DCT
1:19-cv-01307
Nncrystal US Corp v. Nanosys Inc
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: NNCrystal US Corporation (Arkansas)
- Defendant: Nanosys, Inc. (Delaware)
- Plaintiff’s Counsel: Richards, Layton & Finger, P.A.
- Case Identification: 1:19-cv-01307, D. Del., 07/12/2019
- Venue Allegations: Venue is alleged to be proper in the District of Delaware because Defendant is a Delaware corporation and therefore resides in the judicial district.
- Core Dispute: Plaintiff alleges that Defendant’s process for manufacturing quantum dot products infringes a patent related to methods for synthesizing colloidal nanocrystals using non-coordinating solvents.
- Technical Context: The technology concerns chemical processes for manufacturing semiconductor nanocrystals, also known as "quantum dots," which are critical components in advanced applications such as high-definition flat panel displays.
- Key Procedural History: Plaintiff states it holds an exclusive license to the patent-in-suit. Subsequent to the filing of this complaint, the asserted patent survived an Inter Partes Review (IPR) proceeding (IPR2020-00503), with the Patent Trial and Appeal Board confirming the patentability of all challenged claims, including those asserted in this litigation. This outcome may strengthen the patent's presumption of validity against invalidity challenges based on prior art patents or printed publications.
Case Timeline
| Date | Event |
|---|---|
| 2001-07-30 | '051 Patent Priority Date |
| 2006-09-12 | '051 Patent Issue Date |
| 2015-05-29 | Date of article announcing Defendant's EPA approval for mass production |
| 2019-07-12 | Complaint Filing Date |
| 2020-02-04 | Inter Partes Review (IPR2020-00503) filed against '051 Patent |
| 2022-02-25 | IPR Certificate issued, confirming patentability of claims 1-11 and 13-23 |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 7,105,051 - "High Quality Colloidal Nanocrystals and Methods of Preparing the Same in Non-Coordinating Solvents", issued September 12, 2006
The Invention Explained
- Problem Addressed: The patent describes that prior methods for producing high-quality semiconductor nanocrystals (quantum dots) relied exclusively on "coordinating solvents" (Compl. ¶11; ’051 Patent, col. 2:41-45). These methods were allegedly hampered by high costs, toxicity of the solvents (such as organophosphorus compounds), and difficulties in scaling up for mass production (Compl. ¶11-13; ’051 Patent, col. 2:53-58). Such processes could also lead to irreproducible results and low-quality crystals (Compl. ¶14; ’051 Patent, col. 1:58-62).
- The Patented Solution: The invention claims to solve these problems by providing a method to synthesize nanocrystals in "non-coordinating solvents" (Compl. ¶15; ’051 Patent, Abstract). This approach is described as safer, less expensive, and more environmentally friendly, while still producing high-quality, monodisperse nanocrystals with tunable sizes ('051 Patent, col. 3:20-26). The core process involves combining a cation precursor (e.g., a metal oxide) and a ligand in a non-coordinating solvent (e.g., octadecene) to form a complex, and then introducing an anion precursor at a high temperature to initiate nanocrystal formation (’051 Patent, col. 8:50-58).
- Technical Importance: By enabling the use of cheaper and safer non-coordinating solvents, the patented method addressed key obstacles that had previously hindered the large-scale commercial production of quantum dots ('051 Patent, col. 2:55-58, col. 6:21-26).
Key Claims at a Glance
- The complaint asserts independent claims 1 and 22 (Compl. ¶3, 27).
- Independent Claim 1 requires a two-step method:
- a) combining a cation precursor, a ligand, and a non-coordinating solvent to form a cation-ligand complex; and
- b) admixing an anion precursor with the cation-ligand complex at a temperature sufficient to form nanocrystals.
- Independent Claim 22 requires a three-step method:
- a) combining a cation precursor, a ligand, and a non-coordinating solvent to form a cation-ligand complex;
- b) admixing an anion precursor with the complex at a first temperature to induce a reaction; and
- c) adjusting the temperature to a second temperature to form the nanocrystals.
- The complaint alleges infringement of "one or more claims" including these, suggesting the right to assert dependent claims is preserved (Compl. ¶27).
III. The Accused Instrumentality
Product Identification
The accused instrumentalities are the manufacturing processes used by Nanosys to produce its quantum dot products (Compl. ¶3, ¶22). These products are marketed under names including Quantum Dot Concentrate™, Heavy Metal Free Quantum Dots, and Hyperion® Quantum Dots (Compl. ¶3).
