaterials, 1-11
`(2012).
`Luo, H., Understanding and controlling defects in quantum confined
`semiconductor systems, Doctoral dissertation, Kansas State
`University (2016).
`Sinatra, L., et al. Methods of synthesizing monodisperse colloidal
`quantum dots. Material Matters, 12:3-7 (2017)
`Pu, Y., et al., Colloidal synthesis of semiconductor quantum dots
`toward large-scale production: a review. Industrial & Engineering
`Chemistry Research, 57(6):1790-1802 (2018).
`Rao, C. N. R.; Gopalakrishnan, J., Chapter 3: Preparative Strategies
`from New Directions in Solid State Chemistry; Cambridge University
`Press: Cambridge, UK (1986).
`
`iv
`
`
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`Case No. IPR2021-00186
`U.S. Patent No. 8,524,365
`
`Exhibit
`2015
`
`2016
`
`2017
`
`2018
`
`2019
`
`2020
`
`2021
`
`2022
`
`2023
`
`2024
`
`2025
`
`2026
`
`Description
`Glossary of Common Wafer Related Terms, BYU Electrical &
`Computer Engineering Integrated Microfabrication Lab, definition of
`degenerate semiconductor, available at
`https://cleanroom.byu.edu/ew_glossary (last visited Feb. 19, 2021)
`October 22, 2006 email between Eunjoo Jang and Nigel Pickett Re:
`Cd free quantum dots
`Weare, W.W., Reed, S.M., Warner, M.G. and Hutchison, J.E.,
`Improved synthesis of small (d core≈ 1.5 nm) phosphine-stabilized
`gold nanoparticles. Journal of the American Chemical
`Society, 122(51):12890-12891 (2000).
`Samsung’s Motion to Stay Pending Inter Partes Review of the
`Asserted Patents in Case 2:20-cv-00038-JRG, filed on November 30,
`2020
`Order denying Samsung’s Motion to Stay Pending Inter Partes
`Review in Case 2:20-cv-00038-JRG, filed on January 8, 2021
`Standing Order Regarding the Novel Coronavirus (Covid-19) for the
`Eastern District of Texas Marshall Division, signed March 3, 2020
`Standing Order Regarding Pretrial Procedures In Civil Cases
`Assigned to Chief District Judge Rodney Gilstrap During the
`Present Covid-19 Pandemic, signed April 20, 2020
`Samsung’s Preliminary Invalidity Contentions and Disclosures
`Pursuant To Patent Rules 3-3 and 3-4 (served November 9, 2020)
`Merriam-Webster Dictionary, online edition. Definition of
`“Halogen”, available at https://www.merriam-
`webster.com/dictionary/halogen (last visited Feb. 23, 2021)
`Illustrated Glossary of Organic Chemistry, UCLA. Illustration of
`Halide, available at
`http://www.chem.ucla.edu/~harding/IGOC/H/halide.html (last
`visitied Feb. 23, 2021)
`Mortvinova, N.E., Vinokurov, A.A., Lebedev, O.I., Kuznetsova,
`T.A., and Dorofeev, S.G., Addition of Zn during the phosphine-based
`synthesis of indium phosphide quantum dots:doping and surface
`passivation, Beilstein J Nanotechnol. 2015; 6: 1237-1246.
`Samsung’s Proposed Claim Constructions (served December 11,
`2020)
`
`v
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`
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`Case No. IPR2021-00186
`U.S. Patent No. 8,524,365
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`Exhibit
`2027
`
`2028
`2029
`
`2030
`2031
`2032
`
`2033
`
`2034
`
`2035
`2036
`
`2037
`
`2038
`
`2039
`
`2040
`
`Description
`He, Z., Yang, Y., Liu, J.W. and Yu, S.H., Emerging tellurium
`nanostructures: controllable synthesis and their
`applications. Chemical Society Reviews, 46(10): 2732-2753 (2017)
`INTENTIONALLY LEFT BLANK
`Makkar, M. and Viswanatha, R., Frontier challenges in doping
`quantum dots: synthesis and characterization. RSC
`Advances, 8(39):22103-22112 (2018).
