DCT
2:19-cv-20097
Rensselaer Polytechnic Institute v. Samsung Electronics America Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Rensselaer Polytechnic Institute (New York)
- Defendant: Samsung Electronics America, Inc. (New York) and Samsung Electronics Co., Ltd. (Republic of Korea)
- Plaintiff’s Counsel: Hill Wallack LLP; Murtha Cullina LLP
- Case Identification: 2:19-cv-20097, D.N.J., 11/12/2019
- Venue Allegations: Venue is alleged to be proper in the District of New Jersey because Defendant Samsung Electronics America, Inc. has a regular and established place of business in the district, and because Defendant Samsung Electronics Co., Ltd. is a foreign entity.
- Core Dispute: Plaintiff alleges that Defendant’s QLED-type televisions infringe patents related to the composition and method of manufacturing semiconductor nanoparticles, or "quantum dots."
- Technical Context: The technology involves using semiconductor nanoparticles in display backlights to produce purer, more vibrant colors, a key feature in the competitive high-end television market.
- Key Procedural History: The ’119 Patent is a divisional of the application that led to the ’339 Patent. The complaint does not mention any prior litigation, inter partes review proceedings, or licensing history related to the asserted patents.
Case Timeline
| Date | Event |
|---|---|
| 2001-09-05 | Priority Date for ’339 and ’119 Patents |
| 2002-09-04 | ’339 Patent Application Filing Date |
| 2005-05-09 | ’119 Patent Application Filing Date |
| 2005-06-14 | ’339 Patent Issue Date |
| 2007-08-07 | ’119 Patent Issue Date |
| 2015-01-01 | Alleged Launch of Accused QLED-type Televisions |
| 2019-11-12 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 6,906,339 - Passivated Nanoparticles, Method of Fabrication Thereof, and Devices Incorporating Nanoparticles (Issued June 14, 2005)
The Invention Explained
- Problem Addressed: The patent’s background section describes challenges in fabricating semiconductor nanoparticles ("quantum dots") with a uniform size, which is critical for their optical properties (’339 Patent, col. 1:58-61). Prior art methods often resulted in nanoparticles that would clump together ("agglomerate") or required encapsulation in shells that could degrade performance (’339 Patent, col. 1:15-30, col. 1:45-54).
- The Patented Solution: The invention is a plurality of semiconductor nanoparticles that are stabilized by an "elementally passivated surface" (’339 Patent, Abstract). This involves binding a passivating element, such as sulfur, directly to the unstable "dangling bonds" on the nanoparticle’s surface, which reduces agglomeration and improves stability without requiring a separate shell material (’339 Patent, col. 3:26-34). This allows the nanoparticles to be suspended in water for extended periods without significant precipitation (’339 Patent, col. 5:7-16).
- Technical Importance: The invention describes a path to creating more stable and uniform quantum dots using a less toxic, lower-temperature process, addressing key obstacles to their commercial application in electronics and other fields (’339 Patent, col. 5:16-29).
Key Claims at a Glance
- The complaint asserts infringement of at least Claim 1 (’Compl. ¶17).
- Independent Claim 1 requires:
- A plurality of semiconductor nanoparticles
- having an average size between about 2 nm and about 100 nm
- with a size standard deviation of less than 60 percent of the average nanoparticle size determined by photon correlated spectroscopy (PCS) method
- wherein the nanoparticles have an elementally passivated surface comprising a passivating element
- The complaint does not explicitly reserve the right to assert dependent claims.
U.S. Patent No. 7,253,119 - Passivated Nanoparticles, Method of Fabrication Thereof, and Devices Incorporating Nanoparticles (Issued August 7, 2007)
The Invention Explained
- Problem Addressed: As a divisional of the ’339 Patent’s application, this patent addresses the same problem of creating stable, uniform semiconductor nanoparticles (’119 Patent, col. 1:16-41).
