Samsung Elecs. Co. v. Nanoco Techs.

• Decision Date: 16 May 2022
• Docket Number: IPR2021-00186,365 B2,524,Patent 8
• Parties: SAMSUNG ELECTRONICS CO., LTD. and SAMSUNG ELECTRONICS AMERICA, INC., Petitioner, v. NANOCO TECHNOLOGIES LTD., Patent Owner.
• Court: 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

United States Patent and Trademark Office, Patent Trial and Appeal Board

May 16, 2022

For PETITIONER: F. Christopher Mizzo Gregory Arovas Stefan Miller Todd Baker KIRKLAND & ELLIS LLP

For PATENT OWNER: William Meunier Peter Cuomo INTZ, LEVIN, COHN, FERRIS, GLOVSKY AND POPEO, P.C.

Before ERICA A. FRANKLIN, GRACE KARAFFA OBERMANN, and CHRISTOPHER M. KAISER, Administrative Patent Judges.

JUDGMENT FINAL WRITTEN DECISION DETERMINING NO CHALLENGED CLAIMS UNPATENTABLE 35 U.S.C. § 318(A)

OBERMANN, ADMINISTRATIVE PATENT JUDGE

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I. INTRODUCTION

This is a Final Written Decision in an inter partes review of claims 1- 23 of U.S. Patent No. 8, 524, 365 B2 (Ex. 1001, "the '365 patent"). We have jurisdiction under 35 U.S.C. § 6 and enter this Decision pursuant to 35 U.S.C. § 318(a). For the reasons that follow, we determine that Petitioner^[1] does not establish by a preponderance of the evidence that any challenged claim is unpatentable.

A. Procedural History

Petitioner filed a Petition requesting review of the challenged claims. Paper 1 ("Pet."). With the Petition, Petitioner filed the Declaration of Mark A. Green, Ph.D., in support of the challenges stated in the Petition. Ex. 1002. Patent Owner^[2] filed a Preliminary Response to the Petition (Paper 12). Pursuant to our authorization, Petitioner filed a Reply (Paper 14) and Patent Owner filed a Sur-reply (Paper 15).

Based on that preliminary record, we instituted an inter partes review of all challenged claims based on all grounds of unpatentability asserted in the Petition. Paper 17 ("Dec."). The following table sets forth the grounds.^[3]

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Claims Challenged	35 U.S.C. §	References
1, 7-12, 17, 22, 23	102	Banin [4]
1, 7-12, 15-17, 22, 23	103(a)	Banin
2-6, 18-21	103(a)	Banin, Herron [5]
13, 14	103(a)	Banin, Treadway [6]
1-9, 17-23	103(a)	Zaban, [7] Farneth, [8] Yu [9]
2, 4, 7-12, 17, 18, 22, 23	103(a)	Lucey, [10] Ahrenkiel [11]
13-16	103(a)	Lucey, Ahrenkiel, Treadway

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After institution of trial, Patent Owner filed a Response (Paper 25, ^[12]"Resp."), along with the Declaration of Brandi Cossairt, Ph.D. (Ex. 2030), Petitioner filed a Reply (Paper 32, "Reply"), along with the Second Declaration of Dr. Green (Ex. 1093), and Patent Owner filed a Sur-reply (Paper 39, "Sur-reply").^[13] The parties presented oral arguments during a hearing held by video on February 23, 2022.^[14] Paper 46 ("Tr.").

B. Related Matters

The parties identify litigation involving the '365 patent as a related matter: Nanoco Technologies Ltd. v. Samsung Electronics Co., Ltd., No. 2:20-cv-00038 (E.D. Tex.) ("District Court case"). Pet. 71; Paper 6, 1.

The parties also identify, as related matters, petitions for review filed in connection with four other patents asserted in the District Court case: IPR2021-00182 for U.S. Patent No. 9, 680, 068, IPR2021-00183 for U.S.

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Patent No. 7, 588, 828 ("IPR183"), IPR2021-00184 for U.S. Patent No. 7, 803, 423, and IPR2021-00185 for U.S. Patent No. 7, 867, 557. Pet. 71; Paper 6, 1-2. Concurrently with this Decision, we enter final written decisions in those administrative proceedings.

C. The '365 Patent (Ex. 1001)

The '365 patent relates to "[a] nanoparticle comprising a molecular cluster compound and a core semiconductor material disposed on the molecular cluster compound." Ex. 1001, 20:9-13. The semiconductor material, in turn, "comprises one or more elements not comprised within the molecular cluster compound." Id. The nanoparticle may be prepared by a process that employs at least two precursor species in a nanoparticle precursor composition - "a first precursor species containing a first ion to be incorporated into the core semiconductor material and a separate second precursor species containing a second ion to be incorporated into the core semiconductor material." Id. at 20:54-62.