`Declaration of Brandi Cossairt Ph.D. Aug. 12, 2021
`July 29, 2021 Deposition of Mark A. Green, Ph.D.
`Excerpts from June 10, 2021 Rebuttal Expert Report of Moungi
`Bawendi, Ph.D.
`Xie, L., et al., Characterization of Indium Phosphide Quantum Dot
`Growth Intermediates Using MALDI-TOF Mass Spectrometry.
`Journal of the American Chemical Society, 138:13469-13472 (2016).
`(Bawendi Depo. Exhibit 7)
`Excerpts from June 16, 2021 Deposition of Moungi G. Bawendi,
`Ph.D.
`Definition of Monodisperse by The Free Dictionary, Aug. 10, 2021
`Panfil, Y.E., Oded, M. and Banin, U., Colloidal quantum
`nanostructures: emerging materials for display
`applications. Angewandte Chemie International
`Edition, 57(16):4274-4295 (2018).
`MilliporeSigma, Solid State Synthesis, available at
`https://www.sigmaaldrich.com/US/en/applications/materials-science-
`and-engineering/solid-state-synthesis (last visited August 10, 2021).
`Fackler Jr, J.P., et al., Californium-252 plasma desorption mass
`spectrometry as a tool for studying very large clusters; evidence for
`vertex-sharing icosahedra as components of Au67 (PPh3)
`14Cl8. Journal of the American Chemical Society, 111(16):6434-
`6435 (1989).
`Xia, N., & Wu, Z., Controlling ultrasmall gold nanoparticles with
`atomic precision. Chemical Science, 12(7):2368-2380 (2021).
`Anderson, D.P., et al., Chemically synthesised atomically precise
`gold clusters deposited and activated on titania. Part II. Physical
`chemistry chemical physics, 15(35):14806-14813 (2013)
`
`vi
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`
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`Case No. IPR2021-00186
`U.S. Patent No. 8,524,365
`
`Exhibit
`2041
`
`2042
`
`2043
`2044
`
`2045
`
`2046
`
`2047
`
`Description
`Antoine, R., Atomically precise clusters of gold and silver: A new
`class of nonlinear optical nanomaterials. Frontier Research
`Today, 1:1001, 1-11 (2018)
`Shweky, I., Aharoni, A., Mokari, T., Rothenberg, E., Nadler, M.,
`Popov, I. and Banin, U., Seeded growth of InP and InAs quantum
`rods using indium acetate and myristic acid. Materials Science and
`Engineering: C, 26(5-7):788-794 (2006).
`PubChem – Cadmium Sulfide Compound Summary.
`New Electronics - Nanoparticles manufacturer receives $600,000
`boost, available at https://www.newelectronics.co.uk/electronics-
`news/nanoparticles-manufacturer-receives-600-000-boost/26831/
`(last visited August 10, 2021).
`Kangyong Kim, et al., Zinc Oxo Clusters Improve the Optoelectronic
`Properties on Indium Phosphide Quantum Dots, Chem. Mater. 2020,
`32, 2795-2802. (Bawendi Depo. Exhibit 8)
`Redacted Version of the Declaration of Dr. Brandi Cossairt, Aug. 12,
`2021
`Deposition Transcript of Mark A. Green, Ph.D., December 8, 2021
`
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`U.S. Patent No. 8,524,365
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`I.
`
`INTRODUCTION
`In instituting this and related IPRs, the Board identified relevant issues for
`
`trial. Patent Owner embraced this guidance and directly addressed the Board’s
`
`questions, identifying fatal deficiencies in the Petition. Petitioner’s reply ignores that
`
`guidance despite its relation to Petitioner’s overall burden. With the issues resolved
`
`in Patent Owner’s favor, Petitioner asserts new theories that fail on the facts and law.
`
`First and foremost, Petitioner asks the Board to ignore the Banin reference’s
`
`disclosure that its gold catalysts are made via Hutchison’s process, which cannot
`
`produce the claimed MCCs, and instead to consider new unsupported arguments.