- The Patented Solution: The invention claimed here is a method for making the nanoparticles. The process involves first forming nanoparticles of a "first size" and then introducing an "etching liquid" into the solution to reduce them to a "second size smaller than the first size" (’119 Patent, Abstract). This etching process allows for "tuning" the particles to a desired, uniform size (’119 Patent, col. 6:39-43). The specification explains that the solution also contains a passivating element that binds to the surface of the newly etched nanoparticles, ensuring their stability (’119 Patent, col. 6:56-61). This process is depicted schematically in Figure 6 of the patent.
- Technical Importance: This size-tuning method provides a controllable process for achieving a narrow size distribution, which is critical because the optical properties (i.e., color) of a quantum dot are directly dependent on its size (’119 Patent, col. 6:59 - col. 7:2).
Key Claims at a Glance
- The complaint asserts infringement of at least Claim 1 (Compl. ¶28).
- Independent Claim 1 requires:
- A method of making semiconductor nanoparticles, comprising:
- forming semiconductor nanoparticles of a first size in an aqueous solution;
- and providing an etching liquid into the solution to etch the semi-conductor nanoparticles of the first size to a second size smaller than the first size;
- wherein the solution contains a passivating element which binds to dangling bonds on a surface of the nanoparticles to passivate the surface of nanoparticles.
- The complaint does not explicitly reserve the right to assert dependent claims.
III. The Accused Instrumentality
- Product Identification: Over 130 models of Samsung QLED-type televisions, with the QN65Q60RAFXZA model cited as a specific exemplar (Compl. ¶¶13, 19, Ex. C).
- Functionality and Market Context:
- The accused televisions use "Quantum Dot semiconductor nanoparticles" to generate color for their video displays (Compl. ¶19). Marketing materials and product specifications for the televisions explicitly state they feature "100% Color Volume with Quantum Dot" and "Quantum Dot Color" (Compl. ¶¶20, 31; p. 7).
- The complaint alleges, on information and belief, that the accused products contain a "quantum-dot enhancement film ('QDEF')" that incorporates the quantum dots (Compl. ¶21). A diagram provided in the complaint depicts this QDEF as a distinct layer within the television's display stack (Compl. p. 8).
- The complaint alleges Samsung has sold these QLED televisions in the U.S. since at least 2015 (Compl. ¶¶12-13).
IV. Analysis of Infringement Allegations
’339 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A plurality of semiconductor nanoparticles | The Accused Products use "Quantum Dot semiconductor nanoparticles" in a component such as a quantum-dot enhancement film ("QDEF"). | ¶19, ¶21 | col. 3:21-23 |
| having an average size between about 2 nm and about 100 nm | The complaint alleges on information and belief that the quantum dots in the Accused Products have an average size within this range. | ¶23 | col. 3:11-13 |
| with a size standard deviation of less than 60 percent of the average nanoparticle size determined by photon correlated spectroscopy (PCS) method, | The complaint alleges on information and belief that the quantum dots in the Accused Products have a size standard deviation meeting this limitation. | ¶23 | col. 3:16-19 |
| wherein the nanoparticles have an elementally passivated surface comprising a passivating element. | The complaint alleges on information and belief that the quantum dots in the Accused Products have an elementally passivated surface. | ¶25 | col. 3:26-31 |
Identified Points of Contention
- Evidentiary Questions: The complaint alleges the specific size, size distribution, and surface passivation limitations on "information and belief" (Compl. ¶¶23, 25). A central issue will be whether Plaintiff can produce factual evidence, such as from reverse engineering, to demonstrate that the quantum dots in Samsung's commercial products actually meet these specific physical and chemical characteristics.
- Scope Questions: The patent distinguishes "elementally passivated" surfaces from nanoparticles encapsulated in a separate shell (’339 Patent, col. 3:41-54). The infringement analysis may turn on whether the technology used in Samsung's QDEF is properly characterized as meeting the claimed "elementally passivated" structure or if it is a different, non-infringing structure, such as a traditional core-shell quantum dot.
