PTAB

IPR2017-00543

Nexeon Ltd v. OneD Material LLC

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Nanowire Structures and Networks
  • Brief Description: The ’218 patent discloses nanowires comprising a carbon-based layer and methods for their manufacture. The technology is described as useful for membranes, supports in catalyst applications, and electrodes, particularly in fuel cells.

3. Grounds for Unpatentability

Ground 1: Anticipation over Tabuchi - Claims 1-9, 12, and 14-17 are anticipated by Tabuchi under 35 U.S.C. §102.

  • Prior Art Relied Upon: Tabuchi (Japanese Patent Application Publication No. 2003-168426).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Tabuchi disclosed all limitations of the challenged claims. Tabuchi teaches using fibrous silicon (which Petitioner asserted qualifies as "nanowires") for a negative electrode in a rechargeable battery. This fibrous silicon can be coated with a carbon material using methods like chemical vapor deposition (CVD) or sintering. Petitioner contended that these processes inherently form an interfacial silicon carbide (SiC) layer, or alternatively, that coating with amorphous carbon (like the disclosed acetylene black) results in a "carbon-based layer" that is "substantially devoid of basal plane carbon" as construed. Tabuchi also disclosed that the silicon core can be doped, meeting the limitations of dependent claims. Method claims 15-17 were argued to be anticipated by Tabuchi’s disclosure of CVD, supported by details from a reference incorporated by Tabuchi (Umeno).

Ground 2: Anticipation over Moy - Claims 1-5, 7-11, and 14 are anticipated by Moy under 35 U.S.C. §102.

  • Prior Art Relied Upon: Moy (Application # 2002/0121460).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that Moy, which relates to carbide-containing nanorods and carbon nanotubes, disclosed the claimed invention. Moy teaches that carbon nanotubes (meeting the patent’s definition of "nanowires") can be coated with a carbide layer on their surface while the core remains substantially carbon. Petitioner argued this carbide layer is inherently devoid of basal plane carbon, thus anticipating claim 1. Dependent claims were allegedly met by Moy’s disclosure of SiC nanorods (providing a SiC core) or carbon nanotube cores (consisting essentially of carbon). For claim 14, Petitioner argued that Moy’s teaching of converting carbon nanotubes to carbide nanorods would, if performed incompletely, result in a layer with a thickness within the claimed 1 nm to 500 nm range.

Ground 3: Obviousness over Chow and Zhou - Claims 12 and 14-17 are obvious over Chow in view of Zhou under 35 U.S.C. §103.

  • Prior Art Relied Upon: Chow (Patent 7,057,881) and Zhou (a 2000 journal article on SiC-coated silicon nanowires).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner argued that Chow disclosed nanowires that may be comprised of silicon and can have a carbide coating applied via deposition techniques like sputtering or plasma processes. While Chow does not explicitly detail the process for forming a SiC layer on a silicon nanowire, Zhou teaches exactly that: forming a SiC coating on silicon nanowires via ion beam deposition, a type of sputtering. Zhou also discloses the specific process parameters (heating above 600°C, using methane gas) that meet the limitations of method claims 15-17.
    • Motivation to Combine: A POSITA, starting with Chow's teaching of applying a carbide coating to silicon nanowires via sputtering, would have looked to a reference like Zhou for specific, enabling details on how to perform such a process.
    • Expectation of Success: Combining the teachings would lead to the expected result of a silicon nanowire coated in a silicon carbide layer. Petitioner argued that applying Zhou’s well-understood ion beam deposition process to Chow’s silicon nanowires presented no technical hurdles and would have been a routine implementation.

  • Additional Grounds: Petitioner asserted numerous additional anticipation challenges against various claim sets based on Zhou, Chow, Oyama (Japanese Application Publication No. 2004-281317), Wong (Patent 7,585,474), Lee (a 2003 journal article), and Hanrath (Application # 2005/0029678). An additional obviousness ground asserted claim 18 is obvious over Qi (a 2000 journal article on titanium carbide nanowires).

4. Key Claim Construction Positions

  • "Basal plane carbon": Petitioner argued this term should be construed as "carbon in an ordered domain comprising hexagonal, threefold bonded carbon, ordered over a range larger than that found in carbon black or amorphous carbon." This construction was critical because it distinguishes the highly ordered carbon of graphite and carbon nanotubes from amorphous or paracrystalline carbon. By limiting "basal plane carbon" to long-range ordered structures, Petitioner contended that prior art disclosing amorphous carbon coatings met the "substantially devoid of basal plane carbon" limitation.
  • "Substantially devoid of basal plane carbon": Relying on the patent’s specification, Petitioner argued this term should be construed to mean "having less than about 0.5% of basal plane carbon." This quantitative limit was central to Petitioner's argument that prior art disclosing materials like silicon carbide or amorphous carbon, which contain no long-range ordered graphitic domains, inherently satisfy this claim limitation.

5. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of claims 1-18 of the ’218 patent as unpatentable.