`
`These newly crafted arguments strain credulity and demonstrate the weakness of the
`
`Banin-based grounds and the Petition overall. Similarly, without addressing
`
`deficiencies the Board identified, Petitioner tries to resuscitate grounds the Board
`
`already rejected. Petitioner’s arguments fail to respond to the Board’s questions at
`
`institution, lack merit, and fail to bridge the divide between the teachings of the prior
`
`art and the challenged claims.
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`II.
`
`PETITIONER HAS NOT PROVED THAT THE CHALLENGED
`CLAIMS ARE UNPATENTABLE
`A.
`Grounds 1 and 2: No Claims Are Anticipated or Rendered
`Obvious by Banin
`1.
`All Issues Identified for Trial Resolve in Patent Owner’s
`Favor
`Petitioner’s reply does not address the salient issues identified for trial by the
`
`Board. In instituting, the Board highlighted certain issues to “provide guidance to
`
`the parties and streamline the trial.” InstDec., 17. First, the Board noted that “Banin
`
`prepares the gold clusters by the Hutchison process” but asked whether “Hutchison’s
`
`description of a ‘narrowly disperse’ population of nanoparticles…may…have
`
`suggested to an ordinarily skilled artisan a monodisperse population.” InstDec., 20
`
`(citations omitted). The Board found that “[n]either party advances information, at
`
`this stage, tending to show how an ordinarily skilled artisan would have interpreted
`
`the ‘narrowly disperse nanoparticles’ illustrated in Hutchison’s Figure 1(a). We
`
`leave that issue for trial.” Id. In reply, Petitioner admits that a skilled artisan would
`
`not have understood Hutchison Figure 1(a) to have suggested a monodisperse
`
`population by prominently labeling Figure 1(a) as “Hutchison – Polydisperse
`
`Clusters.” Reply, 3.1 This is consistent with testimony from Patent Owner’s Expert,
`
`Dr. Cossairt. See POR, 30; Ex. 2030, ¶118. Therefore, Hutchison’s “narrowly
`
`1 Unless otherwise indicated, all emphases have been added.
`
`2
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`disperse” gold particles are polydisperse, not monodisperse, and certainly not
`
`identical MCCs.
`
`Second, the Board noted “Patent Owner asserts that Hutchison ‘average[s]
`
`out’ the gold clusters of ‘different sizes’ to estimate ‘the average number of gold
`
`atoms is approximately 101.’ That argument has some appeal. …We leave for trial
`
`the question of how an ordinarily skilled artisan would have interpreted that
`
`disclosure.” InstDec., 20-21. In reply, Petitioner admits that Hutchison’s disclosure
`
`of Au101(PPh3)21Cl5 (denoted as Au101) is a distribution of gold clusters of different
`
`sizes as opposed to identical MCCs. See Reply, 3 (“…those [Au101] shown in
`
`Hutchison are consistent with a size distribution of clusters”); see also id., 5
`
`(acknowledging “the 25% size distribution of Hutchison’s gold particles”). Thus, it
`
`is undisputed that Hutchison’s process used by Banin produces differently sized gold
`
`clusters which are averaged to assign a “suggested” formula of Au101. Therefore,
`
`these particles do not have the sufficiently well-defined structure of a MCC.
`
`Finally, the Board was not persuaded on the institution record with Patent
`
`Owner’s contention that Banin’s gold clusters are akin to ensembles of small
`
`nanoparticles expressly distinguished by the ’365 patent. InstDec., 21-22. Petitioner
`
`does not dispute that Banin’s gold catalysts aggregate, but instead argues that
`
`subparts of the aggregates are MCCs. Reply, 7. But this argument is contrary to
`
`Petitioner’s own expert’s testimony that aggregates cannot be MCCs because they
`
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`span a distribution of masses, and therefore do not have molecular formulae that are
`
`the same relative to one another. Ex. 2034, 120:3-13 (Dr. Bawendi testifying that
`
`“aggregates of indium and phosphorus [that] span a distribution of masses” do not
`
`meet the Court’s construction of “molecular cluster compound”); see also 123:1-7;
`
`POR, 35-36. Thus, the gold aggregates described in Banin are not MCCs. See Ex.
`
`1001, 7:37-53.