’119 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A method of making semiconductor nanoparticles, comprising: forming semiconductor nanoparticles of a first size in an aqueous solution; | The complaint alleges on information and belief that the quantum dots used in the Accused Products were made by this step. | ¶34 | col. 2:55-57 |
| and providing an etching liquid into the solution to etch the semi-conductor nanoparticles of the first size to a second size smaller than the first size; | The complaint alleges on information and belief that the quantum dots were made by using an etching liquid to reduce their size. | ¶34 | col. 6:36-43 |
| wherein the solution contains a passivating element which binds to dangling bonds on a surface of the nanoparticles to passivate the surface of nanoparticles. | The complaint alleges on information and belief that the manufacturing process included a passivating element in the solution that binds to the etched nanoparticles. | ¶34 | col. 6:56-61 |
Identified Points of Contention
- Evidentiary Questions: Proving infringement of a method claim requires evidence of the defendant's manufacturing process. The complaint's allegations are based entirely on "information and belief" (Compl. ¶34). A key challenge for the Plaintiff will be to obtain evidence through discovery to show that the confidential process used by Samsung or its suppliers to manufacture the quantum dots includes the specific steps of forming larger particles and then "etching" them to a smaller size in an "aqueous solution."
- Technical Questions: The infringement case raises the question of whether Samsung's quantum dot synthesis method is properly characterized as an "etching" process (i.e., material removal) or a different type of process, such as controlled growth or precipitation. The claim's requirement for an "aqueous solution" may also be a point of contention if the accused manufacturing process uses organic solvents.
V. Key Claim Terms for Construction
Term: "elementally passivated surface" (’339 Patent, Claim 1)
- Context and Importance: This term is central to the novelty of the product patent. Its construction will determine whether the structure of the quantum dots in Samsung's products falls within the scope of the claim. Practitioners may focus on this term because the patent explicitly distinguishes it from prior art nanoparticles that were coated in organic or inorganic shells.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification states that the passivating element is preferably "selected from a group consisting of H, S, Se and Te," suggesting the focus is on the identity of the element itself, not a highly specific chemical bond or structure (’339 Patent, col. 3:46-48).
- Evidence for a Narrower Interpretation: The specification asserts that "nanoparticles coated in a shell are not elementally passivated because an organic or inorganic compound is formed on the nanoparticle, rather than a passivating element which is bound to the dangling bonds" (’339 Patent, col. 3:55-59). A defendant may argue this language narrows the term to exclude any quantum dot that has a distinct material layer or compound on its surface, even an inorganic one.
Term: "etching liquid" (’119 Patent, Claim 1)
- Context and Importance: This term is critical to the method claim, as the infringement allegation depends on Samsung performing an "etching" step. Its definition will be key to distinguishing the claimed method from other known quantum dot synthesis techniques that control size through different mechanisms.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification states that while HCl is a preferred acid, "other etchants may be used for other nanoparticle compositions," which may support a construction not limited to a specific chemical (’119 Patent, col. 6:33-35).
- Evidence for a Narrower Interpretation: The patent provides a detailed example and chemical equation for etching PbS with HCl (’119 Patent, col. 6:47-56) and notes that other acids were found to be non-uniform or produced "undesired precipitates" (’119 Patent, col. 6:23-29). This could support a narrower construction limited to liquids that remove material via a similar chemical reaction, as opposed to processes that might control size through aggregation or growth kinetics.
VI. Other Allegations
- Indirect Infringement: The complaint does not plead separate counts for indirect infringement (inducement or contributory infringement) and does not allege the specific factual elements required for such claims.
- Willful Infringement: The complaint does not contain an explicit allegation of willful infringement or facts to support pre-suit knowledge of the asserted patents by the Defendants.
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of evidentiary proof for a manufacturing process: Can the Plaintiff obtain and present evidence sufficient to demonstrate that the quantum dots in Samsung's televisions were manufactured using the specific "forming" and "etching" steps required by the ’119 patent’s method claim, or will the secrecy of the manufacturing process prove an insurmountable barrier?
- A second key issue will be one of definitional scope for a product feature: Can the term "elementally passivated surface," which the ’339 patent distinguishes from a separate shell, be construed to read on the specific chemical structure of the quantum dots used in Samsung's products, or will those dots be found to have a different, non-infringing surface structure?