Functionality and Market Context
The complaint alleges that Nanosys uses the accused processes at its California facility to manufacture these quantum dot materials (Compl. ¶5). It further alleges that Nanosys produces the "world's 'lowest cost' quantum dot materials" and has received U.S. Environmental Protection Agency approval for large-scale production, with a stated capacity of over 25 tons per year (Compl. ¶20-21). These allegations frame the accused process as central to Defendant's commercial operations and market position.
IV. Analysis of Infringement Allegations
No probative visual evidence provided in complaint.
'051 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a) combining a cation precursor, a ligand, and a non-coordinating solvent to form a cation-ligand complex | Nanosys's manufacturing process allegedly comprises combining "cation precursors, e.g., precursors to cadmium (II), indium (III), and zinc (II), with a ligand in a non-coordinating solvent such as ODE to form a cation-ligand complex." | ¶22, ¶23 | col. 8:50-52 |
| and b) admixing an anion precursor with the cation-ligand complex at a temperature sufficient to form nanocrystals. | Nanosys's manufacturing process allegedly comprises "admixing cation-ligand complexes with anion precursors, e.g., precursors to selenides, phosphides, and sulfides, at a temperature sufficient to form nanocrystals." | ¶22, ¶24 | col. 8:54-58 |
Identified Points of Contention
- Scope Questions: The complaint's allegations are pleaded on "information and belief" and largely track the general language of the claims. A central dispute will be whether the specific chemicals and solvents used in Nanosys's proprietary manufacturing process fall within the scope of the claim terms. For instance, the case may turn on whether the solvent system used by Nanosys is properly classified as "non-coordinating" as that term is understood in the context of the ’051 Patent.
- Technical Questions: A primary technical question for the court will be one of evidence. The complaint does not provide specific, non-public details about Nanosys's process. The infringement case will depend on what facts are revealed in discovery regarding the actual steps, temperatures, and chemical constituents (e.g., the specific ligands) of Nanosys's manufacturing process and how they map to the claim limitations.
V. Key Claim Terms for Construction
- The Term: "non-coordinating solvent"
- Context and Importance: This term is the technological linchpin of the patent, as it distinguishes the invention from prior art methods that exclusively used "coordinating solvents." The definition of this term will be critical to determining the scope of the claims and whether they read on Defendant's accused process. Practitioners may focus on this term because the infringement analysis hinges on its construction.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent does not provide a formal definition. A party may argue the term should be broadly construed to mean any solvent that is not a traditional "coordinating solvent" like trioctylphosphine oxide (TOPO), which the patent identifies as a toxic, expensive, and difficult-to-use prior art solvent ('051 Patent, col. 3:5-7, col. 6:24-26). The specification also notes that "certain ethers can constitute reasonable non-coordinating solvents," suggesting the term encompasses a class of materials beyond the primary example ('051 Patent, col. 9:39-40).
- Evidence for a Narrower Interpretation: A party may argue the term is limited by the primary example provided, octadecene (ODE), and its specific properties described in the specification, such as being liquid at room temperature and having a high boiling point ('051 Patent, col. 6:5-8, col. 9:1-24). The argument could be made that a "non-coordinating solvent" must possess this specific combination of physical and chemical characteristics to fall within the claim's scope.
VI. Other Allegations
- Indirect Infringement: The complaint includes conclusory allegations of inducement by "directing others" and "inducing others to perform" the patented process (Compl. ¶3, ¶27). However, it does not plead specific facts to support this theory, such as identifying who is being induced or the specific acts of inducement. The core of the case appears to be direct infringement by Nanosys.
- Willful Infringement: Willfulness is alleged based on knowledge of the patent "since at least the filing of this Complaint" (Compl. ¶28). This is a standard allegation of post-filing willfulness, which seeks to establish liability for any continued infringement after Nanosys was put on notice of the patent by the lawsuit itself.
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of definitional scope: What is the proper construction of the term "non-coordinating solvent"? The case will likely turn on whether this term, defined largely by contrast to prior art and by example in the patent, is broad enough to read on the specific solvent system employed in Nanosys's proprietary manufacturing process.
- A key challenge for the Plaintiff will be one of evidentiary proof: The complaint is pleaded on "information and belief." A critical question is whether discovery will yield sufficient factual evidence to demonstrate that Nanosys's confidential process meets every limitation of the asserted claims, particularly regarding the identity and function of the specific chemicals used as the claimed "ligand," "cation precursor," and "anion precursor."
- The outcome of the post-filing Inter Partes Review, which confirmed the patentability of the asserted claims, significantly mitigates the risk of an invalidity defense based on prior art patents and publications. This procedural development will likely focus the litigation more intensely on the questions of claim construction and factual infringement.