`
`With all institution questions resolved in Patent Owner’s favor, Petitioner fails
`
`to meet its burden under 35 U.S.C. § 316(e). See FanDuel, Inc. v. Interactive Games
`
`LLC, 966 F.3d 1334, 1341 (Fed. Cir. 2020) (“the burden of proving invalidity in an
`
`IPR remains on the petitioner throughout the proceeding”). In re Magnum Oil Tools
`
`Int'l, Ltd., 829 F.3d 1364, 1376 (Fed. Cir. 2016) (there is a “significant difference”
`
`between the lower standards of proof at institution and the higher standard for trial
`
`during an IPR).
`
`Banin’s SLS Gold Catalyst Is Not a MCC
`2.
`Banin’s gold catalyst is not a MCC. Petitioner agrees that the clusters
`
`described in Hutchison exist only in a dispersity of sizes. Reply, 3 (“[the Au101
`
`clusters] shown in Hutchison are consistent with a size distribution of clusters.”).
`
`This concession should be dispositive of this Ground.
`
`With Hutchison’s process not making MCCs, Petitioner tries two new
`
`arguments. First, Petitioner alleges that, even though Banin makes its gold catalysts
`
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`using Hutchison’s method, Banin further size-selects its gold catalysts until they are
`
`all exactly 1.4 nm with a formula of exactly Au101(PPh3)21Cl5. Reply, 3. Second,
`
`Petitioner suggests that we should simply ignore the fact that Banin’s gold catalysts
`
`are made by Hutchison’s process, and instead read Banin in a vacuum. Reply, 2
`
`(“Regardless of whether Hutchison’s gold particles are MCCs …”) (emphasis in
`
`original). These new arguments fail on the facts and the law.
`
`a.
`
`Banin’s polydisperse gold catalysts are not further
`size-selected
`Petitioner’s first new argument is that while Banin makes polydisperse gold
`
`catalysts using the Hutchison process, it further size-selects the catalysts to make
`
`them have the exact same size and molecular formula. Reply, 2-4. This is “a new
`
`argument or theory … that was not raised in the Petition and, therefore, is waived.”
`
`Samsung Elecs. Co. v. Infobridge Pte. Ltd., IPR2017-00099, 2020 Pat. App. Lexis
`
`12824, (PTAB Nov. 13, 2020) (citing Ariosa Diagnostics v. Verinata Health, Inc.,
`
`805 F.3d 1359, 1367 (Fed. Cir. 2015)); see also Intelligent Bio-Sys., Inc. v. Illumina
`
`Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016) (“It is of the utmost
`
`importance that petitioners in the IPR proceedings adhere to the requirement that the
`
`initial petition identify ‘with particularity’ the ‘evidence that supports the grounds
`
`for the challenge to each claim.’”) (quoting 35 U.S.C. § 312(a)(3)).
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`Regardless, this argument fails because it is simply untrue. Nothing in Banin
`
`suggests that gold catalysts are size-selected after being made by Hutchison’s
`
`process. As Banin’s text does not support Petitioner’s position, Petitioner resorts to
`
`comparing two curiously similar TEM images, one from Banin and one from
`
`Hutchison. Reply, 3. Petitioner argues that these images somehow show that
`
`“Banin’s MCCs represent purified, size-selected MCCs, even if they were made
`
`starting with Hutchison’s method.” Reply, 3. But Banin and Hutchison’s TEM
`
`images are practically indistinguishable. If anything can be deduced from these
`
`images, it is that they both depict particles of various sizes, as shown in the cropped
`
`and anonymized images below:
`
`?1 ?2
`
`Petitioner inserts a big red “not-equal” sign between these TEM images, and argues
`
`that one of them shows uniform MCCs while the other shows polydisperse clusters.
`
`Reply, 3 (“Banin’s TEM is consistent with uniform Au101(PPh3)21Cl5 MCCs, while
`
`those shown in Hutchison are consistent with a size distribution of clusters”). But
`
`this cannot be correct. Even if Banin did further size-select its gold catalysts (it does
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`not), Banin’s TEM image depicts gold catalysts “without further size selection.” Ex.
