PTAB

IPR2018-01246

OneD Material LLC v. Nexeon Ltd

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1. Case Identification

2. Patent Overview

  • Title: Method of Fabricating Fibres Composed of Silicon or a Silicon-Based Material and Their Use in Lithium Rechargeable Batteries
  • Brief Description: The ’762 patent discloses a method for creating porous anode structures for lithium-ion batteries using silicon-based fibres. The fibres are arranged in a felt-like structure with multiple intersections to improve electrical contact and reduce charge/discharge capacity loss over time.

3. Grounds for Unpatentability

Ground 1: Obviousness over Gao and Hong Li - Claims 1, 7, 9-10, 15-19, 26, 29-31, and 38-39 are obvious over the Gao Thesis in view of Hong Li.

  • Prior Art Relied Upon: Gao Thesis (“Synthesis and electrochemical properties of carbon nanotubes and silicon nanowires,” a 2001 PhD thesis) and Hong Li (“The Crystal Structural Evolution of nano-Si Anode cause by Lithium Insertion and Extraction at Room Temperature,” a 2000 journal article).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that the Gao Thesis taught all elements of independent claim 1 except for the specific "welding" step. Gao described fabricating silicon nanowires (elongated elements) and using them to form a porous electrode for a lithium-ion battery. Petitioner contended that the sheer quantity of nanowires (hundreds of billions) randomly deposited in a mat-like structure, as described in Gao, would necessarily result in them crossing over one another many times to form multiple intersections prior to charging. Petitioner then asserted that Hong Li supplied the teaching for the final claimed step: the "welding" of these elements at their intersections upon charging. Hong Li demonstrated that lithium insertion into silicon nanowires causes the crystalline structure to be disrupted and an amorphous Li-Si alloy to form, resulting in the merging or welding of intersecting nanowires.
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine the Gao Thesis and Hong Li because both references investigate the structural evolution of silicon nanowire networks during charge-discharge cycling in lithium-ion batteries. As both addressed the same technical problem of using silicon nanostructures as anode materials, a POSITA would look to Hong Li's observations to understand the expected behavior of the nanowire structure disclosed in the Gao Thesis.
    • Expectation of Success: Because Hong Li confirmed the phenomenon of nanowire welding during lithiation in a similar system, a POSITA would have had a reasonable expectation that the silicon nanowires in the Gao Thesis electrode would also weld at their intersections upon charging.

Ground 2: Obviousness over Gao, Hong Li, and Winter - Claim 8 is obvious over the Gao Thesis and Hong Li in view of Winter.

  • Prior Art Relied Upon: Gao Thesis, Hong Li, and Winter (“What Are Batteries, Fuel Cells, and Supercapacitors?,” a 2004 review article).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground added Winter to address dependent claim 8, which required at least partially filling the porous electrode structure with electrolyte. While the Gao Thesis described assembling a battery cell with an electrolyte, Winter, as a general review article, explicitly taught that the pores of a composite battery electrode are inherently filled with electrolyte to enable ion transport and allow the battery to function. Petitioner argued this was a well-known and fundamental feature of battery design.
    • Motivation to Combine: A POSITA implementing the battery electrode of the Gao Thesis would have been motivated to consult a general knowledge reference like Winter to understand fundamental battery principles. The combination was presented as simply applying a known and necessary technique (filling pores with electrolyte) to the known device (Gao's electrode) for its intended purpose.
    • Expectation of Success: Success would have been certain, as filling a porous electrode with electrolyte is a routine and necessary step for any electrochemical cell to function.

Ground 3: Obviousness over Gao, Hong Li, and Morales - Claims 6, 14, 27, and 40 are obvious over the Gao Thesis and Hong Li in view of Morales.

  • Prior Art Relied Upon: Gao Thesis, Hong Li, and Morales (“A laser Ablation Method for the Synthesis of Crystalline Semiconductor Nanowires,” a 1998 journal article).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground addressed dependent claims reciting specific nanowire dimensions (length, transverse dimension) and crystalline properties. Petitioner highlighted that the Gao Thesis expressly cited and used the laser ablation fabrication method described in Morales to create its silicon nanowires. Morales disclosed a method for producing uniform, single-crystal silicon nanowires with lengths and diameters that fall squarely within the ranges recited in the challenged claims.
    • Motivation to Combine: The motivation to combine the Gao Thesis and Morales was express and direct. A POSITA, upon reading that Gao used Morales's method, would naturally turn to the Morales reference to understand the specific characteristics of the resulting nanowires, including their single-crystal nature and achievable dimensions.
    • Expectation of Success: A POSITA would have a high expectation of success in producing nanowires with the claimed properties, as Morales provided an enabling disclosure for the exact fabrication method used in the primary reference, Gao.
  • Additional Grounds: Petitioner asserted additional obviousness challenges based on combinations of the Gao Thesis and Hong Li with Cui, Yu, Zeghbroeck, Chen, and the Zhou Patent to address other dependent claims related to resistivity, doping, and aspect ratio.

4. Key Claim Construction Positions

  • Petitioner proposed constructions for key terms for the purposes of the IPR, arguing they were consistent with the broadest reasonable interpretation standard.
  • "intersections": Petitioner proposed a construction of "point or area of contact formed prior to charging." This was based on the patent's disclosure, prosecution history, and arguments the Patent Owner had made in related proceedings.
  • "at least some of the elongated elements cross over other elongated elements many times along their length": Based on the Patent Owner's prior litigation positions, Petitioner proposed interpreting this phrase to mean that at least two of the elongated elements cross over and contact at least two other elongated elements.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1, 4-10, 12, 14-22, 24, 26-27, 29-31, 33-36, and 38-40 of the ’762 patent as unpatentable.