Nexeon Ltd v. OneD Material LLC

1. Case Identification

• Case #: IPR2017-00851
• Patent #: 8,440,369
• Filed: February 7, 2017
• Petitioner(s): Nexeon Ltd.
• Patent Owner(s): OneD Material LLC
• Challenged Claims: 1-28

2. Patent Overview

• Title: Nanowire-Based Electrode Structures
• Brief Description: The ’369 patent discloses compositions for use in electrodes, such as for batteries or fuel cells. The core invention is a composition comprising a plurality of silicon-based nanowires attached directly to a support structure (e.g., graphite or carbon) and an electrolyte.

3. Grounds for Unpatentability

Ground 1: Anticipation and Obviousness over Oyama

• Prior Art Relied Upon: Oyama (Japanese Application # 2004-281317), Song (a 1999 journal article), and other secondary references.
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued Oyama anticipates most claims by disclosing an electrode material for a rechargeable battery that meets all limitations of claim 1. Oyama teaches an anode with cylindrically-shaped silicon active material (nanowires) having a high aspect ratio, standing on a carbon charge collector (support structure), and filled with a non-aqueous electrolyte. Petitioner asserted that certain features are inherently disclosed; for example, the silicon nanowires would inherently form a native oxide layer (a core/shell structure, claim 17), and the VLS growth method described would inherently create pores filled by the electrolyte (claims 15-16) and form an interconnected, cross-linked network (claims 7-8).
  • Motivation to Combine (for §103 grounds): For claim 9, which requires a specific polymer electrolyte, Petitioner argued that Oyama renders the claim obvious in view of Song. Song taught the well-known advantages of using polymer electrolytes (e.g., ionomers) as an alternative to solvent-based electrolytes in lithium batteries. A person of ordinary skill in the art (POSITA) would have been motivated to make this simple substitution in the Oyama battery to gain these known benefits.
  • Expectation of Success (for §103 grounds): A POSITA would have had a reasonable expectation of success as substituting a known solid polymer electrolyte for a liquid one was a standard and predictable design choice in battery technology.

Ground 2: Anticipation and Obviousness over Debe

• Prior Art Relied Upon: Debe (Patent 5,879,828), and various combinations with Westwater (a 1997 journal article), Shi (a 2000 journal article), and Wang (Application # 2005/0053826).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner contended that Debe, which was considered during prosecution of the parent ’527 application but not the ’369 patent, anticipates the claims. Debe discloses a membrane electrode assembly (MEA) for a fuel cell comprising silicon nanostructures (nanowires) that are "attached to or applied directly to" an electrode backing layer (EBL) made of a carbon material, in contact with a polymer electrolyte. Petitioner emphasized that the ’369 patent claims only require nanowires "attached directly to" the support, a limitation fully met by Debe. This is distinct from the allowed claims of the parent application, which required the nanowires to be "grown on" the support.
  • Motivation to Combine (for §103 grounds): For obviousness contentions, Petitioner argued a POSITA would combine Debe with references like Westwater or Shi. A POSITA would have been motivated to simplify the manufacturing of Debe’s MEA by using a well-known vapor-liquid-solid (VLS) growth method (taught by Westwater and Shi) to form silicon nanowires directly on a porous carbon fiber paper EBL (as used in Wang), thereby eliminating the separate steps of preparing and transferring nanowires.
  • Expectation of Success (for §103 grounds): Success would be expected because VLS growth of silicon nanowires on carbon substrates was a well-established and predictable process.

Ground 3: Obviousness over Yang in view of Lu

• Prior Art Relied Upon: Yang (Patent 7,265,037) and Lu (a 2002 journal article).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner asserted the claims are obvious over Yang in view of Lu. Yang discloses arrays of semiconductor nanowires for photovoltaic devices, where the nanowires directly contact a conductive plastic (carbon-comprising) substrate and are used with a charge transport medium (electrolyte). Yang primarily discusses zinc oxide (ZnO) nanowires.
  • Motivation to Combine (for §103 grounds): A POSITA would have been motivated to substitute the ZnO nanowires in Yang’s device with the silicon nanowires taught by Lu. Silicon was a well-known and common semiconductor material for such applications, and Lu taught a suitable solution-based method for growing silicon nanowires. Petitioner argued this was a simple substitution of one known semiconductor for another to achieve predictable results.
  • Expectation of Success (for §103 grounds): The substitution would predictably result in a device with high surface area and efficient carrier transport, as these properties were known for both materials.

• Additional Grounds: Petitioner asserted additional challenges including: anticipation of claims 1-28 by Niu (’363 application); anticipation/obviousness over Choi (Korean Application # 10-2004-0096382); and anticipation/obviousness over Chow (Patent 7,057,881).

4. Key Claim Construction Positions

• "Nanowires are grown on the support structure" (claims 19, 24): Petitioner argued this term, based on its prosecution history in the parent application, should be treated as a product-by-process limitation. The only disclosed method for "growing" silicon-comprising nanowires is VLS growth. Therefore, the broadest reasonable interpretation of the resulting product is "nanowires having one end attached to and extending from the substrate," which may be aligned or randomly oriented. This construction was central to distinguishing the prior art.

5. Key Technical Contentions (Beyond Claim Construction)

• Effective Filing Date: Petitioner argued that claims 1-28 are not entitled to the priority dates of earlier applications in the chain, and their effective filing date is no earlier than May 31, 2011. The argument was that the priority applications lacked written description support for key limitations of the issued claims. Specifically, the priority documents allegedly required the presence of a metal catalyst and only contemplated proton-conducting polymeric electrolytes, whereas the challenged claims do not require a catalyst and allow for any "electrolyte." This later effective filing date is critical, as it makes several references, including Niu, Oyama, and Choi, available as prior art.

6. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1-28 of the ’369 patent as unpatentable.