`
`1005, 22:26-28. Petitioner emphasizes the word “further” to surmise that “size
`
`selection was previously employed” (Reply, 3-4), but ignores that Hutchison’s
`
`process which results in a dispersity of small gold particles with an “average”
`
`assigned value is already a form of size selection. Ex. 2017, 12891 (“the synthesis
`
`allows size control”). Because Banin’s TEM shows gold particles made by
`
`Hutchison’s process without further size selection, one would expect the two TEM
`
`images to be similar, which of course they are. And if Banin’s TEM really showed
`
`“uniform” clusters, there would be no need for “further size selection.”
`
`For the record, the anonymized images above are taken from cropped portions
`
`of Petitioner’s reply.
`
`Reply, 3 (annotated).
`
`The truth is that Banin never further size selects its gold catalysts. Banin’s
`
`only disclosure of size selection
`
`involves centrifuging
`
`the rod-shaped
`
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`semiconductor end products, not the gold catalysts. See Ex. 1005, 7 (“The
`
`purification is carried out by centrifugation that affords purified nanorods having
`
`selected size”); id., 8 (“at least one centrifugal step as to obtain Group III-V
`
`semiconductor nanocrystals having substantially rod-like shape and selected size.”);
`
`id., 9 (“at least one centrifugal step so as to obtain InAs semiconductor nanocrystals
`
`having rod-like shape and selected size”); id., 14 (“The rods were purified and size-
`
`selected by centrifugation.”); id., 18, 20, 21 (same); id., 21 (same); id., 28
`
`(“purification in step (ii) [purifying said reaction product so as to obtain
`
`semiconductor nanocrystals having substantially rod-like shape] is carried out by
`
`centrifugation,
`
`thereby
`
`affording
`
`size-selected
`
`inorganic
`
`semiconductor
`
`nanocrystals having a rod-like shape”); id., 30 (“at least one centfugal step so as to
`
`obtain size-select Group III-V semiconductor nanocrystals having substantially
`
`rod-like shape.”). Nothing in Banin suggests further size-selecting gold catalysts.
`
`Petitioner’s argument that Banin selects identical MCCs is discredited by the
`
`fact that Banin’s nanorods still vary by 20-25% even after they are size-selected. Ex.
`
`1005, 24:15-23. The only size-selection process Petitioner
`
`identifies
`
`is
`
`centrifugation (Reply, fn.3), but Banin reports that even after centrifugation, its
`
`nanorods have a “diameter distribution [of] 20-25%, while the length distribution is
`
`15-20%.” Ex. 1005, 24:15-23. Banin’s size selection methods are no more precise
`
`than Hutchison’s. Ex. 2017, Fig.1(a) (showing a 25% size difference). Because
`
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`Banin does not enable further size-selection, and certainly does not enable size-
`
`selecting gold particles with the precision required to produce MCCs, the reference
`
`cannot anticipate any challenged claim. Amgen Inc. v. Hoechst Marion Roussel, 314
`
`F.3d 1313, 1355 (Fed. Cir. 2003) (“If a patentee presents evidence of nonenablement
`
`that a trial court finds persuasive, the trial court must then exclude that particular
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`prior art patent in any anticipation inquiry.”) Thus, even if Banin size-selected its
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`gold catalysts (it does not), the size-selection could not produce MCCs with
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`sufficiently well-defined structure.
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`b.
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`It is improper to ignore that Banin uses Hutchison’s
`process
`Since Au101 gold particles made by Hutchison’s process are not MCCs,
`
`Petitioner asks the Board to ignore Hutchison altogether. Reply, 2. This is improper.
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`To ignore Hutchison, which is expressly cited by Banin as describing its method of
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`manufacturing its gold clusters, “would be to undervalue the knowledge of a skilled
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`artisan.” Husky Injection Molding Sys. v. Athena Automation Ltd., 838 F.3d 1236,
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`1249, (Fed. Cir. 2016) (remanding and instructing court to consider information in
`
`a reference cited by an alleged anticipating reference). When “the PTAB examines
`
`the scope and content of prior art … it must consider the prior art ‘in its entirety, i.e.,
`
`as a whole.’” In re Warsaw Orthopedic, Inc., 832 F.3d 1327, 1332 (Fed. Cir. 2016)
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`(citing Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1568 (Fed. Cir. 1987)).