The written description states, "There has been substantial interest in the preparation and characterization" of compound semiconductors that include "particles with dimensions in the order of 2-100 [nanometers] (nm)." Id. at 1:21-25. That interest "mainly" may be "due to their size-tunable electronic, optical, and chemical properties and the need for the further miniaturization of both optical and electronic devices." Id. at 1:26- 28. The written description further indicates that such nanoparticles may be useful in a "range" of "commercial applications," including "biological labelling, solar cells, catalysts, biological imaging, [and] light-emitting diodes." Id. at 1:29-31.

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The written description discusses the preparation of two different molecular cluster compounds. Id. at 15:5-31. The description includes nine examples for preparing nanoparticles; eight involve a core that comprises cadmium and selenium, and one involves a core that comprises cadmium and tellurium. Id. at 15:33-19:4.

D. Challenged Claims

We reproduce below claim 1, which is the sole independent challenged claim and illustrates the subject matter of the invention.

1. A nanoparticle comprising a molecular cluster compound and a core semiconductor material disposed on the molecular cluster compound, wherein the semiconductor material comprises one or more elements not comprised within the molecular cluster compound.

Ex. 1001, 20:9-13. The other challenged claims inherit the above limitations through direct or indirect dependence on claim 1. See id. at 31:18-56 (claims 2-6), 32:37-54 (claims 16 and 17).

II. ANALYSIS

Our analysis is centered on explaining why we determine that Petitioner does not carry its burden of proving the unpatentability of claim 1 based on any ground asserted in the Petition. Petitioner advances no information, in connection with any other challenged claim, that cures the deficiencies that we identify below in the context of claim 1. See Pet 24-42, 49-54, 58-66. Accordingly, the challenges asserted in the Petition rise and fall with the sufficiency of Petitioner's showing made as to claim 1, and our analysis of claim 1 applies with equal force to each challenged claim.

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A. Principles of Law

To prevail in this proceeding, Petitioner must demonstrate by a preponderance of the evidence that the challenged claims are unpatentable. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d) (2019). "In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable." Harmonic Inc. v. Avid. Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016); see also 35 U.S.C. § 312(a)(3) (2012) (requiring inter partes review petitions to identify "with particularity . . . the evidence that supports the grounds for the challenge to each claim"). That burden of persuasion never shifts to Patent Owner. Dynamic Drinkware, LLC v. Nat'l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015); see also In re Magnum Oil Tools Int'l, Ltd., 829 F.3d 1364, 1375-78 (Fed. Cir. 2016) (discussing the burden of proof in inter partes review proceedings).

A claim is unpatentable for obviousness if, to one of ordinary skill in the pertinent art, "the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made." 35 U.S.C. § 103(a) (2006); see also KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007).

The question of obviousness is resolved on the basis of underlying factual determinations including the scope and content of the prior art, any differences between the claimed subject matter and the prior art, the level of ordinary skill in the art, and objective evidence of nonobviousness.^[15]

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Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). "An obviousness determination requires finding both 'that a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in doing so.'" CRFD Research, Inc. v. Matal, 876 F.3d 1330, 1340 (Fed. Cir. 2017) (quoting Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1367-68 (Fed. Cir. 2016)).

We analyze Petitioner's challenges according to the above-stated principles.

B. Person of Ordinary Skill in the Art

The level of skill in the art is a factual determination that provides a primary guarantee of objectivity in an obviousness analysis. Al-Site Corp. v. VSI Int'l Inc., 174 F.3d 1308, 1324 (Fed. Cir. 1999) (citing Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966); Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991)). In Petitioner's view, an ordinarily skilled artisan would have had "at least a Ph.D. in chemistry, physics, chemical engineering, material science, or equivalent technical degree or equivalent work experience, with knowledge regarding nanoparticles and methods of synthesizing them" and "[a]dditional education might supplement practical

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experience and vice-versa." Pet. 20-21 (citing Ex. 1002 ¶¶ 76-75). Patent Owner does not address Petitioner's view or propose a counter definition.

We determine that the level of ordinary skill is reflected in the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (specific findings on the ordinary skill level are not required "where the prior art itself reflects an appropriate level and a need for testimony is not shown" (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))). To the extent a more specific definition...