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`9
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`Case No. IPR2021-00186
`U.S. Patent No. 8,524,365
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`Petitioner’s remaining critiques are unavailing
`c.
`Petitioner sets forth seven unavailing critiques of Patent Owner’s Response.
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`First, Petitioner makes the unsupported claim that “Banin’s MCCs represent
`
`purified, size-selected MCCs, even if they were made starting with Hutchison’s
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`method.” Reply, 3. Petitioner argues that all of Banin’s gold catalysts have the exact
`
`same size of 1.4nm “and not some size distribution as PO argues.” Reply, 3-4. A
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`closer look at the portion of Banin to which Petitioner cites for this proposition
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`discloses the “use of small Au clusters (1.4 nm in mean diameter)” Ex. 1005, 20:12-
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`16. A “mean diameter” is the same thing as an “average diameter” and thus indicates
`
`a size dispersion. While citations seem hardly necessary for this point, Dr. Bawendi
`
`uses the term “mean” consistently and synonymously with the meaning of
`
`“average.” Ex. 2034 (“And so we’re creating a mixture of a bunch of things, a bunch
`
`of clusters that happen to have a mean around 10 kilodalton.”). Dr. Green, on the
`
`other hand, did not seem to know that a “mean” and an “average” are the same, and
`
`missed this key point. Ex. 2047, 6:5-10:24 (Dr. Green struggling to answer questions
`
`about what a “mean” is). Further, Banin size-selects its nanorod end-products, not
`
`its gold catalysts. Regardless, Banin’s purported size selection process achieves no
`
`better results than Hutchison. Ex. 1005, 24:15-23 (even after size-selection by
`
`centrifugation, Banin’s nanorods have a “diameter distribution [of] 20-25%, while
`
`the length distribution is 15-20%”).
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`10
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`Second, Petitioner contends that while Hutchison’s gold particles contain
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`significant impurities, “these alleged ‘impurities’ are simply smaller seeds within
`
`Hutchison’s size distribution [and that] Banin—the reference Petitioner actually
`
`relies upon—has uniform MCCs, not gold clusters of varying sizes.” Reply, 4.
`
`Again, nothing in Banin suggests that its gold catalysts are any different from those
`
`described in Hutchison, and Petitioner’s admission that the impurities in Hutchison
`
`are part of a size distribution supports Patent Owner’s position that the particles are
`
`not well-defined.
`
`Third, while admitting that Banin’s nanorod diameters vary by up to 25%,
`
`Petitioner argues “there is no evidence that distributed nanorod size is due to an
`
`alleged size distribution of Banin’s clusters.” Reply, 5. On the contrary, there is
`
`overwhelming evidence that nanorod diameter is dictated by gold catalyst size. Ex.
`
`1005, 7 (“The rod-shaped nanocrystals prepared by the method of the invention
`
`possess diameters that depend on the diameter of the catalyst nanoparticles used in
`
`their growth”); id., 4 (“the diameters of the nanowires could be tuned by changing
`
`the size of the catalyst clusters”); Id., 20 (“changing the diameter of the rod, which
`
`can easily be controlled…by defining a desired diameter of the metallic
`
`catalyst…”). Petitioner’s other references confirm that catalyst size dictates nanorod
`
`diameter in SLS and VLS reactions. See Ex. 1098 (“…metal-catalyzed nanowire
`
`growth, in which the diameter of the nanowires is mainly determined by the size of
`
`11
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`the catalyst particles…”); Ex. 2008 (“…the diameters of the wires should depend
`
`on the diameters of the catalyst particles from which they grew…”). Because the
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`diameter of the nanowire depends on the diameter of the catalyst, it is no coincidence
`
`that the diameters of Banin’s nanonrods show the same size distribution as
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`Hutchison’s gold particles. Ex. 2030, ¶118; Ex. 1005, 23:17-18 (20-25%
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`distribution); Ex. 2017, Fig.1(a) (25% distribution).
`
`Fourth, Petitioner argues that it is irrelevant2 that Hutchison, Banin, or Yu are
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`unable to chemically characterize their gold clusters because, “PO’s expert admits
`
`that x-ray crystallography data is not required to identify a MCC,” and “the ’365
`
`patent
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`relies exclusively on singular
`
`formulae
`
`(without any chemical
`
`characterization data) as the sole basis for identifying its MCCs.” Reply, 6. First,
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`Petitioner’s argument is misleading. Dr. Cossairt testified that “A person of skill in
`
`the art would understand that the claimed molecular cluster compound would, at the
`
`very least, need to be able to be chemically characterized to be considered
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`‘sufficiently well-defined.’” Ex. 2030, ¶ 111. At her deposition, Dr. Cossairt testified
`
`that “X-ray crystallography is a great technique; it’s kind of the gold standard, but
`
`2 Because Petitioner cannot contest the facts set forth by Patent Owner, Petitioner
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`repeatedly argues the facts are irrelevant, using the term “irrelevant” nineteen
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`times in its reply.
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`12
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`Case No. IPR2021-00186
`U.S. Patent No. 8,524,365
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`it’s not absolutely required to identify a [MCC].” Ex. 1099, 128:20-129:3. This is
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`because there are other methods that can be used to characterize MCCs to determine
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`that “all the molecules of the compound are identical to one another,” such as “NMR,
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`nuclear magnetic resonance spectroscopy, gives unambiguous identification that
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`there is one species in solution. Mass spectrometry corroborates that.” Ex. 1099,
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`18:7-19:1. And while the ’365 patent lists MCCs without including all of the
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`characterization data, characterization “data exists for many of these compounds, if
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`not all of them.” Ex. 1099, 37:17-38:2. The fact remains that there is no evidence
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`that the gold particles identified by Hutchison, Banin, and Yu are able to be
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`characterized, and they are not therefore sufficiently well-defined MCCs.
`
`Fifth, Petitioner alleges that “PO argues that Banin’s Au101(PPh3)21Cl5
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`clusters are not MCCs because they ‘melt’…” Reply, 6. Patent Owner never made
`
`this argument.3 Still, Petitioner argues that melting does not alter the molecular
`
`formula of the gold catalysts. Even if melting does not change the chemical structure
`
`of the catalysts the fact remains that the gold catalysts lack the sufficiently well-
`
`defined chemical structure of MCCs, either in solid or molten form.
`
`3 The fact that the gold catalysts must melt to work in Banin’s SLS process relates
`
`to Petitioner’s obviousness contentions, as discussed in Section II.b below.
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`13
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`Case No. IPR2021-00186
`U.S. Patent No. 8,524,365
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`Sixth, Petitioner argues that, while Banin’s gold clusters agglomerate, the
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`“‘agglomeration’ is a physical rather than chemical act” and Banin does not state
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`that its catalysts “undergo any chemical changes when they aggregate.” Reply, 7.
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`But Petitioner’s own expert testified that aggregates do not meet the district court’s
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`construction of MCC. Ex. 2034, 120:3-13. Dr. Bawendi is correct on this point.
`
`Aggregates are expressly distinguished by the ’365 patent. See Ex. 1001, 7:48-53
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`(noting that molecular clusters may be collections of identical molecules rather than
`
`ensembles of small nanoparticles); Ex. 2030, ¶114. Further, the agglomerations in
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`Banin are aggregates of “already ill-defined gold droplets.” POR, 42; Ex. 2030 ¶126
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`(testifying that aggregates are “ensembles of small nanoparticles”).
`
`Seventh, Petitioner argues that it is “inapposite and unsupported” that its own
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`experts admit that compounds with a distribution of masses are not MCCs, since Dr.
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`Green previously testified that Banin’s clusters have the same formula and mass, and
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`Dr. Bawendi never addressed Banin. Reply, 7-8. The problem with this argument—
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`and this is fundamental—is that Dr. Green failed to appreciate that Banin’s gold
`
`catalysts made by Hutchison’s process have a distribution of masses, and both of
`
`Petitioner’s experts testified that par
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